Publications in the Intellectual Property for Business series:

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2 Publications in the Intellectual Property for Business series: 1. Making a Mark: An Introduction to Trademarks for Small and Medium-sized Enterprises. WIPO publication No Looking Good: An Introduction to Industrial Designs for Small and Medium-sized Enterprises. WIPO publication No Inventing the Future: An Introduction to Patents for Small and Medium-sized Enterprises. WIPO publication No Creative Expression: An Introduction to Copyright and Related Rights for Small and Medium-sized Enterprises. WIPO publication No All publications available from the WIPO e-bookshop at: The adapted versions of the above mentioned publications are available at the WIPO (WIPO e-bookshop at Disclaimer: The information contained in this guide in not meant as a substitute for professional legal advice. Its purpose is to provide basic information on the subject matter. This publication has been adapted and reproduced with the prior express permission of the World Intellectual Property Organization (WIPO), the copyright owner of the original international edition, which is available at As such, WIPO is not liable or responsible for the accuracy or correctness of the adapted version of the publication, as that liability or responsibility rests solely with the Registry of Trademarks, Patents and Designs, Federal Ministry of Trade and investment, Nigeria and the project consultants, Law & Allied Resourcery. WIPO owns the copyright in the original international edition (2006). No part of this publication may be reproduced or transmitted in any form or by any means, electronically or mechanically, except as permitted by law, without written permission from Registry of Trademarks, Patents and Designs,Nigeria (the owner of the copyright). Registry of Trademarks, Patents and Designs, Federal Ministry of Trade and Investments, Abuja, Nigeria, Copyright (2011)

3 INTRODUCTION Intellectual Property till recently has been considered a luxury by the industry in general and SMEs in particular. In fact, it is a major avenue for SMEs to establish their credentials at par with the large enterprises. Every business has some valuable intangible property worth protecting. Therefore, keeping SMEs abreast of the latest information on Intellectual Property Rights (IPRs) systems and enabling them to protect their IP assets is the need of the hour as ignorance may lead to loss of valuable rights or expensive litigation or both. This customized version of Creative Expression will enable SMEs in Nigeria to understand the kind of work protected under the provisions of Copyright and related rights, the ownership procedure and benefits, system for protection and prevention of violation of these rights in Nigeria and abroad. These points are illustrated with the help of mostly original examples of the works of Nigerian creators. The main beneficiaries of this booklet would be SMEs engaged in printing, publishing, music and audiovisual creations (film, television and radio), architectural work any drawing/map, chart or plan, photography, sculpture, sound recordings, advertising, communication and marketing, crafts, visual and performing arts, design and fashion, and broadcasting. It also throws light on the effective copyright protection extended to SMEs dealing in production/development of software, multimedia, digital content driven industries including work available on the internet. The purpose is to enable SMEs to seize the opportunity of copyright protection rather than deferring the decision to adopt IP system on the assumption that IP protection is costly and time consuming or enforcement of the laws are ineffective. In compilation of this booklet, efforts of the Law and Allied Resourcery team comprising Ayo Ayeni (Project Coordinator)v, Tinukemi Alabi, Alexandria Adesuwa, Yahaya Maikori and Ese Oraka of Law Allianz, and our registry s Aisha Y. Salihu, have been most commendable. I hope SMEs will benefit from this joint effort on the part of World Intellectual Property Organisation (WIPO) and The Registry of Trademarks, Patents and Designs, the Federal Ministry of Trade and Investments,The Nigerian Copyrights Commission, Federal Ministry of Justice, for seeking protection and drawing maximum economic gains through the appropriate commercialization of their original creative work. J.K. Ahmadu-Suka Registrar, Trademarks, Patents and Designs.

4 TABLE OF CONTENTS 1. Copyright and Neighbouring Rights 1 2. Scope and Duration of Protection 7 3. Protecting Your Original Creations Ownership of Copyright Benefiting from Copyright and Neighbouring Rights Using Works Owned by Others Enforcing Copyright 49

5 1. COPYRIGHT AND NEIGHBOURING RIGHTS Copyright and Business Most companies do not know that by default some aspects of their business are protected What is copyright? Copyright law grants authors, composers, songwriters, computer programmers, website designers and other creators legal protection for their literary, artistic, dramatic and other types of creations, which are usually referred to as works. by copyright. Examples include: computer programs or software; content on websites; product catalogs; newsletters; instruction sheets or operating manuals for machines or consumer products; user, repair or maintenance manuals for various types of equipment; artwork and text on product literature, labels or packaging; marketing and advertising Copyright law gives an author or creator of a materials on paper, billboards, websites, and work a diverse bundle of exclusive rights over so on. In Nigeria, copyright also protects his/her work for a limited but rather lengthy period of time. These rights enable the author to control the economic use of his work in a number of ways and to receive payment. Copyright law also provides moral rights, which protect, amongst other things, an author s reputation and integrity. sketches and drawings. However, an artistic work is not eligible for copyright, if at the time when the work is made, it is intended by the author to be used as a model or pattern to be multiplied by any industrial process. Designs of manufactured products are not protected under copyright but they may be protected as industrial designs. In Nigeria, the principal legislation on copyright is the Copyright Act (as amended), Chapter C20, Laws of the Federation of Nigeria (LFN), What are neighbouring rights? Neighbouring rights refer to the category of rights granted to performers, phonogram 1

6 producers and broadcasters. In Nigeria, the rights of phonogram producers (producers of sound recordings) and broadcasters are included under copyright. However, the rights of performers are protected under the separate Example: In the case of the song Anoti, the copyright protects the music of M.I, the composer and the lyrics of the song which he also authored (lyricist and/or writer). Copyright also applies to the: category called neighboring rights. Both copyright and neighbouring rights are included under the Copyright Act. Performances of the musician who performs the song, which is M.I in this case; Sound recording of the producer and In Nigeria, the description of neighbouring rights Broadcasts of the song. is notably different from what generally obtains in most countries. While neighbouring rights are taken to include performers (e.g. actors, musicians, and dancers), phonogram producers and broadcasters in some countries, in Nigeria, the Copyright Act only protects two classes of neighbouring rights: Live Performances Expression of Folklore M.I on the album Talk About It courtesy of Chocolate City (See more on neighboring rights on page 14). How are copyright and neighbouring rights relevant to your business? Copyright protects the literary, artistic, 2

7 dramatic or other creative elements of a product or service, whereby the copyright give it away by way of sale, gift or inheritance. There are different ways to commercialize holder can prevent those original elements copyright and neighbouring rights. One from being used by others. Copyright and neighbouring rights enable a business to: possibility is to make and sell multiple copies of work protected by copyright or neighbouring rights (e.g., prints of a photograph); another is Control commercial exploitation of original works: such as books, music, films, computer programs, original databases, advertisements, content on websites, video games, sound recordings, radio and television programs or any other creative to sell (assign) your copyright to another person or company. Finally, a third often preferable option is to license, that is, permit another person or company to use your copyrightprotected-work in exchange for payment, on mutually agreed terms and conditions. works. Works protected by copyright and neighbouring rights may not be copied or exploited commercially by others without the prior permission of the rights owner. Such exclusivity over the use of copyright and neighbouring rights protected works helps a business to gain and maintain a sustainable competitive edge in the market Raise funds: Companies that own copyright and neighbouring rights assets (e.g., a portfolio of distribution rights to a number of movies/films) may be able to borrow money from a financial institution by using such a bundle of rights as collateral by letting investors and lenders take a security interest in them. place. Take action against infringers: Generate income: Like the owner of a property, the owner of copyright or neighbouring rights in a work may use it, or Copyright law enables right holders to take legal action against anyone encroaching on the exclusive rights of the copyright holder 3

8 (called infringers in legal parlance) for obtaining monetary relief, destruction of infringing works, and recovery of attorneys fees. In Nigeria, criminal penalties may be imposed on willful copyright violators. to use a work for a specific purpose is often the best way to avoid disputes that may otherwise result in potentially time consuming, uncertain, and expensive litigation. Use works owned by others: Using works based on the copyright and neighbouring rights owned by others for commercial purposes may enhance the value or efficiency of your business, including enhancing its brand value. For example, playing music in a restaurant, bar, retail shop or airlines, adds value to the experience of a customer while using a service Most businesses print brochures or publish advertisements that rely on copyright protected materials. or while visiting a business outlet. In Nigeria, to use music in this manner, prior permission of the copyright and neighbouring rights owners must be obtained by means of a license to use the music for a specified purpose. Understanding copyright and neighbouring rights laws will enable you to know when authorization is required and how to go about obtaining it. Obtaining a license from the copyright and/or neighbouring rights owners How are copyright and neighbouring rights obtained? In Nigeria, any work eligble for copyright/ neighbouring right is protected without any formalities or requirement of registration, provided that the work has fulfilled the requirements of originality, fixation and origin. However, a copyright owner may voluntarily register and 4

9 deposit his/her work at the Nigerian Copyright copyright treaties: Commission under the Copyright Notification Scheme (see page 22). Practically all countries, worldwide, have one or more national laws concerning copyright and related rights. As there are important differences amongst the copyright and related rights laws of different countries, it is advisable to consult the relevant national copyright and/or related rights law(s) and/or take legal advice from a competent professional before taking any key business decision involving copyright and/or related rights. Universal Copyright Convention (UCC) International Convention for the Protection of Performers, Producers of Phonograms and Broadcasting Organizations (Rome Convention) Berne Convention for the Protection of Literary and Artistic Works (Berne Convention) Convention Establishing the World Intellectual Property Organization Convention (WIPO Convention) Agreement on Trade Related Aspect of A large number of countries are signatories to several important international treaties that have helped to harmonize, to a considerable extent, the level of copyright and related rights protection amongst countries. In a very large Intellectual Property Rights (TRIPS) within the Framework of GATT WIPO Performance and Phonograms Treaty (WPPT) WIPO Copyright Treaty number of countries, this has made it possible for works to benefit from copyright protection without any formalities or requirement of registration. A list of the main international treaties is in Annex III. Nigeria is a member to the following international Are there other legal means for protecting original creations? Depending on the nature of your creation, you may also be able to use one or more of the 5

10 following types of intellectual property rights to protect your business interests: Patents. An invention may be protected by patent if it is new, results from inventive Trademarks. A trademark provides exclusivity over a sign (such as a word, logo, color, or combination of these) which helps to distinguish the products of a business from those of others. In Nigeria, even though it is not compulsory that a trade mark be registered, a registered trade mark enjoys certain benefits. The office in charge of registering trade marks activity and is capable of industrial application or if it constitutes an improvement upon a patented invention and is also new, results from inventive activity and is capable of industrial application. A patent must be registered at the Registry of Trade Marks, Patents and Designs, Ministry of Trade and Investments, (see Annex I). in Nigeria is the Registry of Trade Marks, Patents and Designs, Ministry of Trade and Investments, (see Annex I). Confidential business information of commercial value may be protected as a trade secret, as long as reasonable steps are taken by Industrial designs. Exclusivity over the ornamental or aesthetic features of a product may be obtained through the protection of industrial designs. An industrial design must be registered to be protected. Unregistered its owner to keep the information confidential or secret. In Nigeria, contracting parties who may have such information passed between them usually insert confidentiality clauses to protect the information. designs are not protected. The office in charge of registering industrial designs in Nigeria is the Registry of Trade Marks, Patents and Designs, Ministry of Trade and Investments. (see Annex I). Unfair competition laws may allow you to take action against unfair business behavior of competitors. There is currently no national legislation principally governing unfair 6

11 competition in Nigeria. However, certain other areas of the law (tort, advertising, comsumer 2. SCOPE AND DURATION OF PROTECTION protection) lightly deal with it. What categories or types of works are protected by copyright? The types of works protected in Nigeria are: Literary works: these include novels, stories and poetic works; plays, stage directions, film scenarios and broadcasting Sometimes, a number of intellectual property rights are used (simultaneously or sequentially) for protecting creative works. (c) Fido Dido courtesy of 7up Bottling Company scripts; choreographic works; computer programmes; text-books, treaties, histories, biographies, essays and articles; encyclopaedias, dictionaries, directories and anthologies; letters, reports, and memoranda; lectures, addresses and sermons; law reports (excluding decisions of courts); and written tables or complaints; Musical works or compositions, including compilations and works composed for musical accompaniment; Artistic works: these include any paintings, drawings, etchings, lithographs, woodcuts, engravings and prints; maps, plans 7

12 and diagrams; works of sculpture; photographs protection. not comprised in a cinematographic film; works of architecture in the form of buildings models; and works of artistic craftsmanship and also pictorial woven tissues and articles of applied handicraft and industrial art. Cinematographic works includes Music and video CD s motion pictures, television shows, webcasts and their soundtracks; Sound Recordings including sound recording of musical works; Protection of Databases A database is a collection of information that has been systematically organized for easy access and analysis. It may be in paper or Broadcasts: sound or television broadcast by wireless telegraphy or wire or both or by satellite or cable programmes, including re-broadcast. electronic form. Copyright law is the primary means to legally protect databases. However, not all databases are protected by copyright, and even those that are may enjoy very limited protection. Copyright protects works that are expressed in print as well as those created or stored in electronic or digital media. The fact that a work in its digital form can only be read by a computer because it consists only of ones and zeros does not affect its copyright In Nigeria, copyright may protect a database if it is selected, coordinated, or arranged in such a way that it is sufficiently original and it fulfills the other basic copyright requirements. However, exhaustive databases 8

13 and databases in which the data is arranged according to basic rules (e.g., alphabetically, as in What criteria must a work meet to qualify for protection? a phone directory) may not be protected under copyright law. It may however, be protected under unfair competition law. In other countries, mostly in Europe, In Nigeria, to qualify for copyright protection, the following basic requirements must be met: non-original databases are protected by a sui generis right called the database right. This gives a much greater protection to 1. Originality: sufficient effort must have been expended on making the work to give it databases. It allows makers of databases an original character. An original work is one to sue competitors if they extract and reuse substantial (quantitatively or qualitatively) portions of the database, provided there has been a substantial investment in obtaining, verifying, or presenting the data contents. In Nigeria, there is no sui generis system in place for the protection of non-original database. that originates in its expression from the author, that is, the work was independently created and was not copied from the work of another or from materials in the public domain. In any case, originality relates to the form of expression and not to the underlying idea. However, it is noteworthy that a work will not be ineligible for copyright by reason only that When a database is protected by copyright, this protection extends only to the manner of selection and presentation of the database and the making of the work or the doing of an act in relation to the work involved an infringement of copyright in some other work. not to its contents. 2. Fixation: the work must be fixed in any definite medium of expression now known or later to be developed, from which 9

14 it can be perceived, reproduced or otherwise communicated either directly or with the aid of any machine or device.thus, the work must be fixed in a material form, for example, written on paper, stored on a disk, painted on canvas or recorded on tape. Nigeria, regardless of the citizenship, domicile, incorporation, etc, of any of the authors; c) The work was first published in Nigeria, regardless of the citizenship, domicile, incorporation, etc, of the any of the authors. However, this does not apply to broadcasts. d) The work is covered by any 3. Origination: Another requirement/ condition for the protection of copyright in Nigeria is origination. Beyond originality and international agreement or treaty (such as the Universal Copyright Convention or the Berne Convention). fixation, for a work to enjoy copyright protection in Nigeria, the origin of the work is essential. In this regard a work will enjoy copyright if: In Nigeria, there is no statutory requirement for copyright to be registered in respect to a work. The work becomes protected as soon as a) The author or one of the authors, at the time the work was made was a citizen of Nigeria, a person domiciled in Nigeria, a company incorporated in Nigeria, a government or any agency of any government in Nigeria (Federal, State or Local government), or an international body prescribed in accordance with the laws of Nigeria (e.g, the United Nations or one of it is created and put/fixed in a tangible material. This protection is accorded to both published and unpublished works. What aspects of a work are not protected by copyright? Ideas or concepts. Copyright law only protects the way ideas or concepts are expressed in its agencies like World Intellectual Property a particular work. It does not protect the Organisation); or b) The work is a sound recording made in underlying idea, concept, discovery, method of operation, principle, procedure, process, or 10

15 system, regardless of the form in which it is described or embodied in a work. protection. The name or logo of a product or an advertising slogan will usually not be protected by copyright but may be protected Example: Your company has copyright over an instruction manual that describes a system for brewing beer. The copyright in the manual will under trademark competition. law or the law of unfair allow you to prevent others from copying the way you wrote the manual, and the phrases and illustrations that you have used. However, it will not give you any right to prevent competitors from (a) using the machinery, processes, and merchandising methods described in the manual; or (b) writing another manual for a beer brewery.. Official government works (such as copies of statutes or judicial opinions) are not protected by copyright in Nigeria. Works of Applied Art Overlap between Copyright and Design Rights Works of applied art are artistic works used for industrial purposes by being incorporated in everyday products. Typical examples are jewelry, lamps, and furniture. Works of applied Facts or information. Copyright does not protect facts or information - whether scientific, historical, biographical or news - but only the manner in which such facts or information are/is expressed, selected or arranged. art have a double nature: they may be regarded as artistic works; however, their exploitation and use do not take place in the specific cultural markets but rather in the market of generalpurpose products. This places them on the borderline between copyright and industrial design protection. The protection given to Names, titles, slogans and other short phrases are generally excluded from copyright works of applied art differs greatly from one country to another. 11

16 In Nigeria, it is possible that an artistic work exclusive rights to: (including works of artistic craftsmanship, pictorial woven tissues and articles of applied handicraft and industrial art) may enjoy protection under copyright, but where the work was created to be multiplied by an industrial process, it is protected under the law of industrial designs. What rights does copyright protection provide? Copyright provides two sets or bundles of rights. Economic rights protect the author s or copyright owner s economic interests in possible commercial gain. Moral rights protect Reproduce a work in copies in various forms. For example, copying a CD, photocopying a book, downloading a computer program, digitizing a photo and storing it on a hard disk, scanning a text, printing a cartoon character on a T-shirt, or incorporating a portion of a song into a new song. This is one of the most important rights granted by copyright. Distribute copies of a work to the public. Copyright allows its owner to prohibit others from selling, leasing or licensing unauthorized copies of the work. an author s creative integrity and reputation as expressed through the work. What are economic rights? Economic rights give the owner/holder of Rent copies of a work. This right generally applies only to certain types of works, such as cinematographic works, musical works, or computer programs. copyright the exclusive right to authorize or prohibit certain uses of a work. Exclusive Make translations or adaptations of a means no one may exercise these rights without a copyright owner s prior permission. Generally, the economic rights include the work. Such works are also called derivative works, which are new works that are based on a protected work. For example, translating 12

17 an instruction manual in English into other occurs in a specified way. languages, turning a novel into a film (motion picture), rewriting a computer program in a different computer language, making different musical arrangements, or making a toy based on a cartoon figure. Make works available on the Internet for on demand access by the public so that a person may access the work from a place and at a time individually chosen by him/her. It covers in particular on-demand, interactive Publicly perform and communicate a communication through the Internet. work to the public. These include the exclusive rights to communicate the work by means of public performance, recitation, broadcasting or communication by radio, cable, satellite, or television (TV) or transmission by Internet. A Publish the work. Only the owner of the copyright in a muscial or literary work has the right to make copies of the work available to the public. work is performed in public when it is performed in a place that is open to the public or where more than just the closest family and friends are present. Make a recording of the work. Only the copyright owner can make a recording of the work. Receive a percentage of the sale price if a work is resold. This is referred to as resale right or droit de suite. In Nigeria, this right is Any person or company wishing to use protected works for any of the purposes listed above must normally obtain prior authorization limited to graphic works, three-dimensional from the copyright owner(s). Although a works and manuscripts. Resale rights give creators the right to receive a share of the profit on resale of a work provided the resale copyright owner s rights are exclusive, they are limited in time (see page 20) and are subject to some important exceptions and limitations 13

18 (see page 29). What are moral rights? These are based on the French droit d auteur tradition which sees intellectual creations as an embodiment of the spirit or soul of Unlike economic rights, moral rights cannot be transferred to someone else, as they are personal to the creator (but they may pass on to the creator s heirs and successors in title). They are provided by statute to be perpetual, inalienable and imprescriptible. the creator. They are granted to the author/ creator of every work eligible for copyright. In Nigeria, moral rights are recognised and are even entrenched in the copyright legislation. The moral rights which are provided for by statute are: The Copyright Act does not provide for the moral rights of a performer. What rights do neighbouring rights provide? 1.) The right to be named as the author of the work ( authorship right or paternity right ). The author has the right to claim authorship In Nigeria, the Copyright Act protects only two classes of neighbouring rights: Live Performances and Expressions of Folklore. of his work, except when the work is included incidentally or accidentally when reporting current events by means of broadcasting. Live Peformances include a dramatic performance (including dance and mime); a musical performance; a reading or recitation of 2.) The right to protect the integrity of the work. This prohibits the making of any changes to a work that would tend to damage a literary act or similar presentation which is or so far as it is, a live performance given by one or more individuals. the author s honor or reputation. The rights of a performer inclues the exclusive 14

19 right to do or control the recod translations, and other transformations when such expressions are made either for A performer has the exclusive right to control the public performace; recording; live commercial purposes or outside their traditional or customary context. broadcast; reproduction in any material form; adaption; or dealing (by way of trade) in his/her performance. The right to authorise the exploitation of folklore is vested in the Nigerian Copyright Commission. The Copyright Act also provides for criminal liability in respect of the rights of a performer. The law also creates criminal liability in respect of the exploitation of folklore. Expression of Folklore Under the legislation, expressions of folklore cover folklore, folk poetry and folk riddles; folk songs and instrumental folk music; folk dances and folk plays; and productions of folk arts in particular drawings, paintings, carvings, sculpture, poetry, terra cotta, music, woodwork, metalware, jewelry, handicraft, costumes and indigenous textiles. Producers of phonograms/sound recordings: in Nigeria, the artiste/singer under whose name the record is issued to the public is the author and first owner of copyright in a sound recording of a musical work, except there is a contract that provides otherwise. They enjoy the rights accorded to authors and producers of sound recording. Expressions of folklore are protected against: reproduction, communication to the public by performance, broadcasting, distribution by cable or other means and adaptations, The rights of copyright owners in sound recordings of musical works in Nigeria are administered by the Copyright Society of Nigeria (COSON) (see Annex I). 15

20 Rights of Record Manufacturers In Nigeria, record manufacturers cannot prohibit broadcasting of their records, but only have the right to rebroadcast it, to fix the signal, or to reproduce any fixation of it even if it was made without the broadcaster s consent. right to receive a royalty from the broadcasters. The rate of these royalties is prescribed by the Nigerian Copyright Commission. In Nigeria, broadcasting organizations have the right to authorize or prohibit the on-demand transmission of fixations of their broadcasts to However, this right to receive a royalty in respect of the work is not a definite one as the copyright in a sound recording of a musical work belongs to the recording artist. The record manufacturer may receive royalty only if there exists a contract with the recording artist that assigns the copyright to the record individual subscribers and the granting to the public of access to fixations of their broadcasts incorporated in computer databases via an on-line network. However, cable operators still have the ability to re-transmit broadcasters signals by cable without authorization or payment. manufacturer or allows it to receive royalties. Currently, Internet audio and video streaming When a country joins the Rome Convention, the WTO (TRIPS Agreement) or the WIPO is not expressly included in the definition of broadcast in Nigeria. Performances and Phonograms Treaty, it may make reservations so that broadcasters in that country do not have an obligation to pay any royalties to record manufacturers. Broadcasters enjoy exclusive rights in their wireless communication signal such as the The right given to broadcasters is separate from the copyright in the films, music and other material that is transmitted. 16