Banging head against the wall/ frustration concept

By Ebere Frankline Chisom

INTRODUCTION

Over the years, with the rise in consciousness of the field of intellectual property particularly within Nigeria, the academic milieu has come under intense scrutiny with increased interest in determining the ownership of intellectual and industrial works evolved under academic settings giving the fact that the academic milieu in Nigeria is one of such notable areas where intellectual property finds great expression. However, it has also been an area replete with controversies and uncertainties with regards to ownership of works evolved therein particularly as extant laws governing the field of intellectual property leave room for questioning and arguments. This work through a comprehensive study of Nigerian Intellectual Property Law having due regards to the various types of intellectual property extant within Nigeria as a sovereign country studies the ownership of creations of the intellect under academic settings with particular emphasis on Student’s creation.

AN OVERVIEW OF INTELLECTUAL PROPERTY LAW, A NIGERIAN PERSPECTIVE

As a prefatory remark, intellectual property law generally has a primary aim of protecting individual or corporate creations of the mind by preventing other persons from “reaping the fruits of another’s labour”. As a consequence, it keeps an eye on the rights that result from creativity, inventiveness and human intellect. Hence Intellectual Property as a term encapsulates creations of the intellect in relation to which the law ascribes exclusive right of appropriation to the designated owners[1].

As regarding Nigeria, almost all areas of human endeavours relating to commercial and artistic activities impinge on Intellectual Property law as this determines the creation and ownership of rights to such works which of nature are literary, artistic, innovative, discoveries, inventions, designs. The field of Intellectual Property is regulated by the cumulative provisions of the Copyright Act complimented in function by the Copyright (Amendment) Decree 1992, the Copyright (Video Rental) Regulations 1999 and the Copyright Amendment Decree 1999; the Trade Marks Act; the Patents and Designs Act; the Patents Rules and the Designs Rules.

Noteworthy in this respect are four distinctive types of Intellectual Properties which have been evolved under Nigerian Intellectual Property Law. This refers:

COPYRIGHT: Copyright as a type of intellectual property is deemed the exclusive and transferable legal right, given to the author of a literary, artistic or musical work, to print, publish, perform, license or assign the work for a fixed period of years. It is noteworthy that copyright is governed essentially by the Copyright Act[2].
Copyright against all to other types of intellectual property, has the distinguishing feature of applying automatically to a work from the moment the work is created and therefore, the work is not required to be registered in order to be protected by the Nigerian Copyright Commission (NCC) which is an agency created by the Copyright Act to be responsible for all matters affecting copyright in Nigeria.

TRADEMARKS: Trademarks as a distinct type of intellectual property protect words, names and symbols created by organisations and persons to identify the source and to distinguish their products and services from those of others. Trademarks under extant Nigerian Laws are regulated by the Trade Marks Act[3] and received English Common Law in the judicial construction of unregistered trademarks.

PATENTS: Patents refer to the exclusive monopolistic nature of right conferred on a person (corporate or natural) in respect of an invention. The Patents and Designs Act[4] regulates the administration of rights of patent in Nigeria.

INDUSTRIAL DESIGNS: Section 12 of the Patents and Designs Act[5] describes an “industrial design” as any combination of lines or colours or both, and any three-dimensional form, whether or not associated with colours, if it is intended by the creator to be used as a model or pattern to be multiplied by industrial process and is not intended solely to obtain a technical result.
Generally, Industrial Designs are registrable if they are new and are not contrary to public order or morality. Designs made available to the public anywhere and at any time before the date of registration are not considered to be new.

RULES AND PRINCIPLES IN DETERMINING OWNERSHIP OF RIGHT TO INTELLECTUAL PROPERTY IN NIGERIA

INTELLECTUAL PROPERTY COPYRIGHT: As a general rule, the copyright in any original work falling within the provisions of Section 1 of the Copyright Act is initially owned by the creator of the work, though this is not always the case as a number of rules have been set for the determination of the effective owner of copyright in works. Hence it has been determined that a work must be reasonably original in nature for it to be eligible for copyright as settled by the cumulative provisions of the Copyright Act. This rule was further articulated in Ladbroke Ltd V. Hill[6] where the Court held inter alia that “the work must not be copied. It must have originated from the author’s independent skill and judgment”. It is however important to note that originality in this context does not refer to novel or new works that have never been seen or heard of as nothing is new under the sun. As such, a work can be original notwithstanding the fact that it is not novel. Hence the famous maxim “A copyist cannot enjoy copyright”. Furthermore, the principle of sufficient effort have also been evolved as was settled in Offery V. Chief S. O. Ola & ors[7], where the plaintiff designed a school record book titled. “NEW ERA SCHEME OF WORK AND RECORD BOOK”. Some years later, he noticed that the defendants were selling some similar record books. The court found that the book merely consisted of horizontal and vertical lines from page 1 to 52 and held that there was no evidence to show that sufficient effort has been expended in the production of the work as such it is not eligible for copyright. Additionally, the courts have also held that copyright does not exist in ideas but in the form in which they are expressed. Hence, to be accorded protection, a literary, musical or artistic work must be fixed in a definite medium of expression from which it can be communicated or perceived. (See Donoghue V. Allied Newspapers Ltd[8].)

INTELLECTUAL PROPERTY PATENT RIGHTS: Under patent rights, a paramount condition precedent to the enjoyment of the right is the nature of the work which must be patentable invention as this area of intellectual property law deals solely with inventions. To this extent, for a work to be deemed patentable, it must be relatively new. Newness in this context is conceived as not forming part of the “state of the art” and not having been previously published in whatsoever form. The principle of newness was relied heavily in the case of Van der Lely V Bamfords[9] where the plaintiff’s claim was for a hay-raking machine with the special feature of turning upon contact with the ground. The invention was held to have been anticipated by a photograph in a journal which showed this feature hence lacked the essential quality of being new. Furthermore, for a work to be deemed patentable, the courts have evolved the rule that such a work must proceed from an Inventive Activity. By this rule, it is meant that the invention sought to be patented must not be common-place. The inventor must have intelligently exercised his inventive faculty. Hence this question looks at the fact that although the invention is new, it is not innovative. (See Hill V Evans[10]). Finally, an invention, candidate for patent must also possess the capability of industrial application. Industrial application for this purpose is defined by Section 1(2) of the Patents and Designs Act, to mean an invention which can be manufactured or used in any kind of industry, including agriculture. Simply put; such an invention must be useful. If what the person invented is impressive but useless, he would not be granted patent.

INTELLECTUAL PROPERTY TRADEMARK RIGHTS: Under Nigerian Trademark Laws, registration or ascription of ownership is divided under two parts deemed Parts A and B.
Part A requires that the name intended to be trademarked must be true and it must not suggest that it emanates from another person, that the applicant must sign his application, that the words be invented as distinct from being misspelt and having no direct reference to the character or quality of goods and having a distinctive mark.

Part B on the other and applies to works not eligible to trademark under Part A. Hence for a work to be trademarked under Part B, it has to be distinctive or capable of being distinctive in future with prolonged use. This means that the mark must be capable of distinguishing the goods which emanate from the proprietor in the course of trade.

INTELLECTUAL PROPERTY INDUSTRIAL DESIGN RIGHTS: Cogently, the requirements for an industrial design to be registered are set forth under the Patents and Designs Act. To this extent, there is an outstanding requirement of newness and conformity with public order and morality as summarily established by Section 13 of the Patents and Designs Act. Having regards to newness, the underlying is that it should not have been published elsewhere. Hence, in Chukwumereije V. Patkum Industries[11], protection was declined where the court found that the goods are already being sold in the market by the plaintiff. Note that minor or inessential improvement from an earlier invention would not satisfy the requirement of newness. On the other hand, the test for conformity to public order and public morality is objective and flexible as these factors are affected by time, place and societal value.

EXCEPTIONAL CIRCUMSTANCES AND LIMITATIONS AS ESTABLISHED UNDER NIGERIAN LAWS

COPYRIGHT: Copyrights are generally owned by the people who create the works of expression, with some important exceptions. Hence, if a work is created by an employee or a worker in the course of his or her employment, the employer owns the copyright. This also follows when a contractual agreement is entered by an independent contractor and his employer whereby the independent contractor signs a written agreement stating that the work shall be “made for hire”. The commissioning person or organization would then own the copyright to the work evolved by the independent contractor.
PATENTS: A general limitation to the enjoyment of patent rights is the condition under which the work was evolved notably the course of employment. In determining whether an invention was made in the course of employment, one has to settle whether the employee provided his own materials or used the materials and provisions of the employees, whether the work was done within the scope and time of employment or in the claimant’s spare time and whether the claimant was employed to create the invention.
Under common law, inventions created in the course of employment are generally regarded as that of the employer. As in Patchet V. Sterling[12], lord Simmonds noted that it is implied that the result of a work done by one employed under a contract of service belongs to his employer.

Section 2(4) of the Patents and Designs Act re-echoes the common law position by stating that:

“Where an invention is made in the course of employment or in the execution of a contract for the performance of specified work, the right to a patent in the invention is vested in the employer or, as the case may be, in the person who commissioned the work”

However, as a compensation, it further provides that if “the invention is of exceptional importance, the inventor is entitled to fair remuneration taking into account his salary and the importance of the invention”.

INDUSTRIAL DESIGN: Generally, under common law, the right to designs created in the Course of Employment was vested in the employer as settled in Lazarus V Charles[13]. In the Equator Manufacturing Case, the court further observed that the employee is not entitled to use the design even after he resigns as the salary is enough.
Further, under the Patents and Design Act, the right is generally vested in the employer except a term to the contrary is provided in the contract of employment. Under Section 14(4) of the act, the employee shall be entitled to additional remuneration where the contract of employment does not require the employee to exercise any creative activity, but he has in creating the design used data or means that his employment has put at his disposal.

ACADEMIC SETTING AS A DECIDING DIFFERENCE, TOO MUCH FUSS ABOUT NOTHING?

With respect to works and publications of academic nature, a cursory evaluation of the various types of intellectual property evolved and recognised in Nigeria with a combined examination of extant laws would reveal that these works of academic nature have the academic setting as the sole distinguishing factor against all other works in the society. Hence, an examination of the extent to which this difference serves as a deciding factor in the determination of ownership or claim to right of intellectual property in these kind of works is incumbent. To this extent, it is noteworthy that Nigerian Intellectual property law does not distinguish works evolved in academic milieus from every other work eligible for registration under any of the types of intellectual property recognized within Nigeria. However, the question which have overtime being unanswered is the status of students amongst all other class of persons forming part of the academic milieu which include employees and workers (academics and non-academics) and employers (government and private or corporate individuals). This is particularly important as it is a settled principle that the status of employment serve as a determining factor in the ownership of right in intellectual property in Nigeria and elsewhere.

Hence, in determining the status of students as either employees or not, recourse to labour law is unavoidable. Hence, employee has been defined as someone who has the obligation to perform certain duties for or on behalf of his employer in return for wages or salary or some form of tangible consideration while a worker is someone who works for an employee whether under the contract of employment or other types of contract but is not self-employed whether the contract is for manual labour or clerical work or is expressed or implied or oral or written and whether it is a contract of service or a contract personally to execute any work. This is in tandem with the interpretative provisions of Section 73 of the Employee’s Compensation Act, 2010[14] and that of Section 91 of the Labour Act[15].

Flowing from the foregoing, it is reasonably settled that a student cannot be construed to be a worker nor an employee and therefore cannot have his right to ownership of whatsoever creation of his conferred on his institution of learning or on the owner of the institution of learning by the mere fact of having been evolved under an academic setting. However, where it is clearly settled through a binding contractual agreement that such a student has to waive his right to ownership of any creation of his eligible for registration under Nigerian intellectual property law before admission into the institution of learning, then such student loses the right and claim to ownership of such work.

CONCLUSION

The field of Intellectual Property Law in Nigeria is very broad and impinge on almost all aspects of human activities with the academic milieu securing a lot of arguments majorly relating to the ownership of works evolved under such setting; arguments which have majorly being tied to the ambiguous status of the creators of these works i.e. the Students. However, through an extensive study, one wouldn’t but appreciate the little difference the academic setting creates as a deciding factor in determining the Ownership of Academic Creative Works under Nigerian Intellectual Property Law.

[1] Johnson, Johnson & Akani, Nnamdi & Godwill, Prince. (2020). Infringement of the Intellectual Property Rights Under Copyrights Act Cap C28 LFN 2004: A Human Rights Violation.

[2] Copyright Act, Cap C28 Laws of the Federation of Nigeria 2004

[3] Trade Marks Act, Cap T13 Laws of the Federation of Nigeria 2004

[4] Patents and Designs Act, Cap P2 Laws of the Federation of Nigeria 2004

[5] Ibid.

[6] Ladbroke Ltd V. Hill [1964] 1 W.L.R 273

[7] Offery V. Chief S. O. Ola & ors 12 NIPJD [HC. 1969] H/23/1968

[8] Donoghue V. Allied Newspapers Ltd (1937) 3 All ER 503

[9] Van der Lely V Bamfords [1960] 7 R.P.C. 196

[10] Hill V Evans 258 S.W. 2d 917

[11] Chukwumereije V. Patkum Industries [1989] Imm AR 603

[12] Patchet V. Sterling, [1955] 1 All E.R. 369 (H.L.)

[13] Lazarus V Charles 12 Misc. 575 (N.Y. City Ct. 1895)

[14] Employee’s Compensation Act, 2010

[15] Labour Act CAP L1 Laws of the Federation of Nigeria 2004