NLIPW Copyright Law Volume 2 Number 10
(2014 Nigerian IP Judicial Decisions: The Year in Review)
December 4, 2014
2014 has been a busy year for Federal High Courts in Nigeria –Ruling on a suit for patent infringement relating to transparent ballot boxes, operation of a collecting society in Nigeria, ownership of a trademark following the Registrar’s refusal, payment of royalties to a collecting society, damages for a defamatory publication, counterfeiting of alcoholic beverages, and hearing a suit filed by the Federal Government for alleged violation of the Consumer Protection Act.
NLIPW takes a closer look at eight interesting IP cases and decisions from 2014.
1. Bedding Holdings Limited v. Independent National Electoral Commission (INEC) & 5 Ors.
Suit Nos: FHC/ABJ/CS/816/2010
Judgement delivered on Tuesday, January 28, 2014
Justice Ibrahim Auta of the Federal High Court
At issue: Patent Infringement
Facts: On November 25, 2010, Bedding Holdings Limited (the Plaintiff) sued INEC and 5 others (including INEC’s chairman, Professor Attahiru Mohammed Jega, the the Attorney General of the Federation, Haier Electrical Appliances Corporation Limited, Zinox Technologies Limited and Avante International Technology) at the Federal High Court in Abuja for infringing its Patent Rights No. RP 16642 relating to Electronic Collapsible Transparent Ballot Boxes, and Patent Rights No. RP NG/P/2010/202 in respect of Proof of Address System/Scheme (PASS). Both patents relate to the process and application of Direct Data Capture (DDC) machines for the compilation and collection of various biometric information.
The Plaintiff sought the following reliefs:
“A declaration that the Plaintiff is the bona fide owner of the Patent Rights No. RP 16642 and Copyrights Designs No. RD 13841 in and over Electronic Collapsible Transparent Ballot Boxes (ECTBB) and Patent Rights No. RP NG/P/2010/202-Proof of Address System/Scheme (PASS) (Embedded with the Concept of the Coded Metal Plate) and the process and application of these products respectively to produce the Voter’s Register;
A declaration that the contract entered into between 1st and 2nd Defendants (INEC and its chairman, Attahiru Jega respectively) of the one part and the 4th-6th Defendants (Haier Electrical Appliances Corporation Limited, Zinox Technologies Limited and Avante International Technology Incorporation respectively) of the other part for the production, procurement, supply, acquisition, importation, purchase, receipt, sale of the Direct Data Capturing Machines, Laptops and/or the collation/compilation and production of the Voter’s Register for the 2011 general elections or any other elections without first seeking and obtaining the written license, consent and authority of the Plaintiff is a flagrant infringement on the Plaintiff’s Patent Rights No. RP 16642 and Copyrights Designs No. RD 13841 in and over Electronic Collapsible Transparent Ballot Boxes (ECTBB) and Patent Rights No. RP NG/P/2010/202-Proof of Address System/Scheme (PASS) (Embedded with the Concept of the Coded Metal Plate).”
Judgement: On January 28, 2014, the court declared the Plaintiff as the owner of patent rights No: RP16642 and copyrights designs No: RD13841 over Electronic Collapsible Transparent Ballot Boxes (ECTBB), and patent rights No: RP NG/P/2010/202 – Proof of Address System/Scheme (PASS) – Embedded with the concept of the coded mental plate – and their application for the process of producing voters’ register.
The court also found the Defendants guilty of infringing the patent rights of the Plaintiff. The Court in arriving at its decision held that the Defendants violated the patents and consequently made a declaration that Bedding Holdings Limited is entitled to 50% of the total contract sum amounting to N17, 258, 820, 000 (Seventeen Billion, Two Hundred and Fifty Eight Million, Eight Hundred and Twenty Thousand Naira only) as the minimum reasonable royalty accruable for the infringement committed by INEC and the other Defendants.
The court ordered the Defendants to always seek prior consent of the Plaintiff before using the invention, failing which any act for which it is deployed would be rendered a nullity.
2. Musical Copyright Society Ltd/Gte v. Copyright Society of Nigeria and Nigerian Copyright Commission
Suit No: FHC/L/CG/377/2013
Judgement delivered on Friday, October 24, 2014
Justice Okon Abang of the Federal High Court
At issue: Operation of a Collecting Society in Nigeria
Facts: On March 22, 2013, the Musical Copyright Society of Nigeria (MCSN) filed Suit No. FHC/L/CS/377/2013 against the Copyright Society of Nigeria (COSON) and the Nigerian Copyright Commission (NCC). MCSN sought an order to restrain the COSON from parading itself as Nigeria’s sole Collective Management Organization (CMO) for musical works and sound recordings. MCSN also challenged the approval of COSON as a sole CMO on grounds that COSON fraudulently misrepresented particulars of its membership to the NCC, which particulars the NCC relied upon to grant approval to COSON, in total disregard of the provisions of the Copyright Act, the Copyright Regulations of 2007 and the 1999 Constitution of the Federal Republic of Nigeria as amended.
On May 2, 2013, COSON filed preliminary objections in response to the Suit. COSON contended that MCSN lacked the requisite locus standi to institute the action and that MCSN did not obtain the necessary leave of court to file the Suit as required under Order 34, rules 3 and 4 of the Federal High Court Rules. COSON also contended that the suit amounted to an abuse of the processes of the court as the relief sought had been litigated upon in the Federal High Court in Suit No. FHC/L/CS/798/2010 (Musical Copyright Society of Nigeria v. Nigerian Copyright Commission).
Judgement: On October 24, 2014, Honourable Justice O.E. Abang struck out the Suit on grounds that MCSN lacked the requisite locus standi to institute an action against COSON and NCC. In his ruling, Mr. Abang made a clear distinction between the decision of the Court of Appeal in MCSN v. Adeokin Records & Anor (2004) and the decision of the Appeal Court in Compact Disc Technologies v. MCSN (2010). He said that the Adeokin decision could not be of assistance to MCSN because the Court of Appeal interpreted the provisions of Section 15 of the Copyright Act 1988 which had no limitation provisions. He went on to say that the Compact Disc decision of the Court of Appeal applied to the instant case not just because it was later in time but because the decision interpreted the 2004 Copyright Act which had limitation provisions in Section 17 of the Act.
Justice. Abang agreed with COSON that MCSN did not fulfil the conditions under Order 34, rules 3 and 4 of the Federal High Court Rules. He also, in alignment with the Court of Appeal decision in Compact Disc Technologies v. MCSN (2010), ruled that MCSN lacked the requisite locus standi to institute the action.
On the long canvassed argument by MCSN that the requirement for it to be approved by the NCC before it can operate as a CMO is unconstitutional, Justice Abang ruled thus:
“On the issue of Section 17 of the Copyright Act being in conflict with Sections 43 and 44 of 1999 Constitution as contended by the Plaintiff’s Counsel, it is my view that the requirement to obtain a licence from the 2nd Defendant to operate as collecting society does not amount to compulsory acquisition of the Plaintiff’s property.”
“The fact that the Plaintiff is required under Section 17 of Copyright Act to fulfill certain conditions to be entitled to exercise of a right acquired by him does not in my view amount to compulsory acquisition of a right to own a property. Section 17 of the Copyright Act is not in any way in conflict with the combined provisions of Sections 43 and 44 of 1999 Constitution.”
“I have no jurisdiction to entertain this suit. It is accordingly struck out with cost of N10,000 each awarded in favour of the 1st and 2nd Defendants payable by the plaintiff.”
3. Mr. Mayo Ayilaran of Musical Copyright Society of Nigeria Limited (MCSN) v. Chief Tony Okoroji, Copyright Society of Nigeria (COSON)
Suit No. LD/740/2002
Judgement delivered on Wednesday, October 22, 2014
Justice Olubunmi Femi-Adeniyi of the Lagos High Court, Ikeja
At Issue: Damages for Defamatory Publication
Facts: By a writ of summons dated April 16, 2002, the Plaintiff/Claimant, Mayo Ayilaran of MCSN, accused the Defendant, Tony Okoroji (Chairman of COSON), of defaming his character and demanded N100 million as damages. According to the Plaintiff, the Defendant had by a letter dated December 4, 2001 and addressed to Performing Rights Society Limited, United Kingdom with the heading: “PRS Activities in Nigeria: Serving the Interest of the Authors/Composers or Mayo Ayilaran?” and copied to the International Federation of Societies of Authors and Composers and the Nigerian Copyright Commission, defamed him by describing him as a dishonest, fraudulent, difficult, problematic and dissatisfied individual.
At trial, the Defendant did not deny authorship of the letter; he however contended that he wrote the said letter in his capacity as the Chairman of Performing and Mechanical Right Society of Nigeria (PMRS) and that the Plaintiff has been operating an illegal collecting society in Nigeria for many years for which he was facing criminal charges.
Judgement: On October 22, 2014, Justice Olubunmi Femi-Adeniyi of the Lagos High Court, while delivering the judgement of the court noted that the language used in the letter in question were carefully measured and were not spoken in the heat of an argument or in the prelude to a fight.
“The said letter contains three pages of writing carefully divided under subheads…I find and hold that the words used therein which are disparaging of the claimant are not mere vulgar abuse but that they were used intentionally and with the motive to remove the claimant in favour with the recipients of the letter.
“The defendant has not been able to successfully give lawful justification for the words he has used in relation to the claimant in the said letter to remove him from liability and I so hold.”
The judge ordered the Defendant to pay the Plaintiff the sum of N25 million as damages for the defamatory publication. The court also directed the Defendant to pay the sum of N250,000 as costs and an interest on the judgment sum at 10% per annum from the date of judgment. The judge also issued an order restraining the Defendant from further writing, publishing or causing to be written or published the aforesaid letter or words used therein or similar words defamatory of Plaintiff.
“The defendant also alleged that the claimant was facing criminal charges based on the illegality. However, this allegation was not supported by the production of any charge sheet proffered against the claimant as exhibit before the court, or even the proceedings of the criminal prosecution….Rather, it was the claimant who tendered Exhibit C23, the order striking out the charge against him in the Federal High Court given on June 18, 2002. The defendant tendered exhibits D1 to D3 in proof of his assertion that the claimant was collecting royalties from companies without MCSN being approved to do so.”
4. Copyright Society of Nigeria (COSON) v. Startimes
Suit No. FHC/CS/1194/14
Judgement pending, case filed on Friday, October 31, 2014
Justice A.F.A. Ademola of the Federal High Court
At Issue: Payment of Royalties
Facts: The Copyright Society of Nigeria (COSON) filed an application at the Federal High Court in Lagos requesting the court to issue an order of interlocutory injunction restraining NTA-Star TV Network Ltd, owners of Startimes, the pay TV platform, whether by itself or its officials, privies, servants, or agents from broadcasting, rebroadcasting or communicating to the public on any channel on its platform any musical work and/or sound recording belonging to COSON, its members or affiliates pending the determination of the issues.
The application was supported by a 15 paragraph affidavit sworn to by the Chairman of COSON, Chief Tony Okoroji. COSON claimed that the operators of Startimes have never paid any royalties for the public performance, broadcast or rebroadcast of musical works and sound recordings belonging to the members, assignors and affiliates of COSON and that there was the likelihood that the operators of Startimes will continue to engage in the broadcasting, rebroadcasting and public performance of the musical works and sound recordings belonging to the members, assignors and affiliates of COSON during the pendency of the suit if they are not restrained.
Prior to the application from COSON, Startimes had asked the court for an order restraining COSON ‘from further writing, threatening or obstructing the Startimes business or demanding for royalties pending the determination of the substantive suit.
In opposing the application by the operators of Startimes, the Chairman of COSON, deposed to a counter affidavit in which he stated that in compliance with the law and respect for the rights of the owners of the intellectual property deployed by all broadcasting platforms in Nigeria, the Broadcasting Organizations of Nigeria (BON), the Independent Broadcasting Association of Nigeria (IBAN), the National Broadcasting Commission (NBC), the Nigerian Copyright Commission (NCC) and COSON on May 21, 2014 at a widely reported event in Lagos signed an agreement by which every broadcast operator in Nigeria is bound to obtain a licence and pay royalties to COSON for the broadcast of musical works and sound recordings.
Chief Okoroji’s affidavit stated that despite the COSON/BON/IBAN/NBC/NCC Agreement, the provisions of the law, efforts made by COSON to get the operators of Startimes to respect the intellectual property of COSON members, affiliates and assignors and the fact that other organizations in a similar trade as the operators of Startimes and operating under the same environment have obtained the licence from COSON and are paying royalties for the copying, broadcasting and rebroadcasting of musical works and sound recordings by their establishments, the operators of Startimes have freely exploited the intellectual property of their members.
Comment: This case is currently pending.
5. Attorney General of the Federation v. Coca-Cola Nigeria Limited and Nigerian Bottling Company
Justice Evoh S. Chukwu of the Federal High Court
At Issue: Alleged Violation of the Consumer Protection Council Act
Facts: The Attorney-General of the Federation, Mohammed Bello Adoke (SAN), filed a one-count charge against Nigerian Bottling Company (NBC) Limited and its Managing Director and a two-count charge against Coca-Cola Nigeria Limited and its Chief Executives (the Defendants) before the Federal High Court in Abuja for criminal breach of the Consumer Protection Council (CPC) Act. The suit arose following an administrative panel, which was set up to investigate a consumer complaint regarding two half-empty cans of Sprite manufactured by NBC under the licence and authority of Coca-Cola Nigeria Limited. The administrative panel after five hearings, held between September 2013 and February 2014, substantiated the allegation of product defect and violation of the Consumer Protection Council Act.
As part of the Administrative Panel’s recommendations, CPC, a parastatal under the supervision of the Ministry of Industry, Trade and Investment ordered the Defendants to:
- subject their manufacturing processes to its inspection for a period of 12 months to ensure compliance with laid down safety standards and regulations.
- provide compensation for the consumer/complainant.
- formulate a shelf-life policy for their products;
- review their Consumer Grievance Resolution Policy; supply chain management policy, product traceability policy; and
- present written assurances that they would refrain from a continuation of any conduct which is detrimental to the interest of consumers.
In the charge against NBC and its Managing Director, Ben Langat, the Federal Government alleged that the two accused persons have committed an offence by violating the Orders of the Consumer Protection Council by “deliberately failing, refusing and/or neglecting to comply with the Council’s Orders, duly made and served …and thereby committed an offence contrary to Section 21 of the Consumer Protection Council Act, Cap C25, Laws of the Federation of Nigeria, 2004 and punishable under the same section.”
In the first count of the two-count charge against Coca-Cola Nigeria Limited and its Managing Director, Adeola Adetunji, the Federal Government had alleged that the two accused persons have committed an offence by refusing to “attend the hearing of the Consumer Protection Council held in Abuja, in relation to investigation of violation of product quality standard under the Consumer Protection Council Act, after Summons was duly issued and served on you, and thereby committed an offence contrary to Section 18 of the Consumer Protection Council Act Cap C. 25 of the Federation of Nigeria, 2004 and punishable under the same section.”
In the same vein, Coca-Cola and its Chief Executive, were also charged for violating the Orders of the Council by deliberately refusing to comply with the Order duly made and served on them, thereby committing an offence contrary to Section 21 of the Consumer Protection Council Act, Cap C25, Laws of the Federation of Nigeria, 2004 and punishable under the same section.
Case Status: This case is currently pending.
6. FAPA Company Limited v. Ocean Waves Corporation Limited and the Registrar of Trade Mark
Justice John Tsoho
At Issue: Ownership of a Trademark
In 2002, Ocean Waves Corporation Limited (the 1st Defendant) applied to register Qlink in Class 9. According to the 1st Defendant, they had been using the trademark since 1996. The application was accepted and subsequently advertised in the Trademarks Journal by the Registry on October 10, 2002.
Prior to the advertisement, another company FAPA Company Limited (the Plaintiff) via a letter dated August 15, 2002 opposed the acceptance of the 1st Defendant’s application to register Qlink in Class 9. However the Registrar responded in a letter dated November 14, 2002 directing the Plaintiff to seek remedy in court in accordance with Section 13(3) of the Trademarks Act.
Acting on the advice, the Plaintiff instituted this action against the 1st Defendant and the Registrar of Trademarks in 2005. The 1st Defendant raised preliminary objections to the suit, which was upheld by the court. Dissatisfied, the Plaintiff/Appellant lodged an appeal via Suit No. CA/L/337/2006. The appeal was later abandoned through a notice of withdrawal dated May 2, 2008.
Sequel to the abandonment of the appeal by the Plaintiff, the 1st Defendant approached the Registrar of Trademark for the completion of the registration of its Qlink trademark in a letter dated April 2, 2009, at which point the Registrar declined and instead wrote to the 1st Defendant informing them that the earlier acceptance was granted in error. Alarmed by the development, 1st Defendant approached the court in another suit to seek redress over the perceived injustice.
On November 11, 2011, Justice Okon Abang ordered the Registrar of Trademark to immediately register Qlink in Class 9 in the trademark register in favour of 1st Defendant (who was the plaintiff in the suit brought against the Registrar of Trademark). In determining the matter, Justice Abang after careful evaluation of the material facts placed before the court held that the purported registration of the trademark Qlink by the Registry in favour of any person or company including FAPA Company limited is illegal, unconstitutional, null and void. Justice Abang also held that FAPA Company limited having abandoned its opposition to the registration of Trademark Qlink in favour of Ocean Waves, by withdrawing its appeal via a notice of withdrawal dated May 2, 2008 and having failed to comply with the court decision, there is no other company with the prior registration of the trademark Qlink. Consequently, the court set aside, cancelled and expunged from the trademark register, the purported registration of the trademark in favour of any person or company.
Judgement: In the suit instituted by the Plaintiff (FAPA Company Limited), Justice Tsoho while dismissing the suit, upheld the preliminary objections filed by 1st Defendant challenging the competency of the suit. The court affirmed the earlier judgement of Justice Okon Abang of November 11, 2011 that ordered the Registrar of Trademark to immediately register Qlink in class 9 in the Trademark Register in favour of 1st Defendant (who was the plaintiff in the suit brought against the Registrar of Trademark).
7. Delphi Media Consulting Nigeria Limited v. Nigeria Institute of International Affairs (NIIA) & Anor.
Suit No. FHC/L/CS/1676/14
Writ of Summon dated Wednesday, November 5, 2014
Federal High Court
At Issue: Intellectual Property Dispute
Facts: By a Writ of Summons dated November 5, 2014, Delphi Media Consulting Nigeria Limited (the Plaintiff), filed a suit against the Nigeria Institute of International Affairs (NIIA) and its Director General, Professor Bola Akinferinwa (the Defendants) over alleged theft of intellectual property.
The Plaintiff in its statement of claim stated that it is a media consultancy and public communication company, registered in Nigeria. Sometime in 2012, the Plaintiff conceived an idea for a project tagged “International Security Summit on Migration and Terrorism in West Africa Challenges” and presented the concept to the 1st and 2nd Defendants for possible collaboration in execution of the project.
According to the Plaintiff, the Defendants received the idea, examined it, had several meetings with the Plaintiff’s representative on the project but deliberately sidelined and denied the Plaintiff access to vital information on the proportion and implementation of the budget for the project, which generated N14million from sponsors. The Plaintiff alleges that the Defendants subsequently organized the conference without their consent.
The Plaintiff is currently seeking an order of the court for:
- …a declaration that the Plaintiff is the bonafide owner of intellectual property attached to a concept for an international brainstorming session on Migration and Terrorism, which was allegedly presented to the Defendants for collaboration in execution.
- an order for a declaration that the execution of the concept project by the Defendants under the special brainstorming session on migration and terrorism in West Africa without the consent and approval of the Plaintiff amounts to unlawful conversion of intellectual property of the Plaintiff
The Plaintiff is also seeking an order of the court for the Defendants “to furnish the Plaintiff with the whole account of the execution of the project and N20 million as general damages for unlawful conversion of intellectual property that belonged to Plaintiff in the project.”
Comment: This case is currently pending. It will be interesting to see how the court decides with regard to the intellectual property/ownership of the International Brainstorming Session on Migration and Terrorism concept and project.
8. National Agency for Food and Drug Administration and Control (NAFDAC) v. Sunday Okeke
Justice R.M. Aikawa of the Federal High Court, Port-Harcourt Division
At Issue: Production and Sale of Fake and Unregistered Products
Facts: The National Agency for Food and Drug Administration and Control (NAFDAC) brought a four-count charge against Sunday Okeke (the Defendant) for counterfeiting various alcoholic drinks in violation of the Counterfeit and Fake Drugs and Unwholesome Processed Foods Act. The Defendant was arrested at a market in Port-Harcourt for illegal production of fake and unregistered products including brands like Bacchus Tonic Wine, King Edward, Centurion and Glen Garry Gold Blended Scotch.
Judgement: Delivering the judgement, Justice R.M. Aikawa of the Federal High Court Port-Harcourt Division found the Defendant guilty and sentenced him to 11 years imprisonment on the four count charge with the option of fine of N600,000 (Six Hundred Thousand Naira).
Comment: This judgment is significant because it shows NAFDAC’s commitment to rid Nigeria of persons dealing in fake, substandard and unregistered products.
This article is intended to provide general information about the subject matter. Professional legal advice should be sought about specific circumstances.