- It would appear that Singaporean courts permit the use of ‘own name’ defense by corporations in trademark infringement suits.
- Kenya’s Permanent Presidential Music Commission (PPMC) has released a draft of its proposed National Music Bill and is calling for comments.IP Kenya has some preliminary comments.
- IP texts from Africa are far and in between. As such, new publication are always welcome. However, IP Kenya does not seem impressed by a new book – Intellectual Property Law in East Africa by Prof. Bakibinga and Dr. Kakungulu. What say you?
- What do you know about copyright and maps?
- What happens when Patentology meets the Productivity Commission on the Patenting of Computer-Implemented Inventions in Australia?
- The latest edition of WIPO Magazine.
- I am still confused by this complaint sent to IP Factor. The more I read it, the more perplexed I am. Some lawyers ordered lunch to their office for themselves and the client, and invoiced the client. I am almost certain that will never happen in Nigeria. You certainly don’t want your clients thinking you’re miserly.
- This is courtesy the Lady’s father – Citigroup Inc (C.N) has sued AT&T Inc (T.N) for the use of “thanks” and “AT&T thanks” in a new customer loyalty program which infringes the former’s trademark rights to the phrase “thankyou”.*sigh* More on that here and here anyway.
- Is there a thin line between ‘trademark enforcement’ and ‘trademark bullying’? Find out here.
- If the allegation of sampling levelled against Justin Beiber and producer, Skrillex (as well as the other songwriters of ‘Sorry’) by Indie artist, Casey Dienel (aka White Hinterland) were instituted in Australia, here is what the Courts will consider. The song by Dienel is ‘Ring the Bell’.
- On patent marking in Australia and its effectiveness.
- I absolutely enjoyed reading this post on Cannibalism, Branding and Market Segmentation.
The same arguments that @GEJonathan used is the arguments being used by the current admin. They should pay GEJ copyright for his ideas!
— Reno Omokri (@renoomokri) May 12, 2016
The above statement was made by the former Special Assistant on New Media to the immediate past president of the Federal Republic of Nigeria. It’s one statement that most IP practitioners have heard and certainly brings about varied reactions on their part – cringe on the inside; subject the speaker to a lecture; smile, shake their heads, walk away and maybe question their understanding of the idea-expression dichotomy.
The Lady recalls the chat she had prior to getting her first job. Her soon to be boss asked about her thoughts on the idea-expression dichotomy and mumble away did the Lady. To put things in perspective, the Lady was an undergraduate at the time and the boss – an accomplished author and copyright lecturer. She got the job alright, but most importantly, she learnt about the thin line between ideas and expression as far as copyright is concerned.
For the record, ideas are NOT protected by copyright. It is the expression of those ideas that are protected by copyright. And no, you cannot patent ideas either. Below is a simple flowchart that explains the idea-expression dichotomy and how ideas can be transformed in order to enjoy IP protection.
It is not uncommon for someone to express an idea at a meeting and for another to say ‘oh, I was just thinking the same’. The distinction often lies in how the ideas are expressed or the manner of execution. It would therefore be unfair and inimical to creativity if the first to register an idea was granted a monopoly to the exclusion of others. Hence, GEJ cannot be said to have copyright in his ideas, much more receive payment for it.
PS: Facts are also not protected by copyright
*Creative works encompass literary, dramatic and musical works as well as cinematograph films, sound recordings and broadcasts.
**Inventions may either be a product (e.g. a drug) or a process (e.g. how the drug is made).
KIPI Publishes Drafting Instructions for Public Comment: Following proposals made by the Kenya Industrial Property Institute (KIPI) and its stakeholders to repeal the Trade Marks Act, Cap 506 of the Laws of Kenya, KIPI has published soft copies of the Drafting Instructions and the proposals to repeal the Trade Marks Act:
Comments, additions and or amendments to the Drafting Instructions from the public are to be submitted to the Institute on or before April 30, 2016 via email: email@example.com.
- Indian Government releases Indian Intellectual Property Panorama: The Indian Government has launched a customized version of IP Panorama Multimedia toolkit, developed by WIPO, Korean Intellectual Property Office and Korea Invention Promotion Association. The toolkit has been adapted to cater to SMEs and start-ups, especially in the ICTE sector of India, based on an agreement signed between WIPO and DeitY. More details here. In the alternative, the Indian IP Panorama can be accessed here.
- GlaxoSmithKline to Restrict Patent Filings in Developing Countries: Patents have often been at the receiving end of the access to medicine debates. Accordingly, GSK has decided not to file patents in the world’s poorest countries (50 of them). It will file patents in lower middle income countries, but will grant licences to generic manufacturers in exchange for a “small royalty”. This will allow for generic versions of GSK medicine to be produced without delay and restrictions. In addition, GSK will put all its future cancer drugs into the Medicines Patent Pool. More on that here. While this is good news, the Lady is of the opinion that developing countries still need to invest in research and development given the abundant natural resources in some of these countries.
- One-day strike at the European Patent Office (EPO): On Thursday, April 7, 2016 workers of the EPO embarked on a one-day strike protesting management behaviour and demanding fair treatment of staff. More details here, here and here.
- Managing IP has published the final 2016 rankings of the top firms for copyright work in over 20 jurisdictions. More on that here and here for Nigerian firms.
- Looks like all hands are on deck to pass the Motion Picture Practitioners Council of Nigeria (MOPPICON) into law: It has been a long time coming if you ask the Lady. The Minister for Information, Lai Mohammed, has announced that a Ministerial Committee aimed at fast-tracking the passage of the Bill is to be inaugurated on April 8, 2016. The 17-member Committee will be led by Ms Peace Anyiam-Osigwe and supported by Mr. Mahmoud Alli-Balogun as Deputy Coordinator. The Committee will review and harmonize the MOPPICON Bill ahead of its submission to the Ministry of Justice and then the National Assembly. More details here and here.
- Big changes in the EU Trademark Regime: On March 23, 2016, Regulation (EU) No 2015/2424 of the European Parliament and the Council amending the Community trade mark regulation entered into force. As a result, Community trade marks (CTMs) will now be known as European Union trade marks (EUTMs) and OHIM will also now be known as the European Union Intellectual Property Office (EUIPO). Other changes include:
- an overall reduction in the fees for EUTMs
- an end to processing applications for EU-wide trade marks via the UK’s IPO
- various changes to the law, including measures to help tackle counterfeiting
- Madrid Goods and Services Manager Upgraded: Additional functions and content have been included in the Madrid Goods and Services Manger to make it easier to use. Some of these changes include Explanatory Notes in all languages; Similar group codes; Search by Nice Classification indication basic number; Participating countries; and Updated support. The Madrid Goods and Services Manager is a multilingual online tool that helps users compile the complete list of goods and services needed to file international applications. It provides terms from the Alphabetical List of the Nice Classification as well as others that are pre-accepted by the WIPO and many IP Offices in the Madrid System. Using pre-accepted terms helps reduce delays and costs linked to irregularity notices and provisional refusals.
Learning is fun! You know how YouTube sucks you into an abyss and derails your plans for world domination, that’s what this week’s first read did to the Lady:
- I was excited about this new series on IPKat that focuses on IP practitioners in various jurisdictions around the world until I clicked the lunch-al-desko link! I was sucked into food abyss and began planning my lunch meals for the foreseeable future on my employer’s time. Reminds me of my old job where I had made a pantry out of my allocated drawers. I could go on and on about the joy that link brought me, but back to the post. Yes, the Lady has a similar series planned for the blog so look out for that next year. *fingers crossed*. Not everyone seems to share in the Lady’s excitement though. It’s in the comments.
- Big changes in the European Trademark Regime, which you can catch up on here, here and here.
- In the few times, the Lady has read about Brexit, she never considered its impact on IP in UK. Thankfully, the good people at ITMA and CIPA have done just that here and here.
- Saturday reads won’t be complete without a post from Aistemos. A guest contributor is advising against jointly-owned IP rights and he does make some good points. The Lady often worries about the IP agreements we draft in this part of the world and the post just emphasises that.
…and it’s a wrap for this week! Happy Easter Holidays.
The Lady has become a tad bit obsessed with Church hence this article and other articles in another part of blogosphere. Must have been the time in Europe that fanned her obsession with the Church. By ‘the Church’, she means the Orthodox Church and more specifically, the Anglican Communion. Stained glasses formed part of my earliest memories of the Church, it’s a shame that most new Church buildings do not have them anymore. The Lady had such great plans of learning the art of glass painting at some Church in England, but alas life!
If you have ever attended an Orthodox Church, you can tell of its richness in culture, arts and traditions. This effect is multiplied when you have been in old buildings like St Paul’s Cathedral and the Westminster Abbey. It is akin to worshipping in history. At least, that was how the Lady felt and still feels. Truth be told, the Lady attended services in this Churches more out of curiosity than the service itself. Since then, the Lady has come to appreciate the Church more and realise the enormous Intellectual Property it sits on.
Trademarks and a bit of Copyright: The name of the Church (parishes) may qualify as trademarks where unique and distinctive, but the Lady doubts that would be the case for Churches named after Saints or revered figures. In the Abuja Diocese for instance, there are two St Matthew’s Anglican Churches. The structures are even somewhat similar. If the names do not qualify, logos such as these will qualify.
The Lady is aware that some Churches invite submissions for this, but is unaware how the attached rights are dealt with. Nevertheless, such submissions would typically fall under commissioned works for which first ownership of copyright automatically belongs to the author (artist). In the interest of the Church, it should endeavour to have the copyright transferred to itself by contract. It would be awkward for the Church to register a mark for which it does not own the copyright. Use of Church logos are commonplace in publications by the Clergy. For such use, the Lady suggests licensing agreements.
The Church also uses numerous symbols in its order of worship.The protection of these symbols often straddle copyright, trademarks and designs law.
Copyright: The history of the Church is contained in numerous documents and publications, some of which have fallen out of copyright protection. Nevertheless, this Book of Common Prayer (2007) will be protected by copyright as a literary work – compilation in this instance. It does not matter that the content is not original having originated decades ago and the use widespread.
The hymns! You know that’s the best part of the Church, right? The Lady attended a different Church recently and was ready to belt off to popular hymn. Alas, the lyrics had been altered. A remix, you may choose to call it. The Lady wondered if that Church obtained permission from the right-holders. The melody and lyrics of these hymns are protected by copyright. Even when the economic rights lapse, the author* retains moral rights of authorship and integrity. These moral rights are perpetual, inalienable and imprescriptible.
The copyright symbol and notices contained in the Church Hymnal form part of the Lady’s earliest introduction to IP. Compared to the Church Hymnal, this other Church’s hymnal did not contain any copyright notices nor acknowledgments. It appears that the Church (okay, this is getting confusing) takes copyright serious, because it identifies the original composers, alterations made to the lyrics and by whom.
Sermons are also protected as literary works. Priests are often employed by the Church in full time or part time roles. Thus, sermons prepared by them are subject to Section 10 of the Copyright Act, which deals with works made in the course of employment. The law is that copyright belongs to the Priests in the first instance unless otherwise stipulated in writing under a contract. Priests who sell compilations of their sermons are therefore in their right unless their contract of employment otherwise stipulates so.
Section 10 will also apply to recordings made of the service and photographs taken. While there are no laws on data and privacy in Nigeria, the Lady is of the opinion that consent should be obtained for photographs in particular. Some would argue implied consent, but the Lady still shoos photographers away in Church and at other events.
The stained glasses I mentioned earlier and other art works are also subject to copyright protection. So next time you are in a religious place of worship, take some time to consider works that can be protected as IP.
*This includes his heirs and successors.
Sometimes, the Lady comes across articles (IP-related, of course), that are too good to keep to herself. Inspired by some of her favourite bloggers, the Lady has decided to curate these articles for your reading pleasure. You may want to grab a cuppa tea or some ice cold drink depending on the weather while you read away.
- This was my favourite post this week. It had me chanting #DirtyData all day and even now, as I type. I bet you will be chanting #DirtyData by the time you are done reading.
- Now, immediately I saw the title, I thought about our very own PMRS/COSON v MCSN. This, however, is a tale of two collecting societies in Trinidad and Tobago.
- Can you identify with any of these branding mistakes? I know I can. It’s also useful advice for your clients.
- I cannot ignore a post on Monsato. For those familiar with Monsato or who are curious about the company, here are two updates from India. This came first and then Matthews George decided to play devil’s advocate with this post.
- If you read my post on bioprinting, you’d know that I am fascinated with 3-D printing. In US, the Supreme Court has been approached to provide some clarity on copyrightable aspects of 3-D printing.
- For fashion lovers, here is some perspective on how fashion intersects with IP.
- I could literally feel the author’s excitement in having his book ‘featured’ in a movie. Look out for the comment on incidental inclusion.
- You know the Lady loves the Aistemos team right? Here’s another one. This time around, it is about patent statistics as a measure of a country’s innovation and economic growth.
- Could not decide my favourite on the QMJIP blog. Read all, maybe?
As a side hustle (every Nigerian has one), the Lady recently considered providing Trademark registration services in addition to business registrations. After much deliberation, the Lady has decided to put that on hold. Why? Refer to here and here.
This led the Lady to reflect on what she would do to overhaul the system if she were appointed the Registrar of Trademarks. (A Lady is allowed to dream.) Here goes:
- Close the Registry to the public for a year! No new friends The backlog needs to be cleared and she doubts it can be done alongside new ones. Closing it to the public will no doubt have its downsides.
- Digitise all registered trademarks and devices. This can be done during the closure or during renewal for old marks that have not been captured on the IPO website.
- Create an online search database for registered trademarks and devices. This follows from the previous point. The Lady wants a situation where anyone can easily search the database as she did with the Skippy and Super County peanut butter incident.
- Draft procedural guidelines for trademark examinations. The Lady has received flimsy denials that were overturned on appeal and ought not to have been issued in the first instance. This will be done in conjunction with experts across the globe and locally.
- Employ trained experts – tech gurus and design experts to assist with backend logistics as well assist with determining distinctiveness.
- Establish a professional certifying body for trademark examiners. If people are going to invest so much in coming up with trademarks, the least that can be done is having experts attend to the registration process.
- Publish a digital trademark weekly, bi-weekly or monthly. Dispense with that poorly printed journal. The Lady is aware that is a major source of income, but there are other ways to make money.
- Create an online trademark docket system for easier management.
- Have scheduled quarterly tribunals to deal with appeals.
- Produce a quarterly and annual report of registered trademarks.
- Push for a new Trademarks Act enacted and have foreign treaties ratified.
- Create a separate and functioning website for the Registry, which will be separate from the registration Portal. The public needs more information on the operations of the Registry.
These are some of the ideas the Lady is willing to share for now. If you were the Registrar of Trademarks in your country, what would you do differently?
Recently, the Lady was transported back to her undergraduate years whilst arranging her library. The year that marked her journey in IP to be precise. She recalls searching frantically for a text on IP before classes commenced. To put things in perspective, she had no author or title in mind. It took a while before any of the booksellers offered her anything useful. She eventually bought her very first IP text and it was authored by F. O. Babafemi. Of course, by the time classes commenced, she was pretty much the only person with an IP Text and it turned out to be the recommended text. Not that there were any others per se.
Over the years, her library has expanded to include other IP texts authored by Nigerians and foreigners alike. Today, she will be sharing with you her recommended texts for those who wish to learn more about IP Law in Nigeria (and probably are as clueless as she was then).
- F. O. Babafemi: Intellectual Property – The Law and Practice of Copyright, Trademarks, Patents and Industrial Designs in Nigeria. 1st ed. (Publisher: Justinian Books)
- Folarin Shyllon: Intellectual Property in Nigeria (IIC Studies, Studies in Intellectual Property and Copyright Law, Vol. 21) (Publisher: C.H. Beck)
- Bankole Sodipo: Piracy and Counterfeiting – GATT-TRIPS and Developing Countries (Publisher: Kluwer International)
- J. O. Asein: Nigerian Copyright Law and Practice. 2nd ed. (Publishers: Books and Gavel)
- Adebambo Adewopo: Nigerian Copyright System – Principles and Perspectives. (Publishers: Odade Publishers)
- Adebambo Adewopo: Intellectual Property Rights in Nigeria – Law and Development (Publishers: NIALS Press)
- NIALS Journal of IP (NJIP) – This is a bi-annual peer-review Journal published by the Nigerian Institute of Advanced Legal Studies. The Institute also has an IP Centre and will be running an IP Management Course in Lagos, Nigeria between 18-20 July, 2016. The NIALS Calendar 2016 also contains details of other programmes that may interest you.
A number of articles by Nigerian authors such as Ayoyemi Lawal – Arowolo, Kunle Ola and Ufuoma Barbara Akpotaire can also be found on SSRN.
More suggestions are welcome as this list is based on the Lady’s Library.