Is Registration Of Copyright A Requirement For Proving Infringement? A Critical Analysis Of The Ruling Of The Federal High Court In The Case Of Paul Allen Oche V. Nigerian Breweries Plc. & 3 Ors.
Copyright under the Nigerian Copyright Act,2 is a legal protection granted to creators or originators of creative works, whether Literary, Musical, Artistic or Cinematographic works or an adaptation of any of these eligible works.3 Copyright confers an exclusive and assignable right to the Creators of such works. For a Copyright to subsist in a work of authorship, such work must have been fixed in a definite and tangible medium of expression such as paper, diskettes, flash drives, CD-ROMs, VCDs, DVDs or other formats now known or later to be developed from which the creative work can be perceived, reproduced or communicated to the pubic either directly or by means of a device.4 Therefore, copyright automatically exists in an original work of authorship from the moment the work is created and fixed in a definite medium of expression; and covers both published and unpublished works.5 The ownership of copyright is vested in the creator or author of an original work, and this original work automatically enjoys copyright protection in Nigeria along with its many benefits without having to be registered.
In the recent case of Paul Allen Oche v. Nigerian Breweries Plc & 3 Ors.,6 the Federal High Court sitting in Abuja in delivering it’s ruling, (CORAM Justice Binta F. M. Nyako) stated emphatically that the registration of a copyright is what confers locus standi on a Plaintiff to institute an action for copyright infringement; and that to claim copyright protection, the relevant work MUST be registered. The learned trial judge therefore concluded that because the Plaintiff in the instant case failed to exhibit his evidence of registration of the copyright, he has not shown his locus standi to sue for Copyright infringement.
Since the referenced matter is presently on appeal, the gravamen of this article is to evaluate the decision of the trial court in line with the position of relevant laws and judicial precedent and to underscore the requirements for proving ownership of copyright to ground a claim for infringement.
In a N1.5 billion claim, the Plaintiff instituted the instant action at the Federal High Court, seeking declarative and consequential reliefs against the Defendants; Nigerian Breweries Plc alongside its parent company, Heineken BV Netherlands, advertising agency, D.D.B. South Africa and its manager, Mr. Sampson Oloche. The Plaintiff alleged infringement of his creative work – a book titled “The Amstel Factor: An Amstel Malta Guide on how to be the best you can be” used in developing the Defendant’s popular “Why Add More?” campaign, without his consent.
On 25th June 2021, in its Ruling, the Federal High Court while holding that the matter was inchoate, struck out the suit on the ground that the Plaintiff had not established the locus standi to entitle him to institute the action; because, according to the Court, the Plaintiff had not attached any proof of his registration of the alleged work to entitle him to bring the action before the Court.
In emphasising the need for the Plaintiff’s claim for infringement of his copyrighted work to be backed by evidence of formal registration, the learned trial Judge held that the registration of a Copyright is what confers locus standi on a Plaintiff to institute an action for infringement. Though parties before the Court had formulated four (4) issues for determination on either side, the Court reformulated a singular issue of locus standi in coming to its decision.
It is trite that the ownership of copyright is vested in the creator or author of an original work7 or an assignee/transferee8 thereof. This original work of an author automatically enjoys copyright and its benefits without having to be registered. This is provided in Section 1 (2) of the Nigerian Copyright Act which grants copyright to a literary, musical or artistic work when:
- Sufficient effort has been expended on making the work to give it an original character; and
- The work has been fixed in any definite medium of expression now known or later to be developed, from which it can be perceived, reproduced, or otherwise communicated either directly or with the aid of any machine or device.
From the above provision, it is self-evident that the acquisition of copyright is automatic and does not require any formalities because once a work has been produced in a tangible medium of expression or in a form capable of being reproduced or perceived, such work is automatically copyrighted, and the author can enjoy the full benefits of a copyright holder and no further steps are required to be taken under the Act. Therefore, registration is not required or imposed as a pre-condition for copyright protection or a claim for infringement.
In the case of Zain Nigeria v. TV Xtra Productions Ltd & Anor,9 Mohammed Mustapha, JCA, delivering the lead judgment held that:” .nothing compels the Appellant or anyone to register their work, because there is no compulsion in registration of copyrights.”
Further, the courts have held that only a copyright owner, an assignee or exclusive licensee can maintain an action for copyright infringement in Nigeria. The Court of Appeal in MTN Nig. Communications Ltd v. Musical Copyright Society of Nig. Ltd/Gte,10 held that:
“Sections 16, 17 and 39, the Copyright Act 2004 made provisions for five categories of persons, who could sue to enforce infringement of copyright under the Copyright Act 2004. These five categories of persons or bodies include the following, namely: 1: An owner; 2: An Assignee; 3: An Exclusive Licensee; 4: A person carrying on the business of negotiating, granting of licenses, collection and distribution of royalties for not more than fifty owners of copyright in any category of works; and 5: An Association of Copyright Owners, referred to as Collecting Society, which may be formed upon the satisfaction of the conditions provided for under the Act.”
Similarly, in the case of MCSN Ltd/Gte v. Adeokin Records Ltd & Anor,11 the Court held thus:
“In effect for a person to be a legal owner of copyright for the purposes of vesting requisite locus, such must fall into any of the following categories, namely; the author of the work himself, the assignee, the licensee. It is therefore only any of these legally authorised or accredited owners that can seek redress in the copyright in the Court of law.”
This decision was upheld by the Supreme Court on further appeal;12 lending credence to the provision of section 51 (1) of the Copyright Act which defines an “author” in the case of literary, artistic, or musical works, as “the creator of the work” without more. The Act as seen from the foregoing does not require the ‘Author’ or ‘Owner’ to comply with any formalities such as registration before he can be regarded as an Author or to enjoy the full benefits of Copyright ownership which includes bringing an action for infringement.”
Furthermore, Section 43 of the Act13 makes a very elaborate and clear presumptions of ownership in the absence of any contrary evidence in favour of the Plaintiff in any claim for copyright infringement. Some of these presumptions include the fact that copyright subsists in a work that is the subject matter of an alleged infringement, the plaintiff is the owner of the copyright in the putative work and that the name appearing on the work is the name of the author of the work.
The import of the provisions of the Copyright Act and the above interpretations by the Courts in essence, is that it is sufficient that the subject matter in issue has been produced in a tangible form of expression, enough effort has been expended on the work and an author need not register his work before it can be protected by copyright. This invariably means that an Author is not required to present proof of registration to be vested with the locus standi to institute an action for infringement of copyright.
Significantly, the Berne Convention14 to which Nigeria is a signatory, prohibits mandatory compliance with any formalities before works of authors can be conferred with copyright protection. The Berne Convention introduced the concept of automatic copyright protection the moment a work is “fixed” rather than requiring “registration” from member states who are signatories to the convention.15 This was stated in the 1908 Berlin revision of the Convention by the current principle of formality-free protection, reflected in Article 5(2) of the present Paris Act 1971. Further to this, most member states have introduced voluntary national registration or notification systems for copyright as a means of incorporating and abiding by the principles of the Berne Convention, which accords better protection and benefits to copyright holders.16 The TRIPS Agreement also imposes an obligation on member states to comply with Articles 1-21 of the Berne Convention and therefore incorporates the no-formalities requirement by reference.17
The Nigerian Copyright Commission (NCC) as part of its regulatory functions,18 has established a voluntary copyright notification scheme designed to assist authors and creators in protecting their works more effectively.19 This notification scheme, known as the Nigerian Copyright e-Registration System (NCeRS), clearly affirms on its website that: “Although copyright in a work exists automatically when an original work is created, subsequent registration of the work under the NCeRS is evidence that your creation is protected by copyright; and facilitates recording and proof of the possible date of creation of the work and other facts stated in the application form.“20 The implication of this is that where the date of the creation of the work is in issue, the registration of a work with the NCeRS could be useful in proving that a work exists or was created on a certain date. This is therefore not to be misinterpreted as a requirement for registration to ensure copyright protection in Nigeria.
In order to remove all doubts regarding the automatic protection of works of authorship under Nigerian law, section 3 of the initial 2015 Draft Copyright Bill21 stipulated that copyright protection should not be subject to any formalities before enjoyment of the right.22 Further, the “Copyright Act repeal and re-enactment Bill, 2021”,23 which passed second reading24 at the Senate as of June 2021, provides in section 1 (5) that “Eligibility for copyright under this Act shall not be subject to any formality including registration”; and in subsection (6) that “Copyright protects any eligible work immediately it is created or made”. The combination of these proposed amendments by the National Assembly reiterates the fact that registration of copyright is not, should not and cannot be a precondition for the institution of an action for infringement of a copyrighted work in Nigeria.
- CONCLUSION AND RECOMMENDATIONS
It is our considered opinion that the decision of the court is an error in law and against judicial precedent. The decision under review is fundamentally misguided because the decisions in a plethora of cases as well as the provisions of section 16 of the Copyright Act (which states the actions that constitute the components of infringement of protected works); and section 17 of the Act (which provides for the limitation to the right of an action of infringement), do not stipulate registration of copyright as a condition precedent and/or limitation to copyright protection.
Also, the voluntary notification of a work of authorship at the NCC cannot be mistaken as a precondition for the exercise and enjoyment of copyright protection by copyright owners. On the contrary, lodging a creative work at the NCC can be encouraged, to enable authors’ wider latitude to establish, protect, enjoy, and exploit their works as they see fit.
In conclusion, the Federal High Court erred in law when it held that the Plaintiff is required to provide proof of registration before he can institute the instant suit. Copyright notification is not a mandatory requirement of law but only exists as a matter of convenience to make copyright ownership easier to establish and to provide a public record for authors and artists. It also reduces the incidence of infringement as one is less likely to infringe on literary works within the records of the NCC considering the glaring evidence of ownership.
The continuing legal education of our judges is commendable and needs to continue with even more vigour to equip the judges with the requisite skills and knowledge to entertain and adjudicate intellectual property matters effectively. In view of the above conclusion, it is recommended that, an IP section/division of the Federal High Court be established which shall be composed of trained experts, as a truly specialised court for intellectual property disputes. Section 251 (1) (f) of the Constitution of the Federal Republic of Nigeria 1999 (as amended), the Federal High Court Act and the Nigerian Copyright Act25 should be further amended to provide for an Intellectual Property Division of the Federal High Court for easy, speedy, and appropriate disposal of IP and copyright infringement cases (offenses and disputes) of this sort. The Federal High Court should be compartmentalised into specialised divisions to adjudicate over the respective specialised fields over which that court has been conferred with original and exclusive jurisdiction under the Constitution.
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1 Cynthia Njoku and Maryam Abdulsalam, Associates SPA Ajibade & Co., Nigeria.
2 Cap C28 Laws of the Federation of Nigeria (LFN) 2004.
3 Sandra Eke, (2019), “Fundamental Elements of Copyright Ownership and Protection Under Nigerian Law” available at http://www.spaajibade.com/resources/fundamental-elements-of-copyright-ownership-and-protection-under-nigerian-law-sandra-eke/#_ftn2 accessed 27th September 2021.
4 Section1 (2) Copyright Act, Cap C28, Laws of the Federation of Nigeria 2004.
5 https://www.copyright.gov/help/faq/faq-general.html accessed 27th September 2021.
6 Unreported: Suit No: FHC/ABJ/CS/145/2019, ruling delivered on 25th June 2020.
7 Section 2 Copyright Act, Cap C28 Laws of the Federation of Nigeria (LFN) 2004.
8 Section 11 Copyright Act (Supra).
9 (2021) LPELR-53534(CA) (p. 32) available at https://primsol.lawpavilion.com/analytics?ratio=lkkcoin&court=appeal accessed 27th September 2021.
10 (2017) LPELR-50121(CA).
11 (2004) LPELR-12872(CA) (p. 7), See also Musical Copyright Society of Nigeria Ltd/Gte v. Compact Disc Technology Ltd & Ors (2018) LPELR-46353(SC).
12 Adeokin Records & Anor v. Musical Copyright Society of Nig (Ltd/Gte) (2018) LPELR-45300(Sc).
13 Copyright Act, Cap C28 Laws of the Federation of Nigeria (LFN) 2004.
14 The Berne Convention for the Protection of Literary and Artistic Works, 1886 (“the Berne Convention”) as amended on September 28, 1979.
15 WIPO, “Berne Convention” https://www.wipo.int/treaties/en/notifications/berne/treaty_berne_147.html accessed 21st September 2021.
16 WIPO, “Copyright Registration and Documentation Systems” available at https://www.wipo.int/copyright/en/activities/copyright_registration/index.html accessed 21st September 2021.
17 See Article 9 TRIPS Agreement (The Agreement on Trade-Related Aspects of Intellectual Property Rights) – https://www.wto.org/english/tratop_e/trips_e/intel2_e.htm.
18 Section 34 (3) Copyright Act, Cap C28 Laws of the Federation of Nigeria (LFN) 2004.
20 NCC, “About NCeRS” available at http://www.eregistration.copyright.gov.ng/ncc/about accessed 27th September 2021.
21 The Bill was drafted by a committee constituted by the Nigerian Copyright Commission (“NCC”), published on 30th October 2015.
22 See Oluwafunmilayo Mayowa, (2019), “A Brief Review of the Nigerian Draft Copyright Bill 2015″available at http://www.spaajibade.com/resources/a-brief-review-of-the-nigerian-draft-copyright-bill-2015-oluwafunmilayo-mayowa/#_ftn1 accessed 23rd September 2021.
24 https://www.thisdaylive.com/index.php/2021/06/08/bill-to-repeal-22-year-old-copyright-act-passes-second-reading-at-senate/ accessed 23rd September 2021.
25 Particularly Section 46.