Analysis of the Concepts of Assignment and Licensing Under the Copyright Act and Trademark Act of Nigeria

The fact that Nigeria’s intellectual property laws safeguard creators’ rights and ensure that their innovative works are protected cannot be denied. The Copyright Act and Trademark Act, provide the framework for this protection. This work looks into the concept of assignment and licensing under these Acts by exploring their types, requirements, effects, and termination, putting into examination the provisions of both Acts in Nigeria.

The Concept of Assignment

Copyright is deemed to be movable property under the Act and is transferable by way of assignment, testamentary disposition or the operation of law and the rules guiding the transfer of copyright are provided in section 30 of the Act. The general principles of contract apply to the transfer or assignment of copyright and there is no requirement to register the transfer of copyright with any authority.

Types of Assignment

Exclusive License: This is where the copyright owner grants exclusive rights to another party by restricting use from others.

Non-Exclusive License: This is the type of assignment which the owner grants non-exclusive rights by allowing multiple parties to use the work.

Assignment Under the Copyright Act

Explanations of Section 30 (1 to 11)

Section 30 (1) of the Copyright Act states that copyright shall be deemed to be movable property and shall be transferable by way of assignment, testamentary disposition or operation of law. The Implementation of this is that Copyright is considered a personal property that can be transferred or owned. It can change hands through various means, specifically by being sold or given away through assignment. Additionally, copyright can be inherited through a will, known as testamentary disposition. It can also be transferred through court orders or other legal processes, referred to as operation of law.

Section 30 (2) provides that an assignment or testamentary disposition of copyright may be limited to only some of the acts, which the owner of the copyright has the exclusive right to control or to a part only of the period of the copyright, or to a specified country or other geographical area. By extension, when transferring copyright ownership through assignment or inheritance, the transfer can be partial, limiting the new owner’s control to specific rights, a portion of the copyright’s duration, or restricted to a particular country or geographic region.

Section 30 (3) goes further to state that an assignment of copyright or an exclusive license to do an act, the doing of which is controlled by copyright, shall have no effect unless it is in writing. This connotes that, any transfer of copyright ownership or exclusive license granting someone the right to use copyrighted material must be documented in writing. Without a written agreement, the transfer or license is not legally binding.

Section 30 (4) statesthat a non-exclusive licence to do an act, the doing of which is controlled by copyright, may be written, oral, or inferred from conduct of the owner of copyright. This suggests that non-exclusive license, which allows someone to use copyrighted material without having sole rights, can be established through various means. It can be formally documented in writing, verbally agreed upon, or even implied through the copyright owner’s actions or behavior. This means that even if there’s no formal agreement, the owner’s conduct can suggest permission for someone to use their copyrighted work.

A practical example of this could be seen in a situation where a photographer shares their photos online without explicit restrictions, it may imply a non-exclusive license for others to use them, unless stated otherwise. Similarly, verbal permission from the copyright owner or past instances of allowed usage can also constitute a non-exclusive license.

Section 30 (5) states that an assignment or license granted by one copyright owner, shall have effect as if granted by his co-owner and subject to any agreement between them, any fee received shall be divided equitably among the co-owners. This means that when one co-owner of a copyright grants an assignment or license, it will be treated as if all the co-owners had granted it, provided there is no contrary agreement among them. Any fees or payments received from such a grant must be fairly shared among all the co-owners, unless they have agreed otherwise.

Section 30 (6) provides that for the purposes of this section, persons shall be deemed to be co owners, if they —

(a) share joint interest in the whole or any part of a copyright ; or

(b) have interests in the copyright in various works composed in a production of two or more works.

This indicates that individuals are considered co-owners if they share a joint interest in all or part of a copyright. Additionally, individuals are also deemed co-owners if they hold interests in multiple works that are part of a larger production. In essence, co-ownership is established when individuals share rights in a single copyright or have separate interests in different works within a combined production.

Section 30 (7) provides that ownership of a material in which a work is embodied shall not confer ownership of copyright in the work. Furthermore, possessing or owning the physical material that a creative work is stored or expressed on does not automatically grant ownership of the copyright to the work itself.

In other words, owning the physical medium, such as a book, painting, or CD, does not necessarily mean you own the intellectual property rights or copyright to the work contained within it.

Section 30 (8) of the Act states that except as may otherwise be provided for in an agreement, an owner of copyright who transfers the ownership of the material in which the work is embodied, shall not be deemed to have transferred his copyright or to have granted a license for the exploitation of the work.

Furthermore, unless otherwise stated in a contract or agreement, transferring ownership of the physical material that a creative work is stored or expressed on does not automatically transfer the copyright ownership of the work. In other words, selling or giving away the physical medium, such as a book, painting, or CD, does not imply the transfer of intellectual property rights or copyright to the buyer or recipient.

The original copyright owner retains all rights to control reproduction, distribution, and exploitation of the work, unless explicitly stated otherwise in a separate agreement. This means that the new owner of the physical material only has possession of the material itself, but not the right to reproduce, distribute, or commercially exploit the creative work contained within it.

Section 30 (9) provides as thus; except as may otherwise be provided for in an agreement, an owner of copyright who transfers his copyright or grants a license for the exploitation of a work shall not be deemed to have transferred the ownership of the material in which the work is embodied. This implies that Unless otherwise stated in a contract or agreement, when a copyright owner transfers their copyright or grants a license to exploit a work, they do not automatically transfer ownership of the physical material that the work is stored or expressed on.

Put differently, selling or transferring intellectual property rights or copyright to a creative work does not imply the transfer of ownership of the physical medium, such as a book, painting, or CD.

Section 30 (10) provides that an assignment, license or testamentary disposition, may be granted or made in respect of a future work or an existing work in which copyright does not subsist, provided that it shall not be permitted to transfer the rights in all future works of an author.

This section explains that copyright owners can grant assignments, licenses, or make testamentary dispositions (through wills) for either existing works or future works that have not yet been created. These agreements can also be made for works that currently do not have copyright protection, but may gain protection in the future. However, it is not permissible to transfer ownership of all future works an author will create through a single agreement.

Section 30 (11) states that testamentary disposition of a material on which a work is first written or recorded shall, in the absence of any indication to the contrary, be presumed to include any copyright or prospective copyright in the work, which is vested in the deceased.

When a person dies, their will or testamentary disposition of a material, such as a manuscript, recording, or other medium, on which a work was first created, automatically includes the transfer of any existing or potential copyright in that work. Unless the will specifically states otherwise, it is presumed that the copyright ownership of the work, held by the deceased, passes to the beneficiary or heir of the material.

Assignment Under the Trademark Act

Explanation of Section 26 (1 to 5)

Section 26 (2) provides that Notwithstanding any rule of law or equity to the contrary, a registered trademark shall after the commencement of this Act be assignable and transmissible either in connection with the goodwill of a business or not. According to this law, a registered trademark can be sold or transferred. This can happen either as part of selling a business (along with its goodwill) or separately. This rule applies regardless of any existing laws or legal principles that might say otherwise. In essence, once this law takes effect, registered trademarks become transferable assets.

Section 26 (2) provides that registered trademarks shall after the commencement of this Act be assignable and transmissible in respect either of all the goods in respect of which it is registered, or was registered, as the case may be, or of some (but not all) of those goods. This conveys the fact that after this law takes effect, a registered trademark can be sold or transferred. This transfer can apply to all the products or services for which the trademark is registered. Alternatively, the trademark can be transferred for only some of the products or services it covers, not all of them.

Section 26 (3) provides that subsections (1) and (2) of this section, shall apply in regard to an unregistered trade mark used in relation to any goods as they apply in regard to a registered trade mark registered in respect of any goods, if-

(a) at the time of the transmission of the unregistered trademark it is used in the same business as a registered trademark; and

(b) it is assigned or transmitted at the same time and to the same person as that registered trademark; and

(c) it is so assigned or transmitted in respect of goods all of which are goods-

(i) in reIa tion to which the unregistered trade mark is used in that business, and

(ii) in respect of which the registered trade mark is assigned or transmitted.

Importantly, the rules for transferring registered trademarks also apply to unregistered trademarks used for certain goods. This applies if the unregistered trademark is used in the same business as a registered trademark. The unregistered trademark must be transferred at the same time and to the same person as the registered trademark.

Furthermore, the transfer of the unregistered trademark must apply to all the goods for which the unregistered trademark is currently used in that business. These goods must also be among those for which the registered trademark is being transferred.

Section 26 (4) provides for a situation when a trademark is assigned for specific goods after this law takes effect, and the trademark is already used in a business for those goods, there are certain conditions that apply. If the assignment isn’t part of transferring the entire business, including its goodwill, the new owner won’t gain any rights until they meet two key requirements.

In the first instance, within six months of the assignment, or a longer period allowed by the Registrar, the new owner must ask the Registrar for guidance on advertising the assignment.

The section also addresses whether the new owner must advertise the assignment in a specified format, manner, and timeframe directed by the Registrar. This process ensures transparency and notifies the public about changes in trademark ownership, ultimately protecting both parties’ interests.

Section 26 (5) establishes that when the Registrar provides guidance on advertising a trademark assignment, as outlined in subsection (4), they will also ensure that a notice of the assignment is published in the official Journal.

In other words, once the Registrar directs the new owner on how to advertise the assignment, they will simultaneously publish a notice of the assignment in the Journal, providing public notification of the change in trademark ownership. This dual process of directed advertising and journal publication helps maintain transparency and publicly records the transfer of trademark rights.

The Concept of Licensing

Worthy of note is the fact that through licensing, creators can monetize their intellectual property, and users can access valuable content where they drive innovation and creativity and have the opportunity to explore the creative world. The subsequent sections shall outline the framework for licensing under the Copyright Act and other important matters with respect to licensing under the Copyright Act of Nigeria.

Sections 31 to 34 (compulsory license to produce and publish translation)

Section 31 provides for individuals with the necessary qualifications to apply to the Commission for a special license. This license allows them to translate and publish a literary work that has already been made available in print or similar formats. The purpose of this license is to support teaching, scholarship, or research. The purpose of this provision is to enable qualified individuals to legally translate and disseminate important literary works for educational or research purposes, promoting knowledge sharing and academic advancement.

Section 32 provides for a procedure to obtain a license for translating and publishing a literary work. An application must be submitted in a specific and officially designated format. This application must include the proposed retail price for a single copy of the translated work.

Also, when applying for a translation license, the applicant must use the required application form and specify the planned selling price per copy of the translated work.

Section 33 states that an applicant for a license under this section shall pay such fee as may be prescribed by the Commission. This section prescribes that when applying for a translation license, the applicant must pay a fee set by the Commission. It is the Commission that determines the amount of this fee, which is a required part of the application process.

Section 34 expatiates that Commission may grant a non-exclusive license to produce and publish a translation of a work in a specific language, but there are conditions attached.

The first condition is that the applicant must pay royalties to the copyright owner based on the number of copies produced, at a rate determined by the Commission, considering standards for licenses negotiated between Nigerians and international translation rights owners. Secondly, the license only applies within Nigeria, and exporting the translated copies outside the country is not permitted.

Lastly, every copy of the translation must include a notice, in the same language as the translation, stating that it’s only available for distribution within Nigeria.

The rationale behind the conditions is to ensure that the copyright owner’s rights are protected, while also promoting the dissemination of knowledge within Nigeria.

Licensing Under the Trademark Act

The Trade Marks Act defines a trademark as “a mark used or proposed to be used in relation to goods to indicate a connection in the course of trade between the goods and some person having the right either as proprietor or as a registered user to use the mark whether with or without any indication of the identity of the person …”

Section 33 (1) provides that someone other than the owner of a trademark can be registered as an authorized user. This registered user can be authorized for all or some of the goods or services registered under the trademark. The registered user can be authorized without any conditions or restrictions, or with specific conditions or restrictions. It applies only to trademarks registered for actual use (not defensive trademarks). Importantly, the trademark owner can allow others to use their mark, and this usage can be officially recorded and regulated.

Section 33 (2) portrays that a registered user of a trademark is authorized to use the trademark on goods that they deal with in the course of their business. This means that the registered user must have a direct connection to the goods, such as manufacturing, distributing, or selling them.

To qualify as permitted use, two key conditions must be met. First, the trademark must remain registered. Second, the individual or entity using the trademark must be registered as a registered user. When these conditions are fulfilled, the use of the trademark by the registered user is considered “permitted use” under this Act.

Section 33 (3) relates to the purposes of Section 31 of this Act that, any other relevant provisions, the permitted use of a trademark is considered equivalent to the trademark owner’s use. The permitted use of a trademark is deemed to be used by the proprietor (owner) of the trademark.

Moreover, when a registered user makes permitted use of a trademark, the law treats it as if the trademark owner themselves are using it, and not anyone else. The bone of contention is that the permitted use does not compromise the trademark owner’s rights or exclusivity, and the owner remains responsible for the trademark’s use.

Section 33 (4) and section 33 (5) of the Trade Marks Act also address other important issues that surround licensing in Nigeria.

Notable Cases on Assignment and Licensing

There are a plethora of cases in Nigeria that have been decided by competent courts that center on assignment and licensing. These cases include but are not limited to; Blaire v Osborne & Tomkins, Adenuga v Ilesanmi Press & Sons (Nig) Ltd and Beloff v Pressdram.

Conclusion

Assignment under Nigeria’s Copyright and Trademark Acts enables creators and trademark owners to transfer their rights to others, promoting collaboration and commercialization of intellectual property. Understanding the types, requirements, effects, and termination conditions of these assignments is crucial for navigating the intellectual property landscape in Nigeria.

References

Nigerian Trade Marks Act, Cap T13, Laws of the Federation of Nigeria 2004 (TMA)

Nigerian Copyright Act, Federal Republic of Nigeria Official Gazette, No 56, Vol 110

Udo Udoma & Belo-Osagie, Q & A: Copyright ownership and transfer in Nigeria, Accessed, September 30, 2024, Retrieved from: here

Olumide Osundolure, Temilola Muyiwa-Ajayi, Kelvin Isibor (Contributors), Copyright Laws and Regulations in Nigeria, 2024, Published on October 19, 2023, Accessed, September 30, 2024, Retrieved from: here

Banwo Ighodalo, Trademark Licensing in Nigeria, Published Wednesday, May 5, 2021, Accessed October 1, 2024, Retrieved from: here

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