Musical Copyright Society Of Nigeria Limited/gte V. Compact Disc Technology Limited & Ors (2018)
LAWGLOBAL HUB Lead Judgment Report
MARY UKAEGO PETER-ODILI, J.S.C.
This is an appeal stemming from the decision of the Court of Appeal or Court below or Lower Court, Lagos Division, Coram: Ibrahim Mohammed Musa Saulawa, Paul Adamu Galinje and Regina Obiageli Nwodo JJCA which allowed the appeal of the respondents over the decision of the trial High Court per J E. Shekarho J. which Ruling was set aside by the Court below hence the recourse to the Supreme Court in a Notice of Appeal set out in page 424-429 of the Record of Appeal.
The appellant was the plaintiff in the trial High Court in a suit initiated with a Writ of Summons dated the 2nd August, 2007 in an action against the now respondents as defendants in the Court of trial. The reliefs of the plaintiff are set down hereunder and thus: –
a) A declaration that the acts of the defendants without authority or permission of the plaintiff of importing, recording, reproducing, distributing, offering for sale, communicating to the public or publicly performing or playing the said musical works on audio and video devices such as tapes or video compact disc and/or
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similar devices at its stores in an infringement of the plaintiffs copyright as guaranteed by the Copyright Act 1988 as amended.
b) An order of perpetual injunction restraining the defendants by themselves, assigns, agents and servants from the further importing, reproducing, distributing, offering for sale, publicly performing/ playing and communicating to the public any of the said works or any works for that matter from the plaintiffs repertoire without the plaintiffs authorization or permission.
c) An order of perpetual injunction directing the defendants jointly or severally whether themselves assigns, agents and servants or howsoever from further infringing or continuing to infringe the copyright in the audio or audio visual musical works contained in the plaintiffs repertoire.
d) An order for delivery up to the plaintiff of all copies of said musical works on Audio and video devices such a tapes, video compact disc and or similar devices of musical works listed in paragraphs 11, 12 and 15 of the Statement of Claim.
e) Special damages in the sum of N250,000,000.00.
f) General damages in the sum of N100,000,000.00.
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The defendants/respondents filed their statement of defence dated the 29th of October, 2007 (pages 261-276 of the records) challenging the locus standi of the plaintiff/appellant particularly in paragraph 6 which states:-
“the defendants would at or before the hearing of this suit move this Honourable Court to strike out this suit on the further ground that the objects under which the plaintiff is incorporated under the Nigerian law, which is the basis of the claim in this suit, requires the plaintiff to have a valid and subsisting collecting society’s license, to wit, the plaintiff does not possess the valid and subsisting collecting society’s license at the time of the institution of this suit.”
The respondents/defendants filed a motion on notice by way of preliminary objection dated the 6th of February, 2008 (pages 281-287 of the records of appeal) seeking the following reliefs: –
a. An order dismissing the suit on the ground that the plaintiff/respondent as an alleged owner, assignee and exclusive licensee lacks the locus standi, under Section 15 (a) and Section 32 of the Copyright Act as amended 1999 to commence and plead the relief sought in the suit
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AND FOR SUCH FURTHER ORDER or other order as this Honourable Court may deem fit to make in the circumstance of this matter.The learned trial judge dismissed the motion on notice and the respondents being dissatisfied with the decision of the trial Court appealed to the Court of Appeal which in turn set aside the decision of the trial Court and the appellant aggrieved has approached this Court.On the 2nd day of October, 2018 date of hearing learned counsel for the appellant D. A. Awosika Esq. adopted the appellant’s further amended brief of argument filed on 6/12/17 and deemed filed on 10/1/18 and a reply brief filed on 21/6/17. Learned counsel for the appellant further relied on a judgment of the Supreme Court of 13th July 2018 in SC/336/2008, Adeokin Records & Anor v Musical Copyright Society of Nigeria (Ltd/Gte) which certified copy was filed in as additional authority.
In the brief of argument of the appellant identified a single issue, viz: –
Whether or not by virtue of the provisions of Section 16 (1), 17, 19 and 39 (1) & (3) of the Copyright Act Cap C.28, Laws of the Federation of Nigeria 2004, the appellant can lawfully commence infringement
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proceedings against the respondents in respect of the musical works and related audio visual available and broadcast within the territory of the Federal Republic of Nigeria (as distilled from the grounds of appeal).
The respondents were absent and not represented by counsel on the day of hearing and since they were duly served, the Court took as argued the respondents’ amended brief settled by Ehijeagbon O. Oserogho Esq.
Learned counsel for the respondents had raised two issues for determination which are as follows: –
- Whether the appellant can for the first time, before this Court, without the prior leave of this Court, canvass any retrospective copyrights.
- Whether a Copyright owner, assignee and exclusive license, engaged in negotiating and granting copyright licences to third parties requires as a condition precedent, a collecting society’s licence as statutorily required by the provisions of Sections 17 and 39 of the Copyright Act, Chapter C.28, Laws of the Federal Republic of Nigeria before originating a copyright infringement suit before a Court of Law.
For ease of reference and convenience, I shall utilize the
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issue as crafted by the appellant in the determination of this appeal.
SOLE ISSUE:
Whether or not by virtue of the provisions of Sections 16 (1), 17, 19 and 39 (1) & (3) of the Copyright Act Cap C.28, Laws of the Federation of Nigeria 2004 the appellant can lawfully commence infringement proceedings against the respondents in respect of the musical works and related audio visual available and broadcast within the territory of the Federal Republic of Nigeria.
It was contended by the appellant that it is without contest that copyright is a property right exercisable over certain types of intangible/memorable property and so a person having a legal right over such property is entitled to enforce his right in accordance with the laid down principles of law contained in the Copyright Act Cap C.28 Laws of the Federation of Nigeria 2004 and so secured under Section 44 of the 1999 Constitution of the Federal Republic of Nigeria.
That what is required in tackling the issue on ground is the in-depth interpretation of Sections 6 (1), 8 (1) & (2), 10, 11, 16, 17 and 39 of the Copyright Act.
Learned counsel for the appellant submitted
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that the Act recognises five categories of persons who can institute an action for copyright infringement either in a personal or representative capacity. He cited M.C.S.N. v Ade Okin Records (2007) 13 NWLR (Pt.1052) 630-631. That persons recognized are, an owner, assignee and exclusive Licensee of Copyright in a work by virtue of Section 16 of the Act, as person carrying on the business of negotiating, granting of licenses, collection and distribution of royalties for not more than 50 owners of copyright in any category of works protected by the Act by virtue of Section 17 of the Act and as association of copyright owners (collecting society) which may be formed upon the satisfaction of the conditions provided in Section 39 of the Act.
He stated on for the appellant that it can be said that the right to sue is exercisable either jointly or severally by any one or more of the categories of persons so listed. That the rights conferred under Sections 16, 17 and 39 of the Copyright Act automatically create the capacity a person acts and as such an owner, assignee and Exclusive Licensee acts in a personal capacity while a person under
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Sections 17 and 39 acts in a representative capacity. That being the case, whilst the latter capacity requires a licence or exemption, the former is not so required in order to exercise its rights.
Further canvassed for the appellant is that the appellant is not a collecting society but an owner, exclusive licensee and an assignee of copyright in works sought to be protected. That this Court has been shown by the exhibits and correspondences exchanged between the appellant and the respondents in the record of appeal that the appellant exercised the statutory preliminary step required before it can fully invoke the rights conferred upon it under Sections 6 and 16 of the Copyright Act 2010 to seek remedy for the infringement of copyright in the musical works contained in the appellant’s repertoire as owner, assignee and exclusive licensee, hence it neither acts as a person envisaged under Section 39 (8) of the Act because it is neither a business entity nor acting in a representative capacity for the benefit of copyright owners.
Learned counsel, Mr. Awosika contended that the Copyright (Amendment) Decree NO 42 of 1999 which introduced
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Section 15A (now 17) is not retrospective which specifically stated its commencement date to be 10th of May, 1999. He referred to Afolabi v Governor of Oyo State (1985) 16 NSCC (Pt.2) Vol.16, page 11512; Ojokolobo & Ors v Alamu & Ors (1987) 2 NSCC 991; Adesanoye v Adewole (2006) 14 NWLR (Pt.1000) 242; Afolabi v Governor of Oyo State (1985) 2 NWLR (Pt.9) 734 at 769, 783.
In response, learned counsel for the respondents, Ehijeagbon Oserogho Esq. submitted that the appellant’s arguments canvassed about the retrospective rights of the appellant before Sections 17 and 39 of the Copyright Act came into effect were not raised by the appellant at the Federal High Court or the Court below or in the notice of Appeal before this Court and so cannot be raised in the appellant’s brief for the first time without prior leave of Court. He relied on Order 6 Rule 5 (1) (b) and (c) and Order 8 Rule 2 (5) of the Supreme Court Rules (as amended in 2014); Kosile v Folarin (1989) 4 SC (Pt.1) 150 at 165; Agu v Ikewibe (1991) 4 SC 1 at 10-11.
For the respondents it was submitted that it is the statement of claim filed by a plaintiff or claimant that determines
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whether or not a Court of law has the jurisdiction or authority to hear action in a law suit. Also that parties to a suit are bound by the pleadings filed at the Lower Courts. Again to be said is that it is the statute in force at the time the cause of action arose that applies in the determination of the suit filed. He cited Tukur v Government of Gongola State (1989) 9 SC 1 at 37; Magaji v Matari (2000) 5 SC 46 at 57; Agu v Ikewibe (1991) 4 SC 1 at 21; Madukolu v Nkemdilim (1962) All NLR 587.
For the respondents, it was contended that the claim of the appellant at the Federal High Court was filed on 2nd August 2007 while the alleged infringement complained of occurred in 2006 and so the Copyright Act applicable is that of 2006 and 2007. He cited HDP v Obi & 5 Ors (2011) 12 SC (Pt.11) 162 at 182 & 183.
That from the appellant’s pleadings, the appellant is a registered association, limited by guarantee with the principal objective of negotiating and granting licences and distributing royalties to its members, who are the actual owners of the copyrights to their original works and so appellant is a collecting society by the provisions of Section 39 (8) of the Copyright Act.
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He relied on Amadi v NNPC (2000) 6 SC (Pt.1) 66 at 92 and 100.
Learned counsel for the respondent concluded by urging the Court to uphold the decision of the Court of Appeal and dismiss the appeal.
On reply on points of law, learned counsel for the appellant stated that the arguments of the respondent raising an objection not based on grounds of appeal go to no issue. He cited Management Enterprises Ltd v Otusanya (1987) 2 NWLR (Pt.55) 179; Onifade v Olayiwola (1990) 7 NWLR (Pt.161) 130; Momodu v Momoh (1991) 1 NWLR (Pt,169) 608.
That leave of Court is not required to raise a substantial point of law in support of the appellant’s submission that the Copyright Act 2004 was not made to have retroactive effect and that in respect of vested right in its repertoire, Sections 17 and 39 do not apply to the appellant being owner, assignee or exclusive licencee of the vested right before the amendment in question. He cited W. T. Ejuetami v Mrs. Benedicts Olaiya (2001) LPELR-1072; Emmanuel Oseloka Araka v Ambrose Nwankwo Ejeagwu (2000) LPELR-533; (2000) 12 SC (Pt.1) 99.
The summary of the bone of contention between the parties
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is that the appellant as plaintiff claimed an infringement of its copyright while the respondents as defendants entered a conditional appearance and a statement of defence with counter claim contending that the appellant had not fulfilled a mandatory condition precedent before instituting the subject law suit. That for the appellant to initiate the cause of action at that time, it must possess a valid and subsisting collecting Society’s Licence issued by the Nigerian Copyright Commission (NCC).
The Federal High Court ruled dismissing the defendant’s objection holding that the plaintiff/now appellant has the locus standi to institute the action as an owner, assignee or an exclusive licensee of the copyright in compliance with the Provisions of Section 15 (1) of the Copyright Act.
Aggrieved, the defendants/now respondents approached the Court of Appeal which set aside the decision of the trial Court, holding that the appellants non-adherence to the condition precedent for bringing a copyright infringement law should under the Copyright Act temporarily deprive the appellant of the locus standi to institute and prosecute this
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suit, the decision that propelled the present appeal to the Supreme Court.
In determining which of the two Courts below was on the right track, a reference to the relevant constitutional and statutory provisions would be helpful to bring to light what really should be the proper position.
Section 44 of the 1999 Constitution of the Federal Republic of Nigeria stipulates thus: –
Section 44:
“No movable property or any interest in an immovable property shall be taken possession of compulsorily and no right over or interest in such property shall be acquired compulsorily in any part of Nigeria except in the manner prescribed by law”.
Section 6 (1) and 8 (1) & (2) of the Copyright Act provides as follows: –
6 (1):
“Subject to the exceptions specified in the second schedule to this Act, Copyright in a work shall be the exclusive right to control the doing in Nigeria of any of the following acts, that is:
In the case of a literary or artist work, to do and authorize the doing of any of the following acts –
i. Reproduce the work in any material form;
ii. Publish a work;
iii. Perform in public;
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Produce, re-produce, perform or publish any translation of the work;
v. Make any cinematograph film or a record in respect of the work;
vi. Distribute to the public, for commercial purposes, copies of the work, by way of rental, lease, hire, loan or similar arrangement;
vii. Broadcast or communicate the work to the public by a loudspeaker or any similar device;
viii. Make adaptation of the work;
ix. Do in relation to any translation or an adaptation of the work, any of the acts specified in relation to the work in sub paragraphs (i) to (vii) of this paragraph”.
Section 8 (1) and (2) of the Copyright Act further provides that: –
“(1) Subject to this section, copyright in a broadcast shall be the exclusive right to control the doing in Nigeria of any of the following acts, that is –
i. The recording and re-broadcasting of the whole or a substantial part of a television broadcast;
ii. The communication to the public of a whole or substantive part of a television broadcast either in its original form or in any form recognizably derived from the original; and
iii. The distribution to the public, for commercial
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purposes, of copies of the work by way of rental, lease, hire, loan or similar arrangement
(2) The copyright in a television broadcast shall include the right to control the taking of still photographs from the broadcast”.
However, in respect of first ownership of Copyright, Section 10 (1), (2) and (3) of the Copyright Act provides as follows: –
“(1) Copyright conferred by Sections 2 and 3 of the Act shall vest initially in the author.
(2) Notwithstanding Sub-section 6 of Section 11 of this Act where a work –
a) Is commissioned by a person who is not the author’s employee under a contract of service or apprenticeship; or
b) Not having been so commissioned, is made in the course of the author’s employment,
(3) Where a literary, artistic or musical work is made by the author in the course of his employment by the proprietor of a newspaper, magazine or similar periodical under a contract of service or apprenticeship as is so made for the purpose of publication in a newspaper, magazine or similar periodical, the said proprietor shall in absence of any agreement to the contrary, be first owner of copyright
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in the work in so far as the copyright relates to the publication of the work in any newspaper, magazine or similar periodical, or to the reproduction of the work for the purpose of its being so published, but in all other respects, the author shall be the first owner of copyright in the work”.
In relation to assignment and license of Copyright, Section 11 (1) and (3) of the Copyright Act also provides that:
“(1) Subject to the provisions of this Act, Copyright shall be transmissible by Assignment, by testamentary disposition, or by operation of the law, as movable property.
(3) No assignment of Copyright and no exclusive license to do an act, the doing of which is controlled by Copyright, shall have effect unless it is in writing”.
On the question of who can institute an action for infringement of Copyright, Section 16 (1) of the Act provides to the effect that:
“Subject to this Act, infringement of copyright shall be actionable at the suit of the owner, assignee or an exclusive licencee as the case may be in the Federal High Court exercising jurisdiction in the place where the infringement occurred, and in any action for such
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infringement, all such relief by way of damages, injunction, accounts or otherwise shall be available to the plaintiff as it is available in any corresponding proceedings in respect of infringement of other proprietary rights”.
On the issue of limitation as to the right of action for Copyright infringement, Section 17 of the Act provides that:
“Notwithstanding the provisions of this Act or any other law, no action for infringement of copyright or any right under this Act shall be commenced or maintained by any person –
a) Carrying on the business of negotiating and granting of licence;
b) Collecting and distribution royalties in respect of Copyright works or representing more than fifty owners of copyright in any category or works protected by this Act;
Unless it is approved under Section 39 of this Act to operate as a Collecting Society or is otherwise issued a certificate of exemption by the Commission”.
In relation to the status of a Collecting Society, Section 39 of the Act provides that:
“(1) A Collecting Society may be formed in respect of any one or more rights of Copyright owners for the benefit of such owners and the society may apply to
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the Commission for approval to operate as a Collecting Society for the purpose of this Act.
(2) The Commission may approve of a Society if it is satisfied that;
a) It is incorporated as a Company Limited by Guarantee;
b) Its objects are to carry out the general duty of negotiating and granting copyright licence and collecting royalties on behalf of copyright owners and distributing same to them;
c) It represents the substantial numbers of owners of copyright in any category of works protected by this Act, in this paragraph of this subsection, ‘Owners of Copyright’ includes owners of performer’s rights;
d) It complies with the terms and conditions prescribed by regulations made by the Commission under this section”.
In defining a Collecting Society, Section 39 (8) of the Act defines same as:
“An association of Copyright owners which has as its principal objectives the negotiating and granting of licences, Collecting and distributing of royalties in respect of Copyright works”.
A Community interpretation of Sections 10, 11, 16, 17 and 39 of the Copyright Act acknowledges five categories of
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persons who can institute or commence an action relating to infringement of copyright either personally or in a representative capacity.
The persons so recognized are an owner, assignee and exclusive licensee of copyright in a work by virtue of Section 16 of the Act, also a person carrying on the business of negotiating, granting of licences, collection and distribution of royalties for not more than fifty (50) owners of copyright in any category of works protected by the Act by virtue of Section 17 of the Act and an association of copyright owners (collecting society) which may be formed upon the satisfaction of the conditions provided in Section 39 of the Act. It follows that an appropriate construction of the provisions so shown above, it is right to say that the right to sue is exercisable either jointly or severally by any one or more of the categories of persons so listed. In the same vein the rights conferred under Sections 16, 17 and 39 of the Copyright Act for such created the capacity a person act and so an owner, assignee and exclusive licensee acts in a personal capacity while a person under Sections 17 and 39 acts in a representative capacity. The implication is that
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the latter capacity requires a licence or exemption, the former is not so required in order to have the rights exercised.
The definition of assignment of copyright and exclusive licence is well stated in Halsbury’s Laws of England, 4th Edition, 2006 re-issue Lexis/Nexis Butterworth on page 122, paragraph 166 thus: –
“A legal assignment of Copyright or any part of it, vests the rights assigned the assignee so that he becomes the owner and may take proceedings against persons who infringe or who have infringed it”.
In the same vein my Lords, its paragraph 176 states in relation to an Exclusive Licensee that:
“An Exclusive Licence means a licence in writing signed by or on behalf of the Copyright owner, authorizing the license to the exclusion of all other persons including the person granting the license to exercise a right which would otherwise be exercisable exclusively by the copyright owner.
The licensee under an exclusive Licence has the same rights against a successor in title who is bound by the Licence as he has against the person granting the Licence. An Exclusive licencee may bring proceedings
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for infringement in the same way as an assignee”.
The Copyright Act in Section 6 in describing the exclusivity of right conferred states that:
“…Copyright in a work shall be the exclusive right to control the doing in Nigeria of any of the following act”
Black’s Law Dictionary 9th Edition Bryan A Garner page 1215 defines ownership rights thus: –
” the right to possess a thing, regardless of any actual or constructive control. Ownership rights are general, permanent and heritable”.
At page 388 of the same Black’s Law Dictionary Copyright owner is defined to be thus: –
“One who holds an exclusive right or rights to copyrighted material”.
I am in agreement with the submission of learned counsel for the appellant, that Copyright (Amendment) Decree NO:42 of 1999 which introduced Section 15A (now 17) is not retrospective. In fact, the Decree specifically stated its commencement date to be 10th of May, 1999. Based on the above, I am of the humble opinion that since the law makers have specifically stated that commencement date for the decree to be 10th May, 1999, it is clear that the law maker never intended the decree to have a retrospective
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effect. We rely on and adopt the statement of the law in the case of Afolabi v Governor of Oyo State (1985) 16 NSCC (Pt.2) Vol.16, page 11512 as follows: –
“A law is said to have retrospective effect when the commencement date is earlier in point of time than the date of commencement, for example, Tribunal of Inquiry (Validation etc) Decree NO.18 of 1977 which was considered by this Court in the case of Uwaifo v A.G. Bendel State & Ors (1982) 13 NSCC 221 at 232, was dated the 18th day of March, 1977 but therein stated specifically that it shall be “deemed to have come into effect on 29th July, 1975”.
Indeed the commencement of the Copyright (Amendment) Decree NO:42 of 1999 was clearly provided for to be 10th May, 1999 which is not earlier than 1986 and 1990 when the exclusive rights in the copyright works were transferred to the appellant. The issue therefore raised on retrospectivity of the Act can be said to have been settled by this Court as seen in the case of Ojokolobo & Ors v Alamu & Ors (1987) 2 NSCC 991 wherein it was held per Karibi-Whyte,JSC thus: “the presumption of retrospective is displaced by the
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provisions of a commencement date which is a future date”.
A reiteration of the situation is further captured in Adesanoye v Adewole (2006) 14 NWLR (Pt.1000) page 242 and Afolabi v Governor of Oyo State (1985) 2 NWLR (Pt.9) page 734 where Eso JSC at page 769 paragraph C-D held thus:-
“It is a fundamental principle of English Law (I make bold to say – also of our law) that no statute shall be construed to have a retrospective operation unless such a construction appears very clearly in the terms of the Act… Even where it appears as in Decree NO. 2 of 1984 – the society for whose welfare law is made criticizes it as the law of the tyrant”.
Oputa, JSC in the same case at page 783 held thus:
“Coming to the policy of the Court, the consensus of judicial opinion is that the Courts lean against so interpreting an Act or law as to deprive a party of an accrued right. Perhaps no rule of construction is more firmly established than this, that a retrospective operation is not to be given to a statute as to impair an existing right or obligation”.
In fact, the learned counsel for the appellant has referred this Court to the earlier recent case before this Court
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in Adeokin Records & Anor v Musical Copyright Society of Nigeria (Ltd/GTE) delivered on the 13th July 2018 which lead judgment was delivered by Ejembi Eko, JSC, which settled the questions right before this Court now. That decision impels this Court to hold that the exclusive licence of the copyright musical works which forms the basis of the suit at the trial Court was transferred to the appellant since 1986 and 1990 respectively while the provisions of the Copyright Act, 2004 came into force on the 10th day of May, 1999 and so the same cannot be said to affect the rights already transferred long before its commencement date.
Therefore, just as this Court held in Adeokin Records & Anor v Musical Copyright Society of Nigeria (supra) on 13/7/18 the matter is properly before the trial Federal High Court and since the Court of Appeal went outside the clear situation, this Court is best suited to intervene and hold that the position taken by the Court below is not the proper stand as supported by the facts on ground in con with the necessary statutory provisions. The conclusion is that the appeal is allowed and decision of the Court of Appeal set
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aside with the restoration of the decision of the trial High Court. It follows that the matter is remitted to the Chief Judge of the Federal High Court for assignment to a Judge to have the matter determined on its merits expeditiously.
Appeal allowed. Parties to bear own costs.
SC.425/2010
