creative artist and CEO of Bright Prints Media, a new startup that specializes
in 2D & 3D arts and textile prints in Osun State.
Two months ago, I was contracted by Segun Saka, a staunch supporter of a
governorship aspirant in the state to design and make materials for the purpose
of boosting the aspirant’s electoral campaign. According to Mr Saka, this
design would be a customized Ankara with blue, green, and yellow colour themes,
having the portrait of the aspirant in black and white, with a stripe around
the circle bearing the party motto above the portrait and the candidate’s name
below it. This design is a popular concept used in Nigerian political,
religious, and traditional events.My company made over 100,000 yards of the
textile to the specification and delight of our client. As campaigns
intensified with each passing day, we printed more textiles for our
clients.
But on 27 July, my company received a court process demanding our appearance
before the High Court of Osun State. Pink Media, a reputable print-media
company in Lagos, is claiming 10 million naira damages against Bright Prints
Media for allegedly infringing on their copyright in the design we used for Mr
Saka. Pink Media also wants an injunction to stop Pink Media from continuing to
print the Ankara materials.
After a quick check, we discovered that another supporter of the governorship
aspirant had contracted Pink Media to make customized wax-print. The picture on
their design and colour theme is quite similar to ours. They had completed and
delivered theirs before ours. But we honestly did not know about their design
before we started ours. Is there anything we can do? We are in despair as 10
million naira damages would damage our business.
want to know if your design infringes Pink Media’s ‘copyright’ in the Ankara
design. The answer is NO. Your design in the textile material does not infringe
on Pink Media’s ‘copyright’.
This is because though your work is an artistic work under section 1(1)(c) of
the Nigerian Copyright Act, section 1(3) provides that an “artistic work shall
not be eligible for copyright, if at the time when the work is made, it is
intended by the author to be used as a model or pattern to be multiplied by any
industrial process.”
So there is no copyright to infringe on.
Since Pink Media’s design—just as yours—is “used as a model or pattern to be
multiplied by any industrial process”, it is not protectable as copyright but
industrial design.
Section 12 of the Patents and Designs Act is the relevant law. It provides that
“any combination of lines or colours or both, and any three-dimensional form,
whether or not associated with colours, is an industrial design, if it is
intended by the creator to be used as a model or pattern to be multiplied by
industrial process and is not intended solely to obtain a technical result.”
And unlike copyright which exists in a work once it is created, industrial
designs have to be registered. To be registered, section 13 (1) of the Act
requires that (a) the design is new; and (b) it is not contrary to public order
or morality.
Therefore, for Pink Media to be successful in its action, it would have to
register its design with the Trademarks, Patents and Designs Registry (if it
has not already registered the design). But since—as you have mentioned—the
design is a popular concept used for different social events in the country, it
may not be regarded as new anymore.
Always endeavour to survey the design market before deciding to use any
design or pattern already in use in the public.
‘popular concept’ is not the same as a public-domain design. If Pink Media had
registered the design as an industrial design, the story would have been
different, putting your business on the line. Always check, and check again.
By the way, the court vested with jurisdiction to hear the matter is the
Federal High Court, not the High Court of Osun State.
both the Nigerian Copyright Act, and Patent and Industrial Designs Act,
jurisdiction over intellectual-property matters is vested in the Federal High
Court—section 38 Copyright Act; section 26 Patents and Industrial Designs Act.
So do not despair as sometimes the difference between despair and hope is just
a different way of telling stories from the same set of facts. To properly
respond to Pink Media’s claims before the High Court of Osun State, please
consult an IP lawyer or law firm.
Best
wishes
ABC
questions, if any, are welcomed.