Possible Impact of the COVID-19 Pandemic on IP Protection in Nigeria – Bisola Scott

Possible Impact of the COVID-19 Pandemic on IP Protection in Nigeria – Bisola Scott

Following the lockdown order
issued by the President of the Federal Republic of Nigeria in Lagos, Abuja and
Ogun States to combat the spread of COVID-19 pandemic, businesses and offices
including intellectual property offices and courts in these jurisdictions have
been mandated to substantially suspend operations. It is no longer business as
usual and it is expected that this event will impact the protection and
enforcement of intellectual property rights such as copyrights, trade secrets,
trademarks, patents, and industrial designs in Nigeria in various ways. The major
IP protection system likely to be affected include the IP registration and
enforcement systems highlighted below.

IP Registration System

One of the methods of
protecting rights to inventions, industrial designs and trademarks in Nigeria
is through the registration process.[2] Owners of these rights may
experience challenges in prosecuting applications for registration and renewal
at the Trade Marks, Patents & Designs Registry (Registry), and complying
with timelines for performing obligations stipulated in the Trade Marks Act[3] (TMA) and Patents & Designs Act[4] (PDA) during the lockdown period and
after the lockdown is lifted. Copyright and trade secrets protection may not be
affected under the registration system as rights holders do not require
registration or periodic renewals to maintain rights over them.[5] However, the Nigerian Copyright
Commission (Commission) established a voluntary electronic database
for owners of copyrights to notify the Commission of their creations in
order to maintain an effective archive of local copyrighted works.[6] Although the Registry and Commission
are closed, they both have online platforms for registration which IP owners
may utilize this season.[7] Some of the possible effects of the
closure of IP offices include a reduction in the number of IP applications
filed at the Registry, delays in registration of IP rights and extension of the
deadlines stipulated in the TMA & PDA.

  Reduction in IP Applications

There is likely to be a
reduction in the number of trademark, patent and design applications for
registration, renewal, and recordation filed at the Registry and applications
for lodging copyright notifications at the Commission due to depletion in
economic activities.[8] Despite the presence of an online
platform, the Registry and Commission may receive fewer applications this
period and it is not certain that these applications will be attended to due to
closure of the offices, where further administrative steps are required.

       Extension of deadlines

Deadlines for filing
applications or doing any act stipulated in the TMA and PDA may require
adjustments as it may be impossible for IP owners/applicants to comply with the
applicable timelines especially if this falls within the lockdown period.
According to the Trade Mark Regulations (Regulation),[9] where deadlines for doing any
particular act stipulated in the TMA or the Regulation falls on a day the
Registry is not open, it will be lawful for any person to do such act on the
first day the Registry reopens its office.[10] Based on this provision, it should
be lawful for IP owners/applicants to file applications for
registration/renewal, or do any other act required by the TMA or the Regulation
on the day the Trade Marks Registry resumes operations. The Regulation also
stipulates that the Registrar may grant an extension of time for doing any act
if the time for doing the act is not stipulated in the TMA and not prescribed
by Regulation 78 or 81.[11] The Registrar must also be
satisfied that the circumstances justify an extension of the time for
compliance.[12] Hence, an extension of time may
only be granted by the Registrar for performing acts stipulated in the
Regulation except acts stipulated in Regulation 78 or 81 of the Regulation,
where the time for doing the acts is not expressly contained in the TMA.[13]

For designs, an applicant
may apply for an extension of time where an application for registration of a
design is not completed within twelve months of the date of filing which may be
rejected if the applicant does not submit an application for extension of time.[14] The Registrar
may allow such extensions subject to any conditions
he may impose.[15] Furthermore, an application for
registration will be rejected if it is not completed within fifteen months from
the date of filing due to the default of the applicant.[16]  Although the PDA stipulates
that a patent shall lapse if the prescribed annual fees are not duly paid, it
gives a grace period of six months within which the annual fees may be made, if
the fees and any prescribed surcharge are paid within that period.[17]

In addition to the grace
periods mentioned above for applicants to comply with stipulated timelines, it
may be necessary for the Registrar of Trade Marks and Registrar of Patents and
Designs to extend deadlines provided for doing required acts, or stay all
deadlines pending when the lockdown order has been lifted. Some IP offices in
other jurisdictions have extended deadlines for filing trademark documents. For
instance, the United States Patent and Trademark Office (USPTO) has extended
the time within which certain trademark-related documents may be filed. [18] The Director of the USPTO stated
that persons that are unable to meet trademark-related deadlines due to the
COVID-19 outbreak would be granted a 30-day extension for deadlines that fall
between 27th March and 30th April 2020.[19] The Italian Patent and Trademark
Office has also provided a stay of all official deadlines falling within 9th March
and 3rd April 2020.[20] Similarly, the UK Intellectual
Property Office (UKIPO) stated that it will extend deadlines where national and
international legislation allows.[21] The UKIPO also mentioned that where
a deadline has been missed, which results in a loss of rights, they may be able
to restore or reinstate the right depending on the circumstances of each case.[22]

       Delay in Processing Registration

After the pandemic, the
registry may experience delays in processing applications due to backlogs of
applications accrued during the pandemic and influx of new applications after
the pandemic. In light of this, it may be imperative for IP owners to leverage
alternative modes of protecting their IP rights during the pendency of their
applications at the Registry.[23]

IP Enforcement System

IP Rights may be enforced
through the court system by instituting actions for infringement including
passing-off and misappropriation of trade secret actions at the Federal High
Court (FHC).[24] IP rights may also be enforced by
appealing the decision of the Registrar of Trade Marks, at the FHC via an
action for judicial review. Furthermore, trademark rights may also be enforced
through opposition proceedings which are heard by the Registrar of Trade Marks.
Some of the possible effects of the pandemic on the local IP enforcement system
include adjournment of existing matters, extension of deadlines for filing
actions/appeals, and delays in court/opposition proceedings and hearings.

  Adjournment of existing matters and Extension of deadlines for filing

Court proceedings may be
affected due to the COVID-19 pandemic as court sittings have been suspended and
only court matters that are urgent, essential or time-bound according to our
extant law can be heard, in line with the Chief Justice of Nigeria’s circular.[25] Due to this, parties involved in IP
disputes or who intend to commence an action or appeal at the FHC may not be
able to institute such actions at this time and meet the deadline for
instituting such actions and appealing the decision of the Registrar of Trade
Marks, at the FHC via an action for judicial review. For instance, Order 53
Rule 2 (2) of the Federal High Court (Civil Procedure) Rules 2019 stipulates
that a notice of motion by which an appeal is brought shall be entered
within (30) days after the date of the order, determination or other decision
against which the appeal is brought.  
Where the 30-day limitation
period falls within the lockdown period, it may be impossible for an appellant
to institute such action within time. In view of this, the Chief Justice of
Nigeria is expected to issue a further directive on compliance with prescribed
timelines for filing processes and institution of actions, and issuance of new
hearing dates.[26]

In addition to its
administrative duties, the Registrar of Trade Marks also performs
quasi-judicial duties. The Trade Marks Registry provides a forum for IP rights
holders or interested parties to contest the ownership of trademarks under
consideration through the opposition process. The outcome of an opposition
determines whether a trademark will be registered.

The TMA and Regulation
provide timelines within which opposition processes should be filed at the
Registry. According to the TMA, after a Trade Marks Journal has been published,
any person (opponent) may give a notice of opposition to the Registrar within
two-months from the date the journal was published, after which an applicant is
required to respond with a counterstatement within one month after the date on
which the copy of the notice of opposition is received.[27] If the applicant does not file a
counterstatement, it will be taken that the applicant has abandoned its
application.[28] Upon receipt of a counterstatement
by the opponent, the opponent is required to leave with the Registrar evidence
by way of statutory declaration in support of such opposition as initiated.[29] If an opponent leaves no evidence,
then unless the Registrar directs otherwise the opponent shall be deemed to have
abandoned the opposition.[30] Where the opponent leaves evidence,
the applicant is also required to leave with the Registrar such evidence by way
of statutory declaration within one month from the receipt of the copies of
opponent’s declarations.[31] Based on Regulation 105 of the
Regulation, where the Registry is not open on the day a process should be
filed, the processes may be filed on the first day following the excluded day
which in this case would be after the lockdown order has been revoked. Such
affected person may also apply for an extension of time to file its statutory
declaration only, as an extension of time may only be granted where the period
given for doing an act is not contained in the TMA. The period within which a
statutory declaration should be filed is not contained in the TMA but it is
stipulated in the Regulation. However, the decision of whether parties may
apply for an extension of time to file opposition processes after the pandemic
may be subject to the directive of the Registrar. The power of the Registrar to
extend time is also buttressed in Regulation 52 which provides that if an
opponent does not file a statutory declaration, he shall, unless the Registrar
otherwise directs, be deemed to have abandoned his application. In Nabisco
Inc. v. Allied Biscuits Company Ltd
[32] the Supreme Court held that where
an opponent as in this case failed to file a statutory declaration as provided
in Regulation 51, by virtue of Regulation 52, he is deemed to have abandoned
his opposition unless the Registrar otherwise directs. 
The Supreme
Court further held that although the order of the Registrar is badly and
inelegantly worded, it was in exercise of the discretion conferred on him by
Regulation 52.

Considering the
impossibility of hearing opposition matters, it may be necessary for the
Registry to issue new dates for hearing matters that had been scheduled to be
heard during the lockdown, as well as time prescribed by the Act for initiating

       Delay in Court and Opposition Proceedings

There are likely to be
delays in hearing court and opposition matters due to suspension of court
sitting and opposition matters. The FHC may experience challenges in hearing
both the old and new matters expeditiously considering the current heavy
workload of the court. Matters which should have been instituted during the
lockdown period will now be filed after the lockdown order has been revoked.
There is an urgent need for the Nigerian justice delivery sector, including the
Trade Marks Registry, to consider adoption of virtual hearings which could also
be utilized during unforeseen incidents such as the COVID-19 pandemic.


Although courts in other
jurisdictions have suspended oral hearings, some have adopted the use of
virtual hearings during this crisis. The UK Supreme Court and Judicial
Committee of the Privy Council will hear all matters and deliver judgments
through video conferencing.[33] Similarly, in Kenya pending
judgments and rulings would be delivered via Skye and by emails.[34] The COVID-19 pandemic will certainly
impact the registration and enforcement system for protecting IP rights in
Nigeria and IP offices including courts may be required to come up with
measures to ameliorate the effect on the system. In view of this, it may be
expedient for IP owners to explore alternative modes of acquiring rights over
their intellectual property and alternative dispute resolution mechanisms for
enforcing their rights post COVID-19.



For further information on
this article and area of law, please contact Bisola Scott at:

S. P. A. Ajibade & Co.,
Lagos by telephone (+234.1.460.5091, 460.5092),

Mobile (+234.817.939.0319;
+234.811.389. 8102) or

Email (bscott@spaajibade.com)


[1]       Bisola
Scott, Associate Intellectual Property & Technology Department, SPA Ajibade
& Co., Lagos, NIGERIA.

In addition to registration, trademarks may also be protected through use. See
section 7 Trade Marks Act Trade Marks Act Cap T 13, Laws of the Federation of
Nigeria 2004. Inventions may also be protected as trade secrets and copyright.

Cap T 13, Laws of the Federation of Nigeria 2004 (TMA).

Cap. P2, Laws of the Federation of Nigeria 2004 (PDA).

There is no statutory requirement for registration of copyright. Trade secret
protection is not a statutorily recognized right in Nigeria; however, it is
recognized and enforceable under the common law. Owners of trade secrets have
to take reasonable measures to maintain their secrecy.

See the Nigerian Copyright Commission website, available at:  http://www.eregistration.copyright.gov.ng/ncc/about,
accessed on 10th May 2019.

Applicants can only obtain acknowledgement forms through the trademark
electronic filing platform at this time.

[8]          The
organisations exempted include hospitals and all related medical
establishments, health care related manufacturing and distribution, food
processing, distribution, and retail companies, petroleum distribution and
retail entities, power generation, transmission, and distribution
companies; private security companies and;  workers in
telecommunication companies, broadcasters, print, and electronic media. See
COVID 19 Regulation 2020, https://pwcnigeria.typepad.com/files/fg-covid-19-regualtions.pdf accessed
on 14th April 2020.

1967, T 13, Laws of the Federation of Nigeria 2004 (TMR).

Regulation 105 Trade Marks Regulation 1967, T 13, Laws of the Federation of
Nigeria 2004 (TMR).

Regulation 105 TMR.


See Nabisco Inc. v. Allied Biscuits Company Ltd (1998) 10 NWLR (Pt.568)16.

Rule 29 Design Rules, Subsidiary legislation to the Patents and Designs Act,
Cap. P2, Laws of the Federation of Nigeria 2004.



Section 7 (1) (2) a & b Patents and Designs Act, Cap. P2, Laws of the
Federation of Nigeria 2004 (PDA).

Raisa Dyadkina, USPTO Extends Trademark-Related Timing Deadlines under
the CARES Act, as Other National Trademark Offices Extend their Timing
Deadlines or Provide Notice of Delays, 
available at https://www.lexology.com/library/detail.aspx?g=65d628ad-487c-457c-9b4e-9e66236b7122&utm_source=Lexology+Daily+Newsfeed&utm_medium=HTML+email+-+Body+-+General+section&utm_campaign=Lexology+subscriber+daily+feed&utm_content=Lexology+Daily+Newsfeed+2020-04-13&utm_term=,
accessed on 13th April 2020.


The stay is for deadlines which involve activities with the Italian Patent and
Trademark Office, except mandatory deadlines in opposition proceedings. JD
SUPRA, Covid-19 IP Update: Intellectual Property Office
available at  https://www.jdsupra.com/legalnews/covid-19-ip-update-intellectual-52898/



For recommended ways of protecting pending trademarks, visit https://www.mondaq.com/Nigeria/Intellectual-Property/740682/Recommended-Ways-To-Protect-Pending-Trademarks-In-Nigeria.
Invention may also be protected as trade secrets and copyrights.

Court actions may be civil or criminal in nature.

See COVID 19 Regulation 2020, https://pwcnigeria.typepad.com/files/fg-covid-19-regualtions.pdf accessed
on 14th April 2020.

Kolawole Mayomi et al, Covid-19 Pandemic, Lockdown of Court Registries
and Filing of Suits: Should the Limitation Laws be Suspended?
at http://www.spaajibade.com/resources/wp-content/uploads/2020/04/DisputeResolution.Covid-19-Suspension-of-Limitation-of-Time.pdf,,
accessed on 20th April 2020.

Section 20 (1) TMA.

Section 20(3) TMA.

Reg. 51 Regulation.

Reg. 52 Regulation.


(1998) 10 NWLR (Pt.568)16.

Reuters, UK supreme court switches to video conferencing, available

accessed on 15th April 2020.

Techweez, Kenya’s Judiciary is using Email and Videochat to Deliver Pending
Judgements and Rulings
, available at https://techweez.com/2020/04/01/judiciary-using-email-and-video-chat-to-deliver-judgements/,
accessed on 16th April 2020.

Source: www.spaajibade.com 

How Creatives Can Protect their Intellectual Property Rights | Adedunmade Onibokun

How Creatives Can Protect their Intellectual Property Rights | Adedunmade Onibokun

 As an Artist,
Inventor, Photographer or a member of the creative industry, it takes a lot of
effort, skill and hard work to do what you do and it is a reasonable expectation
to be paid for your work. However, once work is made available to the public,
the chances of someone claiming the work as their own or reproducing it without
giving proper credit is extremely high in today’s technologically advanced and
share-friendly culture. Nothing is more infuriating than discovering that your
creative ability is being exploited by someone who has neither the permission
nor the right to do so.

curbing piracy in Nigeria still requires a lot of effort despite the spirited actions
of several government agencies. Truth is, there really is no actual patent or
copyright police, roaming the streets on behalf of Creatives and looking to
investigate piracy, except for the few police raids on centers known for
selling or making pirated works.  Most Creatives
therefore usually enforce their rights, themselves though our non – evolving laws
and the inadequacies of judicial enforcement are not encouraging.  
To protect your
Intellectual Property Rights (IPRs), the first thing to note is registration with
the relevant authority. IPRs are governed by the Trademarks Act, the Patents
and Designs Act, the Merchandise Marks Act and the Copyright Act, in
addition to the principles of common law.
The Trademarks Act
A trademark
consists of any word, symbol, or device used to distinguish the company’s goods
or services. A trademark is a recognizable sign, design, or expression which identifies
products or services of a particular source from those of others. The Act
provides that
person shall be entitled to institute any proceeding to prevent, or to recover
damages for, the infringement of a trade mark except it is registered.
The Patents and Designs Act
The Act
provides that
an invention is patentable if it is new, results from inventive
activity and is capable of industrial application; or if it constitutes an
improvement upon a patented invention. Patents protect ideas that are novel,
useful, and non-obvious. When a patent expires which is usually about 20 years,
the item or process enters the public domain. Until that time, a patent holder
can prevent unauthorized use, manufacture, or sale of the invention. 
The Merchandise Marks Act
The Act relates
to fraudulent marks on merchandise and provides in Section 3, that anyone who
forges a trademark or assigns on goods a false trademark with intent to deceive
or has in his possession forged goods for sale shall be liable-
on conviction before a High Court to imprisonment for a term of two years,
or to a fine, or to both and on summary conviction before a magistrate court to
imprisonment for a term of six months or to a fine.
The Copyright Act
Copyright law
protects the creative expression of ideas. Ideas themselves may be protected by
patents, not copyrighted. Any creative work that has been fixed in a tangible
medium of expression, such as paper, software, or film, and that can be
reproduced or otherwise communicated exactly is automatically protected by
copyright law. Examples include art, songs, movies and writings. The digital
world is boundless and to protect a copyright, an artist may have to use
digital watermarks on their creations and put up a copyright notice on the web
page where your work is displayed.
How to enforce IPRs
registered your intellectual property, whether trademarks, copyrights or
patents; enforcing your legal rights against any person who may have infringed
on them is the second step to protecting your IPRs. IPRs are protected through
the registration of rights with the relevant registries and regulatory bodies
established by the Nigerian Government, such as the Trademarks, Patent and
Designs Registry. the Nigerian Copyright Commission (NCC), as well as other
related offices, such as the National Office for Technology Acquisition and
Promotion (NOTAP), the Standard Organization of Nigeria, and the National
Agency for Food and Drug Administration and Control (NAFDAC). All these offices
run their independent registries and often interface in the discharge of their

National Agency For
Food And Drug Administration And Control
empowered to regulate and control the importation, exportation, manufacture,
advertisement, distribution, sale and use of food, drugs, cosmetics, medical
devices, packaged water and chemicals, generally known as regulated products. Under
the provisions of various regulations and guidelines on registration, the
submission of evidence of ownership of trademark is a condition precedent for
the registration of branded regulated products. Where an infringed trademark is
used in respect of a product that is within the purview of NAFDAC powers, a
petition can be presented to NAFDAC in that respect.
 The Nigeria Copyright Commission (NCC)
The role of the
NCC is limited to works which are eligible for copyright protection under the
Act. It is the agency responsible for the enforcement of the Copyright Law in
Nigeria, carrying out raids and seizing items that are pirated, prosecuting
perpetrators and convicting them with copyright infringement. If a copyright is
infringed, a petition can be made to the NCC on registered copyrights.
 Nigerian Customs Service
The new fiscal
policy of Nigeria, as contained in the Common External Tariff for 2008–2012
Schedule 4, provides the list of goods which are absolutely prohibited from
being imported. Specifically, Item 3 prohibits the importation of “all
counterfeited/pirated materials or articles including base or counterfeit coin
of any country.”
 The Nigerian Police
Section 4 of
the Police Act provides for the general duties of the police and one of such
duties is the prevention
and detection of crime and the apprehension of offenders. As such crimes
bothering on criminal infringement of IPRs can be reported to the Police.
 The Nigerian Intellectual Property Office (IPO)
The IPO is an
arm of the Commercial Law Department under the Ministry of Trade and
Investment, and is also known as the Nigerian Trademarks, Patent and Designs
Registry. Applications challenging the grant of Trademarks either before or
after such registration can be made to the IPO.
The Federal High Court
The Federal High
Court is the court with jurisdiction to enforce IPRs and civil proceedings for
infringements can be instituted at the Federal High Court against any offender.
The Federal High court is also vested with the authority to hear criminal
matters bothering on the infringement of IPRs.
It is
important that in Nigeria, there are several pieces of work that do not fall
under the protection of IPRs in Nigeria, including the style designs of fashion
designers, therefore a designer such as
 who made the popular native attire Ebuka Obi-Uchendu wore
cannot claim damages or infringement against any other designer who recreates
the outfit.
continues to be a call for a reform of Nigeria’s IP laws as most of the current
legislations are old and do not conform with today’s reality.
If you will like to read further on how to
legally protect your business or startup, here are 10

Adedunmade Onibokun
Adetola Adeleye. (2016). INTELLECTUAL
Last accessed 2nd Feb, 2018 .
Dickinson. (2017). What Can You Protect? Types of Intellectual
 Available: http://edwardlowe.org/what-can-you-protect-types-of-intellectual-property/.
Last accessed 2nd Feb, 2018.
Photo Credit – Pic 1 – www.guardianng.com ; Pic 2 – www.lindaikejisblog.com 

NOTE: Please
note that this article is strictly for educational purposes and not for
commercial purposes. If you have any comments or remarks you may contact the
Marvin Gaye v. Robin Thicke: How Blurred Are The Lines In This Copyright Suit?

Marvin Gaye v. Robin Thicke: How Blurred Are The Lines In This Copyright Suit?

On 6th October 2017, Robin
Thicke and Pharrell Williams filed an appeal at the United States Court of
Appeals for the Ninth Circuit against the decision of the District Court for
the Central District of California (District Court) which decided that they had
infringed Marvin Gaye’s copyright in the song “Blurred Lines”.

As the legal fireworks in
the appeal commences, we have decided to examine the issues surrounding this
copyright infringement suit and explain its importance to the intellectual
property community. 

One of the most successful
songs in modern history
The song “Blurred Lines”
was released in 2013 by Robin Thicke and featured fellow musicians, Pharrell
Williams and Clifford Harris (also known as T.I). It was a huge hit when it was
released, ruling the airwaves for over a year.

In the United States (US),
the song debuted at No. 94 on the Billboard Hot 100 charts. However, by June
12, 2013, “Blurred Lines” was No. 1 on the charts and had sold over 1 million
copies in the US[1].

“Blurred Lines” later
peaked at No. 1 in 25 countries, including the United Kingdom (UK) and the US.
The song was so successful that it was certified quadruple platinum in
Australia and triple platinum in New Zealand[2].

In Canada, the song was
the No. 1 song for 13 consecutive weeks. It became the longest-running No. 1
single of 2013 and was Canada’s best-selling song of 2013[3]. In the US, it sold over 5 million copies in just 22
weeks and 6 million in 29 weeks thereby becoming the fastest selling song in
digital history[4].

By April 2014, the Blurred
Lines” single had reached the 7 million mark in sales[5] and by April 2015, it had sold 7,380,000 copies in
the US, making it the eighth all-time best-selling digital single[6]. According to the International
Federation of the Phonographic Industry (IFPI), the song had sold 14.8 million
copies by the end of 2013, becoming the best selling song of the year worldwide[7] and one of the best selling
songs of all times[8].

It broke the record for
the largest radio audience in history[9] and
is currently the seventh best-selling digital single of all time. It was the
second best-selling song of 2013 in the US and the best-selling song of 2013 in
the UK[10]. Subsequently, it was
nominated for two Grammys at the 56th
Annual Grammy Awards
 in the Record of the Year and Best Pop Duo/Group Performance categories.[11]
Earnings from the song
It is estimated that a
total of $16,675,690 was realized in profits for “Blurred Lines.”
Subsequently, $5,658,214 went to Robin Thicke, $5,153,457 was made by Pharrell
Williams and $704,774 went to T.I[12].
The record companies (Interscope, UMG Distribution and Star Trak Entertainment)
took the rest of the profits with an executive at Universal Music Group stating
that overhead costs on the creation of “Blurred Lines” amounted to

Authorship of the song
In a May 6 2013 interview
with GQ Magazine, Robin Thicke claimed that he wrote the song along with
Pharrell Williams. He stated that he was in the studio with Pharrell Williams
and he informed Pharrell 
Williams that
Marvin Gaye’s “Got to Give It Up” was 
one of his favourite songs.. His
statement inspired Pharrell Williams who started playing something with a
similar tune as the Marvin Gaye song and both artists supposedly wrote “Blurred
Lines” in about half an hour and subsequently recorded it.[14]
Clearly, Robin Thicke had
a hit on his hands. However, unknown to him, the storms were beginning to
gather as the Estate of the late Marvin Gaye had heard the “Blurred Lines” song
and would soon commence an action that in my opinion, could affect our perception
of copyright protection.

Copyright infringement
The legendary Marvin Gaye
is reputed to be one of the greatest soul singers.. He penned several songs
such as “Sexual Healing” and “What’s Going On”. He wrote a smash hit titled
“Got To Give It Up” in 1977. It was released under Motown Records (now a
subdivision of Universal Records). Marvin Gaye died in 1984 leaving the
copyright to his collection of songs to his children.

After reading several
interviews which Robin Thicke gave to the press, the Mavin Gaye family started
to insist that Robin Thicke had infringed on Marvin Gaye’s copyright by
sampling some portions of “Got to Give it Up”. Robin Thicke did not take too
kindly to these accusations and he proceeded to file a suit against the Estate
of Marvin Gaye at the District Court in August 2013. He was not seeking
monetary reliefs but sought a declaration from the court to determine if the
composers of “Blurred Lines” can be held liable for copyright infringement on
the basis that they were influenced by Marvin Gaye’s song, but did not actually
sample such prior works or literally copy any of Marvin Gaye’s music or lyrics.
Put differently, could they be deemed liable for copyright infringement if all
they did was evoke an era and the “feel” of Marvin Gaye’s music?

Marvin Gaye’s family took
the bait and counter-sued in April 2014, claiming that they were entitled to
damages as “Blurred Lines” infringed on Marvin Gaye’s copyright. In
addition to Robin Thicke, the producer and co-writer Pharrell Williams, guest
rapper T.I. and Universal Records were also joined in the suit.

In a shocking twist during
the trial, Robin Thicke informed the jury that he did not compose “Blurred
Lines” as he claimed he was drunk and high on alcohol and vicodine when he
recorded the song. He also claimed that he was inebriated when he gave the GQ
Magazine interview and other interviews where he claimed authorship of the
song. He also informed the court that he did not consider himself an honest

On his part, Pharrell
Williams asserted that he wrote the song and that although he drew influences
from Marvin Gaye, he intended to replicate the “vibe feeling” of the genre. He
stated that there was no intention to rip off Marvin Gaye’s song.

In the second part of this
series, we will consider the arguments that were raised by both parties to the
lawsuit and examine the decision reached by the jury at the close of the
arguments. This will be considered in line with the position of the copyright
laws to determine if the eventual decision reached by the jury was proper in

Partner, Intellectual property and brand protection at
ǼLEX/Corporate & Commercial Lawyer
Source: Linkedin 
[1]Gary Trust, ‘Robin Thicke’s ‘Blurred
Lines’ Hits No. 1 on Hot 100’ (Billboard Articles 6 December 2013)
[2] Australian Recording Industry
Association, ‘RIA Charts – Accreditations – 2013 Singles’ <http://www.aria.com.au/pages/httpwww.aria.com.aupagesaria-charts-accreditations-singles-2013.htm>
[3] Billboard, ‘Canada’s Digital
Music Sales Rise in 2013 Unlike the U.S.; Eminem, Robin Thicke Among Top Selling
[5] Paul Grein, ‘Chart Watch: Former
Teen Stars Make Good!(Yahoo, 23 April 2014)
Mill, ‘The Rise of “Uptown Funk”: Could It Become the All-Time #1
[7]Stuart Dredge, ‘Global music sales
fell in 2013 despite strong growth for streaming services’ (The Guardian 18
March 2014)
[8] IFPI,
‘Digital Music Report 2014’
[9] Robin Thicke’s ‘Blurred Lines’
sets radio audience record
[10] Chart Watch: The Top 10 Albums
and Songs of 2013
[11] Grammy Awards 2014: Full
Nominations List
[12]Nolan Feeney, ‘Here’s Exactly How
Much Money ‘Blurred Lines’ Made (Time 4 March 2015) < http://time.com/3731556/blurred-lines-profits/>
[13]Pamela Chelin, ‘Court case reveals
exactly how much money Pharrell and Robin Thicke made off ‘Blurred Lines’ (Business
4 March 2015)
[14] Stelios Phili, ‘Robin Thicke on
That Banned Video, Collaborating with 2 Chainz and Kendrick Lamar, and His New
Film’ (GQ Magazine 6 May 2013)
Gardner , ‘Robin Thicke’s ‘Blurred Lines’ Deposition Unsealed: “I Was High
and Drunk” (Hollywood Reporter 24 October 2015)

What Brexit Will Mean For Intellectual Property – Harbottle & Lewis LLP

What Brexit Will Mean For Intellectual Property – Harbottle & Lewis LLP

We don’t know what relationship the UK will
have with the EU post-Brexit – other than not being a member state. Every
business must plan an enterprise-wide review of its intellectual property
licence and distribution agreements to establish any requirements for
renegotiation (and possibly, termination).  The most obvious point being
that agreements defining a territory as “the EU” will almost certainly have to
be interpreted as excluding the UK from the date of exit.

The departure of the UK from the EU could
undermine much of the rationale for existing licence arrangements that are
drafted on an EU-wide basis. This could result in pressure to terminate or
renegotiate, and potentially litigation.

EU law must be complied with in the UK
until we leave. However, Directives that have not yet been implemented (such as
the recent Trade Secrets Directive) will almost certainly not be
implemented.  Meanwhile, however, English courts may nevertheless be
obliged to apply the principles of such directives whether or not implemented.

Depending on the approach taken by law
makers, the principle of exhaustion of rights might no longer apply in the UK,
unless we become an EEA member like Norway. If so, it would be possible to use
IP rights to block any imported genuine goods at the UK border, whatever their

Obviously, the EU-wide IP rights, such as
the EU trade mark and Community design rights, will no longer include the UK
once we leave the EU. This has practical and cost implications for IP managers
in terms of filing strategies.  Unless some kind of automatic conversion
of rights is established as part of the exit transition, action will need to be
taken well in advance of leaving the EU, to ensure protection in the UK. 
It may be possible to convert EU-wide marks to national rights, or new filings
may be required.  A massive disadvantage of new filings will of course be
the loss of priority, unless again that is catered for by transitional

Remedies for infringement of intellectual
property rights will change. In particular, terms settling past disputes, and
cross-border injunctions granted by courts, will have to be reassessed. 

Litigation strategies will also need to be
reassessed, since the jurisdiction rules under the Brussels Regulation might no
longer apply. This will affect choice of forum for future disputes.

Much of what we have come to understand as
enshrined principles of IP law will be open to reinterpretation. Decisions of
the CJEU will continue to have effect indirectly as a result of past decisions
of our appeal courts based on CJEU judgments.  Eventually, those decisions
will be reassessed.  Many may view this as a welcome opportunity for the
English courts to simplify and clarify some of the harder concepts of, in
particular, trade mark law.

The Unified Patent Court system and the
Unitary Patent will not include the UK. This will also seriously delay the
commencement of the Unified Patent Court for the remaining member states, since
the UK’s ratification was essential to commencement and, further, the UK was to
be the location of one of the three central divisions.  UK businesses
holding EP patents still need to understand the UPC system, however, and in
particular must stay focused on the key current requirement of assessing
whether to opt EP patents out of UPC.  For the avoidance of doubt, none of
this affects the long-established EP patent system, which is not specific to EU
member states.

10.And finally – this doesn’t necessarily stop
with the UK. Businesses should be alive to similar issues looming in other EU
member states, and take care when drafting any EU-related IP agreements. 
There is no need for immediate panic, but Brexit will in due course have huge
implications for IP rights holders and licensees.  IP practitioners, and
rights holders, will be at the forefront of shaping how things play out.

Jeremy Morton, Partner
(+44) (0)20 7667 5293

Jeremy Morton leads the
contentious intellectual property practice at Harbottle & Lewis. He is a
senior intellectual property and technology law adviser and litigator in the
UK, with over 20 years’
experience. He advises on
a wide range of European IP law, contentious and non-contentious, including
patent litigation, copyright, trademarks, designs, trade secrets, as well as
data protection. He frequently advises in the technology, arts and
entertainment fields. He also advises on brand management.

Ed’s Note: This article
was originally published by the author here
Intellectual property as an asset: How valuable are our ideas? by Jerry Chiemeke

Intellectual property as an asset: How valuable are our ideas? by Jerry Chiemeke

The term “intellectual property” is broad, and is widely used
to refer to intangible assets. Intellectual property differs from other forms
of property because it is intangible—that is, it is a product of the human
There are various classes of intellectual property: Patents, Copyright
and Trade marks are perhaps the most prominent. Patent law protects inventions
that demonstrate technological progress. Copyright law protects a variety of
literary and artistic works, including paintings, sculpture, prose, poetry,
plays, musical compositions, dances, photographs, motion pictures, radio and
television programs, sound recordings, and computer software programs.
Trademark law protects words, slogans, and symbols that serve to identify
different brands of goods and services in the marketplace. 

 The question of valuation of intellectual property is a very vital
one for a number of reasons. Firstly, it greatly strengthens the perception of
the importance of intellectual property in contemporary business environment.
Secondly, it lends credence to the idea of intellectual property as any other
property and reinforces the property rights of the owner. For example, a
clearly valued intellectual property gives unambiguous signals to a third party
of its value and the repercussions of violations of such rights.[1] This
article will attempt to analyze the concept of valuing Intellectual Property,
the prevalent approach to Intellectual Property valuation in Nigeria, a world
view of Intellectual Property Valuation, and the way forward.
 Methods of Intellectual Property Valuation
 There are three generally accepted ways to value Intellectual
Property. These include: the Cost Approach, the Market Approach, and the Income
Cost Approach: A valuation analyst who values
Intellectual Property using the cost approach looks at what it cost to produce
the Intellectual Property, or what it would cost to reproduce the Intellectual
Property on a given effective date. These costs include things like labor,
materials, applied overhead, and capital charges. Depending on the effective
date of the valuation, the valuation analyst may trend costs from a historical
reference point to the effective date.[2]
2.Market Approach: The valuation analyst who values IP using the market
approach looks for comparable transactions in the same industry and of the same
relative size that recently occurred in the open market. Value is determined
indirectly using the comparable IP transaction as a proxy for value of the
target IP. The reasoning is logical: if the market paid X for rights to the use
or own that IP once, then one would expect that the market would reasonably pay
a similar amount again.[3] 
Income Approach: This method is the most
principled, requires the most discipline and insight into value-creating
features of the Intellectual Property to complete, and is what valuation
analysts use commonly for Intellectual Property valuation assignments. A
valuation analyst using the income approach bases their opinion on the
Intellectual Property owner’s business plan, marketing and operational inputs,
and other external references. Using this method, the valuation analyst
projects the economic income generated solely from the Intellectual Property
over a discrete period, known as the remaining useful life (RUL) as well as any
residual value after the remaining useful life.[4]
 In What Manner Can Intellectual Property Can Be Used As A
 As earlier mentioned, Intellectual
Property differs from other forms of property, due to the fact that it is
intangible in nature. Nevertheless, it remains one of the most valuable forms
of assets, and can indeed serve as security when required.
 Intellectual Property could be used as a security by way of either
a legal mortgage, a fixed charge, or a floating charge. The decision as to
which security option is to be exercised over the borrower’s portfolio will be
largely determined by whether security is being granted over registered or
unregistered Intellectual Property. When dealing with registered Intellectual
Property, security will usually be taken through the creation of a fixed
 Fixed charges are equitable (as they grant a beneficial but not
legal interest in secured Intellectual Property) and attach themselves to the
Intellectual Property in question. The lender acquires an equitable interest in
the Intellectual Property but no legal title is transferred. While the wording
used to create the fixed charge is not governed by any statutory or common law
requirements, it is prudent to expressly state that the Intellectual Property
is charged as continuing security for the loan and other obligations set out in
the underlying finance documentation. Ideally the charge should also be granted
by the borrower with full title guarantee; the implication is that the borrower
guarantees that it has the right to grant a charge over the Intellectual
Property in favour of the lender  and that the Intellectual Property is
free from other charges, encumbrances, and other rights exercisable by third
parties other than charges, encumbrances, or rights that the lender could
reasonably be expected to know about (such as interests registered against the
Intellectual Property at the Patent Office).[6]
 In the event of the borrower’s default, the lender could wish to
sell the secured Intellectual Property to pay off any existing loan obligations
of the borrower. Ideally, the underlying security agreement should expressly
give the lender a power of sale and power of attorney to deal with the
Intellectual Property in place of the borrower (for example, to enter into an
assignment agreement with a third party purchaser). Without an express power of
sale, the lender will have to apply to Court for an order of sale or the
appointment of a receiver. If however, security has been granted by way of a
deed, the lender will have a statutory power of sale and right to appoint a
receiver, exercisable without the need to apply to Court. While the Intellectual
Property remains subject to the fixed charge, the lender should impose
restrictions on the borrower’s ability to deal with the asset (for example, the
grant of licences over the Intellectual Property).
 As title to the Intellectual Property secured by the fixed charge
will remain vested in the borrower however, maintenance of the Intellectual
Property will continue to be the responsibility of the borrower. It is
therefore important that the security agreement obliges the borrower not to do
or omit to do anything which may put either the enforceability or validity of
the Intellectual Property in jeopardy (including failing to pay renewal fees or
take action against infringers)
 In transactions where the unregistered Intellectual Property of
the borrower is of little commercial value, security will usually be taken by
including these rights under the umbrella of the general list of assets of the
borrower secured by a floating charge. Fixed charges grant to the lender an
interest in specific assets of the borrower, and as such, the borrower is
prevented from dealing with the charged asset without the consent of the
lender. In contrast, a floating charge usually grants to the lender security
over a general list of assets of the borrower that the borrower is free to deal
 What is The Situation In Nigeria With Respect To Intellectual
Property Valuation And The Use of Intellectual Property as Security?
 In Nigeria, it is fair to say
that the idea of relying on Intellectual Property as a security in a manner similar
to real property, if it exists at all, is yet to be fully embraced by
individuals and corporations alike. The paucity in the use of Intellectual
Property as a security, particularly for debts, is not without cause.
 A major challenge in the use of Intellectual Property as security
remains the value to be attached to the Intellectual Property. Unlike tangibles
that can be subjected to easy valuation based on the physical attributes of the
security, Intellectual Property unfortunately cannot pass this test with same
ease. The owners of the Intellectual Property do not always understand the
commercial value of the Intellectual Property assets of their enterprise, and
professionals have still not found a way to subject Intellectual Property to
proper valuation.
 The risk and complication that trails the use of Intellectual
Property  as a form of security has made it a non-attractive form of
security in Nigeria. The nature of the uncertainty in the use of intellectual
property as collateral is something that cannot be wished away. At present, it
is difficult to assure lenders taking intellectual property as security that
their interest has, in fact, been properly perfected or secured. The reason is
that there is apparently uncertainty among practitioners as to where and how to
file notices, what constitutes notice of a security interest, who has priority,
and what property is covered by a security interest.
Intellectual Property owners are disadvantaged when it comes to
attracting external financing since they do not usually have the track record
or collateral often required by banks. This challenge arises because the loans
secured with intellectual property are more costly to negotiate and administer,
if they can be arranged at all. Furthermore, there is still insufficient
knowledge and education about the unique nature of Intellectual Property
rights, thus it can be understood why Nigerians are reluctant to base loan
agreements on Intellectual Property being the existing collateral.
 What Is The Attitude From The Rest Of The World?
While it is admitted that Nigeria has been seemingly hesistant in taking
up Intellectual Property as a form of security, the same cannot exactly be said
of other countries of the world, and developed nations in particular. In other
words, persons in various parts of the world, natural and artificial persons
alike, have recognized and exploited the relevance of Intellectual Property as
a valuable asset, and have moved with the times to good effect. Many
industries, notably the electronics, software, healthcare, consumer goods,
telecommunications, media and entertainment are substantially dependent upon
this intangible asset.
Intellectual Property is quickly becoming the most prized asset of many
companies. In a survey conducted by the United States Patents and Trademarks
Office (USPTO) in the year 2011, Intellectual Property in the U.S. was valued
at over $5 trillion[8]. The development of new technologies and the viral
spread of communication networks have facilitated the rise of businesses that
own very few tangible assets and owe their success almost exclusively to their
Intellectual Property. The ability to use Intellectual Property rights as the
object of security interests is being recognized as an attractive prospect,
rather than a mere eccentricity.
Much of corporate wealth is now tied up in Intellectual Property. It
increasingly constitutes a larger percentage of the overall value of U.S.
businesses and can be appropriated as a form of security. In today’s business
world, the Intellectual Property portfolio of many companies forms an important
part of the company’s assets. As such, banks and other financial institutions
lending money to companies (in Western Europe, the U.S.A., Canada and other
developed countries) are increasingly taking security over borrowers’
Intellectual Property portfolios as part of a security package, particularly in
transactions where the Intellectual Property held by the borrower is of
significant commercial value.[9]
What Can And Should Be Done?
Banks could revisit their lending policies and conditions for
collateral, to provide more room for the use of intangible assets as is the
nature of Intellectual Property. An increase in collaborative efforts between
agencies designated to administer Intellectual Property in Nigeria, and
organisations such as Intellectual Property Lawyers Association of Nigeria
(IPLAN) would also be helpful. Beyond all that, there is need to create public
awareness on the value inherent in the existence and ownership of Intellectual
Property, and furthermore, encourage property valuers to expand their focus to
figuring out the worth of intangible assets.
[1] Singla, Ankur, “Valuation of Intellectual Property”, available at
[2] Pellegrino & Associates, LLC, “Valuing Intellectual Property”,
[3] Ibid.
[4] Ibid.
[5] Esomonu J, & Oloyede, A. “Intellectual Property as a Form of
Security”, Seminar Paper on  Secured Credit Transactions Presented at the
Faculty of Law, University of Lagos, 2011.
[6] Ibid.
[7] Ibid.
[9] Esomonu J, & Oloyede, A, supra, Note 5.
 Editor’s note: This article was initially posted by the author on  www.linkedin.com


credits: slideshare.net
With the recent brouhaha following Linda Ikeji’s blog being
temporarily shut down by Blogger, many writers/bloggers/online content marketers
are frantically praying searching for information regarding copyright
infringement in order to ensure the devil does not send a MrAyedee into
their life
they don’t run fowl of the law and also have their blogs shut
down. While copyright laws regarding the internet are well established in
foreign jurisdictions, in Nigeria we jus dey open eye, blogging just
blew up in Nigeria a little over 5 years ago. But you can always catch our blog
post on copyright
People tend to get a little
protective of their stuff because there are many unscrupulous people out there
who take content and pass it off as their own. Having done all that hard work
with none of the credit is totally not cool!

infringement occurs when any person uses any of your work – no matter how small
it is – for any of his/her personal benefits irrespective of whether or not he
gives you the attribution, unless that person has a written permission from you
. Content could
be in many forms such as text, artwork, sound and video (including animations),
ideas, inventions or symbols.
Once your work is published – irrespective of
whether on paper or digital media – you own the sole rights to: use the work;
allow reuse; allow derivatives and allow others make profit from your work.
 If you are
the copyright holder
, it means that ONLY YOU are allowed to make copies
of the work and should you wish – others and only the ones to whom you give
written permission can use the work. At this point it is important to note that
the saying “because it’s posted on the
internet, then it’s free
” is totally misleading and untrue. 
credits- dearauthor.com
Plagiarism on the other hand is “the use of another’s
information, language, or writing, when done without proper acknowledgment of
the original source.” However, the critical element of it is the final part.
The one thing that ties all plagiarism together is going beyond merely
duplicating the work, but also not crediting the source and thus taking the
material for yourself. However, not all incidents of plagiarism are considered
copyright infringement. Plagiarizing works in the public domain, though
unethical, is not considered copyright infringement.
Plagiarism is an ethical concern that may have other elements
of intellectual property theft tied with it. Copyright infringement, on the
other hand, is illegal and carries with it potentially significant
consequences. Plagiarism can be avoided by providing attribution and giving credit,
copyright infringement cannot. So how can one be sure not to plagiarize or
infringe on another’s work? Simple: 

  • If you took the photo or created the graphic and are not
    subject to a Work For Hire agreement, then you own it. Taking another person’s
    image or graphic and giving them a “shout out,” linkback, or any other type of
    attribution does not negate copyright infringement. Copyright law gives the
    copyright holder the right to decide where their work is published and maybe
    they don’t want their work on your site, in your book, included in your
    newsletter or distributed to your social media network.
  • Ask people for the rights to use their work, it is either
    they say yes or no. It may be acceptable to use an image, as is, on your blog,
    but you may not have the right to use that same image in a paid newsletter,
    book, video or other type of work. Unless the image is in the public domain or
    you are the copyright holder, you have to consider the use(s) granted by the
    copyright holder or license. A copyright holder may be agreeable to certain
    uses but not to others. Also when you take part of a person’s written/published
    work, it is important that you write the reference properly in other to avoid
    plagiarism allegations. 

 Adedunmade Onibokun