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Abimbola Balogun – Position Of Commissioned Photographers under The Nigerian Copyright Law

Abimbola Balogun – Position Of Commissioned Photographers under The Nigerian Copyright Law

by | Aug 4, 2016 | Uncategorized



So I somehow walked into
an argument with a friend of mine the other day of which the true and current
position on the topic has been on my mind for a few days now. I really Don’t
remember how that happened but the issue sent me into a frenzy as I really hate
to loose arguments. Here is how I got myself into the argument.  So I just
finally got my wedding album from my fantastic photographer and I was really
impressed with the turnout as I was frankly scared that it would not look as
dreamy as I had pictured in my mind (brides and their outlandish fantasy ideas
right) so I didn’t waste any time to whip out my new priced possession albums
for my guests to view on one fine Thursday evening. 

To my greatest pleasure,
my guests were as impressed as I was when I first saw the albums. As they
flipped through the pages of the albums many different topics ensued from each
picture. From how hilarious a particular picture turned out; to how the
photographer’s skills were beautifully displayed when she captured “emotions”.
All small talk was warm and very welcome to massage my growing ego until one of
my guests said and I quote “do you know that the photographer owns the
copyright on your pictures?” basically she could do what she pleases with my
pictures. I thought that idea was ridiculous and I did not hesitate to mouth
out that fact. I knew that we had moved from small talk to big business. The
room was instantly heated up in arguments and legal talk on what does or should
apply. I against guest and my husband trying to be diplomatic by trying to see
the sense in both views. Of course myself and guests did not budge on our own
lawyerly opinions on the issue.
 My Guest opined that
when a photographer takes shots, he/she as the author of that image has the
copyright on the pictures over and above any other. This is regardless of if
the pictures have been paid for. I thought this idea was weird and ridiculous.
How can I pay for someone to do a job and the person still can hold on to
rights of my own personal images that I paid to be taken?
 The night ended
quite pleasantly; warm hugs and kisses goodnight, but silently I knew this
argument was definitely not over.
I tried to forget about
the argument for a couple of days, but as I said I really hate to loose
arguments. So I went on my own literal photobomb expedition.
While on my research I
stumbled on the American copyright article which agreed 100% with my guest’s
position[1]. The author states that Under U.S. copyright law, the original
owner of a created work is exclusively the creator, unless it’s a ‘work for
hire’. The author therein stated that in the wedding scenario, a photographer
is hardly ever ‘for hire,’ Even though married couples spend thousands for a
photographer to cast their most memorable moments in just the right light, they
may never actually own the results and also, the fact that the photographer
hands you a cd, hard copy, or soft copy of pictures taken of you does not mean
he has handed you the rights to those pictures. Hmmm interesting I thought to
myself, but still confused; plus, that one is the Americana situation; so back
to Nigerian scenario to find something that makes more legal sense to me or at
least someone or something that could explain this crazy phenomenon to me.
It also occurred to me
that I have come across this topic a number of times in the past but I lazily
brushed aside the thought of researching the crux of the matter. For instance,
the 2face and Annie Idibia suit of 2013, where the an un-commissioned and
uninvited photographer took wedding photos of 2face and his bride[2]. Secondly;
a client of mine who also happens to be in the entertainment industry had
complained to me about his photographer who had uploaded pictures recently
taken on social media as publicity for his photography career. This was done
without any recourse to my client and even before he had seen the said
pictures. And oh thirdly, back to my wedding album, one of my photographer’s
crew members had uploaded some very nice shots of the wedding for publicity on
her Instagram page (Of course I immediately demanded that he takes down the
shots before I blink my eyes). These are only a few incidents out of the
thousands that occur on a daily basis in the new era of the growing photography
sector.
So now to answer this
lingering question of where the copyright stands with commissioned/hired/paid
photographers in Nigeria, I have cast away the spirit of laziness and
procrastination and buried my face first to the copyright act itself, my
findings made me smile in 8 different ways. inside smile, outside smile, evil
smile, happy smile, confused smile, wide smile, one sided smile, haahahaaa I
told u so smile. (yes, 8 different types of smiles).
(1)Copyright
conferred by sections 2 and 3 of this Act, shall vest initially in the author.
(2) Notwithstanding
subsection (6) of section 10 of this Act where a work-
  • is commissioned by a person who is not
    the author’s employer under a contract of service or apprenticeship; or
  • not having been so commissioned, is
    made in the course of the author’s employment,
the copyright shall
belong in the first instance to the author, unless otherwise stipulated in
writing under contract.
(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 the absence of ]any agreement to the contrary, be the first owner of
copyright 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 been so published; but in all
other respects, the author shall be the first owner of the copyright in the
work.
(4) In the
case of a cinematograph film or sound recording, the author shall be obliged to
conclude, prior to the making of the work, contracts in writing with all those
whose works are to be used in the making of the work.
Now here’s were the
confused smile and happy smile came in. I had to read this provision about 10
times to get the gist. (legislative drafters right). So here’s how I see this
provision:
In Nigeria the
photographer owns the copyright to pictures he has taken as a general rule.
However, the following situations are exceptions to this rule.
1.    
CONTRACT OF APPRENTICESHIP:
where a photograph is taken under an apprenticeship relationship, the rights of
the photograph belongs to the trainer or master.
2.    
CONTRACT OF EMPLOYMENT WITH A
NEWSPAPER MAGAZINE OR SIMILAR PERIODICAL: in this case
section 10(3) of the copyright act stipulates that the rights to such works
belong to the proprietor in the absence of any contrary agreement in so far as
publication is concerned.
3.  CONTRACT OF EMPLOYMENT:
reference to section 10 (1)(2)(a) (which I had to read really
slowly, and aloud several times). And here is where I had my fifty shades
of smiles; “… commissioned by a person who is not the author’s employer
under a contract of service or apprenticeship; or… the copyright shall belong
in the first instance to the author, unless otherwise stipulated in writing
under contract.” Where a photographer is an employee of a company
instructed to take the photos or is an employee whose duties include or require
photography, the photographer will be acting on behalf of his employer, and as
such the copyright in photographs taken by the employee in the normal course of
business will belong to the employer. In simpler words, a work done by a
commissioned person or employee belongs to the employer or
commissioner[3].
4.    
ASSIGNMENT: A
photographer may assign his copyright by written agreement. This will supersede
the provisions of the law. If there is a written contract or an agreement
signed by the photographer assigning copyright to another party, then the
rights will be deemed to belong to the assignee.
5.    
GOVERNMENT COMMISSIONING: Section 4.(1) Copyright
shall be conferred by this section on every work, which is eligible for
copyright and is made by or under the direction or control of the Government, a
State authority or prescribed international body. Such rights are conferred on
the Government on behalf of the Federal Republic of Nigeria.
6.    
LAPSE OF TIME.
The 1st schedule to the copyright act provides that an author of a photograph
can exercise exclusive rights on his photo for a period of 50 years after the
end of the year in which the work was first published., after which he looses
the exclusive right on the said work.
7.    
CONTRACT FOR SERVICE:
where I have commissioned the services of the photographer, I am the employer
of the photographer’s services under a service agreement, the rights on my
photographs and album belongs to me. And yes I had to ponder on the issue of
the; “Of or For Service”. I found the key word to be
“Commission” as contained in Section 10 of the Copyright Act; my
interpretation is that once someone has paid for the service of the
photographer under a contract of any nature, without an agreement stating that
the right will belong to the photographer, such rights will be vested in the
commissioning party. Therefore, whether you employ the photographer under a
contract of service or employ the services of the photographer for a specific
purpose, this law will apply[4].
Nigerian case law further
buttressed this point in the case of Joseph Ikhuoria v. Campaign Services
Ltd and Anor[5], the court noted that when a person commissions the
taking of a photograph or the painting or drawing of a portrait or undertakes
an engraving and pays or agrees to pay for it in money’s worth and the work is
made in pursuance of that commission, the person who so commissioned the work
is entitled to any copyright in it as an original work. See also Kolade
Oshinowo v John Holt Group Co [1986] FHCR 308.
On this same point in my
research journey, I also found a very interesting post online which I totally
align myself with. It said in summary that although when the photos are taken,
the photographer owns the copyright to the photos. The writer further made a
distinction between license and other rights. He stated that the licence
represents the leave to reprint (i.e., use the photos for personal use, such as
on Christmas cards or in a wedding photo book), for which the photographer may
charge an extra fee. This is so for the sole reason that the photographer will
lose out on the money that you would have paid for the prints. All other rights
are purchased off the photographer upon the payment of the fees. The
photographer however is free to charge an extra and separate fee for the
release of all the rights as mentioned in a contract[6]. But to me, I know I
will only agree to a payment of extra charges if the photographer is Madame TY
Bello!
As regards the 2face and
Annie Idibia matter mentioned above, I think this is an issue of facts which
will be discussed another day where the issues for determination will be
whether or not a photographer can claim copyright on an unauthorised or
illegally acquired photograph, or the copyright for paparazzi, I’ll find a
catchy name (Watch out for part 2).
Therefore, ladies and
gentlemen, it is with great pleasure that I state that in my firm opinion that,
my husband and I own our beautiful wedding photos, album, and all rights
connected thereto. As I said, I hate to lose an argument.
[3]http://www.academia.edu/4673044/Who_Owns_Copyright_under_the_Nigerian_Copyright_Act;
viewed 13th July 2016. Who Owns Copyright under the Nigerian Copyright Act; by
Meshack Okezi
[5] F.H.C.R. 308 1986, http://news.nlipw.com/?p=19254
viewed 11th August 2012,
Impact of the World Trade
Organisation TRIPS Agreement on the Intellectual Property Law of Nigeria; by
Temitope Oredola Oloko; http://repository.up.ac.za/dspace/bitstream/handle/2263/53216/Oloko_Impact_2015.pdf?sequence=1&isAllowed=y;
viewed 11th August 2013
[6]http://apracticalwedding.com/2015/09/wedding-photography-contract/;
by steven Portland; viewed 11th august 2016.

Ed’s Note – This article
was originally posted here
Photo Credit – www.guardian.ng
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

by | Mar 31, 2016 | Uncategorized

 
 
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
imagination.
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
Approach. 
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
Security?
 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
charge.[5]
 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
with.[7]
 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.
Endnotes
[1] Singla, Ankur, “Valuation of Intellectual Property”, available at
www.indlaw.com.
[2] Pellegrino & Associates, LLC, “Valuing Intellectual Property”,
2005.
[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