Friday, 26 February 2010

Trans continental IP deal over Kenyan resource

Tiomin Resources Inc said it agreed to sell its Kwale mineral sands project in Kenya to Australian junior miner Base Iron Ltd for $3 million and a cash royalty, mainly to improve its cash position.The company said the deal includes the sale of intellectual property related to mineral sands projects in Africa and an option for Base Iron to acquire 100 percent of Tiomin's unit, Tiomin Kenya Ltd. The project, located south of Kenya's Mombasa port, is expected to produce titanium and zirconium. Last year, China's Jinchuan Group Ltd terminated an agreement under which the top Chinese nickel producer was to acquire 70 percent stake in the project. (source Reuters)
It is good to see merger and acquisition reports that acknowledge the IP aspects of deals such as these. A large number of transactions across Africa are about the continent's mineral wealth yet so often the answers from senior management to typical IP due diligence questionnaires are that these types of companies do not own IP. There is still much work to do in educating companies about what they actually own as a start and then, on how to record, value and manage it.

Thursday, 25 February 2010

AUWIPOARIPO

Google's helpers think that AUWIPOARIPO should be "audi paripo". Scrabble's word finders are also way off the mark. To understand this lexical combination the only site of interest is the home page of the African Regional Intellectual Property Organisation:

"On May 3, 2010, the World Intellectual Property Organization (WIPO), African Regional Intellectual Property Organization (ARIPO) and Africa University (AU) will launch the 3rd edition of the Masters Degree in intellectual property (MIP) program at Africa University, Mutare, Zimbabwe."

"The MIP Program is designed for young professionals who wish to acquire the skills required to play a leading role in that area through exposure to an international and comparative approach to national and regional IP systems. The young professionals to be accepted to the program should primarily be from academic or R&D institutions, who upon graduation are expected to return to their respective institutions in Africa and serve as trainers in the field of IP."

Afro Leo would welcome comment from those who have attended previous courses.

Monday, 22 February 2010

IP litigation in Africa: the WIPO Magazine reports

Though he's certainly too modest to mention it himself, Afro-IP's Darren Olivier is the author of an article, "IP Litigation in Africa", which appears in the first issue for 2010 of the World Intellectual Property Organization's popular WIPO Magazine.

Darren provides a neat review of some recently-resolved IP disputes in this ever-exciting and sometimes perplexing continent, taking in Ethiopian coffee, passing-off in Namibia, trade mark disputes in South Africa, as well as decisions from Uganda, Kenya, Nigeria and ARIPO. You can read this piece in full if you click here.

ASA Ruling - "The Beachhouse" Promotion

Following a consumer complaint, the Advertising Standards Authority of South Africa’s Directorate recently considered the following promotional offer contained in a print advertisement of Dros Franchise (Pty) Ltd:

Buy any 2 salads and receive a 750ml bottle of ‘the beachhouse’!” Adjacent to this offer, a price of “R135.00” as well as pictures of a salmon salad, smoked chicken salad and a bottle of ‘the beachhouse’ wine is displayed.

It was submitted by the complainant that the advertisement suggests that the bottle of wine is free and not for the account of the consumer. It was submitted further that the bottle of wine was not, in fact, free but rather it was supplied marginally cheaper than the regular price.
The relevant clauses of Section II of the Code of Advertising Practice considered were 4.2.1 (dealing with misleading claims), 4.4 (dealing with the use of the word “free”) and 19 (dealing with pricing policy).

Clause 4.4 regulates the use of the word “free” in advertisements and was immediately dismissed as not applicable in this case as the word “free” does not feature in the advertisement. Whether the advertisement implies or suggests that the product offered is without cost to the consumer, despite the absence of the word “free”, is discussed with reference to Clause 4.2.1 which prohibits any statement or visual representation which, directly or indirectly, is likely to mislead the consumer. The Directorate noted that the use of the term “buy” in respect of the salads and “receive” in respect of the wine could lead consumers to believe that if they were to purchase two salads that they would receive the bottle of wine and suggests that the wine would be free. However, the advertisement in question displayed a total price of R135.00 for the “package” of the two salads and the bottle of wine. All consumers who made use of this promotion would have paid R135.00 in total for two salads and the bottle of wine. The Directorate considered this to be made clear by the advertisement and found the advertisement not to be in breach of Clause 4.2.1.


The advertisement was, further, found not to fall foul of Clause 19 of the Code, the relevant part of which requires that the selling price at which goods will be sold against immediate payment must be quoted in full and must include all necessary and incidental costs without which the goods cannot or may not be bought. It was common cause that the consumer could purchase any two salads and a bottle of ‘the beachhouse’ wine for R135.00 and that no additional costs were payable. The advertisement was not in breach of the pricing policy and the complaint was dismissed.

Sunday, 21 February 2010

Kenya opposition case

It seems that it is Glaxo monday! John Syekei has provided this alert illustrating the "relevant public" in the test for confusing similarity involving pharma brand names, in Kenya:

"Kenyan Courts have again shown their resolve to ensure protection of branded owners rights in Kenya. In this interesting case, Syner Med had applied for the registration of Synercef trade mark in Class 5. Glaxo filed an opposition to this mark based on its existing registered mark Zinacef. The Registrar in disallowing the opposition found that the two marks were not phonetically nor visually similar. The High Court, on appeal by Glaxo, overturned the decision of the Registrar and held that the two marks were phonetically similar taking judicial notice of the fact that many people in Kenya would likely pronounce S as Z and vice versa. Pronounciation in a phonetically identical manner was the principle the Judge brought out. The fact that the 2 drugs were prescription only drugs did not preclude the fact that confusion would be caused when an order is made orally or by telephone to such professionals such as pharmacists or doctors. The Judge cancelled the registration of Synercef and directed SynerMed to pay costs of the suit.

So it seems to me that when brand owners come up with their names they need to consider how the common man in the country in question would pronounce certain words! Very interesting."

Glaxo gets asthma patent relief by claiming Cipla abuse

Afro Leo has been alerted by Tim Ball to the judgment of Prinsloo J, as Commissioner of Patents, handed down on Wednesday in the matter of Glaxo Group Ltd v Cipla Medpro (Pty) Ltd – Patent 90/7136. Tim has also kindly contributed the following summary and comment:

"The patent in issue is Glaxo’s patent on its SERETIDE asthma product, containing a combination of salmeterol and fluticasone propionate. Glaxo’s equivalent patents have been revoked in the UK and Ireland (ed: see an Irish case here).

At grave risk of oversimplifying the facts (described in the proceedings as a “procedural quagmire”), Glaxo sought to have Cipla’s application for revocation of patent 90/7136 struck out on the basis that Cipla had abused the court’s process. Cipla had earlier filed a similar application for revocation of the patent, but, in the face of a procedural challenge, had elected to withdraw the earlier revocation application and start again with a fresh application. Glaxo sought to have the new revocation application struck out, and to force Cipla to continue with the procedurally-challenged earlier revocation application. In this regard, the court said:


“[36] In lighter vein, I proposed to counsel during the proceedings before me that this was akin to a situation where the helpers of a battered boxer throw the towel into the ring, signaling the surrender of their charge, only to have the towel thrown back at them with the referee insisting that the battered boxer is not allowed to surrender, but has to soldier on so that he can be properly knocked out. To me this seems to be legally untenable. The respondent's deponent, in the opposing affidavit to the abuse application, puts it as follows:‘I respectfully submit that it is manifest that it is Glaxo that is perpetrating the abuse. What Glaxo is attempting to achieve is a delay of CIPLA's access to Court. Nothing less. Why it wishes to reinstate it to have it struck [out] has never been explained. It cannot be explained. There is no question of "due process" not being followed as a result of CIPLA withdrawing the allegedly procedurally flawed 2006 revocation application. Faced with the allegations of procedural irregularities, CIPLA withdrew the 2006 revocation application. There is no reason why this court should be burdened with hearing an uncontested dispute on procedural flaws.’ With these sentiments I agree.”


Central to the matter was the issue of whether Glaxo’s success in a rule 30A application would have brought the dispute to an end, if Cipla had not withdrawn the earlier application of its own accord. In this regard, the court stated:


“It was argued on behalf of the respondent that the applicant's submission that the effect of success in the rule 30A application would bring an end to all revocation proceedings between the respondent and the applicant, effectively meaning that the respondent would be unable to challenge the registrability of a patent of dubious validity, has no merit: it was submitted on behalf of the respondent, correctly in my view, that rule 30A is clearly aimed at procedural irregularities and striking a claim for non-compliance with a procedural requirement does not mean that a litigant is non suited from bringing the identical action for the identical relief in instances where none of the procedural irregularities are present. It was submitted on behalf of the respondent that the logical conclusion of the stance adopted by the applicant is that the issue of the validity of the patent is res judicata between the parties and that the respondent can never challenge the validity of the patent again. This is untenable.”


The court dismissed the abuse application. Nevertheless, the exercise gained Glaxo gained over a year, and it is now unlikely that the revocation could be finalised before the expiry of the patent."


Readers may recall that Tim represents Cipla whose frustration (no doubt shared by asthma sufferers) is evident. Afro Leo is not offended by Glaxo's litigation techniques. The case seems to illustrate the disadvantages of having a deposit system for patents (perhaps compounded by inevitable litigation delays in revocation proceedings). However, it also seems that Cipla themselves delayed in attempting to revoke the apparently invalid patent.

Thursday, 18 February 2010

A huge sigh of relief

....just swept through the IP profession in RSA (and the liability insurers).

"The North Gauteng High Court handed down judgment in the case of Oilwell (Pty) Limited v Protec International Limited and Others (case no. 44835/08) on 17 February 2010, ruling that a trade mark assignment agreement entered into without prior Treasury approval, does not constitute a contravention of Regulation 10(1)(c) of the Exchange Control Regulations, 1961, and that a contravention of Regulation 10(1)(c) would, in any event, not render such an assignment agreement null and void, ab initio."

Chris Job and Werina Griffiths summarise the news here. Some Afro-IP background here.

More comment to follow.

The Budget Speech - some IP implications

Yesterday, RSA's new finance minister Pravin Gordhan delivered his 2010 Budget Speech. With the help of a useful summary of the speech from Moneyweb, Afro Leo considers some of the IP implications below:


  • Exchange control reforms are proposed: the proposed reforms do not appear to impact the continuing effect of this form of protectionism on the international technology transfer market and IP licensing requirements (which include intra group brand licenses) where RSA residents are involved. There is some talk of promoting RSA as a gateway to Africa and for dropping some of the controls to encourage this development.
  • Tax on a pack of cigarettes to increase by R1.24 from R7.70 to R8.94. Beer to increase by 6c a can and wine by 16c a litre. The impact is likely to squeeze profits on these goods. Branding may become even more important to retain customers, and those with smaller ad spends are likely to suffer. Counterfeit goods may increase to meet the addictive demands associated with these products.
  • Congestion, pollution and landfill taxes are considered. The need for alternative solutions is likely to continue spur innovation in this area. Afro Leo thinks that it is going to be even more difficult for any trade mark lawyer to secure rights over the colour "green".
  • Real public spending growth limited to +- 2% per annum, lower than preceding three years. Meanwhile the public sector wage bill almost doubled in five years. Afro Leo hopes that CIPRO is/has been in the front of the queue for funding and wage increases.
  • Economic growth of 2.3% projected for 2010, increasing to 3.6% by 2012. Modest by recent RSA standards but may positively impact on local IP filings which declined (especially trade marks) remarkably in 2009
  • 2010 FIFA World Cup to contribute 0.5% of GDP in 2010. Perhaps the compensation for the vice like control FIFA has over the tournament and all advertising around it. It is worth considering too that "so far, government has spent R33bn preparing for the soccer games."
  • R8.4bn for fighting HIV/Aids with antiretroviral therapy. This spending is likely to spur the ongoing discussion about costs and the economic role of IP in fostering innovation and/or restricting access to ARVs and related infrastructure.

Wednesday, 17 February 2010

Yet another gene patenting storm brewing in Tanzania

The East African reports that Tanzania is planning to move to court to stop US and Brazilian governments from patenting a sorghum gene isolated from a sorghum variety found in Tanzania.

The gene known as SbMATE is not only useful in sorghum but may also be used in other crops to produce crops that are tolerant to aluminium. Aluminium is commonly found in soils and is toxic to the roots of many food crops, including wheat, rice, and maize. Aluminium toxicity stunts the growth of crop plant roots and inhibits their uptake of key minerals.

It is not clear which court or courts Tanzania is likely to file the matter; in so far as the USPTO website reveals that US patent number 7582809 was granted on 1st September 2009 to the Secretary of Agriculture (Washington, DC) and Brazilian Agricultural Research Corporation (Embrapa). It would seem that the patent application for the same invention is pending in Australia and EPO, and possibly in a host of other countries designated in a PCT application filed on 9th May 2008 relating to aluminium tolerant sorghum gene.

Tunisia goes techie for trade marks

Tunisia's Trade Mark Office issued a fresh set of regulations on 1 January 2010 as part of its ongoing efforts to facilitate trade mark registration and renewal procedures:
• The publication of trade marks, patents and designs will henceforth be distributed on CDs, without hard copies. This is a lot swifter than the traditional technology of the printing press and will result in a reduction in the amount of time consumed in completing official registration procedures.
• Official fees for renewal certificates of trade mark registration are to be paid together with the renewal application fees and not, as previously, following issuance of the certificate.
Source: INTA Bulletin, vol.65, no.3, 1 February 2010.

Tuesday, 16 February 2010

The rise of the ASA

A decade ago the Advertising Standards Authority of South Africa (ASA), like many self regulated industry bodies, was regarded as well conceived but rather toothless. Today it is considered an excellent forum for, amongst other things, airing packaging disputes. It is quick and relatively inexpensive, and its rulings have a significant impact on how companies (especially FMCG companies) advertise their products. It is also relatively transparent with a website that is informative and generally up to date. Its credibility is such that it is often preferred to the High Court for those trade mark disputes that fall within the ambit of its code. However, it is not without controversy - for example the "imitation" provisions, in certain situations, give more protection to local and foreign trade marks than the "infringement" provisions in the Trade Marks Act and also at common law generally. The latest usage stats reveal that it receives more than 2000 complaints a year (100% up on 2000/2001), of which 10% come from competitors - more than enough rumblings to attract the attentions of this blog, especially as the ASA is currently calling for proposals for the amendment of its code.

Afro-IP is delighted to announce that over the next three months guest blogger Sara Spiro will be writing a Monday column dedicated to the ASA. In addition she will be collating any and all comments or proposals for the amendment of the ASA code here - but please before 25 February if you are proposing amendments, as the deadline for submissions to the ASA ends on 26 February.

Monday, 15 February 2010

Interdict pends “pending” decision

In Sanofi v Cipla Medpro (Court of the Commissioner of Patents) Claassen was called on to decide an issue around the fact that the Applicants did not use the procedures set out in Section 51(1) of the Patents Act but issued the interdict proceedings to create a "pending action", as provided for in Section 51(9), to enable them to issue the amendment application subject to that "pending action". It's convoluted but the meaning of the word "pending" in the section was crucial to Claassen’s consideration, and the reason for its importance is explained in paras 3-5 of the decision summarised as:

“Respondent objects to this procedure because it is by-passing the provisions of Section 51(1), which specifically provide a very special procedure to obtain an amendment. This procedure differs radically from the normal Court proceedings. The regulations prescribe a procedure that actually puts the objector (Respondent in casu) in the position of a Plaintiff having to file full particulars of claim in respect of its objection. The Applicant then becomes the "Defendant' having to plead to the particulars of claim. The objector gets another bite at the cherry by way of replication. The objection is therefore based on the fact that the Applicant is in effect now bringing an amendment "on an urgent or expedited" manner where no such urgent or expedited procedure is provided for in the Act or the Regulations. He is also prejudiced, in submission, in not being able to "reply" to the relief sought (i.e. its objection). The further objection is that this procedure cannot be followed because one cannot get any relief on an invalid patent. Therefore until the patent is amended, there can be no question of infringement. On that basis it is submitted that the interdict procedure was totally wrong (i.e. "abuse" of the process, but not in a pejorative sense). “

In Lundbeck Southwood had found that there is "nothing in the ordinary sense of the word "pending" that prohibits this procedure". He decided that once a procedure is issued it is pending, regardless of when it is to be finalised or comes before Court. Claassen was being asked by the Respondents to find that Southwood J was "clearly wrong" or that he was "convinced' that he was wrong, but he could not - see “para 8”. By agreement between the parties then, Claassen allowed the amendment and dismissed the interdict application.

Thursday, 11 February 2010

Egypt moves towards Creative Commons copyright licence

In her recent article "Egyptian License Draft Open for Public Discussion", Michelle Thorne cites some significant recent achievements notched up by Creative Commons in terms of copyright licensing in the Arab world. These include the first BY-NC-SA draft to be adapted to Egyptian law (you can read it in the original here).

Afro Leo reminds his readers that Creative Commons is an ingenious device by which copyright owners can give potential users of their work guidance as to what sort of use, if any, they can make of their work without needing to look for them and contact them in order to negotiate a permission. BY means "attribution only", NC means "non-commercial" and SA means "Attribution-ShareAlike". He also notes that, of all the countries in Africa, only South Africa has an up-and-running Creative Commons scheme, though there are ongoing projects to introduce CC licences into Tanzania and Tunisia too.

Avoiding the ambush

"The key is not to panic. Remember the burst of gunfire may not be aimed at you."

You can take Jeremy Clarkson's advice on how to avoid an ambush or you can watch this:




ABNDigital talk to Carni van der Walt from Posterscope, Michael Murphy, Director, Bowman Gilfillan and Nunu Ntshinglla, group CEO, Oglivy South Africa about problems faced by advertisers ahead of the upcoming World Cup post Metcash and the Dean v Kelbrick banter on this blog.

Carni explains the difficulties faced by middlemen selling advertising space in sites that risk being proclaimed "controlled access sites" (ed - with just over 100 days to go the indecision by municipalities does make life extremely difficult) . She also explains one way of getting around the Metcash decision. Nunu (ed -whose views were probably softened because her agency represents both sponsors and non sponsors) explains the virtues of using tourist destinations for advertising, and of being creative. Michael (no stranger to these issues - his client took on SAB in the "laugh it off" matter) puts it bluntly "read the by-laws and make sure you understand what they mean".

But don't underestimate these municipalities - just yesterday Debbie Marriott" showed Afro Leo accepted trade mark applications for the "shape and configuration!" of the Durban stadium covering a range of classes claimed in the name of the local municipality. Are these really trade marks? You must be kidding me.

Tuesday, 9 February 2010

Mauritius: IP alive and well ...

Although it is the only known home of the famously extinct dodo, Mauritius is also home to a fairly fully-fledged intellectual property regime which has recently been summarised in this extremely useful article in International Law Office by Malcolm Moller and Gilbert Noel (Appleby). The survey covers both substantive and procedural IP law, as well as describing the features of Mauritius's registration system. The authors add:
"Legislation on industrial property in Mauritius is undergoing review. The government's ambition is to enhance a legal environment that keeps abreast with international, constantly evolving trends, thus making Mauritius a platform with a sound legal framework to protect the IP rights of internationally well-known brands".

Brand Bullies: IP and the SMEs

Afro Leo has recently come across several articles (see here and here) appealing about the difficulties faced by small companies in defending trade mark infringement claims. Soulsa failed to take an iffy decision on appeal because of cost and suffered a name change, Orange Ink used the press and found themselves agreeing to a restrictive use agreement (a positive outcome from their point of view) and the other, Bodtrade 54, were so elated in defending an opposition in the UK by Virgin Enterprises that they have claimed it as a "David and Goliath" type victory. Does this make a case for the introduction of legislation against unlawful trade mark infringement threats (as in the UK) or is it really a case that South African companies, especially SMEs, are either naive about brand protection or are simply chancers prepared to take the risk?

Trade mark litigation in RSA is often about aggressive letters of demand with so many "thereofs", "wherefores", "mutatis mutandi", "inter alias" and broad claims of "unfair advantage", "detriment", "undesirables" and "infringement" that companies capitulate in the dense wordage without properly defending the case. In reality they should consult a lawyer but often do not. Some realise that these letters, if ill-conceived, are excellent material for the likes of Noseweek (who get copies quite frequently) and others enter their own defence. Costs, without a doubt, are a factor - few income statements of SMEs even have a provision for this type of expense even though, on a worldwide level, the relative cost of trade mark litigation in RSA is surprisingly cheap. The result is that lawyers will continue to send aggressive letters with broad claims and why should they not do so? They are effective. It is also very unlikely that "unlawful threats" provisions will be introduced and the disapproving words of the SCA in recent decisions are unlikely to change the way in which trade mark litigation is conducted.

The SMEs, of course, are also brand owners with the advantages of local legislation available to them. Few though invest in filings and even fewer in cheap pre-clearance searches before choosing trade marks. Not all SMEs are chancers; many are looking to create their business as cost effectively as possible and most are ignorant of the importance of brand protection which is actually an opportunity for lawyers seeking new clients, for CIPRO seeking higher filings and for the SAIIPL - one acronym that sadly, very few SMEs even know about.

Thanks to Mary-Ellen Field for the Forbes article.

Monday, 8 February 2010

Uganda's Copyright Regulations Finally published!


The Attorney General of Uganda has finally published the Copyright & Neighboring rights regulations 2010 that many players in the media industry have been looking forward to; or loathing depending on who you are! The regulations are intended to fully operationalize the Copyright Act of 2006.

A few highlights in the regulations include the following:

* Procedure for application for copyright. Note that registration is not mandatory although its of tremendous value in proceedings to enforce Copyright.

*Registration of assignments and licenses.

*Extensive procedures for registration of collecting societies.

*Provision for copyright inspectors with powers to seize allegedly infringing material.

*the regulations provide for a maximum sentence of 6 months imprisonment for those found guilty of copyright offences or fines of up to the equivalent of US$200 or both, neither of which seems deterrent enough to stem pervasive infringement of copyrighted works.

The other key thing to note is the publication period of 60 days before grant of a Copyright certificate, similar to that under the Trademark Regulations.

The question is, will the Registrar cope with the huge number of expected registrations in the weeks to come? The Attorney General deserves a pat on the back, and a request for funding to automate registration. This would definitely minimize backlog and streamline the registration system.

Life is too short...

Last week Cameron Dunstan-Simth (KPMG lawyer) sent Afro Leo an example of how two companies (Yuppiechef and Woolworths) have tackled (and created) a cybersquatting threat in a novel way, with positive spinoffs for all involved - sadly only the lawyers lose out: read on -

"This is a quick bit of inside news that we had to share with all our fans. Yesterday we did something sneaky for a good cause that has created quite a stir. We held Woolies ransom. Read about it here. Once you're done, be sure to get involved and donate so we can make Woolies pay;) Do it do it do it. We take our hats off to Woolies for the way they responded and are super glad they didn't send their lawyers in;) They added R2500 to the kitty that will go straight to Soil for Life, the charity we are supporting in 2010." (Note from Yuppiechef)

The mature way in which Woolworths have responded speaks volumes. Yuppiechef - opportunistic and innovative - they believe that "life is too short to flip an egg with just any run-of-the-mill spatula". Well, perhaps it is...

Friday, 5 February 2010

cold water on hot air claims

Some of us wish the vuvuzela had never been invented – especially after Christmas, when thousands of children started playing their new toy. But others are happy to claim to be the inventor – in fact a number of different persons and institutions all want a slice of the cake. The first is a soccer fanatic, who created an early version and in fact produced an album of sounds called ’vuvuleza cellular’! The second is the Nazareth Baptist Church, which states that their congregants have used the vuvuleza for about a century in church ceremonies. Thirdly, there are a number of applicants for the trade mark ‘vuvuzela’, some with apparently more merit than others.
Carl van Rooyen of Spoor and Fisher has given a useful analysis of possible rights to both the instrument and the name, and concludes that the word describes a type of allegedly ‘musical’ instrument and is consequently unregistrable because it is generic. The full argument can be read here:
http://www.polity.org.za/article/no-one-entity-can-lay-claim-to-owning-the-vuvuzela-2010-01-29

Thursday, 4 February 2010

More about Alice

On the 25th and 26th January 2010, the European Patent Office (EPO) in Munich heard a patent challenge by the African Centre for Biosafety on behalf of a rural community in Alice, South Africa, in collaboration with Swiss NGO, the Berne Declaration. The patent was granted to Schwabe by the EPO in 2002. The patent is in respect of a method for producing extracts of Pelargonium to manufacture a cough and colds syrup, Umckaloabo. The Daily Dispatch newspaper reports that the challenge was successful, and that the patent was rejected ( it is not clear from the report whether the application was rejected or the patent revoked). Schwabe has indicated that it intends noting an appeal. The documentation relating to this matter is available at
http://www.biosafetyafrica.org.za/index.php/20100115256/Pelargonium-Patent-Challenge-against-Dr.- Willmar-Schwabe/menu-id-100029.html

Tuesday, 2 February 2010

Nigerian Piracy Case Moves Forward

The Nigerian national papers are abuzz with the news. The “King of Pirates”, Tony Onwujewekwe, has been arraigned before the Federal High Court in Lagos. It’s such big news that even the BBC has reported on it (audio story).

Alaba Market

Tony Onwujewekwe is a business man active in Alaba Market. Alaba Market is one of the largest markets on the West African coast. People travel from all across Nigeria and from many neighboring countries to shop in the large Lagos market. Throughout the past decade, Alaba has been a thorn in the side of the Nigerian Copyright Commission (NCC), the Nollywood industry and the Nigerian music industry. The market is notorious for its pirated goods. Shoppers can find cheap video discs of even the most newly released Nigerian and international films. Music cds go for USD $.50 to $1. Alaba isn’t only popular because of its low prices, but also because it is often the only place to find some of the top entertainment products. (See Nollyzone for an account of attempt to build an alternative to Alaba.)

The NCC has conducted a number of raids on Alaba market over the years, some of them resulting in severe injuries to police officers when the market sellers fought back. By 2008, the NCC had negotiated a memorandum of understanding with Alaba sellers who dealt in legitimate goods. This lead to attacks by pirate sellers against the legitimate sellers. Fear rose and piracy in Alaba did not abate.

Arrest and Prosecution of Tony Onwujewekwe

Last November, the NCC again went to Alaba. This time, they arrested the man they believe to be the king pin in Alaba’s piracy business, the so called King of Pirates. (World Premier Entertainment has an account of the proceedings leading up to the arrest on its blog.) The arraignment was yesterday. This will be an interesting case to watch going forward.

The Charges

According to The Punch, Tony Onwujewekwe is charged with three counts of violating the Nigerian Copyright Act. One count under Section 20(1)(a) – criminal liability for making for infringing copies of works for sale or causing them to be made for sale -, one count under 20(2)(a) – selling or leasing infringing copies of works - and one count under 20(2)(c) – possessing infringing copies of works for non-personal use.

Potential Punishment

For those who are interested, the statute requires Mr. Onwujewekwe to prove he did not know or had no reason to know the copies were infringing, otherwise he is guilty under Section 20. The punishment listed in the statute for violations of Section 20(2) is a fine of N100 for each infringing copy, up to two years in prison, or both. Violations of Section 20(1) are punishable by a fine of up to N1,000 for each infringing copy, up to five years in prison, or both.


Update 10, Feb. 2010 The Sun has reported that Mr. Onwujewekwe is to remain in custody at least until his bail hearing on 18th February. The trial is set for 23 February.

Update on Uganda's Current Anti Counterfeit Goods Bill, 2009

Here are a few welcome positions taken in the most current version of Uganda's Anti Counterfeit goods bill, 2009.

Key elements to note that try to mediate between those against this law, and those for it are as follows;

- Creating clarity on the definition of a Counterfeit. This version of the bill distances itself from the more expansive definition that includes patents and restricts itself to infringement of copyright and trademark rights. In particular, Counterfeiting means the "manufacturing, producing, packaging, re-packaging, labeling or making of any goods by which those protected goods are imitated in such manner and to such a degree that those other goods are identical to protected goods"

- on the contentious issue of medicines, counterfeiting includes the deliberate and fraudulent mislabeling of medicines with respect to identity or source whether or not such products have correct ingredients, wrong ingredients, have sufficient active ingredients or have fake packaging.

- Copies of articles protected by copyright or trademark law in the importing country are also deemed to be counterfeit if the permission of the rights holder is not procured. This clearly gives an option to those who wish to import generic copies to apply under the respective legislation for compulsory licenses.

- The bill gives the National Drug Authority express jurisdiction to handle matters where medicines are involved. This section allays the fears of those who felt that the Uganda National Bureau of Standards has insufficient competences to deal with or distinguish counterfeits from genuine products.

Overall, i must say that the value and urgency of passing this legislation after careful scrutiny by all stakeholders cant be overstated. The mindset that allowing products, irrespective of quality or standards will deal with our needs as a country is misplaced. What needs to happen is for the Government, private sector and donor community to come together and provide specific incentives for innovation in sectors such as drug discovery, development and manufacturing.

In the meantime, parties concerned about the excesses of the application of Intellectual property rights should put to use Compulsory licensing provisions under the law, which to the best of my knowledge have never been invoked. By so doing, the delicate balance between public and private rights in the use of Uganda's Intellectual property system will be put to test without severely undermining the attribution of creativity and ownership that form the basis for innovation.