The Subtle Danger in Big Trademarks

The Subtle Danger in Big Trademarks

Did you know that Sellotape was a trademark till the word became so generic that it applied to all adhesive tapes

Could a trademark ever become too big for its own good? Yes. Well that depends largely on the territory of the trademark (trademarks are territorial rights). So a trademark in Nigeria could probably never become too big for it’s own good but in the United States and Europe, yeah, that’s a thing. Is it a good thing? I think it is and I’ll try to explain why I think it’s a good thing shortly.

Before I go into what it means for a trademark to become ‘too big’ in my opinion, I will explain what it means for a trademark to be big. And what is it for a trademark to be big? There is such a thing as well-known trademarks in the IP space, and well-known trademarks enjoy a lot of benefits over other not-so-well-known trademarks. One of the benefits well-known trademarks have is that, in some countries, even when a certain mark is not registered but it has gained enough reputation i.e is well known, such mark is still protected. Another major benefit for well-known marks is that Article 6bis of the Paris Convention basically states that no member state of the convention should refuse to register a mark which is already well-known in another member state. Remember the Tesla story in 2014? No? Okay. Basically, Tesla was about to introduce its products in the Chinese market but first, they needed to register their TESLA mark but they then found out that someone else had registered the mark, without use, in 2006 which was three years after Tesla first registered in the United States. Eventually, using Article 6bis, the United States was able to get China to invalidate the registration. So yeah, when you’re big, you’re big.

So what then is too big? Section 14(3) of the Lanham Act of the United States provides that a mark can be cancelled at any time such mark becomes the “generic name for the goods or services, or a portion thereof, for which it is registered”. What does being generic mean in respect to a registered mark? Elliott v. Google where the plaintiff filed to have the defendants trademark, Google, cancelled because according to them, it was common knowledge that the act of internet searching was now often referred to as ‘Googling’. Which is quite true because I’m pretty sure that everyone reading this has once said or hear someone say “Let me google this”, or “I’m going to google that”. This is of course because Google is undoubtedly the most popular internet search engine all around the world (except maybe in China?). So is Section 14 of the Lanham Act trying to say “Okay, you can have your trademark but make sure you don’t get too popular”? No. Not at all.

In the same case of Elliott v. Google, the Appeal Court, ruling in favour of Google, held that using the word ‘google’ as a verb to mean to search the internet does not automatically constitute generic use. Also, a claim of must be made in relation to a particular good or service. Moreover, when Congress amended the Lanham Act it explained that, “A trademark can serve a dual function—that of [naming] a product while at the same time indicating its source. Admittedly, if a product is unique, it is more likely that the trademark adopted and used to identify that product will be used as if it were the identifying name of that product. But this is not conclusive of whether the mark is generic.” What all of this basically means is that a verb use of the mark does not make it generic and until the act of using other search engines, other than Google, to search the internet is referred to as googling or other search engines begin to refer to themselves as googles, the mark is not generic. And you may think that is impossible but it has, as a matter of fact happened before to THERMOS, ASPIRIN and CELLOPHANE.

Back to Nigeria, according to the Trademark Act of 1960 (why we still apply laws from 1960 to regulate trademarks in 2020 is a question for another day), a mark can only be invalidated if it was registered on grounds of fraud or where such trademark is deceptive, scandalous, contrary to law or public morality. Why do I think our trademark laws need to be amended and should include a provision that a mark can be invalidated when it becomes generic? That’s pretty simple as I think it’s the same reason the whole concept of genericness is a good thing. A trademark should be distinctive and not descriptive. When a mark, any mark grows beyond that and gets to a point where it is used to refer to other products, which should ordinarily have their own marks, that mark is no longer distinctive.

In a Nigeria where such provision was in our trademark laws, we might have seen suits to challenge the validity of marks such as Close-Up, or NEPA – if it was a mark. And although I do not know, as a matter of fact, if these challenges would be successful or not, I know that they will be good for the health of our trademark laws and put it in a Tyson Fury shape as opposed to the Wilder shape -after his fight with Fury- it currently is in (this reference is based on their second fight only).

Author: Joshua Solomon

The Advent of 5G: The Impact on our world and IP

The Advent of 5G: The Impact on our world and IP

You thought 4G was fast, well, 5G is mind-blowingly faster and more speed means, it will burn your data. The transition from 4G to 5G this time is not just about small difference in internet speed, 5G is going to impact everything, changing the world as we know it and of course, IP is not exempted.

5G refers to the 5th Generation of cellular network technology. It explores a frequency spectrum higher than what has been used by previous generations and this gives it much better internet speed making it at least twenty times faster than the previous generation, 4G. Speed tests done at MTN’s 5G Demo Launch in Abuja show that a 2GB movie that would have taken 5 minutes to download on 4G, would be downloaded under 19 seconds using 5G and as for streaming, well, 5G might just be the end of video buffering. 5G also gives much lower latency rates, latency rate is the amount of delay between sending and receiving information. Human reaction time is about 200 to 300 milliseconds, 4G takes about 100 to 200 milliseconds to respond and 5G, does it in a millisecond, 400 times faster than the blink of an eye.

Asides watching and downloading movies, how will these mind blowing speeds affect our world? With such low latency rates, autonomous driving will fast become a reality; self-driving cars will respond to information around them and send information to other cars and objects around them faster than it would have taken a human to respond. With such reduction in time delay, remote interactions can be done in almost real-time, this means that online virtual reality simulations involving different people at different locations will be much more accurate. Also, remote surgery (which involves a specialist doctor performing a surgery on a patient from a different location) would now be possible and actually effective. 5G will enable more devices to be connected to the network and enable them to communicate and share data with each other – an internet of things. 5G is bound to bring new technological innovations to every sector of life. And then, there’s Intellectual Property.

To start with, it is common knowledge that behind every big technological innovation, there is or most times, there are a mass of patents trailing behind. 5G is a big technological innovation and of course behind it is a long trail of patents. According to IPlytics, the patent race for the 5G innovations have been on since 2012 and presently, big tech companies like Huawei, Samsung and Qualcomm lead the race for more intellectual property rights on this money train.

One thing that can be agreed on is that 5G is going to take the world to the next level of digital technology. When the Internet was first developed and became widely used, there was a need for intellectual property policies and practices to be developed to meet the new issues that came with the arrival of the internet. So also, with the rise of new technologies with 5G, there is a need for adaptable intellectual property policies and practices, to be able to answer the questions that come with the new innovation. For instance, as 5G speeds up the use and creation of the ‘Internet of things’, as defined earlier, questions like who would have ownership rights to the data stored and shared on and by these devices are bound to arise and new policies or new interpretations for existing policies have to be made to meet this new demand.

A new age of wireless technology also paves way for a multitude of new technological innovations. One of the goals of Intellectual Property Rights protection is to promote innovation and ensure innovators reap the rewards from their creations. As 5G brings new innovations, it also brings business on intellectual property rights protection in form of licensing, consultation, dispute resolution etc. The arrival of 5G will bring a new set of licensing disputes and intellectual property conflicts both on the use and development of the 5G technology itself and on new innovations that rise from its use.

5G generally underscores the use of the digital space and has a much larger network capacity than previous generations, this means that with the development of the 5G network, a lot more interactions would be done online and much larger mass of data would be saved and transmitted on the internet. This creates a potential risk because hackers with malicious intent would be looking to tamper with or steal some of this information stored or transmitted on the network, this means that effective digital security systems have to be developed to prevent data theft. This fear of data theft is what caused the United States and other countries to prevent the tech giant, Huawei from developing their 5G network, and truly in the past, there have been multiple cases of China-based companies being accused of Intellectual property theft like stealing trade secrets causing large corporations to crash.

Intellectual Property is key to development and though the 5G network is set to make innovation thrive, it also creates a risk of innovations being stolen in 5G speed. 5G is still on its way and there are still many hurdles to surmount before it becomes a reality. Though the blazing internet speeds might not be good for your data cap, with the rise in innovation 5G brings, IP might just have struck oil.

About the Author

Samuel Oluwasegun is a 200 level law student with avid interest in Intellectual Property law as well as Fintech law. He is interested in the use of Law and Technology to impact society.
He can be reached on
Twitter – (@I_am_Shegun)
and
Linkedin: https://www.linkedin.com/in/oluwasegun-samuel-a784b8179

SMART CONTRACTS

SMART CONTRACTS

Photo Credit: Cleveroad

Nowadays, every item seems to be getting a smart counterpart (many perhaps not worthy of the tag). We now have smartphones, smart watches, smart lighting, smart fridges, smart TVs and now we even have houses that are called smart homes. Against this backdrop, it should come as no surprise to anyone that we also have smart contracts. In actual fact, the concept of smart contracts is not particularly new, albeit, with a relatively recent implementation. The concept was first developed in 1994 by Nick Szabo, a cryptographer. Szabo came up with the idea of recording contracts in the form of computer codes which would be self-executing, thereby dispersing with the need for trusted intermediaries. Of course, the idea could not be implemented at that time because there was no Blockchain Technology, neither was there an alternative system of making irreversible transactions on the internet. Thus, the first implementation of smart contracts came with the development of Bitcoin in 2009, which not-so-incidentally was also the first meaningful application of Blockchain Technology. So just what exactly are smart contracts?

Smart contracts are self-executing contracts with the terms of agreements between parties being directly written into lines of code. The code and the agreements contained therein exist across a distributed decentralized blockchain network. The implication of a smart contract being based on the blockchain is that it is stored on a public database and cannot therefore be changed. Evidently, two distinctive qualities prove themselves indispensable to any discourse about smart contracts: its self-executing quality and its irreversibility; the former forms the core distinction of smart contracts from their traditional counterparts. Smart contracts are self-executing because they work on an If-Then premise, that is, certain terms are set, stating certain conditions or events that must occur to trigger execution, upon such occurrence the contract is executed (mostly a transfer of value) and is thus settled. This way, parties are not dependent on one another for fulfillment of obligations, neither are they dependent on any ‘trusted’ intermediary to secure execution. This is particularly useful in that, parties unknown to each other can easily enter into a contract without anxiety, since the trust needed in the contract is invested in the system rather than in each other.

It is important to state that while smart contracts are indeed based on the basics of a traditional contract, it would be grossly misleading to view them completely in the same light. The two types of contracts differ with respect to execution as already explained above. Also, a valid traditional contract is deemed a legal agreement, on the other hand, the codes in a smart contract embodying the terms of the agreement are not automatically endowed with such recognition, although this might be possible under certain circumstances. In order for smart contracts to be accorded considerable legal recognition, many techno-legal questions still have to be resolved.

One fact remains quite clear, smart contracts do have several benefits which are only possible as a result of the separate position it occupies from traditional contracts:

First, smart contracts afford parties a considerable degree of transparency as the terms and conditions with respect to an agreement are laid out bare in absolute detail, to be thoroughly checked by parties before agreeing to them. Furthermore, the lack of intermediaries in smart contracts ensures that efficiency is not lost due to communication gaps. Also, Smart contracts, as a result of their online nature, can be completed at incredible speeds, thereby saving precious time. With this speed comes a new dimension to contract-making in various fast-paced industries as well as bringing about a convenience that a traditional contractual process would struggle to attain. Smart contracts, when implemented correctly, have been said to be able to provide a greater degree of contractual security. In addition, with smart contracts, every agreement, every process, task and payment can have a digital record and signature that could be identified, validated, stored and shared; thereby, making for a better data storage.

The possibilities made foreseeable by the advent of smart contracts are so wide that they cannot be comprehensively exhausted in this article, however, in order not to create a misleading utopian image of smart contracts, it is necessary to shed light on some of its limitations:

The premise upon which the usefulness and potentials of smart contracts seem to be based, is that it is minimally plagued with problems. While this might be true (to an extent) in the present major use of smart contracts, that is, crypto currency; it is hard to imagine that this level of smoothness would continue to be maintained as the use of smart contracts breaks into other industries as has been projected. Smart contracts, not being very much endowed with legal recognition, do not have a dispute resolution structure comparable to their traditional counterparts. Thus, the efficiency of smart contracts largely rest on the lack of disputes, that is, an ideal setting, which of a fact would not be the case 100% of the time. In fact, it is not difficult to imagine some problems that would make situations very much unideal, for instance: some smart contracts are completely written in lines of code, one of the parties to the contract might not be well versed in interpreting the code and might end up entering into an agreement substantially different from what he intends, what would be the remedy in such a case? There could also be a misrepresentation of goods and since smart contracts can be completed online, what would be the remedy for the buyer in such an executed contract? Also, who would be held responsible for coding errors which render a smart contract utterly different from what is intended? What about the issue of jurisdiction in smart contracts completed between multiple nationals? All these are questions that come up and without a doubt, there are more. An examination of the development of contract laws in various countries reveal complexities that make contracts much more than simply parties, agreements and terms. It is therefore obvious that smart contracts are far from perfect as they do not yet have a satisfactory response to these possible (and in fact expected) complexities.

Indeed, smart contracts have quite the bag of potentials, however, it remains important that we do not get ahead of ourselves. In this vein, there is a need for the creation of some requisite framework that takes into account the peculiarities of smart contracts, as this is the only way through which the idea of smart contracts can be reasonably enjoyed without the positives being outweighed by the negatives.

Fabarebo Victor is a 300 level law student at the University of Ibadan. He takes interest in technological innovations and loves learning about multiple perspectives to issues.

Victor can be contacted through:
LinkedIn: https://www.linkedin.com/in/fabarebo-victor-a9a047157
Email: ayodejivictor938@gmail.com

Pornography in Nigeria: The Good, The Bad, The IP

Pornography in Nigeria: The Good, The Bad, The IP

Pornography as a topic in academic and youthful circles is nothing short of delicate and complicated. It is becoming an integral part of 21st century popular culture and carving for itself some reputation as a foremost driver of internet use. Not surprisingly, the average age of male first exposure to pornography is 11. Pornography is pervasive and its potentials for commercialization are massive. A 2018 article by business news website, Quartz, pegs the annual value of the pornographic industry between $6 billion and $15 billion, without ignoring the possibility that it may be far higher, inching close to a hundred billion dollars. Logically speaking, we ought not to kill the goose that lays the golden egg, ought we?


The debate surrounding pornographic materials may as well be examined from this point forward. Pornography has been squeezed to fit into the provisions of Section 233D of the Nigerian Criminal Code which prohibits the publication of obscene materials; an offence which is punishable by a maximum of 3 years imprisonment. However, that provision is generally a scam. In reality, Pornography ranks alongside bigamy and prostitution as pseudo crimes in Nigeria. These crimes enjoy recognition in the law books but social orientation prevents prosecution. Crimes like this gain cheap and common acceptance and overtime attain conscious legality. There is no perfect example than The Obscene Publications Act 1959 of England which was revised by the Crown Prosecution Service in 2019. The effect of the 60 year period between the original act and the amendment is to exempt criminal prosecution for pornographic publications that are consensual, causing no harm or fueling violence/criminality and was not likely to be reach an audience below 18 years of age. It is quite noteworthy however, that several laws prohibit child pornography and the enforcement rates are generally higher.


Moving forward, a recurrent query on pornographic materials has been the position of intellectual property laws on them. Put quite explicitly, intellectual property law is in a confused state over the protection of the rights embedded in pornographic works. Works in video, print and picture format are automatically eligible for copyright protection by virtue of the principle of fixation. Fixation simply refers to work produced in a tangible means of expression; written and audio recorded works are fixed, for example. For convenience purposes, the current conception of pornography is not the sexual activity but the fixation of such act into a tangible medium of expression – the form and not the content; notwithstanding that the content influences the form.


Haber in his article on The Copyrightability of Illegal Works as published in the Yale Journal of Law and Technology revealed that pornography and all other works that are characterized by originality are eligible for copyrights. This rule applies as long as they are fixed, that is, expressed. This is as a result of the fact that in some Berne jurisdictions (countries where copyright applies upon fixation like Nigeria), copyright laws do not explicitly prohibit the protection of works merely on the grounds of the illegality or morality of the content of such works. Haber further adds that makers of such works can in fact sue for copyright infringement.


Experience has however proven that the absence of an explicit provision preventing copyright protections for outlawed content is not conclusive authority that the courts will always recognize copyright protection. In his study on Copyrights and Graffiti in the UK, Bonadio remarked that the courts have over the years rejected copyright claims for illegal materials on the grounds of public policy and the “unclean hands of doctrine”, as expressed in the Latin term ex turpi causa non oritur actio. Ignoring the legal jargon, what this means is that no one can bring a valid claim in court if such claim originates from an invalid or illegal cause. Fair enough!


In the case of Glyn v. Weston Feature Film Co., the court according to Younger J. said the law was clear that “copyright cannot exist in a work of a tendency so grossly immoral.” In the case, the court did not grant a remedy for copyright infringement to the plaintiff, Elinor Glyn, for her erotic novel, Three Weeks. Scholars have suggested that copyright does indeed exist for such works but they only cannot be enforced when infringed. As an aside, the British courts have recently justified their position by relying on Section 171(3) of the Copyrights, Designs and Patents Act which states that the protection of copyrights can be prevented by any rule [of law] which restricts the enforcement of copyright, on grounds of public interest or otherwise.


There is no similar provision to that of the CDPA under the Nigerian Copyright Act even though such exists under the Patents and Designs Act. However, since pornography in this context has nothing to do with patents and inventions, it is to be taken that there is no express law preventing the copyrightability of pornography in this part of the universe. Nevertheless, under the unclean hands doctrine referred to earlier, creators of these works cannot validly enforce the copyright protection in Nigerian courts. In response to whether the lack of judicial protection will occasion economic loss, the answer is in the affirmative. To remedy this, modern video pornography creators have resorted to streaming to mitigate losses. Commercialization is thus achieved through paid subscriptions, ad revenue and, for premium sites that have a customer base ready to damn the incognito mode, downstream revenue works too.


To wrap this up, pornography and related matters are shrouded in much hypocrisy. In developed countries, pornography is considered illegal or immoral or unfit for intellectual property protection but the government smiles to the bank consequent upon the imposition of heavy taxes on the content, living off people’s addiction. It is recommended that clearer laws be made on the subject matter, both on the issue of its criminality as well as copyright protection issues. The government should also look to tackle piracy generally and introduce strong regulatory systems if it intends to build a sane and creative society, with or without pornography.

Author: Olamilekan Adebanjo

Mr. Macaroni on an IP bicycle!

Mr. Macaroni on an IP bicycle!

Remember the Mr Macaroni riding on a bicycle back in primary school days? Yeah, he is now into skits and has actually made it quite big. You are not alone dear, everyone is shocked as well (and lest I forget, please ignore those conspiracy theories about the name being Mark Anthony. Some people are just out to soil our childhood fun).


It happened that Mr. Debo Macaroni, the “Ooin! You’re doing well” crooner was greeted with a shocker on the first day of March. On his official Twitter page, he addressed a mail sent by Wema Bank to a customer in which his catchphrase was used alongside the picture of an unknown individual (definitely not him and arguably, not presented to be him). He lamented that such act is deceitful and fraudulent. He also claimed that the catchphrase was his intellectual property. Quite recently too, word got out that Piggyvest used the catchphrase, albeit partially, leaving out the “ooin.”

Given the recent spate of comments on Twitter, things could get quite confusing, particularly with the long list of non-expert advice available on the bird app. The pertinent question on every lip and keypad is whether Mr. Macaroni has a legal right to the catchphrase and consequently, sue.

Taking this one step at a time, a trademark is an IP asset that protects signs, symbols, letters, numbers, smell, shapes, colours or expressions that distinguishes a product or organization or individual from others. A service mark performs a similar function for services and service providers. Catchphrases are expressions that can be trademarked on the condition that they are not mere words; they must be used in connection with the aim of identifying a product or service. The effect of a trademark is to grant exclusive rights to use and gain commercial profit from the use of the catchphrase.


Overtime, Mr Macaroni has built his brand around the catchphrase and undeniably gained some level of commercial benefit through endorsement and advertisement deals. He can then be said to have a right over the use of the catchphrase against unauthorised use by individuals or enterprises. But just before you sue Wema Bank in your mind, some deep thought must be given to whether he had registered the catchphrase or not.

A trademark is not effective without registration. An action will most likely fail if he has not registered the trademark subject to some exceptions. Nigeria operates the first to file trademark policy as against the first to use doctrine. That is, the first to register a trademark necessarily has rights over it against the first user. However, the rights of the owner of an unregistered trademark which proves to be “identical or confusingly similar” may prevail over that of the owner of the registered trademark in a case where the owner of the unregistered trademark proves that he had been using his mark continuously for some time before the grant of the registered trademark. The Supreme Court decided similarly in American Cyanamid Co. v. Vitality Pharmaceutical Ltd (1991) 2 NWLR (Pt.171) 15

Moreover, an unregistered trademark can be protected where evidence of use of and goodwill acquired from a trademark can be established. Under common law, this is proof of vested rights to the mark and an owner that has continuously used and acquired relevant goodwill can bring an action against any infringement and maintain ownership of the mark.

In this instance, it is unsure whether Mr. Macaroni has successfully trademarked the phrase. If he has, that makes legal action very easy for him. If he has not, he can seek remedy under common law principle for unregistered trademarks if he is convinced that the requirements are met in his case. Section 3 of the Trade Marks Act allows him to successfully bring an action under passing off at the Federal High Court. He may also file a cease and desist letter with evidence of his use and goodwill of/from the trademark.

This author believes that Mr. Macaroni has a good case provided his action centres on the use of “ooin, you are doing well” as an entire phrase. Mere “you are doing well” as a catchphrase is not considered distinctive for a performer’s brand. The combination of the distinctive and novel “ooin,” ticks every box necessary for a valid trademark. On a final note, it ought to be commonly accepted by now, especially with the recent rise in awareness of Intellectual Property Rights, that the use of a symbol or expression of another person or enterprise without authority is wrongful and legally actionable. Living off someone else’s intellectual property and goodwill is just not freaky enough.

IPTLC RESEARCH TEAM

IP ISSUES IN BEYONCÉ’S HOMECOMING RELEASE


By Adewola Asaolu

                                                                                                                                                               Some weeks back on Netflix’s Instagram page, it was announced that Homecoming was due to release on April 17th, and it left people speculating what it could be; some guessed that it could be linked to the Queen of Pop’s 2018 Coachella performance, others thought it had to do with Spiderman. However, it concerns the former. This article will focus on the Intellectual Property Assets in the project.

COPYRIGHT

The copyright protects the artistic or literary expression of a creative work of a person, in this case, an artiste. It empowers the artiste to economically benefit from his/her work which must be original, fixed and on which sufficient effort has been expended. Copyright gives exclusive rights to the artiste over such work to the exemption of others. Nobody has the right to reproduce the song without the prior license of the artiste. This is also referred to as Mechanical Licensing. Beyoncé has the exclusive right over the songs, together with every other artiste that contributed to the album.

Section 10(4) of the Nigeria’s Copyright Act provides thus: “in the case of a cinematography film or sound recording, the author shall be obliged to conclude prior to the making of the work, contracts with all those whose works are to be used in the making of the work“.

The contracts referred to in that provision of the law include Spleet sheet and Cue sheet. They are explained in the subsequent paragraphs.

a.) Split Sheet: This is a document that stipulates the proportion of royalty due to the people that took part in the production of a song, from the producer to the songwriter to the artiste. Simply put, it is a short document that details which songwriter owns what percentage of a song. This means that the percentage of one of them might be more than the other. In the US, in the absence of a written agreement, each co-writer automatically owns an equal share in a song. The importance of a split sheet is to make co-writers of a song to agree in each’s ownership. It is written down in white and black

Now, to the Homecoming Album – it has 37 original tracks, and 3 others from other artistes which were modified, totalling to 40 tracks. In these songs, although there are solo tracks, there are others that have other artistes in them. How then does the split sheet come in? The split sheet will help each of the songwriters on a song to know the percentage of royalty due to him or her based on his or her input to the song. Hence, for example, the split sheet will stipulate how royalty from songs between Beyoncé and other artists like Jay-Z, Solange, Ciara amongst others would be shared or allocated.

b.) Cue Sheets: They are the primary means by which performing rights organizations track the use of music in films and TV without which it would be almost impossible for composers and producers and publishers to be compensated for their work. If the creator or producers of a song are more than one, the royalties will be divided other than equally but in a way that reflects each’s contribution to the song. Hence, for the Homecoming album, Beyoncé and any of the artistes featured in any song on the album would be entitled to royalties if any of their songs is an underscore in any movie or TV series.

SYNCHRONIZATION LICENCE

To start with, synchronization means when a song is played in the background of another work such as; games and adverts. To use any artiste’s song as a background song, the artiste must have licensed such other person. Thus, for any of the songs on the album to be used for synchronization, it is a prerequisite that a license must have been obtained. Failure to obtain a license can lead to a legal suit.

BROADCASTING RIGHT

For the documentary, Homecoming, Netflix has exclusive broadcasting rights. What this means is that only Netflix has the sole authority to broadcast the documentary and no other broadcasting corporation has such right. Netflix had to pay 20million dollars to acquire exclusive broadcasting rights. Broadcasting rights generate a whole lot of royalties for both the artiste and the licensee.

THE ARTISTIC DESIGN

The album cover has the lettering written in capital letters with a lot of Greek symbolism which makes it distinct from any random wording or title irrespective of the fact that there are a couple of books, movies with the title ‘Homecoming’. The album also has the portrait of the Beyoncé putting on a jewel-laced hat which is also symbolic. However, research does not reveal the artist who created this work as they were not credited for the design of the album cover. This may be because the artist has probably been assigned the work, having transferred their right.

In conclusion, where these IP assets are infringed, the potentials of a big judgment credit or settlement are high considering how much work was put into its creation.

ANALYSIS OF THE ENGLISH PREMIER LEAGUE IN RELATION TO BRANDS ENDORSEMENT, SPONSORSHIP, MERCHANDISING, BROADCASTING, ETC. AND IP RIGHTS INVOLVED.


Arojojoye Peter

The English Premier League is unarguably the best league in the world when it comes to sports business. This can be easily traced to the massive amount of money realized by football clubs and players from endorsement deals; sponsorship agreements between clubs and big companies; sales of goods bearing the Premier league club’s Logo; whooping sums paid to acquire exclusive rights to broadcast matches to fans across the globe. The terms, “Brand Endorsements, Sponsorship, Merchandising and Broadcasting in relation to the English Premier League are discussed below.

Sponsorship

Sponsorship simply refers to how companies provide financial support for a particular competition so as to promote the sales of their products or for people to request for their services. In the English Premier League alone, about 9 football teams are being sponsored by gaming companies such as Defabet, M88, W88, Man BetX, SportPesa, Betway. These companies pay the football teams huge amount of money to have their trademark in form of logos or names on the team’s kit. For instance, Manchester United has the biggest sponsorship agreement as they are paid £47m per season to wear the Chevrolet logo on their kit.

Recently, the English  Premier League signed Coca Cola as its official soft drink sponsor. In the words of  Sports sponsorship expert Nigel Currie, “My view is that Coca Cola will have seen what PepsiCo have done with their Champions League sponsorship, which they have used to promote different brands they own into different geographic territories….. the Premier League has a very similar reach in terms of popularity around the world, and Coca-Cola will be thinking they can do the same as Pepsi has done.”

The Main IP right involved in sponsorship is the trademark which is simply a name, logo, or symbol used to identify particular goods or services. In the case of Chelsea football Club which is one of the teams in English Premier League, the name “Yokohama Tyres” is plastered in front of the Club’s jersey as the Japanese tyre Manufacturer pays about £40 Million, just to have the name in front of the jersey.

Brand Endorsement

It is noteworthy to mention that the term “Endorsement” does not have an unequivocal definition. It means so many things depending on the context in which it is used. According to Investopedia.com, the term in relation to football deals refers to “a public declaration of support for a person, product, or services.” An endorsement deal is a contract which involves a form of advertisement involving a famous footballer who has a high degree of trust, recognition and respect among football fans. In the English Premier League, famous footballers such as Eden Hazard, Paul Pogba, David De Gea, Vincent Kompany, Kevin De Bruyne, Mesut Ozil among others all have endorsement deals.

Hence, Companies believe that such endorsement will influence fans to buy their products, leading to profits for the companies. It suffices to say club sponsorship and player’s endorsements by corporations are useful strategies to communicate with consumers. In February 2019, Harry Kane signed for the razor’s firm Harry’s to become the branded face of the brand.  Another footballer in the Premier League who boasts of big endorsement deals is Mesut Ozil. The Arsenal star surely  has the influence to expand his endorsement footprint with almost 10 million Twitter followers and over 28 million Facebook fans. This shows that Ozil has a huge social media presence and with this, he has endorsement deals with brands like Adidas and Mercedes Benz.

The Intellectual Property rights involved here are the patent and image rights of players as some of these endorsement deals involve players endorsing a new and useful process, machine, manufacture or any new and useful improvement such as quality of a new boot made by sportwear giants. For example, Chelsea’s Eden Hazard who has an endorsement deal with Nike for a long time now (since 2012) helped in launching the Nike Mercurial Ultra Flyknit Vapor in 2018.

Merchandising

Merchandising is often used as an effective tool to attract sponsorship for special events. It is common for organizers of football matches or football teams to authorize sponsors to manufacture and sell merchandise bearing the Football team’s or Competition’s trademark or symbol. Hence, football teams in English Premier League make a lot in terms of selling products with their names and logo on. Examples of such products are the scarfs, jerseys which are commonly worn by fans of different Premier League teams around the world.

The main Intellectual property right here is the trademark and industrial design or design patents. According to a research conducted by World Trademark Review in 2018, for the third year in a row, Manchester United boasts the most trademarks of any club in the English Premier League.

Broadcasting Rights

Broadcasting rights are very important as they help to protect broadcasters who pay huge amount of money to acquire the exclusive rights to broadcast major sporting event live to audience across the globe from making a loss in their business.

The Premier League’s last deal for broadcasting rights agreed in 2015 and which runs till 2019, was worth £5.14bn. Also, according to a report by the British Broadcasting Corporation, “the rights to show Premier League games from 2019-2022 have been sold for £4.464bn – with two live packages still to be sold…Sky Sports have won the rights to four tranches – 128 live matches – while BT Sport have one, comprising 32 games.”

The dominant IP right here is the related rights which can be relied upon by companies such as Sky Sports, BT, DAZN, TSN among others. In effect, it helps to protect broadcasters who pay huge amount of money to acquire the exclusive rights to broadcast Premier league games from making a loss in their business as there exist the related rights which can be invoked to prevent other companies from rebroadcasting their work or recording and selling videos of it without their permission.

In conclusion, it is clear that the relationship between the English Premier and other companies seeking to develop their brands through brands endorsement, sponsorship, merchandising, and broadcasting is a symbiotic one – a win-win situation for both parties. As EPL fandom increases, and the scope of IP continues to widen, it is no gainsay that EPL’s place as the biggest league in the world has come to stay – just as much as the indispensability of IP to sports will be gaining traction.

Blockchain and the Future of Intellectual Property

Pre-webinar

Blockchain is an incorruptible digital ledger of economic transactions that can be used to record data exchanges.

In actual fact, the concept behind the Blockchain was conceived as far back as 1979 by Raiph Merkel who used a peer to peer network to verify data structures but Blockchain was popularized in 2008 with the emergence of Bitcoin cryptocurrency.

Blockchain is not the same as cryptocurrency or Bitcoin. It only happens that few cryptocurrencies like Bitcoin and Ethereum make use of the blockchain system.

With the prospect of blockchain hitting industries like banking, insurance, entertainment, it may lead to legal issues in financial regulations, data privacy, security and intellectual property.

Speaker profile

Faith Obafemi is a digital lawyer whose practice area revolves around legaltech, cryptocurrency, blockchain, STO, ICO and smart contracts. As a Founding Partner at Lex Futurus, an international blockchain law firm, Faith helps her clients illuminate and navigate the crypto dark maze. She has spoken on the intersection of blockchain and law at events within and outside the country. When she’s not decoding the law for her clients, you can find her learning to become a Smarts Contracts programmer or watching Korean series. She is simply extra, a tripartite combination of a lawyer, writer and a geek.

Website: www.faithobafemi.com

LinkedIn: https://www.linkedin.com/in/faithobafemi/

Twitter: https://twitter.com/FaithObafemiEsq

Introduction

Be it in hype or substance, blockchain is a phenomenon everyone is learning to become familiar with as heralding the dawn of the fourth industrial revolution. Beyond the financial services industry, enthusiasts of the Distributed Ledger Technologies (DLT) are adopting blockchain for virtually one new use case daily, from agriculture to zebra-crossing Smart Cities. A survey by Deloitte showed that the future of blockchain is one filled with myriad opportunities for which individuals, companies and governments are trying to position themselves. Almost half of the executives surveyed said they would be investing at least $5 million in exploring blockchain this 2019. It can be expected that these investment in R&D (Research and Development) would result in innovations that need to be protected under Intellectual Property Rights (IPR).

Intellectual Property (IP) for something like a car or solar-powered fan is easier to manage than digitized IPs. If I paint you a landscape and sell to you, no one else would a copy of the landscape, except you. By the way, that’s a P2P (peer-to-peer) transaction, they are facilitated without a middle-man. Where the problem arises is when we go digital. Let’s assume I take a photograph of a beautiful sunset with my digital camera and sell to you. Since it’s a digital photograph, there is no guarantee I won’t sell the same sunset photograph to another, or even upload online for millions to download. Wouldn’t it be amazing to have a solution where, when I send you the digital sunset photograph, I will no longer have a copy, but you will. To solve this “double spending” problem for digital assets (including and especially money), the blockchain was born. From the above, we can connect the dots to a two-sided approach to blockchain and IP. On the one side of the coin, innovations involving blockchain-based solutions can be protected under IP. On the other side of the coin, IP can be better protected using the fundamental features of blockchain like time-stamping, transparency and immutability.

What is Blockchain?

First things first, bitcoin is not synonymous to blockchain. Blockchain is like electricity, bitcoin is like a bulb. Blockchain is to bitcoin what electricity is to a bulb. Without the blockchain, there would be no bitcoin. And, just like lightning bulbs is not the only thing electricity can be used for, so also, crypto is not the only thing a blockchain can be used for. There are a thousand and one use cases already developed or being developed worldwide.

In simple terms, blockchain is a digital record or a digital database which is replicated on several computers. Data, information and transactions are permanently recorded on the blockchain. It is distributed because the nodes (computers) that make up the blockchain network are scattered around the world. It is decentralized because it is not controlled by any single entity, rather decision s are reached via a consensus algorithm. It is immutable because once new data is entered, it cannot be changed, deleted or altered. It is unhackable, because hacking the blockchain will be an expensive and time-consuming task.

What is IP?

Whether you are reading this on a phone, tablet or PC, the fact is, these devices are all products of human imaginations. You can hold the physical devices, but you cannot hold the imaginations that resulted in their production. Intellectual Property is thus the ownership of human imaginations. To guarantee ownership, these imaginations need to be expressed, either in written words, drawings or artistic forms. It is the expressions that are protected. Thus, even if you have dozens of book ideas like me, you can’t claim copyright, until you actually write a book and publish it. IP is protected under different categories such as patent, trade secrets, copyrights and trademarks.

Decentralized Solutions

Here, we will look at how innovations involving blockchain-based solutions can be protected under IP.

Open Source

When you write a book, no one else can publish the same book in their own name or sell the book without your permission. This is because you own the copyright to your book. Similarly in the tech world, when a software programmer writes codes for an application or whatever, he or she owns the copyright to the code. This means, another cannot simply copy and paste the codes and sell or use it. However, it is possible for the owners of the books or code to make their work freely available for anyone to copy and use for whatever they like, or even to contribute to the work, by adding paragraphs to the book or more lines of code to the software. For books, this is called creative commons, while for software, this is called open source. Blockchain, at least the public/permissionless ones are usually open source. Meaning, anyone can download the software and begin using it, make reviews and suggestions, or even make changes to the software and release as their own work. Satoshi Nakamoto, an unknown entity known as bitcoin founder, made the Bitcoin blockchain codes open source.

Patent

Interestingly, even though the first popular DLT (Decentralized Ledger Technology: blockchain) is open source, individuals, corporate entities and governments have all been rushing to patent blockchain-based technologies, most of which are a spin-off from the open source. The financial services industry saw the first application of the blockchain technology. No surprise then that the first set of blockchain related patent filings were made by banks and other financial institutions. Some have been pushing for making all blockchain-related innovations open source. In the alternative, others have suggested creating a patent pool. All in a bid to kick against IP trolls who seem to have found a new vibrant territory. In fact, for this very purpose, the US Chamber of Digital Commerce set up the Blockchain Intellectual Property Council (BIPC) whose sole duty is guiding against blockchain patent trolls.

Patent Pool

A patent pool is a consortium formed by at least two industry players who each agree to grant license to other members under a cross-licensing agreement. Cross-licensing means for example, I have a patent for the seat belt, you have for the side mirror. I give you license to use my seat belt in exchange for using your side mirror in building our respective cars. To facilitate growth and development, instead of working in silos, blockchain industry players can create patent pools that allow for cross-licensing of blockchain patents to participants in the pool. Examples of such are the Blockchain Intellectual Property Council (BPIC) and the Open Invention Network (OIN). I will now take a short break before we proceed to analyze the other side of the coin: protecting IP with blockchain.

What informed your decision to study law as a young girl? Have those reasons in anyway changed or modified?

As a young girl, that sounds like eons ago. To be candid, I don’t even know why I read law. I simply picked it because it aligned with my interests then…being literature. On second thought, I also picked it to be rebellious, I always loved traversing the road less travelled. My mom teaches maths, my dad teaches STEM. All my siblings are in science careers. I’m the only odd sheep. Taking the road less traveled is also how I ventured into blockchain law practice.

In Maths we trust

Here, we will consider the ways in which IP can be better protected using the blockchain. This is based on the premise that math is a more reliable oracle. We are now in the digital age where other people’s work can be copied and disseminated to millions with just a click and without the owner’s permission or knowledge. Current Digital Rights Management (DRM) measures have been largely ineffective due to the internet providing the tools for unauthorized infinite reproduction of people’s intellectual property. Blockchain technology will enable creators to directly interact with their fans, track sales and conduct private auctions.

Smart IPRs and IP Registries

Currently, IPRs are recorded in traditional centralized registries, making it vulnerable to issues like tampering, manipulation and a fertile ground for IP trolls to operate. Registering IPRs on a decentralized ledger like the blockchain will instantaneously convert it into a smart IPR, facilitating easy transfer of ownership and licensing. Flowing from the above, such registry would be a smart IP registry. With smart IPRs embedded in smart contracts, the blockchain can be used to ensure real time payments to IP owners and the enforcement of IP agreements. Creators can now have direct access to their audience, without the middlemen labels that milk them dry.

Combination of smart IPRs and smart IP registries means issues regarding first to apply, first to register, first to use in trade and so on, would be things of the past. A transparent record that is time-stamped and immutable would make for easy proof, audit and tracing of the life cycle of an IPR. Time-stamping simply means stamping an entry with the time it was entered. Your messages on WhatsApp for instance are time-stamped.

Tokenizing IPR

Digitization of assets on the blockchain, in this case, intellectual property, by assigning a unique string of alphanumeric characters to it, is what tokenization is all about. Tokenizing IPRs would unlock their previously illiquid state, making transfer easy.

Proof of Authorship

As regards Copyright which isn’t necessarily registrable right in most jurisdictions; Blockchain would play a prominent role as evidence in proof of authorship as simply placing such work on the blockchain resolves any controversy before it even arises.

Proof of Originality

Counterfeiting, piracy and unauthorized use are some of the challenges IP owners battle with. This is especially rampant in industries that are IP-sensitive, like manufacturing, supply-chain, pharmaceutical and publishing. By adding elements of scanable RFID tags and storing the data of products on the blockchain, it is possible to verify the authenticity of goods, right from sourcing of raw materials until it gets into the hands of the consumer. This would be of great help to custom officers at the border, retailers and consumers.

Conclusion

With the blockchain, we can now have a digital footprint for IPRs. Technology is constantly advancing, blockchain as we know it today might be different in two, five or ten years time. However, one thing is sure, that as globalization continues to permeate every nook and cranny, we can expect blockchain’s fundamental features of transparency, traceability, time stamping and immutability to be the bedrock of whatever system wins tomorrow. Amidst all these, IPRs will be created and protected.

Question: With your experience in the field of legaltech, how would you advise a young lawyer to carve a niche in blockchain technology?

Follow these steps if you wish to build a career in blockchain;

  1. Learn. Take online courses on blockchain and crypto, there are free and not so expensive ones available.
  2. Build an online presence where you share with other what you’re learning. Inevitably gradually building a reputation as an expert.
  3. Attend and speak at blockchain, crypto and general tech events. Network with others and ask questions where you need clarifications.
  4. Find an opportunity to apply all you have learnt.
  5. Keep up to date by staying on top of the latest happenings.

While this is stated specifically for the blockchain practice area, it can be adopted for any other practice area.

The bottom line is “get known, increase your visibility.” Online and offline. Give value and be visible. I for example, come up first on the list after the ads for “blockchain lawyer Africa.”

Ways to get known;

  1. Endeavour to put out content that is relevant, omnipresent and interesting. Relevant means, if for instance, you have presented yourself to your audience as a real estate lawyer, 90% of content from you should be about real estate. And not Monday cybersecurity, Tuesday abortion laws, Wednesday election petition and so on. Your audience could get confused and have no idea what you should be known for.

That takes us to the omnipresent. Your content should be everywhere. Best way to achieve that is by being consistent. The most obvious benefit of being relevant and omnipresent is TOMA – Top Of Mind Awareness. You are the first person that comes to mind when people think of referrals in that practice area. I’m painfully aware that being consistent is really though, but it gets easy when you have a constant flow of content ideas. Here are ways to get a stream of content ideas;

  1. Google alerts
  2. Searching related hashtags on LinkedIn and Twitter
  3. Email subscriptions. I’m on the list of very good ones like Hustle, https://ambassadors.thehustle.co/?ref=a58185d473

Also, your content does not necessarily need to be in lengthy forms. Short twitter-like content would do, so far it is something that adds value to your audience. But of course, you should also devote time to long-form pieces.

It is no secret, today’s audience have a very short attention span, to keep them engaged, you have to be interesting. And no, you are not obligated to crack jokes. Passing across your message in simple terms, using every day, familiar analogies is sure to be found interesting. Remember ROI and you will surely see a ROI. By the way, your content could be text, image, audio or video, whichever works for you. You also do not need your own website before you can start putting out content. You can use LinkedIn, Pulse or Medium.

  1. On speaking at events. They do not have to be events solely devoted to your practice area. For instance, in July 2018, I spoke about cybersecurity at the African Women in Tech Conference which held in Nairobi. At the end of the day, there were discussions on cryptography and securing one’s private keys. So, you see, we still came around to my practice area.

Here’s a tip to getting speaking opportunities. I recently gave a colleague this tip and he has reported success trying it out. Search for events that catch your interest online (Eventbrite, Meetup) and offline. Contact the organizers and ask for the opportunity to speak on related legal aspects. Usually, they don’t have such topics on the agenda. And most times, you will get a favourable response. Also, be on the lookout for calls for speakers’ application.

One more thing I would like to mention; learn to program smart contracts. My fascination with smart contracts was how I got involved with blockchain. This led me down the path of taking a programming course (android and java) and other more blockchain-programming-specific courses. A lawyer who can code smart contracts will be indispensable in the nearest future. In fact, for lawyers in the tech niche, we owe our clients the duty to be bilingual, fluent in law and fluent in tech. https://www.law.com/legaltechnews/2018/12/05/mediators-need-to-become-bilingual-to-resolve-smart-contracts/. Even before landing on the smart contracts moon. Once can begin wetting their feet by automating legal documents. My best platform so far is OpenLaw. Please, check them out and play with resources on the site. I recently automated a simple hire purchase agremement.

The big secret of succeeding in blockchain: you have to learn before you can earn.

For those interested in learning, here is a free 13 weeks MOOC offered by University of Nicosia, Cyprus, register here: https://digitalcurrency.unic.ac.cy/free-introductory-mooc/

There are usually two cohorts every year, in February and September. At your successful completion of the course, you will be issued a certificate which will be recorded on the blockchain and verifiable anywhere.

As my last words in this lecture, I would like to address a question many of you might have, most especially young lawyers. Whenever I give this kind of lecture, I get asked in various ways, but same question, usually privately. It goes; “how safe is it to have a career in blockchain?” Here’s my answer: yes, things are uncertain at the moment concerning blockchain and cryptocurrency. However, one thing that is certain is change.

There is no such thing as a safe career for life. It’s all about developing marketable skills that give you a competitive edge. Develop skills that are manifold. Skills that make you valuable in multiple industries, multiple countries and multiple careers. Moreover, I have listed over ten blockchain pairs. You can never go wrong with any of them. So, rather than asking, “is a blockchain career safe?” You should be asking, “how do I future-proof my career?”

Question: Your practice in blockchain technology law seems to be hitch-free because of some flair for science and maths. Is it possible for a lawyer that is poor at this to succeed in the practice?

Let me tell you a secret, I hate maths! But of course, one can learn anything they put out their mind to. What’s important is being determined. Whenever I chat with people, they say Faith, you’re so techy. I laugh. I have spent countless hour watching online courses on different tech related topics, from cyber security, to introduction to computer science, etc. Most times, I understand almost nothing, but in future, I keep seeing references to something I once watched and never understood, and suddenly, I get an epiphany and clarity. So, what I will say is, you can do anything, whether you know maths before or not. Just be determined.

Question: Could you give some materials for further reading on smart contracts and technology licensing?

Sure, I have a google doc of curated links on smart contracts.

https://docs.google.com/document/d/1dhrNQa8M6qJE8kdeQnNWwzkKAy2vmzujc2pUiRmx8cU/edit?usp=drivesdk

Closing remarks: Wishing you all a bright career in law. Exciting things ahead, please position yourself properly!

Image Rights in IP Law: Limits to Product Advertisements

Image Rights in IP Law: Limits to Product Advertisements

It’s almost a requirement these days for barber’s shops around to have an image of either Obama or Ludacris in or outside their salon. This gets really confusing, especially when you hear that someone like LeBron James is on a 1billion dollar lifetime endorsement deal with Nike, so what unique endorsement are these small corporations running on. In Intellectual property protection, this borders on image rights.

Image rights have been defined as the expression of a personality in the public domain, also as those rights that individuals hold to the representation and commercialization of their persona. As a general rule on image rights, it is accepted that the use of a person’s image to create the false idea of the person’s endorsement, is an infringement on such a person’s image rights, under torts law, this referred to as passing off. In the case of Robyn Rihanna Fenty & Ors v. Arcadia Group Brands Limited & Anor, where the defendants were selling copies of T-shirts with an image of Rihanna on it without getting authorization from the artiste. The court recognized that with regard to the circumstances surrounding the incident, the use of that particular image created a false idea of Rihanna’s endorsement of the product and the court further held in favour of the claimant(Rihanna) as the action was regarded as an act of passing off.

Does this mean that salon beside your house with an image of Nicki Minaj on it’s banner has infringed on her image rights?. Well, let’s see.

One of the first things to be considered is whether or not the person or corporation using the image actually has appropriate rights to use the image. It is worthy of note that the fact that an image is in the public domain, say on Instagram, does not mean the general public has the right to freely use those images. A user needs permission from either Instagram or the owner of the image as the case may require. However, at the same time it is not necessary that a person gets permission from the person represented in the image before the person can be said to have rights to use it. In most cases, the photographer owns the rights to the picture, except where he was hired. An example is in the earlier mentioned case between Rihanna and the fashion retailer. Here, the fashion retailers purchased the picture from a third party photographer who actually had rights to the picture. The court recognized that as regards this, the retailers actually had the required rights to make use of the image.

Another issue to be considered here is whether or not the use of the someone’s picture is to represent the person’s endorsement of the product or brand, where such endorsement does not actually exist. In the case, Jordan v. Jewel Food Inc. the court held that the stores tribute advertisement to Michael Jordan created the idea of an affiliation between the two parties whereas there was none, this was regarded as an infringement on his rights.

Furthermore, laws of the US provide for the Right of Publicity. The Right of Publicity is the right of an individual to control the commercial use of his/her identity by preventing unauthorized commercial use by other parties. This right prevents unauthorized persons from making profit off the identity of another. In the earlier mentioned case between Michael Jordan and Jewel Food Inc. the court held that the tribute ad formed commercial speech i.e. it was meant to promote the brand, thus helping to improve their profits using the athlete’s reputation. Where the image or representation does not have commercial benefit attached, it can be permitted through the fair use doctrine, where it meets the requirements.

Presently in Nigeria, there aren’t many laws on the protection of image rights, however, Section 37 of the 1999 Constitution(as amended), provides for the Right to Privacy. Asides this, where Nigerian statutes and case laws fail to adequately provide rules on issues like image rights, Courts in Nigeria could apply case laws from other jurisdictions like Britain on deciding such cases.

The question on whether that small business beside your house is legally permitted to use that celebrity’s image on it’s poster, depends firstly on whether or not they have the required ownership rights or license to use the image. Then, does the use of that person’s image project the person’s endorsement which would boost the corporation’s commercial gain. It is at the discretion of the court to determine whether a barbing salon using Obama’s image on it’s poster is falsely implying his endorsement for their commercial gain.

When next you see that startup business in your area designing a wonderful poster with Naira Marley’s face in the middle, you might want to ask whether they have the required rights to make use of that picture.

About the Author

Samuel Oluwasegun is a 200 level law student with avid interest in Intellectual Property law as well as Fintech law. He is interested in the use of Law and Technology to impact society.
He can be reached on
Twitter – (@I_am_Shegun)
and
Linkedin: //www.linkedin.com/in/oluwasegun-samuel-a784b8179

What’s the probability that your screenshots aren’t an Infringement on Copyright?

What’s the probability that your screenshots aren’t an Infringement on Copyright?

Maybe ½. Remember Probability in math? Alright. In a class of 10, 5 students took screenshots of website pages, 2 of movies, 1 of a video game and another of a blog post. What is the probability that a screenshot picked at random does not violate copyright? Easy peasy, but I won’t answer it (winks). And not to worry, we aren’t having a math test. Let’s delve into screenshots (also called screen grabs) and copyright for a bit.

Screenshots are so common and so helpful. Still, imagine getting sued for the last one you took on your device. Anyway, let’s paint a scenario: Williams is a photographer and he has just posted a picture he took. An admirer of his work screenshots the picture and posts it on social media. He should probably be happy his work is gaining traction right? He is (well, consider also that he might be a big time photographer that makes big bucks from every shot) . Plus, don’t forget he has a copyright over that picture. So you can’t always assume that a copyright holder would not object to your use of a screenshot. That goes for various contents we find on the Internet, not just pictures. But before you think this whole copyright thing is getting extreme, it isn’t that deep.

On the use of screenshots, as with various other uses of copyrighted materials, there is a thin line between copyright Infringement and fair use. That’s right, the doctrine of fair use is what saves most of us, but it is so far-reaching that it has been described as “one of the most unsettling areas of law”. Thus, there is no one-size-fits-all kind of principle on this, Courts have to decide each case on its own merit. Whether or not one’s use of a screenshot is an Infringement depends on how much it can come under the umbrella of fair use. Fair dealing, same as fair use, is recognized as an exception to Infringement in section 5 of the Copyright Act. The exceptions that come under Fair Use are set out in the 2nd schedule of the Act. Unfortunately, the Act does not define fair dealing, nor does it set out guidelines to determine what fair dealing is.


There are four factors to consider in order to determine fair use, as provided by section 107 of the Copyright Act of the U.S:
1)Purpose and character of use;
2)The nature of copyrighted work;
3)The amount and substantiality of the portion used in relation to the copyrighted work as a whole;
4)The effect of the use upon potential market for or value of the copyrighted work


For the first factor, if the purpose for reproducing the copyrighted work — in this case, as a screenshot — is for education, research, news reporting, scholarship, criticism and comment, it would pass. This probably covers most blogs, news outlets, personal websites, school materials. As to the nature of copyrighted work, it’s pertinent to consider how original and creative the work is. If the work leans towards being more factual than creative, fair use might avail. On the third factor, there is no defined rule as to the maximum content of a work that can be copied. If a work is 2,000 pages, and one reproduces a paragraph, it’s probably not an Infringement. If the work is just a paragraph and it is reproduced in its entirety, that’s more likely to be an Infringement. For screenshots, highlighting a part of the whole or transforming it would probably pass as fair use. The fourth factor, which is probably the most important, has to do with money! If you’re making money from or using the screenshot commercially, the umbrella of fair use will more readily be blown away. If you’re affecting the revenue or in any way tampering with the pecuniary interests of the rights holder, a defense of fair use will most likely not avail you. So, for instance, if you’re not affecting Williams’ money, he might not come after you.

Don’t get too comfortable though! Because the content of a screenshot is copyrighted, making a screenshot of it means reproducing it. Again, remember, copyright gives the holder exclusive rights to authorize its publication, distribution, usage, reproduction, performance and preparation of derivative works from the original. So, technically, making a screenshot would probably amount to an Infringement regardless of what it’s used for. Way out? Ask for permission… where you can. Some sites put up contact information for getting such permission. Others tell you the extent to which you can go with the copyrighted material. For instance, Oracle’s official website specifies the limits to the use of screenshots derived from their content/work.

Now you know that if you’re making a screenshot of any content – say movie, picture, game, write up, website, anything at all – for personal use without sharing it, generally, no one will come after you. Also sharing it in such a manner that does not affect the revenue (most importantly) of the Copyright owner will probably not attract raised eyebrows, takedowns or a law suit. Nevertheless, the act of taking a screenshot at all, can by all means be deemed an Infringement. Using screenshots for commercial purposes without due permission will definitely leave a whole lot of suits in your trail, with the doctrine of fair use proving to be a feeble defense in that regard.

Quick question. Where do you think a tailor who screenshots outfit styles, sews them and makes money from it falls?

About the Author

Ibukunoluwa Adisa-Simon

Ibukun Adisa-Simon is a 200 level Law student interested in creative arts and intellectual property law. She also has keen interest in climate change issues and the Sustainable Development Goals. Ibukun can be reached on LinkedIn via https://www.linkedin.com/in/ibukunoluwa-adisa-simon-93a190184