Oct 11, 2018

IP ABC—Use of a popular Ankara pattern in a design. Are we liable for copyright infringement? | Infusion Lawyers




Question - 
I am Bode Balogun, a creative artist and CEO of Bright Prints Media, a new startup that specializes in 2D & 3D arts and textile prints in Osun State.

Two months ago, I was contracted by Segun Saka, a staunch supporter of a governorship aspirant in the state to design and make materials for the purpose of boosting the aspirant’s electoral campaign. According to Mr Saka, this design would be a customized Ankara with blue, green, and yellow colour themes, having the portrait of the aspirant in black and white, with a stripe around the circle bearing the party motto above the portrait and the candidate’s name below it. This design is a popular concept used in Nigerian political, religious, and traditional events.My company made over 100,000 yards of the textile to the specification and delight of our client. As campaigns intensified with each passing day, we printed more textiles for our clients. 


But on 27 July, my company received a court process demanding our appearance before the High Court of Osun State. Pink Media, a reputable print-media company in Lagos, is claiming 10 million naira damages against Bright Prints Media for allegedly infringing on their copyright in the design we used for Mr Saka. Pink Media also wants an injunction to stop Pink Media from continuing to print the Ankara materials.

After a quick check, we discovered that another supporter of the governorship aspirant had contracted Pink Media to make customized wax-print. The picture on their design and colour theme is quite similar to ours. They had completed and delivered theirs before ours. But we honestly did not know about their design before we started ours. Is there anything we can do? We are in despair as 10 million naira damages would damage our business.


Answer
You want to know if your design infringes Pink Media’s ‘copyright’ in the Ankara design. The answer is NO. Your design in the textile material does not infringe on Pink Media’s ‘copyright’.

This is because though your work is an artistic work under section 1(1)(c) of the Nigerian Copyright Act, section 1(3) provides that an “artistic work shall not be eligible for copyright, if at the time when the work is made, it is intended by the author to be used as a model or pattern to be multiplied by any industrial process.”
So there is no copyright to infringe on.

 


Since Pink Media’s design—just as yours—is “used as a model or pattern to be multiplied by any industrial process”, it is not protectable as copyright but industrial design.

Section 12 of the Patents and Designs Act is the relevant law. It provides that “any combination of lines or colours or both, and any three-dimensional form, whether or not associated with colours, is an industrial design, if it is intended by the creator to be used as a model or pattern to be multiplied by industrial process and is not intended solely to obtain a technical result.”

And unlike copyright which exists in a work once it is created, industrial designs have to be registered. To be registered, section 13 (1) of the Act requires that (a) the design is new; and (b) it is not contrary to public order or morality.


Therefore, for Pink Media to be successful in its action, it would have to register its design with the Trademarks, Patents and Designs Registry (if it has not already registered the design). But since—as you have mentioned—the design is a popular concept used for different social events in the country, it may not be regarded as new anymore.


Always endeavour to survey the design market before deciding to use any design or pattern already in use in the public.
A ‘popular concept’ is not the same as a public-domain design. If Pink Media had registered the design as an industrial design, the story would have been different, putting your business on the line. Always check, and check again.


By the way, the court vested with jurisdiction to hear the matter is the Federal High Court, not the High Court of Osun State.
Under both the Nigerian Copyright Act, and Patent and Industrial Designs Act, jurisdiction over intellectual-property matters is vested in the Federal High Court—section 38 Copyright Act; section 26 Patents and Industrial Designs Act.

So do not despair as sometimes the difference between despair and hope is just a different way of telling stories from the same set of facts. To properly respond to Pink Media’s claims before the High Court of Osun State, please consult an IP lawyer or law firm.

Best wishes
IP ABC
Follow-up questions, if any, are welcomed.


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