Those of us who follow intellectual property on the continent are no strangers to stories from Nollywood about filmmakers’ efforts to fight the rampant piracy of their films. But here’s a new twist, brought to us by a report from PIIPA, Nollywood has taken it’s battle across the ocean to the United States of America.
Manning the US front for Nollywood are the African Artists Collaborative, a non-profit that assists African artists with US copyright registration and legal help, and the Filmmakers Association of Nigeria, USA (FAN USA), which founded the African Artists Collaborative.
The report expresses the the need for these organizations in the recognition that “for the first time ever, Africans have been able to create a commercial product which has been accepted by large niche markets in the United States, the Caribbean and Europe.” Afro-Leo supposes that these large niches are the large diaspora populations as she has often, and only, seen Nollywood films available in hair shops and hair braiding salons, the most visible business establishments of the African Diaspora population.
So far, it seems that the African Artists Collaborative and FAN USA have been able to assist quite a number of African artists through copyright registrations, DMCA take-downs, information about civil suits, and pushes for criminal enforcement.
Nigeria and the United States are both members of the standard copyright treaties. Thus, all films are copyrighted in both countries without any formal registration processes. However, registration in the US offers some important benefits, including a presumption of a valid copyright and the ability to receive higher damages at trial.
PIIPA helps match African artists with pro bono lawyers who assist the artists with registration of their works. Over 100 films have been registered. An interesting adaptation of something familiar to the trademark world, a publication listing all African music and films registered in the US is released periodically in order to put people on notice of the works’ copyrights. And following in the footsteps of the Nigerian Copyright Commission, films registered in the US receive a hologram sticker notifying buyers of the work’s copyright.
The DMCA, Digital Millennium Copyright Act, refers to provisions in the US Copyright Act that allow copyright holders to stop infringements occurring online. One important provision allows the copyright holder to work with third-party websites that host content to remove posted material that infringes the copyright holder’s work. The copyright owner submits a notice to the website where the infringing material was found. The website removes the content from the site, a take-down, and notifies the user who posted the content that the material was removed based on allegations of copyright infringement. This process is, perhaps not very creatively, called “notice and takedown.” From here, it gets a bit more complicated and we’ll leave that for another blog. Another important provision allows copyright holders to request information from ISPs in order to identify the people or entities behind infringing websites. Identifying the infringer is an important step as it lets the copyright holder know who to sue.
There are a number of websites online where one can easily find Nollywood films for streaming and downloading. A good number of these sites are providing the films without the permission of the copyright owner. African Artists Collaborative is helping artists obtain information from ISPs and remove infringing content from the internet. Infringing content has been removed from over 50 sites and “AAC has identified at least 14 habitual offenders that we hope can be prosecuted in the near future.” Afro-Leo would like to note here that this sentence is a little misguided as posting infringing material online is a usually a civil liability issue and only a crime under certain circumstances. (See Sec. 504 (false domain name registration), 506 (for profit distribution with minimum value requirement) & 1201 (circumventing technical protection measures) of the US Copyright Act.)
Most copyright infringement in the US is a civil action, a conflict between the copyright holder and the infringer. In order to help with civil infringement suits, African Artists Collaborative assists artists with the sending of cease and desist letters to infringers. Cease and desist letters are the first step in the road to a civil copyright infringement law suit. Though the report does not say so, Afro-Leo guess that PIIPA also helps match pro-bono attorneys to artists to assist with these actions. FAN USA also hopes to match artists with firms to handle actual litigation against these infringers. As most US states allow contingency fees, this is a chance for attorneys to assist without that pro bono tag.
One of the major activities highlighted by the report is a raid of stores selling infringing Nollywood movies in Kings County, New York City, New York. Afro-Leo was very surprised to read about these raids and about the Kings County District Attorney’s involvement in conducting the raids. She hardly ever hears of such things happening in the US and other than one case in her copyright law textbook (about secondary liability) cannot think of a specific instance of such occurring in the US. Either store raids for infringing goods are very infrequent, or they aren’t the national news story in the US that they are in Nigeria.
Although, Afro-Leo’s understanding is that District Attorneys’ offices usually focus on prosecution after the police have made arrests, not on enforcing the law in the streets, the King’s County DA’s office seems to be more active in enforcement (about 2/3s way down the page) and crime prevention. It even has community contact centers where people can report instances of copyright infringement and other suspect crimes.
FAN USA is very proud of its work in helping conduct this raid. The website showcases a number of pictures from the press conference afterwards. If it weren’t for the muzungu District Attorney in the center of the photos, Afro-Leo would swear they were taken in Nigeria. Congratulations to African Artists Collaborative and FAN USA for producing such a successful raid.
While the work being done by PIIPA, FAN USA and the African Artists Collaborative is proving to be very beneficial to African artists, the report released by PIIPA and the FAN USA website raise some concerns for Afro-Leo. Despite the promotion of IP education for African artists, there is still a lot of misinformation presented.
The FAN USA website instructs artists to register their copyrights with the US Patent & Trademark Office. Afro-Leo can guarantee that this will not work as the US Patent & Trademark Office (USPTO) handles only, you guessed it, patents and trademarks. Copyright registrations are handled by, you probably guessed it again, the US Copyright Office.
Glosses over the distinction between crimes and civil matters are common in both the report and materials provided on the FAN USA website. Unfortunately, this is not at all unique in the US or Nigeria. Afro-Leo also wishes the report would make a clearer distinction between having a copyright and registering a copyright, but again, this is another often confused concept.
IMPORTANT NOTE: These misunderstandings are most likely not the responsibility of PIIPA. Although PIIPA released the report, it appears to have been written by a FAN USA board member (though this is not entirely clear from the report itself). From Afro-Leo’s experience with PIIPA, it is a very professional organization with knowledgeable and experienced attorneys.
The full 4-page report is available in pdf form under a CC BY-NC-ND license, which means that you can download, print, email, share and distribute however you see fit to all your friends as long as you don’t do so in a way that is primarily designed to give you a commercial benefit (ie don’t sell it), and you don’t make any changes to the document.
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| Durban Harbour |
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| the irritant |
A line of clothing, a company that provides DJs. The two sound different enough that sharing a similar name shouldn’t be a problem, like a record label and a computer hardware manufacturer. But for Swaziboy Entertainment and Swazi Boy Africa, it’s not that simple. Much like Apple Records and Apple Inc., the two have found themselves in some overlapping territory. Unlike the Apple brands, however, this is not the story of two long established companies unexpectedly moving into overlapping areas. Swazi Boy Africa is a fairly new company and according to Swaziboy Entertainment, the two-word Swazi Boy is intentionally stomping on its ground.
Swazi Boy Africa is a t-shirt-only clothing line produced by Nkhosi Clothing. (Facebook photos showing the clothing line here.) Swaziboy Entertainment is “a promotional and events management company that specializes in providing entertainment in birthdays, engagements, weddings, corporate functions, Christmas and New Year’s Eve parties.” (More info on their extremely hard to read MySpace page here.)
Swaziland uses the international classification system for trademarks. (Section 16, Trademarks Act of 1981. Note: This is not the most recent TM Act for Swaziland, but is the most recent available online. Information about changes made in the 1994 Act are available here.) Products like clothing (class 25) are in different classes than services like entertainment (class 41), so it seems like there should be no problem.
Things aren’t quite that simple though. Swaziboy Entertainment also has t-shirts and other clothing items with its logo on them. And to complicate things more, the owner of the Swazi Boy Africa t-shirt line is also in the music industry; he’s a hip hop artist. And a hip hop artist that performs at the same venues as hired DJs. (example) This means, it is quite likely that both Swaziboy Entertainment t-shirts and Swazi Boy Africa t-shirts could wind up promoted at the same events.
According to an article in The Times of Swaziland, Swaziboy Entertainment is currently attempting to negotiate with Swazi Boy Africa. Whether the negotiations are to stop production of the Swazi Boy Africa shirts or work out some sort of licensing deal, Afro-Leo does not know. According to The Times, if an agreement is not reached, Swaziboy Entertainment will be taking Swazi Boy Africa to court.
In order to have a cause of action for trademark infringement, the mark needs to be registered. (Section 20 Trademark Act 1981.) Afro-Leo was unable to find out if either of the marks are registered. If they are both registered, the registration serves as prima facie evidence that the mark is valid. (Section 7.)
If the mark of the complaining company is not registered, the only matter of recourse is passing off. Given the great differences in the two marks and the statements by Nkhosi company that it’s t-shirt line in no way is related to Swaziboy Entertainment, passing off may be hard to show. Additionally, Nkhosi is based in and has sold most of its shirts in South Africa, outside Swaziboy Entertainment’s market.
What also may be important, and is unknown to Afro-Leo, is the commonality of the phrase “Swazi boy” in Swaziland and the surrounding areas. Is this a fairly generic term that Swazi male youth use to refer to themselves? If so, Swaziboy Entertainment may have a hard fight ahead of them.
Afro Leo would love to hear readers thoughts on the dispute, especially from those readers familiar with Swazi trademark and passing off law.
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| If only counterfeiters were voodoo dolls |
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| Effective or a checklist for counterfeiters? |
