Friday, 23 March 2018

Caroline Ncube

IP, PAIPO and the African Continental Free Trade Agreement

The African Union's foray into Intellectual Property regulation has been on two fronts. First, through the establishment of the Pan-African IP Organisation (PAIPO) and second, by including IP in the negotiations for the African Continental Free Trade Area (AfCFTA). There has been movement on both fronts recently. 

On 29 January 2018, Comoros signed the PAIPO Statute becoming the third signatory after Ghana and Sierra Leone who signed in 2017 and 2016, respectively. See the list of signatories and background information on PAIPO here, here and here. It remains to be seen if any other signatures will follow and whether the requisite number of ratifications (15) to bring the statute into force will follow.

The media has been awash with the momentous signature of the Agreement on the AfCFTA at the 10th Extraordinary Summit  of the Assembly of the African Union in Kigali, Rwanda on 21 March 2018.  African Union member states also had the opportunity to sign the Kigali Declaration on the establishment of the AfCFTA and the Protocol on Free Movement of Persons, Right to Residence and Right to Establishment. AfCTA legal texts and policy documents are available for download from TRALAC's website here (free registration required prior to access).

The AU Commission reported that 44 states signed the Agreement establishing the AfCFTA, 43 signed the Kigali Declaration and 27 signed the Protocol on Free Movement of Persons, Right to Residence and Right to Establishment. The AU has compiled this list of countries and what they signed.

Intellectual property rights will be included in phase two of the AfCFTA negotiations. An overview of the policy concerns that ought to be considered in these negotiations is provided in chapter 4 of Assessing Regional Integration in Africa (ARIA) VII: Innovation, Competitiveness and Regional Integration (2016).  The chapter concludes: "Both initiatives should use mechanisms open to them to safeguard TRIPS flexibilities to address development needs. A Continental Free Trade Area agreement on intellectual property could be the basis for a common approach to negotiating intellectual property trade and investment agreements with external partners. A strategic approach to intellectual property policy at continental level can also provide a basis for pooling resources among African countries and regional economic communities to build the heavy capacities required for ensuring intellectual property protection."

The discussion of these developments was continued in chapter 10 of Assessing Regional Integration in Africa (ARIA) VII: Bringing the Continental Free Trade Area about (2017), which I contributed to. This chapter canvasses some of the possible aspects that ought to be covered in the IP negotiations and draws from this working paper.  It will be interesting to see when the second stage negotiations actually take off and which aspects they will include. Watch this space for updates. 
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Wednesday, 21 March 2018


You are invited: The Public Interest in Intellectual Property Law

Vice-Chancellors Inaugural Lecture Series

Professor Ulrike Rivett
Society seeks access to knowledge, medicines and culture. How can intellectual property (IP) laws secure such access whilst protecting private property rights in the creative or inventive outputs of individuals, communities and industry? Professor Ncube will discuss options to craft laws that comply with international norms yet are responsive to Africa’s developmental context and support economic growth in the formal and informal sectors.

Caroline Ncube has served as Deputy Dean, Postgraduate Studies and Head of the Department of Commercial Law at UCT’s Faculty of Law. She is a Fellow of the Cambridge Commonwealth Society. She holds a NRF rating and has authored more than 70 articles, conference papers and book chapters. She is the author of IP Policy, Law and Administration in Africa: Exploring Continental and Sub-regional Co-operation and co-editor of Indigenous Knowledge & IP. She co-edits the South African IP Law Journal and serves on the editorial boards of several other journals.

Date: Wednesday, 28 March 2018
Time: Doors open at 17:00. Lecture starts promptly at 17:30
Venue: Kramer Law Building, Lecture Theatre 2, Middle Campus, University of Cape Town

You can out your name down by completing the form in this link.

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IP on a Wim - UJ IP Seminar Feedback & Request to Speakers

Full house
Afro Corne attended a packed IP seminar at the University of Johannesburg hosted by Professor Wim Alberts earlier this month. Not only were  some of the who's who of IP in South Africa present, but the speakers really put in an effort to get their points across. 

It is difficult to cover all topics on IP in a single day and so time was limited for each speaker. This meant that each of them had to really focus on the points that they wished to convey which in turn meant for high level contributions. It also ensured that audience attention was maintained throughout; if there was a topic that wasn't your game then one knew that in 25 mins or so later there would be a different speaker. So, a hat tip to Prof Alberts and UJ for putting on a great event.

In an effort to share the contributions to a wider audience, Prof Alberts and this blog are reaching out to the speakers to share their slides with this community. In addition, if you have any pics to share on the event, we'll post them in Sightings here where several have been uploaded already. Checkem out.

The rhino has cajoled fellow blogger Darren Olivier to share his and Maureen Makoko's slides on their topic: Not Following European Trademark Law: Ignorance or Arrogance (click on the link to view) which took a look at TM decisions for the year since the last UJ seminar to illustrate the common mistakes in not using the structured EU approach to the most popular of trade mark tests  - the"likelihood of confusion" test, and how they can be avoided.

Darren explained that "We have been approached by a number of different people for the slides and cases or for us to do a separate presentation to them. We are more than happy to do both, so its no problem sharing these slides on Afro-IP. Thank you".

The Prof wished me to convey: "I am humbled by those who attended especially as it drew an audience from academia, industry, government and the law firms. Thank you. Next year, we are going to do this again with an even broader range of topics and speakers, and it will be even better .If you have input or suggestions please send it to me and thanks once again for your support."

You can be sure that Afro-IP and this blogger will be covering it again! 

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How to encourage Innovation?

The Government of Rwanda (GoR) has sought and now received a very large amount of money to stimulate local innovation. The African Development Bank (AfDB) has pledged 30 million USD to be used by the GoR to support innovation and the innovation economy; essentially, the AfDB and the GoR is now the largest source of venture capital available to SMEs and others in the innovation economy.   The idea behind the fund is to attract additional funding through private investors and to "develop sustainable innovation ecosystems, spur entrepreneurial growth, address funding gaps, reduce poverty, and promote socio-economic growth." The news is reported here among other places.

This move is entirely consistent with other actions taken in Rwanda, where a great degree of government involvement is typical. It is also somewhat in contrast with neighbouring Kenya, where government involvement takes a back seat (relatively speaking) to private initiatives.  This blogger is not taking any position as to which model works "better", but does wish to take the opportunity to suggest a solution to a long-discussed challenge to innovators in the region.

Two things are pretty well established: (1) there is very low utilisation of formal IP systems in East Africa (Kenya has fewer than 1000 locally granted patents, and registers fewer than 500 copyrights yearly); and (2) there is substantially more innovation occurring in the region than would be suggested by looking only at the low utilisation of formal IP systems.

Some people have suggested that formal ("western") notions of IP are not appropriate for the traditional culture of "Africa" (whatever that means). This relies on a belief that African innovators are always willing to share their ideas openly for the good of the community. In this blogger's experience, this belief sounds great but is almost universally untrue. Most innovators are intrigued by the concept of a system with no formal IP, until, that is, they observe or perceive the theft (i.e., unattributed use) of one of their own innovative ideas.

There is substantial merit in the idea of a system that is not bogged down by overuse of formal IP (e.g., patent thickets, patent trolls, etc.). How, though, do you reward innovators without stifling the innovative economy?

This blogger proposes that the GoR should use the funding (in part) and offer to buy patents from innovators. For example, offer a fixed amount (e.g., $1000, or $5000) to buy any granted patent or utility model filed by a local applicant, regardless of the commercial viability of the patented invention. For this to work, however, the GoR must also pledge that it will never enforce and never re-sell any of the patents that it buys.

This proposed scheme would incentivise innovation, would immediately release the innovation to the public, and would still allow flexibility - e.g., the patentee can decide to sell the patent for a quick profit or can keep the patent and attempt to commercialise the invention using traditional methods.  Everybody wins! 
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Monday, 5 March 2018

Chijioke Ifeoma Okorie


This is a guest post by Desmond Oriakhogba (Ph.D. Candidate and Researcher in the IP Unit at the University of Cape Town) referencing the copyright infringement case against Multichoice, a provider of cable TV services in Nigeria where the court awarded damages in the sum of N6b ($16.6m)

According to Desmond:
The 8-year legal tussle in the Federal High Court (FHC) between Multichoice Nigeria Limited (MNL) and Musical Copyright Society Nigeria (MCSN) (Suit No.: FHC/L/CS/1091/11) over royalties for the use of musical works and sound recordings belonging to MCSN ended on 19 January 2018 with about N6b damages awarded in favour of MCSN.

MNL initiated the suit in 2011 wherein it claimed that MCSN is not an approved collecting society, and is not entitled to demand and receive royalties for materials used by MNL in the programs or contents hosted on their DSTV bouquet offered in Nigeria. MNL also sought a perpetual restraining order to prevent MCSN from demanding royalties against it.  Before the suit, MNL had received but rebuffed demands for royalties and pleas for meetings to negotiate royalties that may be due MCSN.

In defending the suit, MCSN also filed a counterclaim, wherein it described itself as owner, assignee and exclusive licensee of the musical works and sound recordings the copyright of which were being infringed by MNL since 2006. MCSN claimed about N10b in damages against MNL.

MNL did not deny or offer any evidence contradicting MCSN’s infringement claims. Instead, MNL argued that since MCSN was not an approved collecting society, it lacked the standing to make the counterclaim. It placed reliance on sections 17 and 39 of the Copyright Act (CA). Among others, section 39CA requires the approval of the Nigerian Copyright Commission (NCC) for any organisation intending to carry out the task of collective management of copyright and related rights in Nigeria. Section 17CA seeks to prevent unapproved collecting societies from enforcing any rights in the CA in court. 

Musical Copyright Society Nigeria (MCSN)
It should be noted that an objection raised on this ground by MNL against MCSN’s counterclaim was rejected by the FHC in a ruling delivered on 8 October 2012. Also, at the time of filing the suit and the counterclaim, MCSN was not approved by NCC to operate as a collecting society as required under section 39CA. Although MCSN was approved as a collecting society in 2017, before the FHC decided on the case, such approval did not and could not have had any relevance on the case, given that the alleged infringements took place before such approval.

The decision
The FHC struck out MNL’s writ for the failure of MNL’s legal practitioner or MNL itself to sign the writ as required by the rules of court. The court held that the void writ did not affect the validity of MCSN’s counterclaim. It, therefore, went ahead to determine MCSN’s counterclaim and entered judgment in MCSN’s favour.

On the issue of the status of MCSN as a mere exclusive assignee of copyright, the court placed particular reliance on the case of PMRS v Skye Bank.

In the PMRS v Skye Bank case, the Court of Appeal reviewed its previous decisions on the question of MCSN’s standing to sue for copyright infringement when it is not an approved collecting society. It came to the conclusion, after finding that MCSN sued as owner, assignee and exclusive licensee, that section 16 is independent of sections 17 and 39 Copyright Act when determining the locus standi of an owner, assignee and exclusive licensee of copyright in an infringement suit. In this regard, PMRS may be regarded as the leading authority on the locus standi question until the Supreme Court rules otherwise.

On the basis of the foregoing, the FHC found that MCSN is the owner, assignee and exclusive licensee of the works subject matter of the suit, thus confirming MCSN’s locus standi in that regard.

In deciding the case, the FHC took time to examine the evidence and the state of the law on damages in copyright infringement cases. It placed reliance on previous FHC judgments and section 16(4) Copyright Act. The FHC easily found that a case of infringement has been made out by MCSN against MNL, since MNL did not proffer contrary evidence in this regard.

It took cognisance of section 43 of the Copyright Act. That section presumes a plaintiff in an infringement claim as owner of copyrights in the allegedly infringed works. Such presumption is rebuttable by a defendant, or any other person claiming to be the true owner of the works. In this case, MCSN’s claim of ownership over the works was not rebutted by MNL. This further strengthened the court's finding, and rightly so, that the MCSN is the owner of the works under issue.

Moreover, the FHC found that MNL had a duty under the Nigerian Broadcasting Code to keep its broadcast log (BL). The BL would have assisted the court in determining whether MNL used works belonging to MCSN. MNL was issued a subpoena duces tecum for this purpose. But, it failed to produce same leading to the unrebutted presumption that producing the BL would have been against MNL’s interest.

Also, the FHC found unchallenged evidence both of flagrant infringement of copyright in MCSN’s works by MNL and of financial benefit by MNL arising from the infringement. The frequency and long duration of the unhindered flagrant infringement by MNL also weighed heavily on the FHC’s mind. Finally, the FHC was guided by the need to ensure adequate reward for copyright owners in Nigerian music industry and ensure that their labour is not abused by big corporations like MNL since they are largely ignorant of their legal rights [pages 63-74].


In a reaction to the judgment, the Copyright Society of Nigeria (COSON) which is the other collecting society in respect of musical works and sound recordings in Nigeria described the judgement as “bizarre and an attempt to turn [...] Nigeria music industry into a gold mine” for outsiders to the industry at the expense of “true creators and investors in the industry”. COSON opined that the judgment will not engender a “responsible intellectual property system”; it “will ruin entire companies”; it will “turn decent people against [...] collective management of copyright”; and injure the industry and Nigeria. Further, COSON expressed the view that the judgment was faulty since MCSN was an unapproved collecting society at the time of MNL’s infringement and because COSON had license to administer rights in some of the works claimed by MCSN. COSON was particularly sympathetic to MNL because of MNL’s role in job creation in Nigeria. 

COSON’s reaction seems to portray it as speaking for MNL, a company that was found to have been in flagrant violation of copyright belonging to copyright owners in Nigerian music industry. Prior to MNL’s institution of this action, COSON had been in operation since 2010 as the sole collecting society appointed by the NCC for the Nigerian music industry. It was aware of the case. For reasons best known to it, it did not take steps to be joined in the suit to challenge MCSN’s claims in respect of its works. It stood by and watched MNL fight its course on its behalf. It now cries foul on MNL’s behalf. One would ordinarily expect COSON to be on the side of copyright owners in Nigerian music industry and to commend the judgment as a victory for Nigerian music industry. Such reaction would bode well for the synergy and cooperation, which observers and stakeholders in Nigerian music industry expect to see between COSON and the newly appointed MCSN in the administration of copyright in the music industry.

Apart from being to the huge benefit to copyright owners, cooperation between MCSN and COSON will be a win-win for all stakeholders in the music industry including users of musical works and the NCC as the regulator for the copyright sector. It will lead to proper organisation of collective management in the industry and remove the likelihood of “double taxation” which users may suffer from separate licensing tariffs arising from both collecting societies.
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