Tuesday, June 10, 2014 12:25 PM / By Olumide K. Obayemi and Olukayode O. Adegbola*
In Yeni Akikulapo-Kuti v. T.M. Iseli (2003-2007) 5 IPLR, the court granted a perpetual injunction under the Copyright Act of Nigeria, Cap C28, Laws of the Federation of Nigeria, 2004 (“Copyright Act”). While the decision may be right, we examine the rights of the copyright owner to obtain a grant of injunction to restrain others.
In Kuti v Iseli, the survivors of the great Nigerian music icon, Olufela Anikulapo Ransome-Kuti (Fela) had sued the defendants for damages and perpetual injunction to restrain the defendants from reproducing the composed musical works of the late Fela, but which had neither been produced nor sold for public consumption. Stated clearly, Fela had composed the musical works, written them down, and had recorded them. However, Fela had not put the songs in CDs, DVDs and had not disseminated the songs for public use before he died.
The Kuti court first of all had to decide whether Fela was the author of the musical works in question. Section 51 of the Copyright Act provides thus:
"author" in the case of sound recording, means the person by whom the arrangements for the making of the sound recording were made, except that in the case of a sound recording of a musical work, "author" means the artist in whose name the recording was made, unless in either case the parties to the making of the sound recording, provide otherwise by contract;
Clearly, in Kuti case, the recording was made by Fela, and he had made all the arrangements for the recording of the musical work.
More troublesome was whether Fela had acquired copyright in the recorded material, i.e., whether the recorded musical works were eligible for copyright. In Nigeria, there are three (3) elements that govern eligibility for copyright—(a) originality arising from sufficient efforts; (b) definite medium and (c) fixation.
Section 1(2) of the Copyright Act provides thus:
(2) A literary, musical or artistic work shall not be eligible for copyright unless;
(a) sufficient effort has been expended on making the work to give it an original character;
(b) the work has been fixed in any definite medium of expression now known or later to be developed, from which it can be perceived, reproduced or otherwise communicated either directly or with the aid of any machine or device.
Since Fela had composed the lyrics and contents in the musical works all by himself without copying another artiste. Because Fela was the very first person to have used the combination of rhymes, lyrics and the phrases used therein, they were original. Second, because the words so composed were in the Queen and Nigerian pidgin (colloquial) English, he used a medium that was easily understood by the Nigerian community. Finally, since Fela actually recorded the music in master tape, he had fixated it in a tape from which it can be perceived and observed by others directly or by using a machine. Similarly fixation occurs under Section 102 of the United States Copyright Act, when the artiste/author has caused his musical/literary work to be
Fixed in any tangible medium of expression, now known or later developed, from which they can be perceived, reproduced, or otherwise communicated either directly or with the aid of a machine or device.
Further, in the United States, copyright ownership is shown by proof of originality and copyrightability in the work as a whole and by compliance with applicable statutory formalities. In addition, concerning softwares, as one moves away from the literal code to more general levels of a program, it becomes more difficult to distinguish between unprotectable ideas, processes, methods or functions, on one hand, and copyrightable expression on the other.” Id. This difficulty has led us to conclude that some nonliteral aspect of computer programs are within the scope of copyright.
In the Kuti case, once Fela’s copyright was proven, his survivors had to prove their locu standi to initiate the lawsuit for their later father’s estate. They succeeded under Section 11 of the Copyright Act which provided thus:
11. Assignment and licence
(1) Subject to the provisions of this section, copyright shall be transmissible by assignment, by testamentary disposition or by operation of law, as movable property.
(2) An assignment or testamentary disposition of copyright may be limited so as to apply to only some of the acts which the owner of the copyright has the. exclusive right to control, or to a part only of the period of the copyright, or to a specified country or other geographical area....
(4) A non-exclusive licence to do an act the doing of which is controlled by copyright may be written or oral, or may be inferred from conduct.
(5) An assignment or licence granted by one copyright owner shall have effect as if granted by his co-owner also, and, subject to any contract between them, fees received by the grantors shall be divided equitably between all the co-owners.
Because Yeni and her siblings were the survivors of Fela’s estate, they had no problems in proving that they were Fela’s heirs and by virtue of the fact they were Fela’s successors-in-title, they were legally competent to enforce their deceased father’s rights.
On the basis of constitutional right to freedom of press, expression and political opinion under Sections 38, 39 and 40 of the Constitution of the Federal Republic of Nigeria of 1999, we are troubled about the blanket grant of an injunction, especially since Fela is a national icon and, in fact, some of his musical products dealt with matters of national concern, political opinion, and protection of human rights. Thus, on the issue of perpetual injunction, in a copyright case, a court may grant a preliminary injunction when plaintiffs demonstrate: (1) a likelihood of success on the merits; (2) irreparable harm in the absence of an injunction; (3) a balance of the hardships tipping in their favour; and (4) non-disservice of the public interest by issuance of a preliminary injunction. Salinger v. Colting, 607 F.3d 68, 79-80 (2d Cir. 2010).
In the US, under the Copyright Act, television broadcasters generally have 'exclusive rights' to authorize the public display of their copyrighted content, including the retransmission of their broadcast signals. Yet, the US Congress has codified an exception to this exclusive right in 1976 under § 111 of the Copyright Act -- permitting cable systems to publicly perform and retransmit signals of copyrighted television programming to its subscribers, provided they pay royalties at government-regulated rates and abide by the statute's procedures. See 17 U.S.C. § 111(c) (exception), (d) (royalties); U.S. Copyright Office, Satellite Home Viewer Extension and Reauthorization Act Section 109 Report 1 (2008) ("SHVERA Report").
It follows that the principal issue that would have been presented in Kuti case, assuming Iseli were a service that streams copyrighted television programming live and over the Internet, would be whether Iseli constituted a cable system under § 111 of the Copyright Act. If so, Iseli would have had a statutory defense to plaintiffs' claims of copyright infringement. Further, Iseli would have been entitled to a compulsory license to continue retransmitting plaintiffs' programming.
Further, another issue is whether the Kuti court abused its discretion in finding that plaintiffs would suffer irreparable harm in the absence of an injunction -- that is, harm to the plaintiff's legal interests that could not be remedied by damages (irreparable harm). Harm may be irreparable where the loss is difficult to replace or measure, or where plaintiffs should not be expected to suffer the loss.
Courts may no longer simply presume irreparable harm; rather, plaintiffs must demonstrate that, on the facts of the case, the failure to issue an injunction would actually cause irreparable harm. Courts must pay particular attention to whether the remedies available at law, such as monetary damages, are inadequate to compensate for the injury. In modern day business transactions, irreparable harm is not always presumed, and the party seeking injunction is obligated to prove such in order to obtain an injunctive order.
A veritable defense to a copyright action is fair use. In the US, there are four statutory fair use factors set forth in Section 107 of the Copyright Act of 1976, analyzing: “(1) the purpose and character of the use, including whether such use is of a commercial nature or is for nonprofit educational purposes; (2) the nature of the copyrighted work; (3) the amount and substantiality of the portion used in relation to the copyrighted work as a whole; and (4) the effect of the use upon the potential market for or value of the copyrighted work.”
Similarly, in Nigeria, fair use defence is provided for 2nd Schedule, Subsection (k)&(r) of the Copyright Act
· 2nd Schedule, Subsection (k) provides: any use made of a work by or under the direction or control of the Government, or by such public libraries, non-commercial documentation centres and scientific or other institutions as may be prescribed, where the use is in the public interest, no revenue is derived therefrom and no admission fee is charged for the communication, if any, to the public of the work so used;
· 2nd Schedule, Subsection (r) provides: the reproduction for the purpose of research or private study of an unpublished literary or musical work kept in a library, museum or other institutions to which the public has access.
Copyright law inherently balances the two competing public interests presented in this case: the rights of users and the public interest in the broad accessibility of creative works, and the rights of copyright owners and the public interest in rewarding and incentivizing creative efforts the "owner-user balance." One, the law seeks to protect copyright owners' marketable rights to their work and the economic incentive to continue creating television programming. However, inadequate protections for copyright owners can threaten the very store of knowledge to be accessed; encouraging the production of creative work thus ultimately serves the public's interest in promoting the accessibility of such works.
In Kuti, plaintiffs WEre copyright owners of some of the Nigeria's most recognized and valuable musical works on human rights and peaceful protests in Nigeria, i.e., music providing valuable services to the public, including, inter alia, educational, historic, and cultural programming, entertainment, an important source of local news critical for an informed electorate, and exposure to the arts.
Yet, it is true that Plaintiffs' desire to create original television programming surely would be dampened if their creative works could be copied and streamed over the Internet in derogation of their exclusive property rights.
Further, there is a delicate distinction between enabling broad public access and enabling ease of access to copyrighted works.
In all, Fela occupied a great position in the annals of democratic peaceful protests in Nigeria. His music occupies the stature of the star-sprangled banner as obtains in the US. A carte blanche injunction against the use of Fela’s music can also be resisted on Constitutional right to freedom of speech.
It was on this basis that the United States Court of Appeals for the Second Circuit, in Swatch Group Management Services Ltd. v. Bloomberg L.P., 742 F.3d 17 (2d Cir. 2014), after finding that Bloomberg infringed Swatch’s copyright, but still went ahead to find no liability against Bloomberg because the infringement centred on information that was of critical importance to American securities markets.
To begin with, whether one describes Bloomberg’s activities as “news reporting,” “data delivery,” or any other turn of phrase, there can be no doubt that Bloomberg’s purpose in obtaining and disseminating the recording at issue was to make important financial information about Swatch Group available to American investors and analysts. That kind of information is of critical importance to American securities markets. Indeed, as Bloomberg points out, the Securities and Exchange Commission (“SEC”) has mandated that when American companies disclose this kind of material nonpublic information, they must make it available to the public immediately.
Olumide K. Obayemi can be reached vide: email@example.com