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1. Introduction
Adequate knowledge of the subject of intellectual property, the objectives underlying its protection and available mechanisms for adequate balancing of private rights of owners and the public interests of users have become critical.1 This is because globally, intellectual property is recognised as a vital asset in business, which is currently estimated to be even more valuable than physical assets.2 Its protection or lack thereof, as the case may be, also has a fundamental impact on vital aspects of life such as education, health, entertainment, culture, employment, food security and general societal growth and development.3 Just as with buying and selling physical property, transferring the ownership of intellectual property is an important part of doing business4.
2. Definition of Terms
Intellectual Property rights: This refers to legal rights which result from intellectual activity in the industrial, scientific, literary and artistic fields.5
Assignment: An Assignment is a transfer or setting over a property or of some right or interest therein from one person to another.6
Assignor: An assignor is a person, company or entity who transfers rights they hold to the assignee.7
Assignee: An assignee is a person, company, or entity to which a transfer of property, rights or interest is made.8
Licence: Licensing of intellectual property, is the grant of a right to use IP without transferring ownership9 In other words, the original holder of the IP right remains the owner but allows a third party limited access to the right.10
3. Assignment and Licence – Distinction.
There is a fundamental distinction between an assignment of an intellectual property right and a licence of it.11 The former involves a complete transfer of the right, so that the assignee stands in the shoes of the assignor.12 A licence by contrast, is merely a permission to do an act which would, but for the licence, be prohibited.13 Put differently, licence is the grant of a right to use IP without transferring ownership.14
4. Assignment of Intellectual Property Rights
This refers to the transfer of the ownership rights in the intellectual property (copyright, patent, industrial design, trademark) from the assignor to the assignee.
Types of Intellectual Property Rights
Intellectual Property rights are broadly categorised into two parts: copyright and industrial property rights.15 While copyright refers to the exclusive rights for creative works of authorship, such as literary, artistic and musical works, as well as the entrepreneurial rights relating to the exploitation of these works.16 Industrial property rights refers to the legal protection of a wide range of industrial and commercially valuable information including those arising from the creation of new and useful inventions, outwardly appealing designs, trademarks, service marks, geographical indications, trade secret/confidential information all fall within the scope of the law of industrial property.17
The following are the various types of Intellectual Property rights:
- Copyright
- Patent
- Industrial Designs
- Trademarks
- Confidential Information/Trade Secrets
Copyright
Copyright is regulated by the Copyright Act, 2022 (The Act). The Act does not define Copyright. However, the Act provides that literary works, musical works, artistic works, audiovisual works, sound recordings and broadcasts are eligible for copyright.18 The Act explicitly states that literary, musical or artistic work can only be eligible for copyright if some effort has been expended on making the work, to give it an original character and the work has been fixed in any medium of expression 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.19 The Act by virtue of section 30 provides for Assignment of Copyright. Section 30 provides:
"(1) For the purpose of Chapter 4 of the Constitution of the Federal Republic of Nigeria 1999, copyright shall be deemed to be movable property and shall be transferable by way of assignment, testamentary disposition or operation of law. First ownership of copyright. Ownership of copyright in collective works. Assignment and licence. Cap. C23, LFN, 2004. A 198 2023 No. 8 Copyright Act, 2022.
(2) An assignment or testamentary disposition of copyright may be limited 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.
(3) An assignment of copyright or an exclusive licence to do an act, the doing of which is controlled by copyright, shall have no effect unless it is in writing.
(4) A non-exclusive licence to do an act, the doing of which is controlled by copyright, may be written, oral, or inferred from conduct of the owner of copyright.
(5) An assignment or licence granted by one copyright owner, shall have effect as if granted by his co-owner and subject to any agreement between them, any fee received shall be divided equitably among the co-owners.
(6) For the purposes of this section, persons shall be deemed to be co-owners, if they — (a) share joint interest in the whole or any part of a copyright; or (b) have interests in the copyright in various works comprised in a production of two or more works.
(7) Ownership of a material in which a work is embodied shall not confer ownership of copyright in the work.
(8) Except as may otherwise be provided for in an agreement, an owner of copyright who transfers the ownership of the material in which the work is embodied, shall not be deemed to have transferred his copyright or to have granted a licence for the exploitation of the work.
(9) Except as may otherwise be provided for in an agreement, an owner of copyright who transfers his copyright or grants a licence for the exploitation of a work shall not be deemed to have transferred the ownership of the material in which the work is embodied.
(10) An assignment, licence or testamentary disposition, may be granted or made in respect of a future work or an existing work in which copyright does not subsist, provided that it shall not be permitted to transfer the rights in all future works of an author.
(11) A testamentary disposition of a material on which a work is first written or recorded shall, in the absence of any indication to the contrary, be presumed to include any copyright or prospective copyright in the work, which is vested in the deceased."20
A combined reading of section 2 and 30 of the Act reveals that copyright in literary works, musical works, artistic works, audiovisual works, sound recordings and broadcasts can be transferred by way of assignment, testamentary disposition or operation of law. A copyright owner may choose to assign some of the acts to which he has exclusive right to control, a part of the period of the copyright, or to a specified country or other geographical area.21 It is pertinent to state that assignment of copyright shall have no effect unless it is in writing.22 It is noteworthy that while non-exclusive licence can be oral, assignment and exclusive licence must be in writing.23
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Footnotes
1. Adejoke O. Oyewunmi, Nigerian Law of Intellectual Property (University of Lagos Press and Bookshop Ltd 2015)2.
2. Ibid.
3. Ibid.
4. Intellectual Property assignment : What it is and how to make one https://www.legalzoom.com/articles/intellectual-property-assignment-how-to-guide#:~:text=IP%20ownership%20rights.-,What%20is%20an%20intellectual%20property%20assignment%3F,part%20of%20a%20larger%20transactionaccessed on 18 February 2024.
5. WIPO, Intellectual Property Handbook, (2nd Ed. WIPO Publication No 489 (E) Geneva, 2004).
6. G.S. & L. Ltd v. AMCON (2023) 15 NWLR (Pt. 1907) 382.
7. G.S. & L. Ltd v. AMCON (2023) 15 NWLR (Pt. 1907) 382.
8. Ibid.
9. Assignment vs Licensing: A comprehensive guide with 6 key benefits and lawyer-drafted templates, https://docue.com/en-gb/legal-hub/assignment-vs-licensing#:~:text=Assignment%20involves%20a%20transfer%20of,IP%20to%20a%20new%20owner, accessed on 18 February 2024.
10. Marcus Smith QC and Nico Leslie, The Law of Assignment(2ndedn, Oxford University Press 2013) 156.
11. Ibid.
12. Ibid.
13. Marcus Smith QC and Nico Leslie, The Law of Assignment(2ndedn, Oxford University Press 2013) 156.
14. Assignment vs Licensing: A comprehensive guide with 6 key benefits and lawyer-drafted templates, https://docue.com/en-gb/legal-hub/assignment-vs-licensing#:~:text=Assignment%20involves%20a%20transfer%20of,IP%20to%20a%20new%20owner, accessed on 18 February 2024.
15. Adejoke O. Oyewunmi, Nigerian Law of Intellectual Property (University of Lagos Press and Bookshop Ltd 2015)3.
16. Ibid 4.
17. Adejoke O. Oyewunmi, Nigerian Law of Intellectual Property (University of Lagos Press and Bookshop Ltd 2015) 3.
18. Copyright Act 2022, s. 2(1) (a-f).
19. Copyright Act 2022, s. 2(2) (a-b).
20. Copyright Act 2022, s. 30.
21. Copyright Act 2022, s.30(2).
22. Copyright Act 2022, s. 30(3).
23. Ibid s.30(4).
Originally published Tue 24 Sep 2024
The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.
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