INTELLECTUAL PROPERTY RIGHTS INFRINGEMENT AND ENFORCEMENT
MEANING:
IPR infringement refers to the unauthorized use, duplication, or sale of materials or products that are legally regarded as protected intellectual property.
The definition of infringement depends on the intellectual property right (IPR) that is being disputed. It may be Patent, Copyright, Industrial designs or Trade Secrets.
LAWS PROTECTING INTELLECTUAL PROPERTY RIGHTS INFRINGEMENT
Due to its hybrid nature, IPR can be determined by both federal and state law. Federal laws pertaining to infringement remain the same throughout the country, but state laws may vary from one state to another.
Copyrights and patents are under the protection of the federal law, violation of these rights is defined by the same laws. These statutes generally define IPR as the unauthorized production, use, or sale of protected IP. On the other hand, trademarks and trade secrets are both under the protection of federal and state law, which is also known as common law.
The laws protecting IPR infringement in Nigeria include:
1. The Trade Marks Act
2. The Patents and Designs Act
3. The Merchandise Marks Act
4. The Copyright Act
5. The Federal High Court (Civil Procedure) Rules
6. The Cybercrimes (Prohibition, Prevention, E.T.C.) Act of 2015
HOW CAN IPR BE INFRINGED UPON?
Infringement of IPR with regard to copyrights, patents, trademarks, and trade secrets may be a breach of civil or criminal law. The definition of infringement depends on the kind of IP involved, the nature of the action, and the jurisdiction.
IPR can be infringed in the following ways:
1. Counterfeits and replica products: A counterfeit is a product created to look identical to an existing product made by a third party’s brand, and depicts that brand’s trademarked names, logos, symbols and other forms of intellectual property without authorization, with the intention of deceiving customers into thinking the counterfeit is an official item from the genuine brand. The word replica is often used interchangeably with Counterfeit.
2. Look-alikes: A look-alike product copies the look and feel of the design of an existing product, such as elements of its trade dress or product branding – similar to counterfeits. The difference between look-alikes and counterfeits is that with look-alikes, there is often no direct infringing on a third party’s trademark. For example, a copycat sports brand may call their product Fuma, change KitKat to KatKot, or add a fourth stripe to the Adidas logo.
3. Trademark-infringing listings on online marketplaces: Trademark-infringing listings are used with the intention to pull visitors to their listing, which offers a similar product, rather than to pass the listing as a product provided by a genuine brand. The practise is still considered an infringement on IP, as they use a brand name without authorization.
4. Design-infringing products: Design-infringing products are generally created to look like the products of another brand, by copying the distinctive elements of brands. This is done while avoiding the use of any protected trademarks which would establish the product as counterfeit.
5. Copyright infringements and piracy: Piracy is the unauthorized reproduction, copying and spreading of copyrighted materials, most often software, eBooks, songs or movies. Copyright-infringing listings on ecommerce tends to refer to sellers using copyrighted photos, text, or other media from an authentic brand to sell a counterfeit product. This is similar to a trademark-infringing listing, as explained above, but instead of using a trademark-protected brand name, the infringer uses images and other text from the authentic brand.
6. Trademark squatting: This is an act of registering or using other people’s brand name and assets in other countries, where the original brand does not yet have a registered mark. They operate in bad faith, in order to gain benefits from original brands or real trademark owners.
7. Brand impersonation: Brand impersonation refers to when a third party claims to be, represent, or be affiliated with an authentic brand without authorization.
8. Rogue websites: Rogue websites infringe on a brand’s IP to turn a profit, and come in a number of forms like typosquatting and cybersquatting.
It is however not limited to these ways.
ENFORCEMENT OF INTELLECTUAL PROPERTY RIGHTS INFRINGEMENT
If you know that your intellectual property rights are being infringed, you can seek a court order to stop the infringer using your intellectual property rights. This type of court order is called an injunction to be financially compensated by the infringer.
There are several enforcement mechanisms an intellectual property right holder can employ in enforcing an intellectual property right. These mechanisms include Alternative Dispute Resolution, Criminal Complaint and Civil Action via the courts.
To establish a breach of intellectual property right in a civil court, the claimant has to establish the followings:
(a) It is the owner of a copyrighted work, and
(b) The defendant has infringed its copyright
In enforcing infringement cases, the court can do it in a number of ways:
1. Payment of damages – Awarding damages to the IP owner is the most common remedy for IPR. In general, a money judgment will be awarded to compensate the IP owner for the damage he or she has suffered, such as lost claims, lost sales, or lost reputation.
2. Enhanced damages – In some situations, a court may award damages beyond the damage sustained by the IP owner. Known as enhanced damages, these damages serve the purpose of punishing the infringing party. However, they are uncommon, because they are meant to punish parties that have engaged in especially bad conduct.
3. Payment of legal fees and costs – A court may also require the infringer to pay the costs the IP owner has incurred in litigating the case. For instance, according to the Patent Act, a court may order the losing party to pay legal fees in an extraordinary case. Similar to enhanced damages, such damages are uncommon, but they can serve as an additional penalty.
4. Injunction preventing further infringement – Sometimes, a court may order the infringing party to refrain from using, making, or selling the protected IP. Injunctions are least commonly awarded in patent infringement cases, where courts usually prefer to order the infringing parties to pay ongoing royalty fees to the IP owners.
5. Destruction of protected materials – A court may also order the infringing party to destroy the protected material. One good example of this is in a case involving trade secret infringement. If an infringing party is illegally using, say, a protected customer list, a common remedy is to force him or her to destroy the list.
6. Criminal charges – An IP theft case may lead to criminal charges. According to the Economic Espionage Act, certain kinds of trade secret theft are considered a federal crime. Many states also regard trade secret theft as a crime. Examples of criminal IPR infringement include piracy and counterfeiting. Consumers who find pirated or counterfeited products online can report to the Internet Crime Complaint Center of the Federal Bureau of Investigation (FBI). If the products come from a foreign country, a report can be made with the National Intellectual Property Rights Coordination Center (NIPRCC) or U.S. Customs and Border Patrol.
Example of an IPR Infringement Case
IPR cases seldom appear on the front pages of newspapers, but they sometimes do. Several years ago, Disney sent Cease and Desist letters to daycare centers after realizing that they painted their walls with images of its famous characters, such as Mickey Mouse and Goofy. These characters are undoubtedly Disney’s protected trademarks. Through the Cease and Desist letters, the animation studio requested the daycare centers to stop infringing its trademarks. Such letters can be the initial stages of a lawsuit.
REFERENCES
-https://www.upcounsel.com/ipr-infringement
-https://www.redpoints.com/blog/intellectual-property-infringements-types/
AUTHOR
Ogo Gladys Amarachi
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