Cultural Praise By Kcee And The Copyright Infringement Suit By Jude: Can A Copyright Work Be ‘Generic’?
Cultural Praise By Kcee And The Copyright Infringement Suit By Jude: Can A Copyright Work Be ‘Generic’?
INTRODUCTION 
When a trademark becomes so successful that the public regard the trademark as the common name of a type of product, the trademark is said to have become generic. That is, the trademark loses its exclusivity, distinctiveness and source indication characteristics and falls into the public domain such that competitors of the original brand owner and other third parties may freely use the term in describing their own products. Historically, some trademarks like Aspirin, Cellophane, Escalator, Flip phone, Heroin, Kerosene, Sellotape, Teleprompter, Videotape and many more have been genericized over time. Some other well-known trademarks are also at the risk of being genericized; trademarks such as Band-Aid, Biro, Cutex, Ditto, Post-it, Formica, Google, Indomie, Jacuzzi, Jeep, Kleenex, Xerox, Pampers, Photoshop, PowerPoint, Realtor, Uber, Vaseline, Ziploc, Maggi, Zoom. These marks are used frequently that people tend to forget that they are registered marks owned by brand owners. For example, people tend to refer to all noodles as Indomie, and all Sport Utility Vehicles as Jeep. Most of the food seasoning are called Maggi, while almost all diapers are called Pampers.  This is one of the disadvantages a trademark or brand name suffer for becoming so popular. When a court declares the trademark as generic, the brand owner loses its exclusive trademark rights in the name and the name becomes free for use by others. According to N. Itanyi, “where…brand name becomes so popular that consumers mistake the brand name for the generic name of products of that class, the brand name becomes “genericised” and therefore loses its distinctiveness and exclusivity to the proprietor. Thus, any competing company is free to use such brand name on its own product. This is a situation where the success of a product brand has led to its extinction.”[1]

The scenario above happens with copyright works as well. Most of the songs we sing every day, even in church, are copyright works of some authors, but we tend not to be aware of this fact. Unlike trademarks where registration of the mark is required for statutory protection, copyright vests automatically on the author/owner of the work immediately the original work is expressed and fixed in a definite medium. In Nigeria, the following works are eligible for copyright protection: literary works; musical works; artistic works; cinematograph works; sound recording; and broadcasts.[2] A literary, musical, or artistic work becomes eligible for copyright when sufficient effort has been expended on making the work to give it an original character; and the work has been fixed in any definite medium of expression from which it can be perceived, reproduced or otherwise communicated either directly or with the aid of any machine or device.[3] The ownership of a copyright work vests in the first instance on the author subject to any contract/agreement to the contrary.[4] The copyright owner acquires certain exclusive rights – to reproduce the work, to distribute, to make an adaptation, and publicly perform or display copyrighted works.[5] Thus, the copyright owner has the right to stop any person from exercising any of these exclusive rights without his/her consent and authorization. Any third party exercising any of the exclusive rights of the copyright owner without the owner’s consent and authorization is liable for infringement – both civil and criminal.[6]

The Facts

The above is a precis of the provisions of the Copyright Act in relation to our discussion herein. Now to the issue at hand. Kingsley Chinweike Okonkwo popularly known by his stage name Kcee, is a Nigerian singer, songwriter, recording artiste, stage performer, model and philanthropist. Kcee is signed unto Five Star Music record label. Kcee released a song titled Cultural Praise Volume 1 in December 2020. The song which featured the Okwesili Eze group is 9 minutes 17 seconds in duration. The song is a compilation of about 12 popular Christian praise songs, including a song themed SOM TOO CHUKWU. The song upon its release became considerably popular especially among Christians of south-east Nigeria.  The song is available for download or streaming on various sites for a fee or for free, including YouTube, iTunes, Spotify, Pinterest and Amazon. The song is available for purchase on Amazon Music at a fee of $0.89.[7]

On January 28, 2021, Mr. Jude Nnam, through his lawyers, wrote to Five Star Music, Kcee’s Record Label, claiming that Kcee infringed his copyright in the music themed SOM TOO CHUKWU which was a song composed and written by Mr. Jude Nnam in 2001 to celebrate his daughter’s first year birthday. The SOM TOO CHUKWU song is available on YouTube[8] and other channels. Mr. Jude Nnam was described in his lawyer’s letter in the following words: “Worship songwriter and choral music composer, a keyboardist and a choral conductor who has distinguished himself in the African music terrain especially within the Roman Catholic circle. He is currently the National Music Director for National Catholic Lithurgical Music Council in Nigeria; the Music Director of Christian Association of Nigeria (CAN);… and a papal Knight.” This pedigree is necessary for our discussion here. The crux of Mr. Jude Nnam’s claim is that Kcee copied his song without his consent, authorization or license to use the music.  Kcee was also said to have performed the work publicly including a performance of the song at a wedding.[9]

As stated above, Kcee’s song (the compilation) is 9 minutes 17 seconds. SOM TOO CHUKWU was the first song to be played and the song (Kcee copied the first stanza and chorus in the original version) was performed for 1 minute 47 seconds. In the original version of the SOM TOO CHUKWU song by Jude Nnam, the entire song lasted for 5 minutes 11 seconds wherein the first stanza and chorus were about 1 minute 30 seconds. So, in effect, Kcee copied and reproduced the entire first stanza and chorus of SOM TOO CHUKWU in his compilation – Cultural Praise Vol. 1.

The Discussion

Section 51 of the Copyright Act defines an “author” in the case of literary, artistic or musical work as the creator of the work; and an “author” in the case of sound recording as “the person by whom the arrangement for the making of the recording were made…” Section 6 of the Copyright Act gives an author or the owner of a copyright work the exclusive right to control reproduction of his work; including, but not limited to, the right to control the performance of the work, publication and distribution of the work and even broadcast of the work. By the provisions of section 7 of the Copyright Act, the author or owner of the copyright in a sound recording have the exclusive right to control the direct and indirect reproduction, broadcasting or communication to the public, the whole or substantial part of the recording either in its original form or in a form recognizably derived from the original. The owner of the copyright also has the exclusive right to control the distribution of the work to the public for commercial purposes.

The owner of a copyright can assign his work or licence the use of same to third parties.[10] This will amount to a permitted use by a third party of a copyright work vested in another person. From the facts available to us at this time, Kcee was not licenced to use the work, SOM TOO CHUKWU. Therefore, the exclusive rights of Mr. Jude Nnam over his work may have been infringed. The reproduction of the work by Kcee is deemed not to be a permitted use and therefore in our opinion, he is liable for copyright infringement both in civil action and in criminal action. This the court will decide in Suit No: FHC/L/CS/304/2021.

Back to our analogy on genericide of protected works. Some have argued that the SOM TOO CHUKWU song is abundant, and the work has so much been used in a manner suggesting that no copyright exists in the work and the copyright does not belong to anybody. It is recognized that the SOM TOO CHUKWU song is used almost every Sunday in thousands of churches, especially Roman Catholic churches and most times, during thanksgiving or offering time. This is where the profile of Mr. Jude Nnam plays a pivotal role. From Mr. Jude Nnam’s profile, it is evident that he is the Music Coordinator of Christian Association of Nigeria and National Music Director for National Catholic Liturgical Music Council in Nigeria. He is also a Papal Knight. Mr. Jude Nnam created the work with the intention that it should be used during thanksgiving in churches. Thus, if Mr. Jude Nnam decided not to enforce his right for the use of his work in churches or religious gatherings, that will be understandable, and perfectly within his rights to do so. But the use of the work by Kcee, is outside the use for which Mr. Jude Nnam created the work or the anticipated use of same. In some countries[11] collecting societies[12] appointed by copyright owners collect royalties or license fees from churches, choir, bands, orchestras etc.[13] for use of songs in churches. We are not aware now if Mr. Jude Nnam licensed his rights to any collecting society for the collection of royalties and license fees.

While it is our opinion that the concept of genericide may be applicable to copyright, the standard will be higher than that of trademarks. Trademarks are source indicators, so if a trademark loses this basic function of indicating source/origin of a product/service it will be said to be generic or have been genericized. This is not the same however with Copyright. The ubiquitous use of a copyright work and the decision of the copyright not to enforce unauthorized use against a portion of the public or for a certain period cannot be taken to mean that the work has become generic or has fallen into the public domain. For example, the Jerusalema dance was abundantly used since December 2019 and throughout the greater part of 2020 during the Covid-19 lockdown for various dance challenges. The copyright in the Jerusalema dance belongs to Master KG. That Master KG and his record company chose not to challenge the use of the Jerusalema song for these dance challenges until recently does not impact negatively on their right to demand license fees now.  Therefore, SOM TOO CHUKWU is a song in which copyright subsists in the composer. Note that by schedule 1 of the Copyright Act, the duration of a copyright in Musical work is for the life of the author and seventy years after the end of the year in which the author dies; while the duration of copyright in sound recording is fifty years after the end of the year in which the recording was first made. In either case, the copyright in the SOM TOO CHUKWU subsists having been made in 2001.

The action of Kcee and the Five Star Music in relation to the SOM TOO CHUKWU music is perceived to be a direct infringement on the copyright of Mr. Jude Nnam. Section 15 of the Copyright Act states that a work is infringed by a person who without the licence or authorization of the owner of the copyright – (a) does, or cause any other person to do an act, the doing of which is controlled by copyright; (d) distributes by way of trade, offer for sale, hire or otherwise or for any purpose prejudicial to the owner the copyright, any article in respect of which copyright is infringed…(g) performs or cause to be performed for the purposes of trade or business…any work in which copyright subsists. The cultural praise was produced, performed, and distributed by way of trade; same was offered for sale on various platforms. It would have been a mitigating factor for Kcee and Five Star Music if the production and performance of the song were for church thanksgiving purposes and not for business. It would have also been a mitigating factor if the authorship of Mr. Jude Nnam was acknowledged in the Cultural Praise album.

A mitigating factor and a partial defense to a copyright infringement action is ‘innocent infringement’. Under section 16 (3) of the Copyright Act, if an infringer asserts that at the time of infringement, he was not aware and had no reasonable grounds for suspecting that copyright subsisted in the work to which the action relates, the plaintiff shall not be entitled to damages against the defendant-infringer but shall be entitled to account of profits in addition to any other relief. In a criminal action founded on copyright infringement, the defendant can raise this defence of lack of knowledge.[14] In Federal Republic of Nigeria v. Asika[15] the defendant was discharged and acquitted when the court upheld the defendant’s defence that he was not aware of the infringement. If the defendants in the suit by Mr. Jude Nnam raises this partial defense, then the One Hundred and Fifty Million damages[16] sought by Mr. Jude Nnam may not be granted, but rather the actual profits made from the trading in the song. This may be difficult to ascertain in its entirety. This partial defense, it is submitted, is a subjective one. It is the awareness and reasonableness of the defendant that is called into question. It is possible to argue that because the SOM TOO CHUKWU song is an everyday song in church, it is reasonable for a person not to be aware that copyright subsists in the song. On the flip side, the YouTube video of the SOM TOO CHUKWU song is an indicator that the copyright in the song belongs to Mr. Jude Nnam. How the court will decide this, if raised, will be interesting.

It is important to note that despite the perceived infringement of the copyright in SOM TOO CHUKWU in the Cultural Praise compilation; the Cultural Praise album is protected by copyright and enjoys its own copyright. Section 1 (4) of the Copyright Act provides that “A work shall not be ineligible for copyright by reason only that the making of the work or the doing of nay act in relation to the work involved an infringement of copyright in some other work.” Furthermore, section 51 of the Copyright Act defines “work” as including “translations, adaptation, new versions or arrangements of pre-existing works, and anthologies or collection of works which, by reason of the selection and arrangement of their content, present an original character.” The Cultural Praise is an arrangement of pre-existing works and by reason of the selection of songs and the arrangement of its content, it presents an original work. Thus, the Cultural Praise is a copyright work, and Kcee and Five Star Music can as well sue any third party who infringes on their right to the copyright.

Conclusion

To answer the question posed by the topic of this discussion, we answer in the affirmative. A copyright may be considered generic but the standard of proof here, in our opinion, is higher than that of trademarks. From the facts available to us, it is our opinion that reproduction of SOM TOO CHUKWU in the Cultural Praise album, is a perceived infringement of the copyright of Jude Nnam in the same song. While we await a decision from the Court on the issues raised in this suit filed by Mr. Jude Nnam against Five Star Music and Kcee, we expect that the parties may adopt alternative dispute resolution to settle the matter.

This article is a copyright of Christian Aniukwu, LLB (Hons.) (Nig.) BL, LLM (Illinois). Christian Aniukwu is an IP Attorney with the law firm of Aluko & Oyebode Lagos.

[1] Nkem Itanyi, “When a Trademark Becomes a Victim of its Own Success: The Irony of the Concept of Genericide”  published July 2015 available at https://www.researchgate.net/publication/313065165_WHEN_A_TRADEMARK_BECOMES_A_VICTIM_OF_ITS_OWN_SUCCESS_THE_IRONY_OF_THE_CONCEPT_OF_GENERICIDE accessed 28 March 2021.

[2] Section 1 (1) of the Copyright Act Cap C28 Laws of the Federation of Nigeria, 2004.

[3] Section 1 (2) (a) and (b) Copyright Act, Supra.

[4] See section 10 of the Copyright Act.

[5] See section 6 of the Copyright Act.

[6] See sections 15 and 20 of the Copyright Act.

[7] Available at https://www.amazon.com/Cultural-Praise-Explicit/dp/B08PKZY5LL

[8] https://www.youtube.com/watch?v=lSCOcitwL5Q

[9] See a YouTube video of the performance at a wedding on December 7 2020 https://www.youtube.com/watch?v=kmtdBfyers4

[10] Section 11 of the Copyright Act.

[11] For example United States, Australia.

[12] These are organizations that collect royalties and license fees for the use of copyright works from users of the work on behalf of the artistes. The artistes will usually appoint a collecting society to act for him/her.

[13] See for example https://www.artslaw.com.au/wp-content/uploads/2019/04/Copyright_collecting_societies.pdf

[14] Section 20 (2) (d) Copyright Act.

[15] Suit No. FHC/K/2CR/92
 
[16] See https://thenigerialawyer.com/jude-nnam-files-150m-copyright-infringement-suit-against-e-money-kcee-and-5-starr-music-ltd/

By Christian Aniukwu, Esq


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