CASE TITLE: VOICEWEB INT’L LTD. V. EMERGING MARKETS TELECOMMUNICATION SERVICES LTD. & ORS LPELR-81770(CA)
JUDGMENT DATE: 2ND MAY, 2025
JUSTICES: MOHAMMED MUSTAPHA, J.C.A
NGOZIKA UWAZURUNONYE OKAISABOR, J.C.A.
ABDULAZEEZ MUHAMMED ANKA, J.C.A.
PRACTICE AREA: INTELLECTUAL PROPERTY LAW
FACTS:
This appeal borders on the jurisdiction of the Federal High Court in a matter of copyright infringement.
By a Concurrent Writ of Summons, dated and filed on 11th April, 2017, together with the Statement of Claim and other supporting originating processes filed in Suit No. FHC/L/CS/576/2017, before the Lagos Division of the Federal High Court, presided by Hon. Justice C.A. Obiozor, J, the Appellant herein, prayed for the following relief, among others.
A DECLARATION that the Plaintiff/Appellant is the owner and entitled to the confidential information, trade secrets, technical know-how, source codes and proprietary data contained in the “Check & Win” gaming concept and mechanism as presented to the 1st Defendant/Respondent pursuant to the Request for Proposal dated 31st May 2016.
When served with the originating processes, the 2nd Respondent herein, who was the 2nd Defendant in the trial Court, filed a Notice of Preliminary Objection dated and filed on 31st July, 2017 prayed the trial Court for an Order dismissing or striking out the suit in limine”, or, alternatively, “An Order striking out the 2nd Defendant/Applicant” from the suit.
On the preliminary objection filed against the competence of the suit in the trial Court, the Appellant/Plaintiff/Respondent joined issue with the 2nd Respondent/Defendant/Applicant when it filed a 15-paragraph counter-affidavit dated and filed on 5th January, 2018. The Appellant prayed the trial Court to dismiss the objection of the 2nd Respondent.
In its considered ruling delivered on 1st March, 2021, the trial Court upheld the 2nd Respondent’s objection to the suit and declined jurisdiction in the suit. The learned trial judge proceeded and struck out relief D, E, H, J, K, and L in the Appellant’s claim, other reliefs in the suit, to wit; A, B, C, F, G, I, M & N were transferred to the Chief Judge of Lagos State High Court for determination.
The Appellant was aggrieved with the said ruling of the trial Court and had commenced the instant appeal vide a 3-ground Notice of Appeal dated and filed on 29th July, 2021. Subsequent to the filing of the notice of appeal, the Appellant, on 22nd April, 2022, filed the “Appellant’s Amended Brief of Argument”, same was dated 21st April, 2022.
ISSUES FOR DETERMINATION:
The Court determined the appeal on the following issue:
The jurisdictional competence of the lower Court to hear and determine the claim of the Appellant as couched in the suit.
COUNSEL SUBMISSIONS:
On issue 1, it was the Appellant’s contention that the provision of Section 5 is not subject to the provision of Section 41 of the Copyright Act, 2004, “the Act”, as held by the learned trial, but each provision addresses separate situation. It was submitted that each of the Sections 5 and 41 is independent of other. It is argued that Sections 2-5 of the Act prescribe eligibility criteria for copyright recognition and protection under the Act, and in no way identical to the condition stipulated in Section 41 of the Act. Learned counsel for the Appellant states that by Exhibits YO1B and YO1C, being letters dated 20th November, 2017, issued by the Nigerian Copyright Commission, it is clear the provision of Section 5 of the Act is independent of the provision of Section 41 of the Act. It was contended that the decision in Microsoft Corporation vs Franike Associates Ltd (2012)3 NWLR (Pt 1287) 301 relied upon by the lower Court is inapplicable in the instant case, learned counsel insists that the Appellant complied with the stipulation in Section 5 (2) of the Act. Counsel invited the attention of the Court to the Copyright (Reciprocal Extension) Order, 1972 and take the judicial notice of same. He cites the provision of Section 74 of the Evidence Act, 2011 to substantiate the submission. He urge the Court to distinguish the Microsoft case from the instant case and hold that the Section 5 of the Act is not subject to the reciprocity of the provision of Section 41 of the Act.
On issue 2, learned counsel contends that the lower Court erred when it held that the intention of the legislation is to require compliance with the provision of Section 41 of the Act before a foreign author may seek recognition and protection under the Act. It was contended that while Section 41 was codified in 1970 and amended in 1990, Section 5 was introduced in 1999. He cites the provision of Sections 5(2) and 34(3) of the Act to submit that the Appellant satisfies the condition stipulated through Exhibits YO1A and YO1C. Counsel contends that provision of Section 5, being later in time of the 2 provisions ought to be accorded with its independent force and effect. He relies on the decisions in Societe Bic SA vs Charzin Inds Ltd (1990-97) 3 LPLR 335 and Island Records vs Pandum Technical Sales & Services (1993) FHCR 318 to support the assertion.
On issue 3, the Appellant asserted that the lower Court erred when it held that there was no indication that the provisions of international copyright agreements to which Nigeria is a signatory, have been domesticated as a part on Nigerian laws in line with Section 12 of the 1999 Constitution as amended, for it to be enforceable in Nigeria. Learned counsel cites the provision of Section 5 of the Act and submits that foreign authors may enforce their protection under the Act. It was contended that by the certificate issued under the hands of the Nigerian Copyright Commission, Exhibit YO1A, it is evident that both Nigeria and Cyprus are signatories to certain conventions and Agreements, such as Universal Copyright Convention, the Berne Convention on the Protection of Literary and the World Trade Organzation’s Trade Related Aspects of Intellectual Property Rights. Counsel cites the provision of Section 5 (2) of the Act and submits that a certificate from the hands of the NC Commission, as in YO1A, is a conclusive proof of the fact that whether a country is a party to an obligation in a treaty or other international agreement to which Nigeria is also a party.
The provisions of Section 12 of the Constitution and Section 145(3) Evidence Act, 2011 were cited to submit that the lower Court erred when it held that that evidence of compliance with Section 12 of the Constitution on domestication was required in the instant case.
The 1st Respondent, in response to the Appellant’s submission on the Appellant’s issue 1, contends that the lower Court was on firm ground when it held that Section 5 of the Act is subject to the reciprocity of Section 41 of the Act. He argues that the provision, which seeks to protect works published in a country other than Nigeria, is subject to conditions stipulated elsewhere in the Act. He refers to Sections 16 and 41 of the Act as provisions for the protection of works published elsewhere from Nigeria as recognised under Section 5 of the Act. While relying on the cases of M.H.W.U.N vs Ministry of Labour & Productivity (2005) 17 NWLR (Pt 953) 120; Microsoft Corp. vs Franike Associates Ltd, supra learned counsel submits that Exhibit YO1A, a certificate under the hands of the Nigerian Copyrights Commission, would not be sufficient to defeat the requirements stipulated in Section 41 of the Act.
On issue 2 in the 1st Respondent’s brief, counsel canvassed strenuous argument with respect to whether the intention of the legislature was to require compliance with the provision of Section 41 of the Act for a foreign author to seek copyright protection under Section 5 of the Act. Counsel highlights the historical background to the Act and maintains that the correct position remains that the provisions of Section 41 must be complied with to take advantage of Section 5 of the Act. Counsel cites the case of Easy Holdings Limited vs FIRS TAT/LZ/VAT/029/2019, and submits that the letter dated 20th November, 2017, marked as Exhibit YO1B, cannot take the place of the statutory ministerial order in Section 41 of the Act. He submits that the provision of Section 5 would not be an alternative to the provision of Section 41 of the Act.
On issue 3, learned counsel contends that the lower Court was right to hold that there was no indication that the provision of international copyright agreement to which Nigeria was a signatory have been domesticated as part of Nigerian law under Section 12 of the Constitution. Counsel reiterates that without taking Section 41 of the Act into consideration, the provision of Section 5 of the Act cannot protect a work published elsewhere in a country, a party to an obligation in a treaty or international agreement to which Nigeria is a party. Counsel noted that even in event such work lacks domestication under Section 12 of the Constitution, the designated minister must be satisfied that the foreign jurisdiction extends such protection through reciprocity to similar works in Nigeria. He asserts that without compliance with the provision of Section 41 of the Act, such protection must fail for non-compliance with the constitutional requirement in Section 12 of the 1999 Constitution, supra.
The submission of the 2nd Respondent’s issues 1, 2 and 3 majorly addressed the question of the jurisdictional competence of the lower Court. In issue 1, counsel canvassed similar argument as the 1st Respondent on the issue of Sections 5, 16 and 41 of the Act, counsel noted that the Appellant failed to rightly capture the import of the lower Court ruling, counsel asserts that the lower Court found that Section 16 regulates the right of action in copyrights infringements and that same is subject to the provision of Section 41 while Section 5 tends to recognise foreign works eligible for copyright protection. He states that Sections 16 and 41 determine person who can sue in Nigeria and not Section 5. It was stated that the Appellant failed to challenge the lower Court’s finding that Section 16 confers right to sue, the cases of Ohajunwa & Anor vs Obelle & Anor (2008) 3 NWLR (Pt 1073) 52 @ 78; Odugbo vs Abu & Ors (2001) 14 NWLR (Pt 723) 45 @ 91 amongst others were cited were relied upon to submit that the Appellant, by the provision of Section 41 ought to produce a gazette before initiating the suit at the lower Court. Counsel urge the Court to follow its decision in the Microsoft case, as it is on all four with the instant case. He cites the case of Adetoun Oladeji Nig Ltd vs Nigerian Breweries Plc (2002) NWLR (Pt 1027) counsel maintained that there is no basis for distinguishing the Microsoft’s case from the instant case. He stated that the undomesticated conventions and agreements relied upon by the Appellant cannot help its case, he cites Section 12 of the Constitution, supra, and decisions in MHWUN vs Minister of Health & Productivity & Ors, supra; Abacha vs Fawehinmi (2000) 6 NWLR (Pt 660) 228 and submit that the requirement for domestication of international conventions cannot be dispensed with. Other submission of the 2nd Respondent on issue 1 were in tandem with the 1st Respondent argument which this Court adopt.
The issue 2 was on whether Section 5(1) and (2) of the Act amounts to domestication of any international treaty, counsel agreed with the lower Court that the provision of Section 5(1)(2) of the Act does not amount to domestication of the international treaties, and cannot confer status to sue on any person outside the requirements in Section 41 of the Act.
Issue 3 was argued in light of Section 251 of the Constitution, the 2nd Respondent avers that the Appellant has no single ancillary claim before the lower Court. It was contended that there were only 2 distinct main or principal claims in the Appellant’s suit, and none is ancillary to the main relief in the claim. Counsel contends that the lower Court has not been conferred with jurisdiction over trade secrets, and others in the Appellant’s claim. He relies on the provision of Section 251 of the Constitution, as amended, and Section 7 of the FHC Act, and submits that the lower Court rightly declined jurisdiction over the Appellant’s claim as it did.
Counsel for the 3rd and 4th Respondent canvassed similar argument as previous submissions of the other Respondents, counsel reiterates that the failure of the Appellant to fulfil the condition precedents in Section 41 of the Act was fatal to its case. Counsel submits that aside the fact that the lower Court was right to hold that Sections 5 and 16 of the Act are subject to Section 41 of the Act, being a latter provision to Sections 5 and 16 of the Act, the provisions of Section 41 supersede the provisions of Sections 5 and 16 of the Act. Other submissions made, as stated earlier, are in similar pattern and context with the other Respondents.
DECISION/HELD:
The Court held that the appeal lacked merit. The decision of the trial Court declining jurisdiction was affirmed.
RATIO:
INTELLECTUAL PROPERTY – COPYRIGHT: Position of the law on the requirements to be met before a foreign author can commence a copyright claim
“In the instant case, the learned trial judge declined jurisdiction over the matter because some of the Appellant’s relief was incompetent as the condition precedent to bring the action was not complied with. I have calmly looked into the ruling of the lower Court being appealed in the instance, I am not inclined to upset the decision, which in my view, was based on sound reasoning.
The parties in the appeal had dwelt on the statutory provision in Sections 5 and 41 of the Copyright Act, “the Act”, in determining whether or not the Appellant complied with the condition precedent stated in the statute in the circumstances of the case.
I am of the view that the said provisions be produced herein for ease of reference. The provisions are:
Section 5, Copyright Act;
“5(1) Copyright shall be conferred by this section on every work if-
(a) On the date of its first publication at least one of the authors is –
(1) a citizen of or domiciled in; or
(ii) a body corporate established by or under the laws of a country that is a party to an obligation in a treaty or other international agreement to which Nigeria is a party;
(b) The work is first published;
(i) In a country which is a party to an obligation in a treaty or other international agreement to which Nigeria is a party.
(ii) by the United Nations or any of its specialized agencies; or
(iii) by the Organization of African Unity; or
(iv) by the Economic Community of West African States.
(2) Where the question arises as to whether a country is a party to an obligation in a treaty or other international agreement to which Nigeria is also a party, a Certificate from the Commission to that effect shall be conclusive proof of that fact.
Section 41, Copyright Act;
Where any country is a party to a treaty or other international agreement to which Nigeria is also a party and the Minister is satisfied that the country in question provides for protection of copyright in works which are protected under this Act, the Minister may by Order in the Federal Gazette extend the application of this Act in respect of any or all of the works referred to in Subsection (1) of Section 1 of this Act to –
(a) Individuals who are citizens of or domiciled in that country:
(b) bodies corporate established by or under the law of that country:
(c) works, other than sound recordings and broadcasts, first published in that country; and
(d) broadcast and sound recordings made in that country:
Section 1 of the Act sets out works eligible for copyright.”
I agree that for the lower Court to be properly vested with jurisdiction to hear and determine the claim as filed by the Appellant which is based on claim for infringement of copyright by a foreign body corporate established under the laws of a foreign country and the work is first published in a country, which is a party to an obligation in a treaty or other international agreement to which Nigeria is a party; and the Minister [Under the Act, the Minister of Culture) has by Order in the Federal Gazette extended the application of the Copyright Act to all such works eligible for copyright under the Act to individuals who are citizens of or domiciled in such foreign Country, or bodies corporate established by or under the laws of such country. It is on record that the Appellant failed to fulfil the requirement, no doubt, it is fatal to its case, as the said statutory requirement is a condition precedent to taking such claim to the Federal High Court to be litigated upon. The often-cited locus classicus case of Madukolu vs Nkemdilim supra, is instructive in this instance, a Court will assume jurisdiction to entertain matter submitted before it for its adjudication, only where and when such matter has been validly initiated. This implies that the due process of law as well as all the condition precedent have been sufficiently complied with. See Sule vs Nigerian Cotton Board, supra, cited by counsel for 3rd & 4th Respondents.
I observe that the Appellant made much fuss about the provision of Section 5 of the Copyright Act, by which, it argued that the requirement for the minister reported to be gazette as provided in Section 41 of the Act, I am more persuaded by the opinion of the learned trial judge wherein he stated that
“….. therefore, is that Sections 2, 5, 16 and 41 of the Copyright Act must be read together.
A holistic reading of Sections 2, 5, 16 and 41 of the Copyright Act shows that whilst by Section 2 of the Act, copyright is conferred by virtue of nationality or domicile; Section 5 confers copyright by reference to international agreements. In turn, whilst providing for action on infringements of copyrights, Section 16(1) stipulates that infringements shall be actionable at the suit of the owner but this shall be “subject to the Act”. So, by virtue of Section 16(1) of the Copyright Act, infringement of copyright shall be actionable at the suit of the owner subject to the Act. See M.C.S. NIGERIA (LIMITED/GTE) V. C.D.T. LIMITED (2019) 4 NWLR (Pt. 1661) 1, 22. As it is therefore, persons who enjoy copyright in Nigeria as owner under Section 5 of the Act, by reference to international agreements, are to enjoy their right of action by virtue of Section 16 of the Copyright Act but subject to Section 41 of the Copyright Act a related provision to Section 5 of the Act. This is the import of a holistic construction of Sections 5, 16 and 41 of the Copyright Act.
But then, it is not difficult to find that the above view is unblemished based on the principles of reciprocity in public international law. For certain, in interpreting a statute, the mission of the Court is to discover the intention of the lawmaker.”
The combined reading of the relevant sections of the Act in this regard, to wit; Section 5, 16 and 41, leaves no one in doubt as to the intention of the legislature, I am unable to agree with counsel for the Appellant the provision of Section 5 of the Act, is independent of the provision of Section 41 of the, I do not agree, and it is not so. The learned judge was right when he holds that:
“… the intendment of the Act is to subject the enjoyment of copyright by reference to international agreement under Section 5 of the Act to the principle of reciprocity found in Section 41 of the Act. I find that the purpose of Section 41 of the Act is to enthrone the spirit of reciprocity as a pre-condition and determinant factor.
The well-known concept of reciprocity in international law allows municipal jurisdictions to stipulate in their domestic law(s), that certain acts or occurrences outside domestic forum be recognized and enforced within local jurisdiction on condition that similar acts or occurrences in the domestic jurisdiction concerned be recognized and enforced, in turn, in such foreign Jurisdictions as the municipal jurisdiction may specify. Here mutuality or reciprocal treatment becomes key. This avowed principle of public international law is profoundly situated in the realm of recognition and enforcement of treaties/conventions amongst members of the international community.
The foregoing opinion as rendered by the learned trial judge rational which I am not inclined to disturb. It follows the decision of this Court in the microsoft’s case, whicMicrosoft’sh by every standard, is a good law.” Per ANKA, J.C.A.
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