INSIGHT with Uche Ofodile
Nigeria’s entertainment industry & trademark law: lessons from Ludacris
Last week, Professor Uche Ofodile started her series on Intellectual Property and the Entertainment Industry to commemorate two important milestones in the history of Nigeria’s entertainment industry: The Musical Society of Nigeria (MUSON) at 30; and Nollywood at 20 (Nigeria’s Entertainment Industry Coming of Age). This is her second piece, in the line-up.
No musician or filmmaker wants to be hit with a lawsuit especially a lawsuit involving intellectual property law. However, increasingly musicians, record producers, actors, and film makers face copyright, trademark and even patent infringement actions. In countries like the United States (U.S.), intellectual property cases can result in multi-million dollar damage awards and typically mean thousands of dollars in legal fees. Ignorance they say is bliss. However, in the entertainment industry, ignorance of trademark law, copyright law, and even patent law is not bliss but could mean public shame (if you infringe someone’s rights) or loss of valuable property rights (if you allow others to misappropriate your rights without putting up a fight). What can Nigerian musicians learn from Ludacris about trademark law? First, when it comes to accusations of trademark infringement, rappers and other artists are not immune. Second, when choosing the trademark for a record label or an album, one must choose carefully and wisely. Third, when choosing a trademark for a record label one must think of the present as well as the future particularly the future possibilityof expandingone’s product and service beyond music.
On October 1, 2012, Atlanta-based rapper, Christopher “Ludacris” Bridges, was sued over the name “Disturbing Tha Peace” which is the name of his record label (Disturbing tha Peace Records), the name of one of his albums (Ludacris Presents: Disturbing tha Peace),and the name that he uses to sell a wide range of goods and services. The lawsuit alleged that Ludacris is misappropriating another person’s trademark. In the lawsuit filed in the United States District Court for the Northern District of Texas in Dallas, Demitry Brown and his wife Donna Evans-Brown allege that Christopher Bridges p/k/a Ludacris’s “Disturbing Tha Peace” trademark is infringing upon a phrase (“Disturb The Peace”) that they trademarked several years ago. In the lawsuit, the Browns alleged that “Defendants have and continue to knowingly use the name, Disturbing Tha Peace in commerce with actual knowledge that it infringes on Plaintiff’s trademark Disturb The Peace.” The Browns sought an injunction and a cease-and-desist order to prevent Ludicris from using the trademark.
The Browns had actually owned a “Disturb The Peace” trademark which they first used on August 17, 1988, and first used in commerce on February 14, 1993.The Browns subsequently registered their trademarks. Evidence indicates that on July 14, 2000, Demitri Brown filed applications for a U.S. federal trademark registration for DISTURB THE PEACE. The mark was filed for the following goods and services: “automobile audio equipment, namely, speakers, amplifiers, CD players, cassette decks, speaker cabinets; musical sound recordings.” The trademark was registered on May 5, 2002 with Registration number 2569374.
If the trademark “Disturbing the Peace” was already in use by someone else and duly registered, why did Ludacris choose this particular mark? Having chosen the mark did Ludacris take appropriate and necessary steps to ensure that he would not be subsequently accused of trademark infringement? This is where the story gets complicated. The federal trademark registration owned by Demitri brown was cancelled on August 31, 2004. On the USPTO website, registration numbers belonging to Demitri Brown are listed as “Dead”. The trademark was cancelled following an application for cancellation made by Ludacris; in the U.S., third parties can apply to the United States Patent and Trademark Office (USPTO) to have a trademark cancelled on a number of grounds.Regarding the application for trademark cancellation,Ludacris obtained default judgment and the mark was effectively cancelled in 2004.Subsequently, Ludacris took steps to register several trademarks that incorporatethe “Disturbing Tha Peace” phrase. In the U.S., Ludacris owns trade mark Registration Nos. 3159855, 2945795, 2923163, 2925238, 3220495, 2791443, and 3268946.
Based on the history of the “Disturbing Tha Peace” mark in the USPTO, several lessons can be gleaned. It could be argued that one mistake that Ludacris made was to choose as his trademark, a name that was already in existence and had been used by another for products and services relating to music. Trademark lawyers recognize that the more fanciful a mark is, the greater the scope of protection atrademark owner enjoys. Fanciful marks are marks that are completely made up. Examples of fanciful marks are: KODAK™ and EXXON™.
Although choosing to adopt a mark that had been previously used by another and abandoned may not have been the wisest choice, if indeed the mark was abandoned, Ludacris was well within his rights to adopt such an abandoned mark. Assuming that the mark was indeed abandoned, Ludacris did several things right and can teach a lesson or two to Nigerian musicians about what to do prior to adopting a mark and what to do once you have decided on a mark to use for your business. The steps Ludacris took include:
1. Prior search before adopting the mark. Before adopting the “Disturbing Tha Peace” mark, Ludacris did a search of the federal trademark register to determine if anyone was using the name. Before adopting any trademark (unless a fanciful mark that one completely made up) it is important to search all public records to determine whether such a mark is already being used by another for competing or related goods and services.
2. Before adopting the mark, Ludacris took steps to ensure that the existing mark registered on the USPTO Federal Register was cancelled. As already stated, in the United States, the law allows any person who believes that he is or will be damaged s to petition to have a registered mark cancelled. Some of the grounds for cancelling a mark in the U.S. are: abandonment, genericness, functionality, fraud in the registration process and descriptiveness (Section 14 of the Lanham Act).
3. Once Ludacris decided on the Disturbing Tha Peace trademark, he took stepsto protect it – he applied and obtained federal registration for the trademark. In the U.S., registering a mark on the federal register carries a lot of advantages including: prima facie evidence of validity and ownership, nationwide protection, and enhanced remedies.
4. Ludacris did not stop at one registration but actually engaged in multiple registrations this was an obvious effort to make sure the mark covers his music label and every other goods and services that he is into including clothing and related products. Ludacris registered “Disturbing The Peace Records” (TM Registration # 3268946), but went well beyond this. TM registration # 3220495, also belonging to Ludacris, is not even for entertainment services but for clothing, namely, belts, caps, hoods, jerseys, short sets, ties, tops, wraps, athletic footwear, athletic uniforms, bandanas, bathing suits, bathrobes, beachwear, beach shoes, blazers, boots, underwear, coats, dresses, dusters, footwear, gloves, gowns, hats, headwear, hosiery, jeans, kerchiefs, jumpsuits, lingerie, loungewear, pajamas, pants, rain suits, sandals, shirts, t-shirts, socks, and sweatshirts.
5. In many cases Ludacris registered not only the words but also logos, acronyms, and design. For example, TM Registration # 3220495 is for “DTP DISTURBING THA PEACE.”
What lesson then for Nigerian musicians, film makers and actors? First, trademark law is very important to the entertainment business and should be approached with all seriousness and consideration. While the trademark registration system in the Nigeria is not as advanced as that in the U.S., Nigeria has a trademark law that offers ample protection to trademark owners and provides for the registration of trademarks. The law in question is the Trade Marks Act (Cap. 436) Laws of the Federation of Nigeria 1990. There are ten things Nigerian actors and artists need to know about this law:
1. Nigeria has a trademark register. The Trade Marks Act provides that the Registrar of Trade Marks shall keep a register of trademarks, in which shall be entered “all registered trademarks with the names and addresses of their proprietors (Article 2).
2. Trademark registration is a pre-requisite for trademark infringement action in Nigeria.The law expressly states that “[n]o person shall be entitled to institute any proceedings to prevent, or to recover damages for, the infringement of an unregistered trade mark (Article 3).
3. Unregistered trademarks do not enjoy any protection under the Trade Marks Act but are nevertheless protected in Nigeria. An owner of an unregistered trademark has a right of action against any person for passing off his/her goods as the goods of the trademark owner (Article 3).
4. The law provides details regarding registrability and validity of registration. For example, the law provides that a trademark may consist of “an invented words or invented words, Article 9(1)(c). However, the law expressly prohibits the registration of a word or words having direct reference to the character or quality of the goods (i.e. descriptive marks). The law also precludes the registration of deceptive marks (Article 11(a)) or “any scandalous design” (Article 11(b)).
5. The Trademarks Acts prohibits the “warehousing” of marks (i.e. holding on to a mark without actually using it in commerce to distinguish one’s goods and services). According to Article 4, “[a] trade mark must be registered in respect of particular goods or classes of goods.” To have rights in a trademark and to be able to register it one must show that the mark is used in connection with particular good(s) and/or service(s).Non use of a mark is a recognized ground for taking a registered trade mark off the register.
6. Before applying to register a mark, prior search of the Nigerian trademark register is strongly suggested. Article 13 of the Trademark Act states “no trade mark shall be registered in respect of any goods or description of goods that is identical with a trade mark belonging to a different proprietor and already on the register in respect of the same goods or description of goods, or that so nearly resembles such a trade mark as to be likely to deceive or cause confusion.”
7. There are advantages to registering a mark in Nigeria. Registration of a mark on Part A of the Register confers on the trademark owner the right to prevent unauthorized third parties from using a mark identical with it or so nearly resembling it as to be likely to deceive or cause confusion, in the course of trade, in relation to any goods in respect of which it is registered. Article 5(2).
8. Such registration if valid, gives to the registrant the exclusive right to the use of that trade mark in relation to those goods.
9. The Trade Mark Act provides that the registration of a mark “shall be for a period of seven years, but may be renewed from time to time (Article 23(1)). Note however that rights in a trademark can last indefinitely provided the trademark is in use.
10. TheTrade Mark Act provides that a registered trademark “may be taken off the register … on an application made by any person concerned to the court” (Article 31(1)). The grounds for cancellation of a mark are: lack of a bona fide intention to use and abandonment.
In conclusion, Ludacris teaches that one can be a great musician and yet be very savvy about his or her intellectual property portfolio. Ideally, the decision about what marks to adopt and how to register the said marks should be the decision of the artist with the advice of a counsel. In our increasingly globalized work, the trademark that a Nigerian artist adopts can have serious repercussions outside Nigeria.A Nigerian musician that choses as a trademark a mark that is already in use in the U.S. may likely find that his work will be banned from the U.S. and may become embroiled in lawsuits in the U.S..
Decisions about the possible trademarkfor a record label or album are very important and must be taken seriously. As Nigerian artists increasingly go global, their decision about trademarks must be strategic and informed. In choosing a trademark, an artist cannot simply go by gut feeling or by what sounds right but must conduct and exhaustive search to ensure that such a mark does not infringe existing trademarks in Nigeria and in important markets overseas.In short, Ludacris teaches that music, film-making, and knowledge of intellectual property rights can, should and must go hand in hand.
Professor Uche Ewelukwa Ofodile
LL.B. (Nig.), LL.M. (London), LL.M. (Harvard), S.J.D. (Harvard)
Professor, University of Arkansas School of Law
Vice-Chair, Intellectual Property Committee, American Bar Association Section of International Law