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Cross Border IP Protection: Coming 2 America v. Ugo Monye’s Reale Design

33 Years Later…

Set in the fictional African country of Zamunda in 1988, Coming to America is a block buster movie worth $288 million (£224 million) worldwide gross, it remains one of the most commercially successful movies ever to have a predominantly black cast. 33 years down the line, Coming 2 America was released in 2021 with a plot centered not around the search for a wife, but instead for a new heir to Zamunda.

The 2021 Zamunda definitely had more depth by including more details of the African society and how it’s governed. Part of the casts of the movie were also actors native to the continent, such as Davido, Michael Blackson and so many others.

In depicting the African culture, the costume designs used in the movie were primarily of African origin. Among the designs used in the movie was the popular Reale design by Ugo Monye, a Nigerian Fashion designer. The Reale design became a fashion statement in Nigeria in 2017 when a Nigerian Celebrity/ style icon, Ebuka wore the Reale design to the celebrity wedding of Banky W and Adesuwa.

The Reale design which features a kimono and is considered the less bulky concept of the Nigerian Agbada attire was used without the authorization of the designer in the movie, “Coming 2 America”. According to the designer, The producers of the movie through Ruth E. Carter, the costumer, commissioned tailors in Nigeria to reproduce outfits that infringed on the Reale design protected by the Copyright Act, Trademarks Act, and other Nigerian penal laws and international treaties.

As a designer, it is imperative to have one’s design registered under the Intellectual Property laws which make provision for the protection of  fashion brands and certain elements of fashion designs. A design may be protected through any of the following areas of Intellectual Property Law and they include:

  • The Copyright Law subject to the Nigerian Copyright Act
  • The Trademark Law subject to the Nigerian Trademark Act
  • The Design Patent law subject to the Nigerian Patent and Design Act

Section 12 of the Nigerian Patent and Design Act provides that:

A design is any combination of lines or colours or both, and any three-dimensional form, whether or not associated with colours, is an industrial design, if it is intended by the creator to be used as a model or pattern to be multiplied by industrial process and is not intended solely to obtain a technical result.

 In this instance, Ugo Monye did the needful making use of design patents and trademarks to protect his intellectual property rights which provides his design with protection under the law and certain international treaties.

Section 19 of the Nigerian Patent and Design Act makes provision for the Rights conferred upon registration of a design. Upon registration of an industrial design, the law confers upon the registered owner the right to preclude any other person from doing any of the following acts– 

(a) reproducing the design in the manufacture of a product;

(b) importing, selling or utilising for commercial purposes a product reproducing the design; and

(c) holding such a product for the purpose of selling it or of utilising it for commercial purposes.

Based on the provision above and the glaring similarities of the original Reale design and the design in the motion picture, there is a clear infringement on the rights of the designer.

Enforcement of the Designer’s Intellectual Property Rights

In enforcing the designer’s Intellectual Property Rights, the territorial nature of intellectual property protection has to be considered. This is because protection in Nigeria will not avail a designer protection in other countries.  Thus, Intellectual Property protection is generally limited to the country or region where a design is registered.

Hence, if you wish to have your design protected internationally, any of these routes may be applicable:

The National Route

Companies may seek Intellectual Property protection by applying separately to the national IP offices of each country in which they intend to obtain protection.

The Regional Route

A company may seek to register its design under a group of countries that are members of regional agreements which enable the registration of designs in more than one country by filing a single application at the regional IP office concerned. Regional IP offices include: the African Regional Industrial Property Office (ARIPO) for industrial design protection in English-speaking African countries; the Benelux Designs Office (BDO) for protection in Belgium, the Netherlands and Luxembourg; and so on.

The International Route

Unfortunately, Nigeria is not a signatory to the Hague Agreement on Industrial Designs which creates a unique “international” system for the registration of Industrial Designs.

Hence, in protecting a design internationally, rather than applying the national route, other areas of Intellectual property can be applied in the protection process. These includes:

Copyright

  • Berne Convention (1886): This  International Law provides a minimum standard for protection of Copyright and establishes a system where no formal registration is required for Copyright protection. It uses the “Principle of National Treatment” where countries are required to recognize the Copyright of foreigners without any further formalities. Thus, a business in Nigeria will enjoy its copyright protection in countries that are signatories to this convention.
  • WIPO Copyright Treaty (WCT): This Treaty addresses the protection of Copyright in the face of the internet. It broadens the application of the Berne Convention to cover broadcasting over the internet. Hence under the WCT the Copyright of a foreign business in Nigeria are guaranteed against on-line related infringement.

Trademark

  • Paris Convention: The Paris convention has provisions for registration of Trademarks based on foreign priority. Thus, a trademark registered in Nigeria can be registered in other countries signatory to this convention within six (6) months of registration in Nigeria. 
  • TRIPS Agreement: Based on the recognition and nominal protection which the Trade Related Aspects of Intellectual Property Agreement (TRIPS) gives to “well-known” Marks. Infringers who ordinarily wish to unfairly ride on the popularity of a well-known Mark in Nigeria can effectively be checked even without need for a separate registration in other countries signatory to this agreement.

In the enforcement of one’s right in a situation like Coming 2 America v Ugo Monye’s Reale Design, the first step to take would be to seek legal advice from an Intellectual Property/ Fashion Lawyer, who will in turn take the necessary steps by issuing a letter of demand making a request for a compensation which may be in different forms.

To learn more about this topic as a fashion creative, you can join the Africa Fashion Law IG conversation on “What makes a design original?” in order to determine if your design can be protected under the law.

Article Sources

https://www.mondaq.com/nigeria/trademark/788714/strengthening-intellectual-property-rights-and-protection-in-nigeria

https://www.wipo.int/export/sites/www/sme/en/documents/guides/customization/looking_good_nig.pdf

https://www.mondaq.com/nigeria/trademark/521264/registering-and-protecting-foreign-intellectual-property-rights-in-nigeria-copyright-trademark-patent-and-designs


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