INTELLECTUAL PROPERTY RIGHTS ENFORCEMENT: CRIMINAL LAW ASPECTS IN THE LIGHT OF TRIPS AGREEMENT

ABSTRACT
Intellectual property has become almost the most potent weapon for waging and winning the political and socio-economic war which has been raging in the global scheme of things. Advances made so far in civilization have been due to increase in human intellectual endevours. As a creation of the mind, intellectual property is an intangible property accorded some exclusive right and requiring protection in order to secure the benefit which should accrue to their owners. The enforcement of the rights accruing to intellectual property has a criminal aspect in the sense that the protection is a state responsibility enabled through its various legal frameworks. These laws spell out acts that constitute an infringement of intellectual property rights which can be also be redressed through the criminal justice system. This can be viewed in the light of TRIPS Agreement which places certain obligations, with regards to intellectual property right, on member nations to protect and enforce intellectual property rights. This work examines the nature of intellectual property rights and what constitutes a criminal infringement of them in the light of the provisions of TRIPS Agreement.
KEYWORDS: Intellectual property, Rights, Enforcement, Criminal Law, TRIPS Agreement.
INTRODUCTION

The relevance of intellectual property in an ever globalizing economy cannot be overemphasized especially with its pervasive influence- in almost every aspect of human living. It has become a pivot upon which the wheels of every modern and progressive economy rotate as well as a factor which helps facilitate, some multi-lateral relationships. This has been made possible only by continued and increased commitment of man to inventivism and innovativism through the expression of his intellectual enterprises in varying perceptible forms.

As intangible property, certain rights are attached to them which entitle the owner to exclusive control of the use of the property by others. This right is realized only by legal action in line with the relevant regulatory frame work.

The benefits which accrue to the entire society, stimulated by the protection of IPR have been overwhelming and therefore make the enforcement of IPR a matter of overriding public interest.[1] This largely forms the basis upon which recognition was first accorded as property, intangible products emanating from human intellectual enterprise and conferred with certain exclusive rights, which ensure, not only that their owners reap the fruits of their endeavours but also that the society is positively impacted by it.

In the light of the TRIPS Agreement, the main focus of which is to promote effective protection of IPR as well as ensure that measures and procedures adopted in enforcing them do not themselves become barriers to legitimate trade amidst desire to reduce distortion and impediments to international trade, the enforcement of the IPR by-implication necessarily involves the criminal laws and procedure of any country involved.[2] This is because intellectual property, though a private or personal property right, is protected for the ultimate interest of the society rather than just for that of their owners. Thus, certain laws and regulations are made by different countries to ensure that the enjoyment by IP right owners, of the benefits accruing to them, does not hurt overriding public interest which the state is obliged to protect.[3] This also suggests that countries, in formulating their laws and regulations, put or ought to put into consideration the fact that the infringement of IPR is no longer just private since it not only impacts the economic and moral right of their owners but also undermine a collective or national effort at achieving and promoting a progressive society founded upon the principle of fairness and rule of law. The actualization of the objectives of TRIPS Agreement by the enforcement of IPR therefore, requires some state sanctions through the criminal laws and procedures, if the ultimate purpose of promoting improved human standard of living and survival and upon which several other international Agreement are predicated, must be achieved.

The major thrust of this work is an examination of the criminal law aspects of IPR enforcement considering the nature of the rights themselves, in the light of TRIPS Agreement. It is divided into simple sub-topics which also consider the methods of IPR enforcement, the overview of TRIPS Agreement and its criminal law aspect as well as the challenges and implication of IPR enforcement through the criminal laws and procedure in view of IPR development.

A BRIEF DEFINITION OF INTELLECTUAL PROPERTY

Intellectual property is a global concept of property which has evolved over the centuries. It is an intangible resource which refers to varying creation of human mind, recognized and protected as exclusive right of their owners. Though it is not novel, it remains yet an evolving interest with its subject matters ever expanding and extending with continuous development and progress in human innovative activities.[4]

Intellectual property has been variously defined by different authors. From the basic understanding of the term, it refers to the product of human mind. The New International Webster Comprehensive Dictionary of the English Language defines the word "Intellectual" as pertaining to the intellect.[5] The word "Property' in its wildest sense according to Black's Law Dictionary, includes a person's legal rights of whatever description.[6] It also means any external thing over which the right of possession, use and enjoyment are exercised. In view of the foregoing, IP may be seen as an intangible property emanating from human intellect and giving rise to rights that are protectable and enforceable at law. IP has been seen as a convenient term used to describe the laws relating to Copyright, Patent, Designs, Trademarks and certain analogous Common law and equitable rights, such as Passing off and Trade secret.[7] This is not at variance with the definition of IP in TRIPS Agreement which lists the above subject matter with the inclusion of lay out designs of integrated circuits, geographical indication, utility models, unfair competition.[8] The common thread that runs through any attempt at defining IP is the right element which it creates and which is accorded exclusive protection. IP also refers to the law that seeks to protect the out put of not only human intellectual endeavour but also the goodwill and reputation which is created or associated with them whether in names, marks, get up or even products.[9] It is the law of national and global economic development.

In the light of the foregoing, it does appear that even outputs of industrial activities are covered by the term intellectual property though attempts are sometimes made at categorizing them with different names.[10] This is so because whatever the property is involved here, it is essentially associated with man's intellectual endeavour hence the convenience of the term "intellectual property". It is not an abstract idea. It covers the output of human intellectual and some traditional cultural expressions as well as the protection of the right accruing thereby.

With an increase in man's discovery and progress founded upon an increased engagement of the human mind, the subject matters of IP have continued to expand yet the right in them remains incorporeal. Thus, a subject matter sought to be classified as IP must have emanated from the exercise of human creative efforts or activities. The expression of that creativity, rather than the tangible, is what is largely covered by intellectual property. It has been expanding in scope with regards to what constitutes the necessary component to be protected.[11] A further appreciation of IP can also be gleaned from the nature of the rights which are sought to be protected. This is further discussed in this work.

THE TYPES AND NATURE OF INTELLECTUAL PROPERTY RIGHTS

Intellectual Property being an intangible property creates or is accorded some rights which differ from those in physical or tangible property. The rights it creates are exclusive and enable the owner to perform some defined activity which may be productive.[12] This right which is sought to be protected by intellectual property is both economic and moral though intangible, 'and can only be realized through legal actions.[13] Further appreciation of these rights and their nature is made here through a brief examination of the different aspects of intellectual property and how they are constituted.

PATENTS

This is a sort of governmental intervention through the grant of exclusive right by document, upon an invention having satisfied the requirements of the laws for such grant. For such grant it also refers to a document which is issued a person, by a government department, upon application and containing the description of the invention.[14]

The invention to be protected as patent, must first meet several criteria.[15] The grant of the patent creates a legal situation of exclusivity of rights which could change by expansion in concept of what constitutes an invention.[16] This implies that the patent cannot be exploited without the authorization of the owner of the patent. This however does not automatically empower the patentee to do anything with the invention it rather empowers him to control the exploitation of the invention. This right lasts generally for a limited period of 20years or less where inventions are registered as utility models as obtained in some countries.[17]

The right in patent empowers a patentee to take action against any commercial exploitation of his invention without his authorization.[18] This is seen as the patentee's most important right since it enables him derive the material benefits to which the results of his intellectual efforts, as a reward, entitle him. This right is essentially for the patentee and not for the government to enforce.[19]

TRADE MARKS

Trademarks include a sign, mark, sound, marks words, device, coloured marks, olfactory marks and other invisible signs, that distinguish the goods of a particular enterprise from those competitors by individualizing them.[20] It even includes digital and electronic images. By way of indicating their sources trademarks help build consumer trust in a given enterprise.

Trademarks attract protection on the basis of registration or use.[21] The rights accruing to the owner of the trademark consist largely in the goodwill or reputation that has been built around the use of that mark.[22] A trademark confers an exclusive right which enable the owner control the use of that mark though it does not empower him to use the mark. A trademark also entitles the owner to an action in passing off for misrepresentation.[23]

Trademark is still undergoing changes with regards to what is being or may be considered registrable and protectable. Some of these changes have been tagged on traditional trademarks and being recognized and considered for protection in the South East Asia.[24]

INDUSTRIAL DESIGNS

Industrial designs generally refers to creative activity involved in achieving monumental appearance for mass production items.[25]    Section 12 of the Patent and Designs Acts, defines it as any combination of lines or colour or both and any three-dimensional forms whether or not associated with colours. It covers animated characters represented in the form of aesthetic designs for three-dimensional articles which originated in cartoons and may sometimes represent real person.[26]

  Industrial designs affect a subject matter capable of being industrially exploited and being more relevant with the reduction or exclusion of copyright protection. The protection is targeted at securing one of the distinctive elements by which manufacturers achieve market success. This element is not articles or products but designs, which is an abstract conception.

Therefore, the right accorded a design owner is not an exclusive right to prevent other manufacturers from producing, dealing in similar articles or commercially exploiting them. Section 13 of Patent and Designs Act further provides the nature of what can be protected as industrial designs.[27]

TRADE SECRET

Trade secret has to do with the protection of confidential data, information or compilation used in research, commerce or industry, against unauthorized disclosure.[28] This is under section 38 of the TRIPs Agreement, also known as undisclosed information. Although Trade Secret is often considered as restraint of trade which is not bound to be enforced, section 7, Article 39, Paragraph 1 of the TRIPs Agreement, mandates members to protect undisclosed information.

Trade Secret serves as a source of scientific and technological data and business or commercial information though at the disposal of an enterprise conferring it with some competitive advantage over others.[29] The nature of what trade secret protects is a body or precise configuration and assemblage of components not generally known among or readily accessible to persons within the circles that normally deal with the kind of information in question.[30]

The nature of this right is that it allows an owner of trade secret to keep secret, promote and preserve the information that is vital to the competitive advantage and innovation of his enterprise and can only be shared by confidential agreement. Thus, this right can only be abridged on grounds of public interest.

COPYRIGHT AND RELATED RIGHTS

These deal with the right of intellectual property creators in their intellectual creations. It is the exclusive legal right that prevents copying an intellectual product without the prior permission of the owner of that copyright. Copyright is one of the means of promoting, enriching and disseminating the national cultural heritage. It protects not the idea but how it is expressed. It attracts automatic protection without the prior need to register it with the government. It lasts generally for 50years or the author's life depending on the relevant regulatory laws.[31]

The nature of what is copyrightable has continued to expand through the growth of internet based technology and assets. This has created an increasing need for legislations to keep pace with those new technologies. Thus copyright now covers the worldwide web, software and applications that can be transmitted over computer networks.[32] This has also created a debate as to ownership and transferability of the right since the exclusivity of right or otherwise of a copyright owner, must be determined in order to ascertain who can transfer it. Copyright also covers celebrity right which allows publicity by a person to be made in an endorsement or other marketing usage.[33]

Other related rights include Rental right which confers exclusive right of reproduction as well as the right to authorize or to prohibit the commercial rental to the public of originals form copies of their copyright works.[34] There is also the right accruing to performers, producers of phonograms (Sound Recording) and Broadcasting Organizations which entitles them to stop the fixation of their unfixed performance and the reproduction of such fixation, authorize or prohibit the direct or indirect reproduction of their phonograms as well as reproducing by wireless means of broadcasts among other things.[35]

Other aspects of intellectual property the right to which are protectable include: Geographical indications. Layout designs of integrated circuits also known as topographies and protection against unfair competition. What is protected in these property are the intangible exclusive rights as regards the subject matter concerned though unfair competition is concerned more with prohibiting or protecting a person against acts that are contrary to honest business practice.[36]

AN OVERVIEW OF TRIPS

INTRODUCTION

Intellectual property has in practice, evolved over centuries though the popular usage of the term itself only dates back to 1860's[37] during which some industrialized countries had begun to attach more importance not only to the recognition of the product of human intellectual endeavour as property but also to the protection and administration. Through legislative instruments, as part of the states socio-economic responsibility and as a way to further accelerate their development.

The attempt at using national legal instruments and subsequently transnational Agreements, to secure IP concerns has to do with the desire to encourage and engender wider involvement and co-operation among national governments toward achieving a global convergence and harmony among different national laws regulating IP. This is so because IPRs apply essentially within a single national jurisdiction, being largely a creation of national laws. [38]Thus in other to establish an IP regime with global applicability, the municipal laws of different national government-require some harmonization or synthesis through different international fora, conventions and treaties. It was in this regard that negotiations amidst others, on Trade Related Aspects of intellectual Property Rights (TRIPS) Agreement was made by different countries in consideration of the role and relevance of IP to international trade.[39]   Here, we briefly examine the background to TRIPS Agreement, its provision and application.

BACKGROUND TO TRIPS AGREEMENT

Following the desire by various countries, to sustain and further their socio-economic growth, in the wake of industrialization through the protection of IPR, initial attempts at establishing a global IPR regime through cooperation among national governments had brought about some of the earliest known union or conventions on IP which include Paris Convention (1883) and the Berne Convention (1886). The essence of these conventions was to solve the difficulties associated with obtaining protection for industrial property right of owners in different countries of the world as a result of variations in their laws.[40] They require, for their application, the signatories of member nations in order to grant national treatment to foreigners in the protection of IPRS; yet they do not impose a uniform standard of protection on countries. In fact, they were negotiated to allow member nations freedom to implement their provisions to match their laws and growth.[41]

Building upon this, more international treaties aimed at promoting this cooperation have been made. Some of these treaties included a revision and a consolidation of some earlier treaties. A harmonization of strategies for acquiring and protecting IP led to the emergence of the TRIPS Agreement which provided a platform for improved standard of protection for IPRs at global Level.[42] This came on the heels of the establishment of WTO, the Agreement establishing TRIPs was adopted on 15lh April 1994 in Marrakech and embodied the results of the negotiations of the Uruguay Round of Multilateral Trade Negotiations[43]. The negotiations were held in the framework of the General Agreement on "lariff and Trade (GATT) and included for the first time, within the framework discussion on addressing issues of IPR as they related to international trade. This eventually metamorphosed in 1994 into the Agreement on Trade Related Aspects of Intellectual property Rights (the TRIPs Agreement) which came into force in 1995.[44]



PROVISIONS OF TRIPS AGREEMENT

The TRIPs Agreement forms the foundation upon which conveying global strides at improving the protection of IPR are made. Although it does not impose a uniform standard of protection of IPR on member nations. It makes some useful provision as a guidance, strategies and global requirement for recognition and protection of IPR as well as for acquiring discriminating and using the resource made available through them[45]. It is provided in Article (1) that member shall give effect to the provision of the Agreement through their domestic laws but are not obliged to be more extensive than provided in the protection of IPR. It requires, for the application of the principle of national treatment and most favoured nation (MFN) status to IP protection, signatories of member nations.[46]

The TRIPs Agreement in view of international trade sets the minimum standard of protection for the subject matters of IP and defined what constitutes the element to be protected in those subject matter. It also provides for the form of rights they attract and the issue of their enforceability by establishing measures to seek a legal redress against infringement.[47] It leaves to the discretion of each member the decision as to the implementation of the strategy of the TRIPs Agreement, whether it will adopt specific statute or administrative rule for implementation of TRIPs and regarding direct or self executing effect generally with implementation of TRIPS and regarding of it provision. It is also helpful in understanding the settlement of disputes between members of WTO as regards TRIPs obligation.[48]

A better appreciation of the provision of TRIPs Agreement will require a further perusal of its seven parts divided into different sections and subdivided into 73 articles.

APPLICATION OF TRIPS AGREEMENT

The I'RIPs Agreement being a platform for convergence of different nations on IPR applies essentially to its nation signatories who constitute members of TRIPS council. This suggests that in a sense, some of it's provisions have application to non-signatory countries since they affect issues related to international trade in which all countries participate. It became applicable to all who are signatories in 1996[49] and subsequently to those who are signatories later. Though some countries, depending on their levels of development,  are entitled to transition period within which they are exempted from the application of the provisions.

This implies that the way it applies in well-developed countries may differ from the way it applies in developing countries. Yet all member states are expected to live up to the minimum standard which it imposes. The TRIPs Agreement further applies with regard to consultation of TRIPs council with WIPO in establishing appropriate arrangement for cooperation with bodies of WIPO and consultation for specific area of cooperation between WIPO and WTO.[50]

The application of the provisions of this Agreement especially by developing countries is however very important in order to encourage transfer of technology and increased cooperation between developing and developed countries in international trade. This is an obligation for member countries which though, does not directly bind non-member, still affects them since they have freedom to decide the manner of its application within their legal system. Again, there is also the freedom by parties to TRIPs, adopt the minimum set of rules which will represent the upper and lower boundary of IPR protection.[51]

THE CHALLENGES AND IMPLICATION OF IPR ENFORCEMENT THROUGH THE CRIMINAL LAWS AND PROCEDURE

Every country has its criminal justice system with its strengths and constraints. The criminal laws and procedure of every country is largely determined by the fundamental objectives of that country and it generally seeks’ to uphold the principal of right to fair hearing.[52] This, amidst other things, requires that a person charged with an offence cannot be convicted without proposal trial in a court or tribunal and that the alleged offence must be in existence at the time of its commission.[53]  This gives rise to some challenges and implications as far as the enforcement of IPR through the criminal laws and procedure of any country is concerned.

The criminal laws and procedure of most countries require that the act which is alleged to constitute a crime must be one defined in the laws of the land with its ingredients identifiable.[54] The offence also is to be reported to the appropriate authority for necessary action. This is because a crime, though it affects individual victims is essentially against the state. Thus, the state could not be expected to prosecute an infringer of IPR unless the laws and procedure for the prosecution of the alleged offender have been complied with. Where a particular act of infringement reported is not defined in any known laws of the slate, the immediate challenge to prosecutor especially in Nigeria, would be how to establish a definite legal ground recognized in the laws upon which he seeks to prosecute the alleged act of infringement. This is so since criminal actions cannot be grounded upon a non-existent law. Even where penal sanctions are recognized in an international Agreement on IPR enforcement, effect must be given to the provisions of that Agreement through a corresponding local legislation either domesticating it or making   directly applicable, the provisions of that Agreement to the country.[55] The procedure undergone to achieve this is often rigorous. The implication of this on IPR enforcement especially within a country with such legal impediment is to resort to administrative sanction or take a penal measure that serves little purpose in stopping willful and criminal acts of IPR infringement.[56]

Moreover, the rigours of the procedure of criminal litigation in most climes also make it very challenging. The prosecutor must probe the ingredients of the alleged offence upon which he seeks to prosecute am IPR infringer.[57] The prosecutor bears a burden, in addition to the aforesaid, of proof of evidence which in criminal trial is ordinarily a proof beyond reasonable doubt. The discharge of this burden in criminal trial with regard to IPR is often very difficult. Next to this is the fact that the courts are always hectic with other cases which have nothing to do with IP.

Where a court does not give priority to the trial of criminal infringement of IPR, such infringement may be treated lightly. There is also a seeming hesitancy by the courts to recognize as criminal, infringing acts which are occasioned by new technological development. This could lead to more criminal infringement by aid of how technologies.[58] Also the fact, especially in Nigeria, that ii is only the Federal high court that has jurisdiction over matters of IP but does not have criminal jurisdiction over same, make it more challenging to secure accelerated trial of criminal infringement of IPR.[59] The implication for IPR enforcement is that the objective of depressing and deterring possible future criminal infringement of IPR may be unduly delayed if not defeated while the zeal or desire for and commitment of people to an increased innovative activities may be whittled down as a result of delay of justice.

Furthermore, criminal procedure as a way of entering IPR may end in imposing stiff penalties such as fines and imprisonment and seizures and destruction of all the infringing products but often comes short of providing adequate compensation to the victim owners of the infringed property. This is so since the claim of damages does not usually form part of the criminal remedies. Thus, while deterrence may be achieved by punishing the infringer, the victim owner may still have to resort to a civil action in order to claim a possible monetary compensation. This could discourage people's confidence in the criminal procedures as a means of enforcing their IPR.

Government economic focus and interest with regard to enforcement of IPR largely determines ifs commitment to fighting criminal infringement of IPR. For example, where an alleged infringement affects something, that is viewed as of overriding national  importance, the level of government's commitment through the criminal procedure is likely to be different from a case where such infringement involves something else. Thus, the instrument of criminal justice may not be fully deployed to light an alleged infringement where government policies do not prioritize or promote the issues and protection of IPR as of utmost national interest. This could reduce the scale or speed of the campaign for enhanced protection of IPR especially through the criminal procedure. It could in addition, slow down innovative activities and promote further resort to criminal infringement of IPR.

Again, another challenge for the enforcement of IPR through criminal laws and procedure in many countries, is their traditional background and belief.[60] In Nigeria, as in most African Countries, the concept of private property is yet to be fully appreciated. This is because there is still a prevailing communal view and approach towards social and economic life in Nigeria. Consequently, the subject matters of IP arc hardly viewed as private property which ought not to be used without authorization. Even the traditional cultural expressions which are protectable still raise a fundamental policy and legal question as to whom, if any, the heritage which is sought to be protected belongs[61]. This must be determined before any matter as to infringement arises. Thus, where the issue of ownership of right arising from any traditional cultural expression has not been determined criminal action whatsoever on the infringement can not be sustained. Moreover as a result of wrong public perception and appreciation of intellectual property matters, there are often poor cooperation between the people and law enforcement agents as regards reporting matters bothering on IPR infringement since they are hardly aware of what constitutes a criminal infringement. The implication of this is apathy towards promoting and protecting IPR.

Additionally, IPR enforcement through the criminal laws and procedure has been seen as capable of creating barrier to legitimate trade. This is based on the belief that some countries in order to protect and promote their own economies are rather likely to adopt stricter measures for enforcing IPR by criminalizing certain infringing acts which should have been addressed through the civil procedure. This may strain trade partnership between countries[62]. Again, who the beneficiaries of an alleged criminal infringement of IPR are also poses a challenge as to enforcement of IPR through the criminal laws and procedure. For example, in Nigeria infringements of IPR involving some big multi-nationals are hardly treated with penal sanctions, and this is largely because of their relationship with the government. The implication of this to IPR enforcement is that it could encourage other criminal infringement of IPR that would have a wider impact on the country.

THE CRIMINAL LAW ASPECT OF TRIPS AGREEMENT

The subject matters of intellectual property upon which rights are conferred are recognized under the TRIPS Agreement as private rights.[63] Recognizing also the public objectives of national systems for the protection of IPR, the 'TRIPs Agreement set a minimum standard part of the requirement of which necessitates that specified procedures, as a way of enforcement, be made available, so as to ensure that actions which are productive can be taken with regards to any act of infringement committed against the IPR as well as to serve as remedies for or deterrence to further infringements. The contemplation of this provision covers civil and administrative procedures and remedies as well as criminal procedures.[64] Thus, though TRIPS Agreement does not obligate members to adopt any separate or special judicial system pursuant to IPR enforcement, it expects the provision of an effective enforcement means through the municipals laws of member countries.[65]

From this guideline therefore, criminal law and procedure constitutes an effective measure considered by TRIPs Agreement as necessary, the application of which by members could enhance the enforcement of IPR both in respective countries and globally. Though it does not provide a multi-lateral criminal justice system, its recognition of the need for a multi-lateral framework of principles, rules and disciplines dealing with international trade in counterfeit goods implies a support that criminal procedures could be adopted in promoting effective and adequate protection of IPR, as far as it reduces distortion and impediment to international trade and not become a barrier to legitimate trade. Again, though the penal measures TRIPS even encourages member to provide with regards to IPR enforcement focus rather largely on trademark counterfeiting and copyright piracy,[66] its permission of members to implement in their municipal laws more extensive protection than is required by the agreement, forms a valid ground for providing more penal measures that may be applied to other aspects of IP as far as they do not contravene the provisions of the Agreement.[67]

The second leg of Part I, Article 1(1) provides that members shall be free to determine the appropriate method of implementing this Agreement within their own legal system and practice.[68] The implication of this provision is that there is no uniform penal measures expected to be adopted by all the members, as each member determines the penal measures appropriate for it to apply in different eases of IPR infringement in accordance with its criminal justice system being a part of its legal system. This also implies that whereas some penal measure may be appropriate in a country because of its developmental experience, it may not be appropriate in another with a different developmental experience.[69] Remedies such as imprisonment, monetary fines and seizure, forfeiture and destruction of the infringing goals and of any materials used for the commission of the offence, are applied by different countries in different cases.[70]

Where trademarks counterfeiting or copyright piracy is on a commercial scale TRIPs Agreement permits forfeiture or seizures and destruction of the infringing material as well as monetary fines. This can also be applied in cases of industrial designs, layout design, trade secret and in which an infringement of rights can be penalized with fines or forfeitures of whatever benefit it confers on the infringe What  is certain  is that whereas TRIPs Agreement may  have  spelt  out  what amounts to infringement of the different aspects of IP, each members country is to prescribe whatever penal measure they deem fit but pursuant to the TRIPs Agreement since crimes as counterfeiting and piracy are not exclusively national activities. This makes necessary a consideration of IPR enforcement within a criminal justice system since this forms the basis for the application of whatever provision for criminal procedures that TRIPs Agreement makes.[71]

ENFORCING IPR THROUGH THE CRIMINAL JUSTICE SYSTEM

The enforcement of IPR is usually undertaken through national legislations prescribing civil remedies. This is because IPR is seen as an essentially private right which is or should be enforced through the civil procedure.[72] While civil measures or settlement upon claims with regards to acts that constitute an infringement of IPR, may in some instances be quicker and easier, they are not always guaranteed to produce the needed results of repression of the acts complained of and adequate compensation to the person who suffers the infringement.[73] This is partly because of the rigours of civil court procedure, the difficulty associated with establishing the infringement complained of and the fact that only a minority of cases, in most occasions actually get to the trial stage in the court.

Thus, there is often a need to explore an additional procedure in form of criminal measures though IPR enforcement in Nigeria remains largely a civil matter since most infringements are yet to be defined under the criminal laws.[74] There is still a need to examine the enforcement of IPR through the criminal justice system.

Every criminal justice system is an integral part of the legal system of a country. In the maintenance of law and order in a Nation, penal sanctions are often employed whether for the purpose of punishing an offender for suppressing and determine possible offenders. This is because in cases of breach of law and infringement of IPR, civil remedies may not be enough to prevent the continuation or reoccurrence of such infringement.

Crimes are essentially the creation of a country's municipal laws although some acts which constitute crimes are by no means exclusively national activity and they are recognized under different conventions and agreement.[75] Yet an alleged criminal act must be defined within the laws of a country in order to constitute a crime. It is also the laws of the country defining a crime that prescribe the appropriate penal sanction which should be applied in any particular case, since the crime of IPR infringement is constituted by the local laws, the nature of an alleged infringement must be specified. Also the scope, validity and subsistence of the right alleged to have been infringed as well as the punishment which is prescribed by the law must be shown as in civil cause in order to around a criminal cause[76]. This forms the foundation upon which alleged can be prosecuted, convicted and sanctioned either with lines, imprisonment or with other measure.

The rules of criminal procedures requires that the alleged offence must be clearly stated in a charge sheet and react to the accused on arrangement, and that the burden of proof in evidence required, generally, in a criminal cause must be discharged[77]. This is very relevant in very serious cases of copyright piracy and trademark counterfeiting though other acts of infringement are not thereby inconsequential.[78] Where the criminal infringement involves an artificial person, it can be penalized with fines while fines and imprisonment can be imposed where it is a natural person. Even acts through negligence which result into infringement of IPK can also be punished with imprisonment or any other penal sanction.[79]

The prevailing measures taken in cases of infringement of other subject matters of IP including patents are still largely civil. In view of this, any criminal action which is sought to be brought against an infringer for any acts of infringement in this regard, must be founded on or seen as more than just single act of infringement IPR but also from the perspective or ground of security or economic sabotage and other related offences which clearly constitute crimes. This is important especially in Nigeria, since most infringing acts affecting patent and other aspects of IP are not yet defined under the criminal laws and therefore may not be successfully tried as crimes.[80] Again the logical fact or reasoning that acts of infringement against rights in patent and other industrial property do not have only private effects, though the rights may be private, but that they also have serious long run negative effect on the public also represent a ground upon which charges may be framed to penalize acts of infringement of IPR.[81]

Also, since the enforcement and protection of IPR transcend private interest but serves to promote innovation and invention, enhancing industrial growth and economic development of a country, any acts of infringement that hampers this objective ought to be seen as an act not only against an individual right owner but also against the state and therefore a crime. This could help broaden the base for IPR enforcement through criminal sanction. The provision of certain penal sanctions especially for serious acts of infringement against any subject matter of IP in our criminal laws and can help strengthen enforcement of the rights accruing to them.

CONCLUSION

An effective IPR enforcement is pivotal to the industrialization and economic well being of any nation. The strategies adopted in actualizing, it is as crucial as the objectives itself. Efforts in this direction, in the past by different countries, had led to several Agreements and Conventions. These provided an international convergence, consensus on securing an enhanced protection for IP beyond local levels. TRIPs Agreement therefore, lays a foundation upon which innovation strides at protecting IPR can be made since it only imposes a minimum standard and flexible enough to allow extensive measures with regards to IPR protection to be applied by any members[82]. Country thought it should not be contrary to the provision of TRIPs Agreement.

The TRIPS Agreement makes provision for both civil measure and criminal sanctions as an effective means of enforcing the IPR. The application of its criminal provision is left to member nations whose duty is to either allow a direct application of the provision of the Agreement to their country or domesticate it through a local enactment. This is so since it is the local laws that define what constitutes criminal infringement of IPR though certain acts of infringement such as piracy and counterfeiting etc are not exclusively a national activity. In Nigeria, most infringement of IPR is yet to be recognized under the local   laws as crimes.

Moreover, with regards to IP, the constitution confers only a civil jurisdiction on the Federal I High Court. The challenge here is that, criminal actions brought with regards to IPR infringement must be attached to or founded on other grounds than just intellectual property. It would be encouraging if as it is provided in section 25 of High Court of Lagos State Law though on other issue, that on matter of IP infringement that criminal infringement be not only penalized by the Federal High Court but also adequate or reasonable compensation for the owner be ensured.[83]

However, the rigours of criminal litigation in regular courts in most countries may necessitate the creation of special courts or tribunal or the extension of the powers of existing ones which could help speed up trials of criminal infringement of IPR. The focus of this approach should not be merely deterrence through penalizing criminal infringement of IPR but also to strengthen its enforcement In accordance with TRIPs Agreement and suitable to the economic experience of the country applying it.

IPR enforcement around the world needs to be more expansive to cover human rights, public health and environmental concerns[84]. This could require some revision of existing treaties and Agreements in order to make them more responsive to social   and technological   changing circumstances.   This also requires that the enforcement of IPR be localized as much as it is sought to be globalized[85].

REFERENCES

·        Cornish, W.R,: Intellectual Property 2nd Edition, 1989 Sweet & Maxwell.

·        Andrew, Brown & Anthony Grant: The law of Intellectual Property in New Zealand, 1989 Wellington Butterworth’s. N.Z

·        Khor, Martin: Globalization and the South: some Critical issues, 2000 Third Network, Malaysia, Spectrum Book.

·        WIPO Intellectual Property Handbook, 2nd Ed. 2004 wipo

·        TRIPs Agreement copy

·        New International Comprehensive Webster of the English Language, Delux Encyclopedic Edition 2004 Trident press Int’L

·        Black’s Law Dictionary 7th Ed. Brian Garner. A ed. 1999 West Group.

·        TRADMARKS ACT 1965

·        INTELLECTUAL PROPERTY LAW REPORT 2006 VOL. 1 MARK ANTHONY LAW PUBLICATION Ltd.

·        World Development Report 1998/1999. 1999 Oxford University press for World Bank

·        Resources book on trips and development

·        1999 constitution of the Federal Republic of Nigeria (as amended)

·        Evidence Act, CAP 112, 1991

·        THIS WEEK, 23 May, 1998

·        Osamor, Bob: Fundamentals of Criminal Procedure in Nigeria 2004 Dec-sage Ng Ltd

·        JAPAN JOURNAL, OCT 2006 VOL. 3 NO. 6

·        Jiti, Ogunye: Nigeria Court and Student Rights, Vol. 2 Nigeria public interest Litigation Reports (2NPILR) 2002 committee for the Defence of Human Rights (CDHR) Lagos.

·        http://en-wikipedia.org/wiki/criticism-of-2010.n.p

·        http://www.globalhealtheurope.org/index.php?

·        Weber Joseph D, A Critique of Intellectual Property. http://dane.weber.org/concept/thesis. Dec 2002 n.p



[1] WIPO Intellectual Property Hand book 2nd ed 2004 WIPO, p.212

[2] This forms what could be regarded as the fundamental objectives of TRIPs Agreement as enshrined in

the preamble to the Agreement. See TRIP Agreement p.3

[3] This formed part of the consideration upon which patents were earlier granted and it applies to other

aspects of IP. Cornish, W. R. Intellectual Property 2nd Ed 1989 Sweet & Maxwell p.67.

[4] A Critique of Intellectual property Right, Weber, Joseph-D

http://dane.weber./org./concept/thesis/html.dec 2002, n.p.

[5] Deluxe Encyclopedic Edition 2004 Trident press Int’L p.660

[6] Black’s Law Dictionary 7th Ed Brain G.A ed, 1999 West Group, p.1232

[7] Andrew Brown & Anthony Grant, The Law of Intellectual Property in New Zealand, 1989 Wellington

Butter worths.NZ. introductory pg. 1. This is in TRIPs Agreement as undisclosed information.

[8] TRIPs Agreement, Article 1 (2), WIPO intellectual property Handbook Op. Cit P.347

[9] Ibid

[10] Andrew Brown, op. cit. introductory pg. 1

[11] There have been legislations on databases, software patents, business method patent etc. as part of intellectual property. http://en.wikipedia.org/wiki/critism of intellectual property june, 2008 .n.p

[12] Cornish W.R. op.cit p. 17

[13] Black’s Law Dictionary op.cit p. 1233

[14] WIPO Intellectual Property Handbook op.cit. p. 17

[15] These criteria required to be met determine the patentable subject matter and are matters for the patent law of a country to define. See Cornish W.R. op.cit. p. 138. In Nigeria, by virtue of S.6(1)(a)&(b)Patent and Designs Acts 2004, it is conferred in respect of a product or a process.

[16] Cornish W.R. op.cit 67-68

[17] WIPO Intellectual  Property Handbook op.cit p.40. Under the English statute of Monopolies S.6, patent lasts for 14yrs where the inventor was understood to include not only devices but also importers of an invention from abroad, but by the consensus on European convention it is 20yrs from filing. Cornish WR op.cit pp67-83

[18] This is often seen as the patent owner’s  most important power and can be exercised through the grant of licensing or its refusal by the patentee. WIPO intellectual property Handbook op.cit.p.11

[19] Cornish, W.R. op.cit. p.17

[20] There is also a senicemark, collective mark and certification marks. WIPO. IP .Handbook op.cit. PP 68-69

[21] Ibid. p. 97

[22] Cornish WR op.cit p. 465 Trademark Act 1965 the right to this action in Nigeria as contained in Trademarks Act is statutory and derived from common law, thus it arises only.

[23] Where the trademark is registered, this is the decision of the court in AYMAN v AKUMA (2006) ILPLI p. 109 paragraph c and p. 110 parag D. reported, sec int property law report 2006 vol. 1-Mark Authority law publication Ltd.

[24]Criticism of Intellectual Property http://en.wikipedia.org/wiki/critism of intellectual property , june, 2008.n.p

[25] WIPO Intellectual Property Hand book op.cit. p. 112

[26] Ibid p 111

[27] This can be referred to as the condition or requirements for registration of industrial design and they

are: (a) novelty (b) not contrary to public order or morality. Sub paragraph 2-5 elucidate these conditions. Patents & Designs act 2004

[28] A Brochure on Intellectual Property. WIPO p. 10

[29] Ibid.

[30] Ibid. p. 11

[31] For classic forms of copyright the term required by Berne Convention is the author’s life and 50 years

thereafter. This was also maintained in successive British Act 1911. Cornish WR .op. cit. p.283

[32] WIPO Intellectual Property Handbook op.cit. p 349

[33]

[34] WIPO IP. Handbook op.cit.p.350

[35] WIPO IP Handbook op.cit. p.350

[36] Cornish WR, op. cit pp 218-220

[37] Dane Joseph Weber credits the Libertarian writer Lysander Spooner, who used the phrase Intellectual Property in 1850 as being possibly the first to do so. “A Critique of Intellectual Property Right” http://dane.weber.org/concept/thesis/html. Dec 2002, n.p

[38] World Development Report 1998/1999 Oxford Univ Press for World Bank p.33

[39] WIPO IP Handbook op. cit. pp345-346, also world Development Report 1998/1999 op.cit.p.33

[40] This led to development and application of the principles of national treatment and Most Favoured Nation (MFN) which ensure that treatment, with regard to IP Protection, given by country to it's nationals is also given to nationals of other countries, and cases where there can be exemptions. WIPO IP Handbook op. Cit. pp.347-348

[41] WIPO IP Hand Book op. cit.p.347

[42] World Development Report op. cit p. 33

[43] WIPO IP Hand Book op. cit. p. 345

[44] Ibid.

[45] TRIPs Agreement Article.1

[46] These principles seeks to eliminate discrimination as regard protection of IPR, conferment, of any advantage, favour, privilege or immunity, on whether relationship whether between TRIPs members or between a TRIPS non-members. WIPO IP Hand Book op. Cit. PP 347-348.

[47] WIPO IP Hand Book  op.cit. p. 348

[48] Ibid. p.357

[49] World Development Report. op. cit. P.33

[50] WIPO IP Hand Book. op. cit. pp. 346-347

[51] Resource book on trips and development 2005 Cambridge Univ. press for UNCTAD-ISTSD p. 18-19

[52] This is provided for in section 36 (1) & (4) 1999 Nigeria CFRN Constitution (as amended in 2011)

[53] Sec 5-36 (8) CFRN 1999 (amended in 2011)

[54] S.36(12) CFRN 1999 (as amended in 2011)

[55] Resource Book on TRIPs and Development op. cit p. 24

[56] WIPO IP Hand Book op. cit. pp. 210-211,& 355

57 This is in tandem with the provision of section 138 of the Evidence Act, 1990, CAP 112

58 For example, in USA, the Court declined to grant judgment against a record company, Diamond Multi Media System San Jose, which helps down load music directly to right owner was seen as capable of opening doors for piracy. THIS WEEK, 23 May 1990 p. 23

59 S.251 (2) 1999 CFRN confers exclusive jurisdiction on the Federal High Court in civil matters as regards IP.

[60] Even in other climes, some of criticism against IP by the free culture movement, is that IP amount to intellectual protectionism, intellectual monopoly or government granted monopoly http://en.wikipedia.org/wiki/critism.of intellectual property june,2010 n.p

[61] WIPO IP Hand Book op.cit p. 57

[62] For example, Canada invoked Article 1.1 of the TRIPS Agreement in order to establish that it had a broad discretion with regards to implementing it's obligations under the Agreement, This could hurt trade relations between countries. Resource Book on TRIPs. op. cit p. 29

[63] Article 1: TRIPs agreement, world Dev. Report 1998/1999 op. cit. p33

[64] WIPO IP Handbook op.cit pp. 155-166

[65] Ibid p. 355

[66] The Infringement of other aspect of IP is said to give rise only to civil cause. WIPO IP Handbook op.cit p355 - 356

[67] Since infringing activities constitute a threat to health, security and safety of consumers and cover several areas of IP, this ought to entourage extension of criminal sanctions to cover infringement en other IP area   Japan for e.g. is strengthening measure's to combat counterfeiting net only on trade mark and copyright but on ether IP areas Japan journal, act 2006 Vol. 3 No. 6Po J2 -1.3

[68] See TRIPs Agreement Article.1

[69] It has been argued considering the social and economic implication of strong penal measure that most industrial countries had in the past, gone through a period of weak IP protection and so developing countries should be allowed to rely on the same model before transforming to story protections. Resources book on TRIPs and development op.cit p. 35

[70] WIPO IP Handbook op.cit p. 356

[71] Ibid

[72] WIPO IP Handbook op.cit p.212

[73] Ibid

[74] S.2.5 (1) 1999 CFRN (as amended in 2011) confers exclusive jurisdiction on the Federal High Court on IP but in civil Matters only

[75] WIPO IP Handbook Op.cit.pp 210-212

[76] Section 36(8) 1999 CFRN (as amended in 2011)

[77] S.138(3) of Evident Act 1990

[78] Since other infringement of other aspects of IP are said to rise only to civil cause it requires only a proof on the balance of probability S.136 Evidence act.

[79] WIPO IP Handbook Op.cit.p.215

[80] There is no provision in patent and Designs Act of Penal sanction with regards to infringement. See patent & Designs.

[81] WIPO IP Handbook op.cit p.212

[82] Resource Book on TRIPs and Dev. Op.cit p 35

[83] Asamor Bob. Fundamentals of Criminal Procedure in Nig. 2004 De sage Nig. Ltd. P.20

[84] This is so since TRIPS Agreement affect public health through limiting access to medicine especially in countries or food serenity. Thus a review which will make its provisions more response to need in developing countries http://www.globalhealtheurope.or/index.php?option.com.  5/13/2011

[85] To this end, Japan, in her 2006 IP strategic programs canvassed a new int’l conventions for combating of counterfeiting and piracy and as improvement of existing convention. The Japan journal. Op.cit.pp 11-13

See also Martin Khor. Globalization and the South. Some critical issue, 2000 third Network, Malaysia spectrum book p. 36-37
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