Copyright and Trademarking for Africa startups: Lessons from Ubongo Tanzania
This is a guest post from Nisha Ligon, CEO and Cofounder of Ubongo Kids, a ground ground breaking “made in Africa (Tanzania)” children’s TV show / animation that’s available on YouTube but also broadcasting in Tanzania and recently Kenya with more African countries on the way. I advise Ubongo from time to time (not an investor).
An entrepreneur in our portfolio asked about how to go about Copyright and Trademarking in Africa and this was the response from Nisha I am sharing with her permission with sensitive info removed and edited.
Copyright:
Copyrights are really easy. You can file yourself online with the US copyright office. http://copyright.gov/eco/ You can do a copyright for each character, and each batch of content. That confers full protection, as long as your characters are distinguishable enough and you submit some kind of narrative along with each one. You can then trademark once you start to monetize each character as its own brand.
Copyrighteverything through the in the countries in Africa you operate or intend to spot , you can do it yourself. It’s very easy to do and max $200 per piece of work (in US even cheaper). A copyright in a single territory should convey copyright over all territories under the Berne Convention, except there’s this one little clause in there about developing countries not upholding rights from other countries if they can’t afford to. So it’s generally safer to also copyright individually in African countries.
Before copyrighting, you need to be able to clearly show that you own the rights to all parts of the IP. If the people who created them are employees, it qualifies as a “work for hire”- but you should make an explicit agreement with them for each separate thing you’re copyrighting, that says they were paid to create the work under their employment contract, and all rights belong to your company.
If they don’t work for you, or if it was above or beyond the scope of duties in their employment contract, you will need an IP transfer or IP assignment agreement, and you will need to pay them something (generally cash or stock/shares) specifically for that IP.
Trademark:
Trademarks are a little bit more complicated, and take some time. We have a trademark in Tanzania for each brand, and logo.
Characters (e.g. games): You won’t be able to trademark characters in a country until you can show that you have (or are about to have) customers or business for that brand or logo in the country. You will have to publish the trademark proposal for a period of time (different in different countries) and see whether anyone comes forward to dispute it, before they give it to you. Make sure you have the copyright BEFORE you do this.
TIPS:
Talk to an IP lawyer. At Savannah Fund accelerator we work with one in Kenya. But they exist across the continent.
Tips they often advise:
1. Make sure that you do really extensive image searches first. You won’t be able to uphold it if someone already has similar looking character/logo trademarked or copyrighted. Try and add distinguishing characteristics (think of Mickey Mouse’s pants, or Boots from Dora the Explorer’s red boots)..
2. If you’re going to trademark, they will also need very distinctive names.
3. Copyright first because it’s quick, and you can do it as soon as you have something on paper. Trademarks take time, but start pursuing them as soon as you start to “Trade” with that IP as something that uniquely identifies you to customers.