On 21 December 2020, Flora IP held its end of the year event titled “Nigerian Food, Photography and Law.” The discussions on this topic raised interesting questions such as the possibility of geographical indications of origin (GIs) for the popular West African dish jollof rice! As a follow up to the event, this essay highlights the application of intellectual property (IP) law to food from the perspective of Nigerian law and global IP policy.
IP rights such as copyright, trade marks, patents, trade secrets and GIs are used in the food industry to protect recipes, food products, ingredients, or cooking methods, to identify brands and to market products. They can apply to various aspects of the food value chain including the appearance of a food product, the contents of food, the process for making it, its origin or the name under which it is marketed.
Copyright
Copyright protects original literary works, musical works, artistic works, films, sound recordings and broadcasts. To qualify for protection, sufficient effort should have been expended on the work to make it original (Section 1, Nigerian Copyright Act). Registration is not required for copyright protection, although the Nigerian Copyright Commission maintains a registration system to build a database and provide other services. Protection is for the limited but generous period of 70 years from the date of the author’s death for literary, musical and artistic works. Films, photographs, recordings and broadcasts are protected for 50 years from the date of first publication. Globally, copyright protection standards are harmonised under treaties such as the Berne Convention and the Rome Convention.
A major question with copyright and food is ‘can dishes be protected by copyright?’ Dishes are clearly not musical works or sound recordings but do they qualify as artistic works? What about the recipes for dishes? If computer programs and sheet music can be protected as literary works, can we extend the same protection to recipes?
A dish is ordinarily not an artistic work as food is made to be eaten. This is a utilitarian feature and makes food different in nature from the other works included in the definition of artistic works in the Copyright Act such as drawings, paintings and sculptures. Conceptually, there is room for expansion of the law in this area to cover instances where the work’s artistic features can be separated from its function as food. There are also cases where an artistic work, for example, a sculpture is made with food as a medium but is not meant to be eaten; this would be protected as art.
In jurisdictions where the protection of recipes has been tested, the courts’ reasoning is that recipes containing no literary expression are not protected by copyright. They are viewed as functional because they simply contain a list of ingredients and the directions for combining them. The United States (US) case, Publications International Limited v Meredith Corporation, involved a claim for infringement of recipes using Dannon yoghurt, compiled in a cookbook. The Court found that the cookbook’s individual recipes were like a statement of existing facts or procedures, having no creative expression. The Court reinforced the principle that facts cannot be the subject of copyright though an original compilation of such facts can be. On this basis, the recipes were not considered original and could not be protected by copyright.
The extract from the judgment below sums up the position.
The identification of ingredients necessary for the preparation of each dish is a statement of facts. There is no expressive element in each listing; in other words, the author who wrote down the ingredients for “Curried Turkey and Peanut Salad” was not giving literary expression to his individual creative labors. Instead, he was writing down an idea, namely, the ingredients necessary to the preparation of a particular dish.
It is important to note that the findings in the case were based on the facts examined and it is not a general statement that recipes in themselves cannot be the subject of copyright where the facts are different. Criticisms of the decision have pointed out that the conclusion would be akin to dismissing the instruments and musical notation making up a symphony as a process, as the reasoning does not consider completely novel dishes.
The rationale for the Meredith case indicates that the position would be different where the recipe involves more than a list of instructions and processes for cooking them. For instance, where the recipe includes a creative narrative such as stories on the origin of the food, witty instructions and quotes or where illustrations accompany the recipe. A combination of recipes like a cookbook is protected by copyright. However, the protection applies to the cookbook as a whole and not the individual recipes. This provides the most suitable avenue for protection for an owner whose aim is to share the recipes and receive payment for the knowledge shared.
Trade Secrets
The creator of a dish who intends to prevent others using the recipe and replicating the dish may be better served by trade secret law. The Agreement on Trade-Related Aspects of Intellectual Property Rights (TRIPs Agreement) requires members states to protect trade secrets which are undisclosed, have commercial value and for which reasonable efforts have been made by the owner to maintain its secrecy. Trade secrets do not require registration for protection.
There is no specific law on trade secrets in Nigeria, unlike some other jurisdictions with legislation on trade secrets. In Nigeria, the courts would rely on a combination of contract law, tort law and similar common law principles relating to confidential information when dealing with trade secrets.
A popular well-kept secret in the beverage industry is the formula for making Coca-Cola. In the fast-food industry, the KFC original recipe for fried chicken is a secret mix of ingredients with 11 herbs and spices according to the company’s website.
A major advantage of trade secrets is that protection does not expire, and the information can be kept a secret in perpetuity. Both the Coca-Cola formula and KFC recipe have been secrets for decades. On the other hand, a disadvantage is that unlike other IP rights that remain protected after disclosure or even require disclosure, the value of the trade secret is lost once disclosed; the owner can only request compensation. Thus, trade secrets may be the subject of corporate espionage. In 2006, an employee stole information on a secret Coca-Cola product and attempted to sell it to rival company PepsiCo Inc for $1.5 million. The attempt was aborted as Pepsi reported the matter to the authorities, and the employee involved was arrested and charged.
Accordingly, a lot of effort is often expended in keeping the information secret. This usually involves disclosure to only employees directly involved in the process and signing of non-disclosure agreements. The KFC recipe is kept in a closely guarded vault and was moved under heavy security in an armoured car, with bodyguards including a former police detective, when the location was to be renovated. Successfully keeping a secret, of course, does not prevent another from reverse-engineering the process and figuring out the recipe.
Trade Marks
Trade Marks are a crucial category of IP rights in the food industry because they influence consumer choice and play an extensive role in marketing. Trade Marks can be used to protect distinctive words, letters, numerals, drawings, pictures, shapes, colours, logos, labels or combinations of these and similar features that distinguish a product.
Under the Nigerian Trade Marks Act, registered trade marks are protected for 7 years subject to renewal. Trade Marks need to be registered to benefit from enforcement under the Act, however, unregistered marks can be protected under the common law tort of passing off. In Nigeria, the National Agency for Food and Drug Administration Commission (NAFDAC) requires that all food (and pharmaceutical products) must be registered as trade marks.
Trade marks in the food industry can serve as a mark of quality and prevent others from profiting off the hard work and investment the owner has made in building a brand. In the restaurant industry, franchising agreements usually contain a trademark license, permitting the franchisee to use the trade marks and other know-how. Trade marks provide information to consumers about what to expect from a product. For instance, when a customer walks into a restaurant with a famous name and logo, the customer expects a certain experience and quality of food or service. It could ruin the restaurant’s reputation if a different company with substandard food uses the same marks.
Trade marks can even protect the appearance of food as a 3-dimensional shape. The triangular shape of the Toblerone chocolate bar is a registered trademark owned by Mondelēz. After a dispute with United Kingdom retailer Poundland over the shape of its Twin Peaks chocolate bar, Poundland had to redesign the Twin Peaks bar.
Patents
For novel food products that are not intended to be kept a secret, patents may be applicable. Patents apply to inventions – that are new, result from inventive activity and are capable of industrial application. Under the Nigerian Patent and Designs Act, patents are valid for 20 years from the date of filing the application. For the period of protection, no one can carry out acts such as production, use, sale or import of the invention without the consent of the patent owner subject to limited exceptions.
Food and methods for making food can be patented. There are several patents for meat substitutes due to growing interest in meatless diets. Substantial research (and effort) is invested in making these substitutes look or taste like meat, and the owners seek patent protection to protect their investments. On the dessert front, Cold Stone Creamery holds a US patent for “combined cake and ice cream dessert.”
Geographical Indications
GIs identify products with a specific geographic origin and a reputation or unique characteristics linked to that place of origin. Registered GIs for food from different regions include Penja Pepper (Cameroon), Darjeeling Tea (India), Champagne (France), Tete goat meat (Mozambique), Van Yen cinnamon (Vietnam) and Kalamata olives (Greece).
GIs signal the quality of a product or the product’s unique characteristics from that region to consumers and provide information that helps them make choices. GIs have been identified as a development tool; they can contribute to economic growth in a particular industry by helping smallholder producers reach wider markets and increase exports.
In the food industry, both cooked food and the ingredients used in recipes can be registered as GIs. In the case of food, the Melton Mowbray Pork Pie is registered as a protected geographical indication. The label can only be used for pies made in and within a specified surrounding region of Melton Mowbray, a town in Leicestershire, England. The pies must be made using the traditional process and certain mandatory ingredients including uncured pork, lard and wheat flour. The Penja Pepper, on the other hand, is an ingredient reportedly prized by Michelin star restaurants in their cooking. The pepper is grown in the volcanic soil found in the Penja Valley of Cameroon.
Nigeria does not have a specific legislation on GIs, but origin-based products can be protected in Nigeria under section 43 of the Trademarks Act as a certification mark. Nigeria also does not currently have any food products (or any products at all) protected by GIs. However, there are several food products which may qualify for GI protection, such as Ofada rice and Nsukka pepper.
Conclusion
IP rights are often justified on the basis of their function as tools for incentivising creativity and innovation, thus encouraging the continued production of useful works that the society can benefit from. In the food industry, IP can play this role as well. Whether in the form of copyright for a carefully compiled cookbook; a chicken recipe held as a trade secret for over 80 years; a trade mark for a chocolate bar; a patent for an ice-cream dessert; or GIs for a unique pepper or pie. These IP rights encourage research and effort that enhance creativity and innovation while maintaining standards that result in more tasty dishes and treats for everyone.
