SELF MADE? Intellectual Property Issues Arising in Madam C.J. Walker’s Chronicle

A story of a dogged female entrepreneur, Self Made – a miniseries premiered on Netflix exposed the realities and challenges of a sole proprietor who was limited by every factor except her hair loss. The series chronicled the life of Madam C.J. Walker who built a haircare business that churned out products for black-women’s hair. The business subsequently made Madam C.J. Walker the first female self-made millionaire in America. Walker, according to the miniseries, was a washerwoman whose hair loss was treated by Addie’s product. Walker was indeed a black orphaned poor girl who in the face of challenges and frustration singly walked herself up the ladder of success through her dedication and unbending resolve. Addie refused to employ Walker as a sales agent for a product, causing a disgruntled Walker to start her own hairline products, move to Indiana and start a factory of her own which caused a lot of rivalry between herself and Addie.

Facts vs. Netflix Adaptation

As against the plot of the miniseries, Annie (Real name: Addie Malone) did hire Walker as a Commission Agent for the sale of her hair grower and there were clues that Walker got familiar with Annie’s formula while under her employment. Walker did move to Indiana but with some of Annie’s hair-growers and it was in Indiana that she possibly analyzed the product properly to replicate her own hair-grower. Annie never followed Walker to Indiana as introduced in the plot but she built her own haircare system in St. Louis. However, she did accuse Walker of stealing her formula in her adverts and in her letters to some Newspapers where she subtly called out Walker’s products as imitations of hers. Annie never sued Walker but she decided to copyright her products under the brand ‘Poro’ and changed some of the product names.

Intellectual Property Issues Arising – Passing Off

A notable breach of intellectual property right in the chronicle of Madam C.J. Walker was passing off or broadly, a category of trademark breach. Unfortunately for Annie, these concepts were not as extensive or very relevant in the 18th century. According to historians, Annie’s hair-grower was named ‘Wonderful Hair Grower’ immediately the product was perfected. Though arguably a descriptive name, Wonderful Hair Grower subsequently had a special meaning attached to it through Annie’s product. Annie labored for a few years to acquire Clients for her product and steadily, her business grew and her hair-grower became quite popular. Between 1905 and 1906 when Walker created her brand and started selling her products, her hair grower was named “Madam C.J. Walker’s Wonderful Hair Grower”. In the 21st Century, Walker would have had to drop the use of the name after paying Annie a huge sum for the sales that might have been made off the product. Though the name was unregistered as a trademark, the principles of Passing off were present and applicable at that time. Passing off happens when someone deliberately or unintentionally passes off their goods or services as those belonging to another party. Though Intellectual Property Laws are mostly jurisdictional, this position is supported by Nigerian legal principles and Statutes. Section 3 of the Trade Marks Act 1967 states, “No person shall be entitled to institute any proceeding to prevent, or to recover damages for, the infringement of an unregistered trade mark; but nothing in this Act shall be taken to affect rights of action against any person for passing off goods as the goods of another person or the remedies in respect thereof.” The Supreme Court in PATKUN INDUSTRIES LTD V. NIGER SHOES MANUFACTURING CO. LTD (1988) LPELR-2906 (SC) at page 21, paragraph D of the Report, per Karibi-Whyte, J.S.C while interpreting the purport of the above cited statutory authority held thus: “The section prohibits action in respect of unregistered trademarks but preserves the right of action for passing-off goods as the goods of another.

While this infringement might be a legal battle due to the development of laws overtime, Annie might have been unable to successfully sue Madam C.J. Walker because one of the elements of passing off in the United States in the 1900s was deception or fraud. Mr. Justice Mc Kenna, in the case of Standard Paint Co. v. Trinidad Asphalt Manufacturing Co 220 U.S. 446. Stated thus: ‘it is true that the manufacturer of particular goods is entitled to protection of the reputation they have acquired against unfair dealing, where there be a technical trademark or not, but the essence of such a wrong consists in the sale of the goods of one manufacturer or vendor for those of another.’ Though Walker might have been guilty of unfair competition using Annie’s brand name according to this Case law, the issue of fraud or deception where her products are being sold off as Annie’s could not have been established because Walker created her own distinct brand, thus, rendering the success of an action in Passing off unlikely. The geographical location of the use of the name was also distinct and Walker was not in the territory where Annie’s products were being sold at the point she developed her brand. These two factors would have helped Walker to successfully walk away from the repercussions of an alleged passing off or breach of trademark but an Entrepreneur in the 21st Century might have to negotiate a way out of a huge lawsuit. It is understandable that the name might be considered descriptive but if Annie was able to register the name, Walker’s use of a similar name would have been a call out for trouble.

The Issue of Brand Affiliation to Names

According to the miniseries but with no facts to substantiate or invalidate this history, when Walker was about to divorce John Walker, the use of her name; Madam C.J. Walker became a real issue. The story of Tina Turner and her ex-husband, Ike Turner who without her consent changed and trademarked her name as ‘Tina Turner’ comes to mind on this issue. Generally, women cannot be legally compelled to change their married name after a divorce. Though the change may be negotiated, a woman ultimately has the right to choose whether or not to let go of the husband’s name after divorce. Usually, when a brand is already made from the name as was the case with Madam C.J. Walker, the name is rarely dropped. Madam Walker’s choice to stick with the name will however not prevent John Walker’s fiancée from taking his name after his marriage to her. The new wife may however be validly challenged if she uses the name “Madam C.J. Walker” to brand the sale of hair care products. Though an individual cannot be deterred from using her own name, there are restrictions. Names, especially without copyright may not confer exclusive rights except under few circumstances, one of which is firm identification of a name with a particular product(s), thus preventing other Proprietors from the use of such name.

Contracts and Trade Secrets

A very crucial part of Madam Walker and Annie’s story is the allegation that Walker stole Annie’s formula and recreated it to make her product. Should the allegation be correct, Annie’s trade secrets could have been validly protected from Walker by a Contract binding on Walker and which would include restrictive covenants. The Contract, if well drafted would have prevented employees like Walker from setting up their own businesses in direct competition with the Employer Company. Employment contracts in the 21st century will usually cover clauses like Non-disclosure, Non-compete, Garden-leave and Confidentiality to protect a business’ trade secret. When trade secrets are well guarded with effective procedures and legal security measures, they stay secrets and it is unlikely that Walker would have been a threat to Annie if that was the case. Trade secrets are however exposed without consequences for its external use where measures are not put in place to secure it.

The implication of Annie’s allegation would have been different had the formula been registered as a Patent. A patent is a right granted to an inventor to exclude others from making, using or selling the invention for a period of time. For a patent to be registered, it must be established that the invention is new, useful, involves an inventive step and capable of industrial application. Thus, because patents can only be registered for new inventions, Annie might have been unable to register the formula if it is correct that her formula was in general use prior to the commencement of her business. Other sources however reported that Annie had invented the formula courtesy her knowledge of chemistry and her passion for hair, in which case, the formula would have passed the test for Patent registration. The registration of the formula as a patent would have prevented Walker from the use of Annie’s formula for her own brand of hair products except of course, there were improvements on the products. Patents are exclusive to the inventor and may not be used by any other person except the invention is improved. A further development on an invented procedure or product is also patentable therefore, as long as it constitutes an improvement upon the patented invention. It would thus have validly fulfilled the preconditions of newness, resulting from an inventive activity and being capable of industrial application.


Madam C.J. Walker without doubts, was involved in some legal missteps in her business relationship with Annie Malone but for some reasons, she breezed past any complications or consequences. It is unlikely that an Entrepreneur in this age will not be held accountable for some of these missteps partly because the law has evolved and also because business owners are more aware of their rights. As a business owner, complaining in silence for alleged wrongs like Annie Malone is not the best strategy in handling competition companies. It is never a wrong decision to protect inventions, secrets and brands by every legal means applicable but sometimes, it is important to ensure that breaches have consequences- for without this, healthy competition might be an impossible task.

Esther Olatunbosun

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