Biz Law Chapter 18

Two components of copyright

- Act of creation - Final Finished Product

Registration Process

- Tm agent searches of TM office databases to see a similar one has not been registered - Must provide a list of products associated with TM - Examiners review, if acceptable, advertises in TM journal and members can object - if no oppostion, registered.

Requirements for Protection of Confidential Information

- economic value of the secret - effort to keep it a secret - not generally known in the industry (does need to be absolutely confidential) e.g. Getting the employees to sign a confidentiality agreement

Limitations on protection of confidential info

- no longer secret either because the information has been divulged or discovered through publicly available info or reverse engineering -when it becomes part of the employee's personal knowledge or skill. (trade info)

Confidential business info infringement

- no statutory cause of action - common law applies --> injunction, damages, profits and declartion of entitlement to the ifno

How is injunction usually granted?

- serious issue is to be tried - irreparable harm may be caused - balance of convenience favours the applicant

What must be established for title for TM?

- use of Tm (when it is on good or packaging at time of transfer) Note: can still be registered even if it's not in use if the registrant proposes to use it as a TM in canada - filing an application - making it known in Canada

Applying for an industrial design Who to file it to? What does it consist of? Who is entitled to file unless?

-Also files to the Canadian Intellectual Property Office assisted by a patent agent -Normally consists of a written description and a graphic depiction, photograph, or drawing -Owner is entitled to make the application -Basic principle is that the designer is the owner unless the design was ordered and paid for by another

Protection for Industrial Design

-Provides protection for the appearance of mass-produced (i.e., numbering more than 50) useful articles or objects (INDUSTRIAL DESIGN ACT) -Requirements for registration - must be original and novel -Disclosure or use of the design is a bar to registration unless it was within the year prior to the filing of the application (One Grace Period)

Exclusions from Patent Protection (3)

-Things that receive protection under other areas of law, such as software programs as they receive protection under copyright law -Things that do not meet the definition of a patent, such as scientific principles, natural phenomena, abstract theorems (Scientific principles are DISCOVERED not created; therefore, not a patent) Ps practical application of a theory can be patentable -Things that are, for policy reasons, not patentable, such as methods of surgical treatment.or illicit objects (business methods have been issues patents)

How to obtain a patent

-Timing of application is critical because of the first-to-file system -Patent application usually prepared by patent agent, a professional trained in patent law and practice who can assist in the preparation of a patent application -Must apply to Canadian Intellectual Property Office

How to resolve cyber-squatting?

-court proceedings or dispute resolution must prove that - domain name is identical or confusingly similar to their TM and - the the domain holder has no legitimate interest in domain name

Restrability of TM (what must not happen) (5)

-primarily the name or surname of an individual who is living or who has died in the preceding 30 years -descriptive or deceptively misleading regarding the character or quality of the wares (sweet apples or Ontario Wines) -the name in any language of any ware or service in connection with which it is used or proposed to be used -confusing with another registered trademark -an official or prohibited mark

Requirement for patentability (3)

1) New - The invention must be new or novel. An invention, however, need not be absolutely new. It is "new" if it has not been disclosed publicly. 2) Useful - The invention must solve some practical problem, and it must actually work. --> cannot be pure scientific curiosity 3) Unobvious - There must be some ingenuity or inventive step involved in the invention. (cannot be reverse engineered)

How long does the protection last for an industrial design?

10 years

What is a trademark?

A word, symbol, design, or any combination of these used to distinguish the source of goods or services

Tradenames and trademarks Can business get a trade mark that has a name registered as a trade name.

Adoption of trademark may prevent from other getting the same trade name and VICE VERSA Once you choose to adopt either one you can't change.

Assignments and Licences

An assignment is the voluntary transfer of ownership rights in intellectual property whereas a licence is consent given by the owner use the intellectual property for a specific purpose that can normally be done only by the owner. With a licence, no ownership rights are conferred upon the licensee.

Requirements for registering trademarks

Applicant must demonstrate: -that he or she has title to the trademark -that the trademark is distinctive or capable of becoming distinctive -that the trademark is registrable

Exceptions and Defences under the Copyright Act (Second one)

COMPUTER SOFTWARE - Permits the owner of the program to make a copy for adaptation for use on another computer and a copy for backup purposes Key here: Not a copyright violation if it's just a backup for YOU Is a copyright violation if you copied it and distributed it to your friends

Are there automatic copyrights?

COPYRIGHT ARISES AUTOMATICALLY ON THE CREATION OF A WORK. There is an optional registration process. --> advantageous b/c presumption of ownership The owner may mark a work, although there is no requirement to do so. Example: © year of publication; name of owner

How do common law trademarks come into existence?

Comes into existence when a business simply adopts and uses it Considered as a goodwill of a company Rights attached to it in same manner as registered trademarks

How long can a company keep its secrets confidential?

Confidential business information may be protected forever as long as the information is not disclosed to the general public.

What do softwares follow, patent law or copy right law?

Copyright

Specific laws that protect copyright

Copyright Act (federal statue)

Infringement of Copyright

Copyright is infringed when anyone does, without consent of the owner, anything only the owner can do. Includes copying all or a substantial part of a work

Duration of the copyright

Copyright protection is generally for the life of the author or composer plus 50 years.

What are the remedies of an infringement of copyright?

Equitable Remedy of an infringement usually INJUCTION And damages (eg.profits you made using my product)

Exceptions and Defences under the Copyright Act (First one)

FAIR DEALING - Permits the copying of works for the purpose of private study, research, criticism, or review (universities rely on this heavily by distributing slides) The Supreme Court ruled that research must be given a large and liberal interpretation and not be limited to non-commercial or private research.

What happens if there is no use for trademark?

First to file is entitled.

Steps to get an anton pillar order

Go to a court and ask for a order that the judge grants Get something done before a trial Usually an injunction or a seizure of some goods You better be right about this violation If you are wrong, you could be sued for damages (eg. lost profits)

How does compulsory licensing work?

Granted when patent holder has abused rights under patent. --> eg. refusal to grant license on reasonable terms or failure to meet local demand.

Confidential Business Information

INFORMATION THAT PROVIDES A BUSINESS ADVANTAGE AS A RESULT OF THE FACT THAT IT IS KEPT SECRET

Conflict between slogan and product name

If one product has the same name as another company's slogan, it's k b/c the slogan is not being used as a TM and is used in an entirely different business As long as it's not registered in the same industry and entirely similar

How are infringements of common law trademarks addressed?

Infringement can be addressed through the tort of passing off

Who is entitled to apply for patent?

Inventor unless 1)the employee was specifically hired to produce the invention; 2) express or implied agreement that precludes employee from claiming ownership

Litigation to Protect Intellectual Property

Litigation options: Anton Pillar order Patent infringement Copyright infringement Industrial design infringement Trademark infringement Confidential business information - breach of contract, breach of confidence

Are markings necessary?

Marking is not mandatory, but if marked may receive monetary damages - unmarked, injunction only (same as industrial design)

Patent pending

May put that on the good to warn others that they can be liable to pay damages

Benefits of obtaining a patent

Must disclose discovery to the world, but: -in return, the inventor receives a monopoly over the invention for 20 years -process is costly and time-consuming -must evaluate the cost and benefits of pursuing patent

Are moral right legal rights?

No

Are there any statutory protection for confidential biz info

No

What is the process of protecting confidential info?

No applications need to be filed. There could be breaches of: Express terms: Nondisclosure agreements require recipients of information to respect its confidentiality. Implied terms: obligation of confidence as a result of fiduciary relationship

Are marking and other labels (patentee and patent number) needed to be put on all manufactured goods?

No but still legally useful --> reduces innocent infringements

Is colour registerable as a trademark?

No, but it can be claimed as a part of a trademark. (yellow in mcd's M)

Can moral rights be assigned?

No, but they can be waived.

Two requirements for protection of copyright

ORIGINALITY - Work must "originate" from the author, not copied from another (short summary of case decisions - headnotes are original but edited version of court decision is not original b/c it involves only minor changes) FIXATION - Work must be expressed in some fixed form, such as paper or diskette Works not in fixed form (speeches that are not recorded) do not attract copyright

What does copyright only protect? Why does it not protect?

Only protects that FINAL FINISHED PRODUCT (words on the page, musical, play) Does not provide protection for the idea behind it Eg. Writing a term paper, you only need to cite sources only if you copied it word by word (final finished product) If you only used the idea, you only internalized the idea do not need to CITE as it does not violate copyright law

Two requirements of registration

Originality (lower than that of patent) and novelty (follow the one grace period rule)

Difference between copyright and patent

Patent protect the idea behind the final finished work and copyright only protects the final finished good (fixed work)

How can intellectual property rights be lost?

Patent: abuse by not producing quantity that Canada demands; license may be revoked or granted to another; patent could be revoked Industrial design rights = if goods are not properly marked (defence of innocent infringement may limit owner's ability's file for injunction) TM = subject to attacks if not used continuously with goods for which it is registered; OR may be lost if it loses distinctiveness and slips into everyday usage (kleenex) Confidential info = lost once disclosed

5 types of Intellectual Property

Patents, Industrial Designs, Trademarks, Copyrights, Law governing confidentiality

Markings for an industrial design? Mandatory? What are the benefits of a marking?

Proper marking - Capital "D" with a circle around it, name of the proprietor not mandatory but if marked, court can award monetary damages. (vs an injunction if not marked)

What does a patent protect?

Protects both the idea behind it and the finished work Incl. All works in progress and diagrams (substances intended for food and processes for producing them are patentable)

How long does trademark registration protect you for?

Provides protection across Canada for 15 years Can be renewed for further 15-year terms as long as the renewal fee is paid and the trademark continues in use

Markings for TM

R for registerd and TM for unregistered

11 Rights of Copyright Owner

REPRODUCTION - Right to reproduce the work or a substantial part of it in any material form PUBLIC PERFORMANCE - Right to perform the work or a substantial part of it PUBLICATION - Right, if the work is unpublished, to publish the work TRANSLATION - Right to produce, reproduce, perform, or publish any translation of the work ADAPTATION - Right to convert to other formats (e.g., a book into a movie) MECHANICAL REPRODUCTION - Right to make sound recordings or cinematographic recordings CINEMATOGRAPHIC PRESENTATION - Right to reproduce, adapt, and publicly present the work by filming or videotaping COMMUNICATION - Right to communicate the work to the public by telecommunication EXHIBITION - Right to present in public, for purposes other than sale or hire RENTAL - Right to rent out sound recordings and computer programs AUTHORIZATION - Right to "authorize" any of the other rights

What about smells and sounds? can they be registered as a trademark?

Smell --> no Sound --> yes

Categories of Confidential Business Information

Strategic business information Products --> recipes, formulas Compilations --> databases Technological secrets --> scientific processes

Anton Pillar Order

The Anton Pillar order is a pre-trial order that allows seizure of material, including material that infringes intellectual property rights.

Who has the right to the work?

The author unless they fall within exemption categories or have author's permission

Moral rights of Copyright Owner

The author's rights to have work properly attributed and not prejudicially modified or associated with products --> Not to have your work defamed (there could be harm to your reputation) Moral rights include: paternity --> author has the right to be associated with the work (name or pseudonym or anonymous) integrity -->right to object to dealings if they are harmful to the author's reputation association --> right to object to the work being used in association with product

Who Is Entitled to Register a Trademark?

The first person who uses or makes a trademark known in Canada is entitled to trademark registration. Gives the owner the exclusive right to use the trademark in association with the wares and services specified in the application

Distinctiveness requirement of TM

The mark must actually distinguish the goods or services in association with which it is used. Invented words (Lego) are better than descriptive words Note: Once the name becomes a popular/colloquial term, then it's not unique to the product anymore (eg. Kleenex)

What is a copyright?

The right to prevent others from copying or modifying certain works

What laws protect trade names and trademarks?

Trademark law

What does copyright not protect?

Trademarks essentially

What does a trademark indicate?

Trademarks indicate the source of the goods or services and gives the owner exclusive rights to use trademark. It also gives prevents others from using a confusingly similar trademark.

Are rights more restrictive in unregistered trademarks or registered?

Unregistered

Common law trademarks What laws protect them?

Unregistered trademarks Common law and Trademarks act

Exceptions to the author being the copyright owner

Work created in the course of employment where employer is the owner Photos, portraits that are ordered and paid by a customer; even if there is no agreement, customer is the copyright owner

Patent

a statutory right that provides protection for inventions a monopoly to make, use, or sell an invention.

Patent infringement

as long as infringer is taking substance of invention

What are the advantages of registering trademarks?

b/c without rights are only in geographic areas in which it has been used where the reputation has spread Registered trademark enjoys protection throughout the country and also creates presumption of ownership and validty

Intellectual Property

bundle of rights that people have regarding their ideas and rewards/incentives for creating ideas Input: creativity Output: ideas, the expression of ideas, formulas, schemes, trademarks, and the like Also refers to the protection attached to ideas through patents, Industrial designs, etc

Domain names and trademarks

can be a trademark come into conflict with TMs when domain name is issued that includes another's TM (imperial bank, imperial oil all want the word imperial in their domain name) --> settled through the gneral law on adoption and use of trademarks)

Grace period for patents

can be disclosed within the year preceding the filing of the application --> can still patent it and this is not public disclosure.

What does the applicaiton consist of? (2 parts)

how the product is made or the best way to perform the process (Specifications) AND claims - sequentially numbered, single-sentence definitions of the inventions

Function of a trademark

indicate source of origin of goods and services and distinguish the source of goods from those of others.

Industrial design infringement remedies

injuction, damages, profits, noncriminal sanctions

Geographical restrictions of a patent

national in nature; rights to Canadian patents do not apply elsewhere.

Two elements of a patent

new or improvement (cannot be a modfication)

Copyright infringement

owner may receive statutory damages up to 20k instead of profit and damages Infringer is subject to fines up to 1mill and criminal sanction of 5 years in jail

Remedy of patent infringement

pay damages, turn profits over, entitled to injunction and delivering-up of infringed product

Three types of patents in the Patent Act definition

processes or methods machines or apparatuses products or composition of matter

Cyber-squatting

register google before they do, and sell the domain name to google; bad practice but legal

How does a court distinguish between trade info and confidential info

strike a balance between employee's rights to use knowledge gained during course of employment and employer's right to protect its info

What doesn't industrial design legislation protect?

the functional aspect of the product

What does industrial design legislation protect?

the shape, configuration, pattern, ornamentation, or any combination of these applied to a finished product of manufacturing. the appearance of mass produced useful articles or objects. (judged solely by the eye)

Purpose of Trademarks

to distinguish the goods of one company from those of another

Purpose of Patents

to exclude others from using the new technology

What rights are granted for an industrial design?

to make, import or sell

Purpose of copyrights

to prevent from copying of certain works; provides the basis for a saleable product

Purpose of law governing confidentiality

to protect info like marketing plans, consumer lists, databases...

Purpose of Industrial Designs

to protect the appearance of useful articles against copying

TM infringement and remedies

tort of passing off Remedies - injunction - damages - profits - destruction of offending goods and mean to produce them - criminal sanctions

Examples of a trademark (7)

words, slogan, design, series of letters (BMW), numbers (649 for lottery services), symbols, distinguishing guise (eg. coca cola wave, perrier bottles) or any combination of the above