Trade-marks can appear almost anywhere. But you have to be able to see them at the point of purchase for the brand to function as a trade-mark under Canadian law. Take this example. A purveyor of fine bathroom tissue tried to registered the floral pattern at left as a trade-mark. It’s the design that’s embossed onto a popular brand of “hygienic paper products” (that’s legalese for toilet paper). A competitor complained, saying the design was confusing with its own registered trade-mark – the floral design at right.

In the recent case of Scott Paper Ltd. v. Georgia-Pacific Consumer Products LP , 2010 FC 478, the court examined the competing trade-mark claims and decided that marks must be seen to develop a reputation and to be distinctive of their owner. In this case Georgia-Pacific’s mark (the one at right) was not visible to consumers through the packaging.  Since it was not visible at the point of purchase, it could not function as a trade-mark, regardless of how many times people saw the mark after purchase when they opened the packaging to use the product.

Lessons for business?

• There are many design elements that can function as a trade-mark to distinguish you from competitors… from the brand displayed on the package to designs embedded into the product itself.
• When reviewing trade-marks in your business, ensure that your packaging strategy dovetails with your brand strategy. In this case, the packaging may have changed over time to “hide” the trade-mark.
• Get advice on your brand-protection strategies and watch your competitors – in this case, the complaint failed and Scott Paper’s design (the one at left) was allowed to proceed to registration. However, this case also illustrates that Georgia-Pacific was vigilant about brand protection in a competitive business.

Calgary – 08:00 MDT

Technology commercialization starts with the invention or creation of something marketable – a new device, a tool, an algorithm, a software application.

Before you start to commercialize it, one of the first questions is: Who owns it? If an employee invents something marketable, employers will commonly claim that they own their employee’s invention.  However, in the case of patentable inventions, the Canadian Patent Act is silent on the question of whether an employer has any rights to an invention created by an employee. To the contrary, there is a presumption under Canadian law that an employee is the owner of his or her inventions, unless there is an express contract to the contrary, or the person was employed for the express purpose of inventing or innovating. The case of Techform Products Ltd. v. Wolda provides an interesting review of these issues, in a situation where the employer was ultimately found to have no rights to a valuable patented invention that was created for its business. 

I will be speaking today at UTI‘s Technology Commercialization Series: Commercialization Pitfalls: How to Avoid Them to review ownership issues.   

Calgary – 10:00 MT

Maybe you’ve heard of patent trolls – companies who own a patent or two, but don’t actually manufacture or sell any products. When they see that another company has become independently successful, they pounce, alleging patent infringement and millions of dollars in damages. The famous case of NTP v Research in Motion is the classic example.

Well, now we’re looking down the barrel of copyright trolls: advances in technology and litigation have combined to create ideal conditions for the modern copyright troll. In the US, copyright holding company Righthaven LLC, acquired copyrights to newspaper content originally published by the Las Vegas Review-Journal, a Nevada newspaper.  Sophisticated software can search the internet for instances that might qualify as copyright infringement. Righthaven has since filed over 100 copyright infringement lawsuits in the US.

The approach seems to be gaining traction: a Las Vegas federal judge recently ruled that Righthaven had standing to sue for copyright infringement even though the company didn’t own the copyright at the time the alleged infringement occurred.

In Canadian news, proposed Copyright Reform legislation (Bill C-32) is headed back to committee, as Parliament resumes for the fall.  If the progress of legislation is not halted (again) by an election, then the committee deliberations promise to be contentious as each party jockeys for position on the politics of copyright.

Calgary -10 MT

 

A television production company noticed that audio-clips from its popular TV show were being used in a new iPhone app called “Chopper Soundboard”. (Follow-up story here) While this was an Australian company, the issue is also a common one in both Canada and the US, as owners of copyright content notice that iPhone and iPad developers will “borrow” content – images, video, audio – for use in their apps.

For the copyright owner, the practical question is usually resolved when the app is removed from the iTunes store. A relatively easy remedy, but one that does not address the copyright issues.

The main legal question – which has not yet been settled in court – is who has responsibility for the infringement?  Copyright owners have launched litigation against Apple (for example, the Australian production company Jigsaw Entertainment has made noises about a lawsuit against Apple; photographer Louie Psihoyos has sued Apple in the US for copyright infringement arising out of an iPhone app), and largely left the developers out of their cross-hairs.  However, the Agreement that developers sign with Apple is clear that developers take on the liability in the event their app infringes someone else’s copyright.

Developers: Be aware of the scope of your liability with Apple, and review the agreements with your own customers. Take care when collecting content for your app. Original or properly-licensed content will reduce risks of future copyright issues.

Copyright owners: If content is being used without authorization, get advice on the options you have for remedies under the Copyright Act.

Calgary – 11:30 MT

India recently granted its first “sound mark” to Yahoo Inc., in a development that brings India’s trade-mark registration system in line with the US, the EU, Australia and other trade-mark registries around the world. (Click here to listen the audio clip of the Yahoo yodel).

What about Canada? Although sound marks are not expressly prohibited by the Canadian Trade-marks Act, there has only been one successful registration of a sound mark in Canada (the MUSICAL NOTES DESIGN mark, which has since been expunged for failure to renew). The practice of the Canadian Intellectual Property Office (CIPO) has been to consistently refuse applications for sounds marks due to the procedural requirement that marks be visual in nature. This is not mandated by the definition of a “trade-mark” in the Trade-marks Act itself, but the Act does refer to the requirement of submitting a “drawing” of the mark, and court decisions have confirmed this. “A ‘mark’ must be something that can be represented visually” : Playboy Enterprises Inc. v. Germain (1987), 16 C.P.R. (3d) 517 (F.C.T.D.).  The MGM lion’s roar, which was the subject of a Canadian “sound mark” application in October, 1992 (Application No. 714314), is still before the office eighteen years later, having gone through various extensions, refusals and appeals.  It might be Canada’s longest-running application.

Is it finally time to permit sound marks in Canada? CIPO is considering some non-traditional marks – such as holograms – that can be depicted visually. Future amendments to the Trade-marks Act will probably permit registration of sound marks and other non-traditional marks in Canada, though these changes won’t likely be introduced for several years.  Listen for changes.

Related Reading: Registering Sound as a Trade-mark

Calgary – 10:00 MT

 

For Canadian software companies who license their software in the US, this decision will be encouraging (Vernor v. Autodesk Inc. (September 10, 2010, US Ninth Circuit Court of Appeals, No. 09-35969). Timothy Vernor purchased several used copies of Autodesk, Inc.’s AutoCAD Release 14 software from one of Autodesk’s customers. Then he resold the copies on eBay. Vernor never installed the software or agreed to the terms of the software license. 

Is it copyright infringement to re-sell a used copy of software?

The “first sale doctrine” is a defence in the US that says no, it’s not infringement because a copyright owner’s right to control sale or disposition of the copyrighted work is exhausted after the first sale occurs.  In other words, owners of copies of copyrighted works can resell those copies without needing the copyright owner’s consent.

The essence of the court’s conclusion in Vernor is that a software license is an important exception to the “first sale” defence. This is because the court found that Autodesk had not sold copies but merely licensed copies of the copyrighted work.  Where an end-user license (or EULA) is a limited license agreement in which the copyright owner reserves title to the software copies and imposes significant use and transfer restrictions on end users, then this type of license is an exception to the “first sale” defence.  In the court’s words: a “software user is a licensee rather than an owner of a copy where the copyright owner (1) specifies that the user is granted a license; (2) significantly restricts the user’s ability to transfer the software; and (3) imposes notable use restrictions.”  Canadian software vendors should review the terms of their end-user licenses to ensure that they can take advantage of this remedy in the US. 

Calgary – 10:30 MT

Since when are bow ties a patent issue? Since clothier Brooks Brothers was sued for a false-marking claim, related to the long-expired patent for the “Adjustolox” mechanism on their bow ties. Since the patents have expired but are still marked on the product, the company is technically open to a false-marking claim, and the appeals court in the U.S. recently ruled in Stauffer v. Brooks Brothers, Inc., No. 2009-1428, -1430, -1453 (Fed. Cir. Aug. 31, 2010) , that virtually anyone has standing to bring a lawsuit for false marking claims.

In our earlier post (Patent Marking: Update for Canadian Patent Owners), which addressed the Forest Group decision (Forest Group, Inc. v. Bon Tool Co., 590 F.3d 1295 (Fed. Cir. 2009)),we noted that false-marking claims are, in the US, one of many strategies being used by competitors.  We also note that earlier this year, in the US decision in Pequignot v. Solo Cup (Federal Circuit Court of Appeals, June 10, 2010), the appeals court also decided that knowingly marking a product with expired patents creates a rebuttable presumption of an intent to deceive the public. In the Solo Cup case, the company was successful in rebutting the presumption by gathering evidence of its decision-making process, and convincing the court that its intent was to minimize manufacturing costs, not to deceive the public.

From a Canadian patent case, here’s another patent strategy: in one of the rare cases considering a patent infringement court case versus a patent re-examination before the Canadian Intellectual Property Office (CIPO), the Federal Court recently “froze” the re-examination proceedings, until the outcome of the patent infringement trial. In Prenbec Equipment Inc v Timberblade Inc. 2010 FC 23, the court decided that the nature of the evidence, and the ability to cross-examine witnesses, meant that the trial was the better venue to decide the issues. This is an important consideration in assessing tactics in the midst of patent litigation.

Calgary – 18:00 MT

 

 

ipblog.ca will be taking a break over the summer. We’ll be back in the Fall to pick up developments such as:

• Canadian Copyright Reform (with Parliament breaking for the summer, there will be no further Parliamentary debate on Bill C-32 until September);
• The US Supreme Court’s decision in the Bilski case (relating to patentability of business methods and software);
• Changes to the Canadian rules in assessing patentability for “computer-implemented inventions”;
• The Canadian Intellectual Property Office’s plans to expedite the examination of so-called “green technology” patent applications;
• Developments in licensing, trade-marks, internet law and trade-secret law.

Have a good summer. 

Calgary – 09:00 MT

The Canadian Intellectual Property Office has released a draft version of Chapter 16 of the Manual of Patent Office Practice (MOPOP), relating to “Computer-Implemented Inventions”. The chapter is open for public review and comments between June 16, 2010 and August 19, 2010 and is available through the MOPOP Updates web page. The current revision process provides more detailed guidance and examples regarding computer-implemented inventions. 

This development in Canada is being closely watched in parallel with the pending release of the Bilski review of business-method patents and computer-implemented inventions in the US.

Calgary – 09:00 MT

The Electronic Frontier Foundation has published an interesting article on Apple’s iPhone Developer Program License Agreement under the (strange) heading “All Your Apps Are Belong to Apple“ which is garbled from both a grammatical and legal perspective.  The Developer Agreement has some zingers in it, to be sure, but it certainly doesn’t claim any ownership over developers’ apps.

If you are a developer, you own your apps. (Section 3.1 of Schedule 1: “…Apple shall not acquire any ownership interest in or to any of the Licensed Applications or Licensed Applications Information, and title, risk of loss, responsibility for, and control over the Licensed Applications shall, at all times, remain with You.”)

Calgary – 08:00 MT

The iP3 Forum in Toronto on June 21, 2010 provides an arena to discuss the potential of Apple’s Touch Platform. A business track provides analysis and insights on how to leverage the Platform’s market potential. The technical stream gets into the details of designing and app development.

I will be speaking on the subject of “App Law: The Legal Side of Mobile Apps” including a review of the law of iP3 Apps, copyright issues, trade-mark issues, intellectual property ownership,  and a review of app licensing.  I also look at tips for mitigating risk under app development agreements, and an update on the latest in app lawsuits.

For registration details, see: This Link  

Calgary – 08:00 MT

 

 

The Canadian government has introduced the next version of its long-awaited and much-debated copyright reform bill (Bill C-32, the Copyright Modernization Act). Here are a few interesting highlights:

• Format & Time Shifting: (Sections 29.22 and 29.23) The new law would allow consumers to “format shift” music from commercial CDs to hard-drives, iPods or other devices. It would also permit “time shifting” of TV programs. However, this right does not override the anti-circumvention restrictions. Put another way, if you have to crack a digital lock in order to make the shift, then you can’t legally shift. 
• Back-Ups:  (Section 29.24) The proposed law allows users to make backup copies, but again, this right is subject to the anti-circumvention restrictions. It’s hard to find a commercial DVD now that doesn’t have digital locks, which means that in practical terms, any back-ups of personal DVDs would have to break a lock, would violate the anti-circumvention restrictions, and would thus be prohibited under the new law.
• Software Interoperability: (Sections 30.61 and 41.12) Interestingly, the anti-circumvention rules do not apply if you want to circumvent a digital lock on software, “for the sole purpose of obtaining information that would allow the person to make the program and any other computer program interoperable”.  This need not be for personal use… so does this mean that competitors can legally hack each other’s code for the sake of interoperability?
• The YouTube Exception: (Section 29.21) There is an interesting exception for “Non-commercial User-generated Content”. Basically, if you construct a mash-up using bits of copyright-protected material, then this kind of creation will not infringe copyright, as long as it is for personal use and doesn’t have a “substantial adverse effect, financial or otherwise, on the exploitation or potential exploitation of the existing work”.   
• ISP Liability? (Section 27(2.3)) This new section might be called the Anti-Napster provision since it makes clear that copyright will be infringed by anyone who provides an Internet service that is designed “primarily to enable acts of copyright infringement”.  This raises the question of the liability of Internet Service Providers, though some language has been sprinkled in to provide comfort to ISPs. 

Before it becomes law, it must pass through Parliament and withstand any lobbying efforts by industry and consumers.

Calgary – 14:30 MT

The government has  introduced proposed amendments to the Personal Information Protection & Electronic Documents Act (PIPEDA). The changes to the federal law are wide-ranging and will have a significant impact on privacy law here in Canada. Here are a few highlights from a business perspective of the proposed changes in Bill C-29, and once it passes into law, we’ll provide an overview: 

• Business Transactions: If you want to disclose personal information during negotiations for a “prospective business transaction”, the proposed changes under Section 7.1 will be of interest since they permit “…organizations that are parties to a prospective business transaction” to “use and disclose personal information without the knowledge or consent of the individual” as long as the organizations have entered into an agreement restricting use, and imposing “security safeguards appropriate to the sensitivity of the information”.  If the transaction does not proceed, then the information must be returned or destroyed.   This moves the federal law into line with the approach taken in Alberta.
• “Business Contact Information” would be specifically excluded from the purview of PIPEDA. This category of personal information refers to an individual’s name, position name or title, work contact details and e-mail address.
• “Employee personal information” will be treated differently under the new law, since the changes make it clear that consent is not required for the collection, use and disclosure of such information as long as it is to “establish, manage, or terminate the employment relationship” as long as the employer has notified the employee. This is best done at the outset of the employment relationship.  Again, this brings PIPEDA in line with the Alberta law.

Calgary – 09:00 MT 

 

The trade-mark Moto Mirror is registered in Canada for use with truck and automobile mirrors. However, the owner of the mark did not actually manufacture the mirrors. In a series of licensing agreements, the owner of the mark authorized other companies to make and sell the mirrors under the Moto Mirror brand.  This is common enough, and is permitted under Canadian trade-mark law, as long as the owner maintains the required degree of control over the “character or quality of the trade-marked wares”.  So what degree of control is required?

In Tucumcari Aero, Inc. v. Cassels, Brock & Blackwell LLP (March 9, 2010), the Federal Court of Canada reviewed this question.  The Court has reinforced the concept that indirect control will satisfy the requirement, and indicated that: “What is required is that the registrant be able to control product quality through the exercise of its contractual rights vis-à-vis the intermediary which, in turn, is entitled to control product quality under contract with the sub-licensee. So long as there is a continuity of quality control that can be effectively maintained by the registrant under the chain of contracts no special conditions or language are required.”

Lessons for business?

• When licensing trade-marks, make sure you get legal advice to ensure your license agreements are properly drafted;
• The court was clear that “no special conditions or language are required” as long as it is clear that the owner controls product quality through the chain of contracts.

Calgary – 08:00 MT

 

When can an internet user remain anonymous?  It depends….

As an update to our recent post about Mosher v. Coast Publishing Ltd., 2010 NSSC 153 (where the identity of anonymous comment-writers was ordered to be disclosed), the recent decision in Warman v. Wilkins-Fournier, [2010] ONSC 2126 (S.C.J.), took an opposite view. 

The recent Wilkins-Fournier decision was an appeal of an earlier decision (See: Online Defamation Update) in which the court ordered the disclosure of all personal information, including name, email and IP address, of eight anonymous posters in a defamation case.  In this new decision, the court reviewed privacy rights and freedom of expression issues, and overturned the disclosure order.  The court indicated that disclosure should not be automatic, and the plaintiff must first demonstrate a prima facie case of defamation before the disclosure of personal identities is ordered.  Interestingly, the court compared this situation to the one in BMG Canada Inc. v. John Doe, where the recording industry sought the disclosure of anonymous alleged copyright infringers. 

Calgary – 09:00 MT

Can you get a trade-mark for .doc, .pdf or other file extensions?  The makers of AutoCAD software are pursuing trade-mark protection over the file extension .dwg (referring to “drawing”), which is the file format for the AutoCAD software product. In the US case Autodesk, Inc. v. Dassault Systemes Solidworks Corp., 2009 WL 5218009 (N.D. Cal. December 31, 2009), the Court has made it clear that file extensions are functional and thus cannot be protected as trade-marks.

What about in Canada? Autodesk is also pursuing trade-mark protection for the DWG mark in Canada, and the application has been allowed.  No Canadian decisions have considered the specific question of claiming trade-mark rights over a file extension.  However, Canadian law accords with US law on the topic of functionality.  In the Supreme Court’s famous decision in Kirkbi AG v. Ritvik Holdings Inc., 2005 SCC 65 (CanLII), (the Lego case), the Court denied trade-mark protection for the shape of Lego building blocks on the grounds that the shape of the blocks is purely functional in nature, and thus cannot be protected as a trade-mark.

Calgary – 08:00 MT

Today, the Canadian Intellectual Property Office (CIPO) announced that it is developing a protocol to expedite the examination of patent applications related to “green technology”. Proposed amendments to the Patent Rules would be published for comment in the Fall of 2010, meaning that the fast-track program would not likely take effect until late 2010 or early 2011. 

When it is implemented, the program will make Canada more competitive internationally in this growing industry, since the US, UK, South Korea, and Australia have all implemented similar fast-track programs to earmark cleantech inventions for expedited examination.

Our earlier posts:

• CleanTech Fast Track in the US
• Should Canada Fast Track CleanTech Patents?  

Calgary 09:30 MT

Patent enforcement and defence strategy often involves a coordinated approach, including patent infringement litigation, patent reexamination before the USPTO, and complaints filed with the International Trade Commission, a U.S. trade panel that can ban importation of infringing goods.  

The i4i suit against Microsoft provides a good case-study. In its long-running patent infringement dispute against Microsoft, the Canadian tech company i4i has won another battle (though the war is far from over). Microsoft challenged the vailidty of i4i’s patent, and the USPTO recently upheld the patent’s validity.

Microsoft appealed the original trial decision, and that appeal was dismissed. Microsoft filed another appeal for a en banc re-hearing, and that appeal was dismissed. The options are now to pursue the appeal up to the US Supreme Court, or appeal the USPTO’s reexamination decision.

Related Posts:

Calgary – 09:00 MT

Planning on outsourcing your company’s email to Gmail? Or maybe you’re outsourcing your data storage to a server in the US? Recent changes to Alberta’s Personal Information Protection Act (PIPA) stipulate that organizations must notify people when they will be transferring personal information to a service provider outside of Canada. Take the example of the University of Alberta’s recent plan to use Google as an email provider (though as public body the university falls under FOIP, not PIPA). Such a change involves the hosting of personal information outside of Canada.  In the case of online transactions, which necessarily route credit-card clearing services through the US for approval purposes, there appears to be an exception.

The other major changes include breach reporting and notification obligations, which are a first in Canada. This means that, if a privacy breach occurs and it creates “a real risk of significant harm” to an individual, the organization must make a report to the Privacy Commissioner. 

The changes became law on May 1, 2010.  Information about the amendments and how they work is available at: www.oipc.ab.ca.

Calgary – 08:00 MST

Industrial design is often overlooked while its flashier cousins – patents, copyright and trade-marks – hog the spotlight.  In both Canada (which uses the term industrial design) and the US (which refers to a design patent), this category of intellectual property only provides protection for ornamental and not functional aspects of the design of the article.  In the recent US Federal Circuit Court of Appeals decision in Richardson v. Stanley Works, Inc., No. 09-1354 (Fed. Cir. Mar. 9, 2010), the court reviewed two design patents claiming an ornamental design for multifunction carpentry tools. Stanley, the owner of the “Fubar” tool (shown left)was sued by Richardson, the owner of the “Stepclaw” tool (shown right) . The Court was clear that the patented design is for a multi-function tool that has several functional components, and that “a design patent, unlike a utility patent, limits protection to the ornamental design of the article.”  The Court found that the only similarities between the two tools were those of unprotectable functional elements, and thus no infringement occurred.

Calgary – 07:00 MST