Join us on March 1, 2012, (see our Events page) for the upcoming meeting of the Licensing Executives Society (LES) on The Alberta Innovation System. Technology commercialization has its challenges. However, resources and funding programs are available to support technology development for small and medium sized enterprises (SMEs) in Alberta. Within Alberta, the “innovation system” has undergone reorganization over the past 2 years. In Calgary, Calgary Technologies Inc., (CTI), and University Technologies International, (UTI) have amalgamated to form Innovate Calgary. Across the province, Alberta Ingenuity, Alberta Research Council, iCORE and nanoAlberta have merged into Alberta Innovates – Technology Futures (AITF).

How does this impact licensing professionals, counsel, advisors, SMEs and entrepreneurs? What do you need to know about commercialization support within Alberta? Attend the LES Alberta Innovation System luncheon with our panel: Darren Massey Senior VP, Innovate Calgary, David Reese, Vice President, Licensing, Innovate Calgary and Scott Bass, Alberta Innovates – Technology Futures.  

Calgary 07:00 MST   

 

 Two of my favourite topics: intellectual property and Lego. The Danish toy-maker has been trying to protect its iconic toy bricks since they were developed in the 1930s and ’40s. Trade-mark law protects the brand (LEGO), and trade-marks can live on and on, as long as the owner (a) uses the mark, and (b) continues to renew the trade-mark registration. The LEGO trade-mark was registered in Canada in 1957 and that registration is still valid.  Last week, Lego’s arch-rival, the Canadian-based toy-maker of Mega Bloks filed and then abruptly withdrew a lawsuit in the US, after threats that Mega Bloks products would be barred from entry into the United States, based on infringement of Lego’s US trade-marks. This reflects the sparring between these two competitors for market share in the building-toy industry.

In Canada, the decision in Kirkbi AG v. Ritvik Holdings Inc., 2005 SCC 65 (CanLII), settled a long-standing feud between Lego and Mega Bloks.  In that case, the court decided that the Lego building blocks themselves are not protectable as trade-marks in Canada, on the grounds that the shape of the blocks is purely functional in nature. This does not apply to the LEGO word, or the various other trade-marks that Lego owns. Lego has suffered similar set-backs in other countries – for example, a 2010 decision in the EU came to the same conclusion that functional elements of a trade-mark are not protectable. So what’s a toy-maker to do?

• Patents – utility patents in Canada will protect the function of the invention, in this case, the improved mechanism of how the plastic bricks snap together. However, patents expire after 20 years. Lego’s patents have all expired.
• Industrial Design –  this category of protection (in the US, known as “design patents”) will protect the visual features of a product (shape, configuration, pattern or ornament). Functional elements cannot be protected. Industrial design protection expires after 10 years. Lego has registered dozens of industrial designs to protect a variety of building bricks and parts.
• Copyright – some products are protectable under copyright law, though toy bricks don’t lend themselves well to this category, which is designed to protect written works, music, images, photos, paintings, that sort of thing. Copyright lasts for 50 years after the death of the author.
• Trade-marks – the LEGO brand is arguably the toy-maker’s strongest asset, and trade-marks, once registered, are renewable indefinitely. Trade-marks protect things such as the word LEGO, the associated logo, and various product lines and slogans, such as DUPLO and BIONICLE.
• Distinguishing Guise – A distinguishing guise is a type of trade-mark that protects a very specific type of “brand”. It applies to the shape of the products or the packaging, such as the shape of a Coca-Cola bottle. Since this is a species of trade-mark, the protection is renewable indefinitely once it’s registered. However, utilitarian features cannot be protected.

Calgary – 07:00 MST

 

If you followed the headlines regarding the ongoing battles between Apple and Samsung this summer, you will have noticed that Apple succeeded in shutting down sales of the Samsung Galaxy Tab in the EU, based on its allegation that Samsung’s Galaxy Tab 10.1 infringed Apple’s industrial design (See: Industrial Design in Canada & US). Samsung succeeded in limiting that court order. That is a battle over the design of the iPad (part of the appeal of Apple’s designs are that they are minimalist and functional, which raises the question of what exactly is protectable… but we’ll leave aside for the moment).

Designs and trademarks are both useful intellectual property tools to ward off competitors. Canadian companies can register their industrial designs in the EU, as well as their trademarks across the EU (through a Community Trade Mark or CTM). In the recent case of DHL Express France SAS v Chronopost SA, Case C-235/09, 12 April 2011, the EU Court of Justice ruled that injunctions to prevent infringement of a CTM can be enforced across the EU. The scope of an injunction against infringement of a CTM extends to all 27 countries of the European Union.

Related Reading: Apple’s worldwide court battles against Samsung: where they stand and what they mean 

For assistance with your international brand protection, including in the US and EU, contact us at Field Law. 

Calgary – 07:00

 

In Louis Vuitton Malletier S.A. et al. and Singga Enterprises (Canada) Inc., the Federal Court sent a strong message to counterfeiters. This is a case of infringement of copyright and trade-mark rights, arising from the sale of counterfeit copies of Louis Vuitton and Burberry handbags through online sales and operations in Vancouver, Calgary and Edmonton. The Trade-marks Act provides for an award of damages or profits in relation to the sale of infringing goods. The Copyright Act provides for an award of both damages and profits from the sale of infringing goods, or statutory damages between $500 to $20,000 per infringed work. In this case, the Federal Court awarded Louis Vuitton and Burberry a total of over $2.4 million in damages against the defendants, catching both the corporate and personal defendants in the award.  

Related Reading: Retail Therapy for Brand Owners: Counterfeit Goods & Director Liability 

Calgary – 07:00 MDT

 

 

Artists mash-up images, text and audio all the time and have been doing so for many years. When is “appropriation” considered “transformative”?  If you use someone else’s image to create something, is the new work simply a copy of the original image, or is it transformed into a new original work of art? 

If it’s just a slavish copy, then you need consent of the owner of the original image. Without that consent, you might be infringing copyright.  If it’s transformative, then is the appropriation forgiven since it results in something new and original?

Consider the case of photographer Patrick Cariou and appropriation artist Richard Prince. Earlier this year, a US District Court sided with Cariou in his copyright claim against Prince, based on Prince’s use of Cariou’s photographs of Rastafarians. The court was clear that the scope of Prince’s copying was substantial compared with the “slight transformative value”. In other words, there was a whole lot of appropriation and not much transformation. As a result, the fair use defence didn’t hold up.

The next question is the obvious one: where is the line between the two?  Andy Warhol made a career out of appropriation. His works - which borrowed everything from Campbell’s soup cans to press photos of Jackie Kennedy - were the subject of numerous complaints and lawsuits, all of which reportedly settled out of court. Artist Jeff Koons has also made a successful career out of transformative works, though he has often fallen on the wrong side of court decisions. In the 2006 US Court of Appeals decision in Blanch v. Koons, Koons successfully raised a “fair use” defence. This claim arose from the use of an image of the plaintiff’s copyright-protected photograph in a Koons collage painting entitled “Easyfun-Ethereal”. The court considered this use to be highly transformative, where the original image was used as “raw material” for a completely different type of work.

Calgary – 07:00 MT

 

Quick, which is Apple’s iPhone and which one is the Samsung Galaxy phone?In a recent lawsuit Apple Inc. v. Samsung Electronics Co. Ltd., (11-1846 U.S. District Court, ND Cal.) Apple complains that Samsung’s line of Galaxy phones and tablets infringes the “look-and-feel” of the Apple iPhone and iPad. Besides patent and trade-mark infringement, this is an interesting trade-dress infringement claim, which alleges that Apple owns rights in the way their phones and tablets appear – the screen layout, product design elements, user interface, the appearance of icons and packaging. Can this kind of intellectual property be protected?

In Canada, the law will protect “trade dress” that distinguishes the product – such as colour schemes, signage, the layout of packaging and product design.  Industrial design law can also protect the ornamental (non-functional) elements of a product including product shape and size. In Eli Lilly and Co. v. Novopharm Ltd., [2001] 2 F.C. 502, a drug-maker complained that the distinctive shape, size and colour of its drug (in this case, Prozac) was being unfairly copied by generic competitors. This leads to a claim for “passing off” – where the knock-off product is passed off as the genuine original by copying the distinctive trade-dress of the original.

The three necessary components of a passing-off action are:

1. the distinctive trade-dress must have a reputation in the mind of consumers;
2. misrepresentation and deception that leads consumers to believe that the knock-offs are actually the genuine original; and
3. actual or potential damage to the original brand owner.

Apple’s recent lawsuit is one more battleground in the fierce war for consumers in the highly competitive mobile computing marketplace.

Calgary – 07:00 MDT

The Canadian Intellectual Property Office is expected to announce new guidelines on “nontraditional marks” sometime this year. In their current proposed practice notice, the office would allow motion marks and holograms as two types of nontraditional marks. There is still some debate about how these marks would be depicted visually, since the limitations are not so much technological but rather procedural – the current rules require the mark to be depicted visually in a drawing.

Other nontraditional marks currently permitted in Canada include marks that protect the shape of the product, such as the Life Saver Design (at left) (Reg. No. TMA562616) registered by Kraft Foods for candy. BMW has registered the Mini Distinguishing Guise (Reg. No. TMA789872) for the shape of their iconic MINI cars. This protects the shape of the car as a distinguishing guise. Colour can be part of a trade-mark. Three-dimensional marks are also permitted in Canada.  Sound marks are allowed in the US and other jurisdictions, but Canada has a long way to go.  There are currently no sound marks registered in Canada. 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 Canadian trade-marks office after almost 20 years, having gone through various extensions, refusals and appeals.  Some other possibilities:

• Scent marks: a “cherry scent” is registered in the US for “synthetic lubricants.”
• Tactile marks: a velvet texture and a leather texture are registered in the US, both appearing on the surface of a wine bottle. Germany has permitted registration of the mark UNDERBERG in Braille for beverages.
• Flavour marks: an application for a trade-mark for an artificial strawberry flavor for “pharmaceutical preparations” was refused in Europe.

Related Reading: Time for Sound Marks in Canada?

Calgary – 07:00 MST

 

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

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

Way back in 1998 – almost prehistoric when it comes to technology – a US inventor registered a design patent for “Computer display with an iPhone window” in a prescient move that saw a device with email, telephone, internet services all arranged by handy icons in a rectangular screen called an “iPhone”.  Sound familiar?  Check it out.

The inventor, Joseph Giordano, sold the invention to InfoGear Technology Corp., which was acquired by Cisco in 2000, and Cisco famously locked horns with Apple in January 2007 when Apple’s iPhone was launched.  The rest, of course, is history.  The good news is that if someone on your gift list is clamouring for an iPhone, you can always get them one of these if you can’t afford the latest 3GS.

Calgary – 09:00 MST

 

 

The Canadian Intellectual Property Office has introduced amendments to the Industrial Design Regulations which are effective October 5, 2008. The changes allow for greater flexibility in submitting design applications with respect to the colour and size of images, and permit the filing of colour drawings and photographs. There is also more flexibility to include an article’s “environment” (i.e. subject matter that is not part of the article) in the drawings. The amendments are posted at the Canada Gazette website and a summary is listed in the FAQ section of the CIPO site.

Calgary – 10:40 MST