As we posted in IT Outsourcing during the “Climb Out” and IP Licenses and Bankruptcy, Canada’s bankruptcy laws have historically permitted certain contracts – including intellectual property licenses – to be “disclaimed” in the course of the bankruptcy of the licensor.

Under amendments to the CCAA and to the Bankruptcy and Insolvency Act  brought into force last week, licensees may now take advantage of US-style protections which permit continued use of licensed intellectual property, even in the face of a disclaimer by a bankrupt licensor.  The disclaimer will not affect the licensee’s right to enforce an exclusive right to use the IP, provided the licensee continues to perform its obligations (including continued payment of license fees) under the terms of the license.

Licensors are encouraged to have their standard-form licenses reviewed in light of these amendments.  Licensees should seek advice in the event of the bankruptcy of their licensor.

Calgary – 07:50 MST

The importance of IT outsourcing – as a way to reduce costs and manage risks – has been brought into sharp focus during the economic downturn.  The recession may have bottomed, but by all accounts the “climb out” will be long and slow. Here are a few pointers to consider for the negotiation and management of outsourcing agreements:

• Unstable Suppliers:  It is important to conduct due diligence on IT service suppliers, since their financial stability may have been impacted by the loss or instability of their own customers. This due diligence review process can be built into outsourcing agreements, providing an opportunity to periodically re-assess the stability of the supplier. While this does not guarantee that the supplier will remain solvent, it can provide critical lead-time to plan contingencies in case the supplier goes bankrupt.
• Termination Issues: If the supplier does go bankrupt, it is important to recognize that Canadian bankruptcy laws give the court broad latitude to intervene in bankrupt companies. This means that standard termination clauses (which permit termination in the event of bankruptcy), and security interests granted under provincial legislation such as the PPSA, can be set aside by the court (for example, see: SR Telecom & Co. v. Apex – Micro Manufacturing Corporation, 2008 BCSC 1768). Also remember that software licenses can be cancelled if the IT supplier’s assets are sold within a court-approved bankruptcy. (Related reading: Update: Changes to Canada’s Bankruptcy Laws , IP Licenses and Bankruptcy).  Source-code escrow is another possible solution.
• Business Continuity Issues:   Outsourcing mission-critical functions can involve significant risks for business continuity.  For example, outsourcing agreements often include the remote hosting of important data, in servers that may be located in another part of the country, in the US, or offshore.  An outsourcing contract should oblige the IT supplier to assist with data migration and transition in the event of termination. At a minimum, the IT supplier should deliver the data, but in the case of a bankrupt or unstable supplier, this obligation may be difficult to enforce. Consider a mandatory automatic back-up system to outside servers that can be controlled by your organization, so that critical data is secure, even if the service is interrupted.
• Industry Guidelines: In certain sectors, outsourcing guidelines must be observed. Federally regulated financial entities (FREs), should take note of the updated guidelines released this year by the Office of the Superintendent of Financial Institutions (OSFI) “Guideline B-10 on Outsourcing Business Activities, Functions and Processes“ PDF File). Section 7 (Risk Management) of these guidelines can also serve as “best-practices” for other sectors.

Calgary – 11:45 MST

Recent news articles from Newsweek and cnet report that the US military has deployed the iPod Touch and iPhone in the battlefield, as a user-friendly, multifunction device to assist soldiers with communication, translation, intelligence-gathering, logistics and training. Sorry, guys, but you’ll have to read the fine-print. The iPod Touch software license clearly says:

“The iPod Touch Software and Services are not intended or suitable for use in situations or environments where the failure or time delays of, or errors or inaccuracies in, the content data or information provided by the iPod Touch Software or Services could lead to death, personal injury or severe physical or environmental damage, including without limitation the operation of nuclear facilities, aircraft navigation or communication systems, air traffic control, life support or weapons systems.”

And you thought the Apple lawyers were just being over-zealous when they drafted that clause.

Calgary – 09:45 MST

Applications for mobile devices are in their infancy (think of Hollywood in the 1930s). Apple’s App Store is one year old, barely out of diapers, and in that time customers have downloaded more than 1.5 billion applications. More than 65,000 apps populate the store, and the number of developers is growing by the month.  Blackberry entered the game in April with its own App World, already featuring a few thousand apps.  And Android Market – designed for Google’s platform – provides another venue for mobile applications.  There are currently about 6,000 apps available for Android.

Many businesses have recognized that a well-designed app can have benefits on many levels including revenue generation, exposure, access to early-adopter customers, and viral-marketing.  If you are considering this, ensure you have a proper App Development Agreement in place when engaging a developer, and consider intellectual-property ownership, cross-platform concerns and potential trade-mark issues.

Related reading: Apple’s battle over apps

Calgary – 09:00 MST

What happens when a licensor becomes insolvent?

When Body Blue Inc., a Canadian consumer products company, stumbled financially, a receiver was appointed in Canada under the Bankruptcy and Insolvency Act.  In its attempt to restructure the company and satisfy creditors, the receiver sold the company’s assets in May, 2006 for $7 million to a competitor consumer products company.  The assets expressly included certain technology which was the subject of an earlier license to Herbal Care, a US health products company. 

Herbal Care argued that its license remained unaffected.  However, a Canadian Court can allow a trustee to transfer the technology assets of a bankrupt company free and clear of any existing license.

In the final decision in Royal Bank of Canada v. Body Blue Inc., 2008 CanLII 19227 (ON S.C.), the Canadian Court affirmed that the new owner acquired the transferred assets free and clear of any claim of Herbal Care.  Herbal Care lost its license when the assets were transferred during the bankruptcy.

This result can be contrasted with Synergism Arithmetically Compounded Inc. v. Parkwood Hills Foodland Inc., 2000 CanLII 22781 (ON S.C.), where certain intellectual property assets – in this case, an insolvent company’s trade-marks and franchise agreements – were the subject of a security agreement.  A secured creditor stepped in, enforced its security, and acquired all the insolvent company’s trade-marks and franchise agreements.  Because the trade-marks were acquired by the secured creditor outside the bankruptcy, they never passed through the hands of the trustee, and they were transferred with the license rights intact.  Thus the new owner was entitled to sue for breach of the license, and trade-mark infringement, since it had acquired those rights along with the trade-mark assets.

As always, careful drafting and preventive steps can mitigate these risks.

Links to the case decisions:

Royal Bank of Canada v. Body Blue Inc.

Synergism Arithmetically Compounded Inc. v. Parkwood Hills Foodland Inc.
Calgary – 10:00 MST

UPS has a label-printing and shipment-tracking software program that is installed on a customer’s computer. So what happens when the UPS technician (rather than the customer’s own employee) installs the software, scrolls past the license agreement, and clicks “I accept”?

This situation was reviewed in the recent case of Via Viente Taiwan, L.P. v. United Parcel Service, Inc., 2009 WL 398729 (E.D. Tex. February 17, 2009).  When UPS was sued in Texas, it tried to deflect the lawsuit to the State of Georgia, the forum selected in the license agreement.  The customer argued that the license agreement was not binding because it was the UPS employee who clicked through, and the customer never actually agreed to the terms. The court upheld the agreement (and the forum-selection clause) because the customer should have been aware that the license agreement was part of the deal when it signed the general UPS Carrier Agreement that required the use of the software. Secondly, the court reasoned that the UPS technician likely would have been supervised by Via Viente employees during the software installation. Lastly, the customer had enjoyed the benefit of the agreement – including the UPS shipping services and the use of the software – so it wouldn’t have been fair to permit it to “pick and choose” and avoid the terms of the license agreement. The lawsuit was transferred to the Northern District of Georgia.

 

Calgary – 10:00 MST

The Government has issued a Request For Information on open source software to assist it in developing guidelines related to the “planning, acquisition, use and disposal of No Charge Licensed Software (NCLS).”  The term NCLS is apparently intended to include all forms of software which is available without charge – from “true” open source software, freeware, shareware, to free proporietary downloads such as Adobe readers, iTunes, Google toolbars, etc.  The RFI closes February 19, 2009.

This obviously reflects the growing use of open source software within the public sector, and the need for consistent guidelines.  The guidelines, once developed, will likely be of interest to both public sector and private sector organizations.

Calgary –  09:30 MST

In December, the Free Software Foundation (FSF) launched a lawsuit alleging that Cisco has breached the terms of the GNU GPL and LGPL (the General Public License and Lesser General Public License), thereby infringing copyright in the licensed programs. For more information, see the press release and a copy of the complaint filed by the FSF.

Last year in Jacobsen v. Katzer (US Court of Appeals for the Federal Circuit, August 13, 2008), an appeal-level court considered the ability of a copyright holder to distribute software under an open source license, and also obtain a remedy for any breaches of the license terms. In the decision, the court overturned the lower-court decision and decided that the open source license did not permit a licensee to modify and distribute the copyrighted materials without abiding by the copyright notice and modification-tracking conditions.  The case was sent back to the lower level for reconsideration, but it makes clear that:

• the licensor enjoys “economic rights” under the open source license; these “economic rights” come in the form of various intangible economic benefits, even in the absence of traditional royalties or license fees, and
• a licensee is not entitled to disregard the conditions attached to open source licenses.

In early January, a new ruling was issued by the lower court in Jacobsen v. Katzer.  Since the plaintiff failed to specify any damages, the contract claim was dismissed. The court also denied the injunction application (which would have barred Katzer from using the open-source code), on the basis that irreparable harm had not been established.  This shows that open-source licenses will always bump up against the practical realities of commercial litigation: to get a remedy, plaintiffs will still need to show damages and convince the court of the need for an injunction, just like in any lawsuit.

Canadian courts have yet to consider open-source software issues directly, but Canadian law will draw upon this growing body of American caselaw when the time comes.

Calgary – 10:00 MST

In China, the birthplace of countless knock-offs and counterfeits, the task of policing Olympic marks must be daunting indeed.  The trade-marks police must strive to be faster, higher, stronger than the offenders.  French retailer Carrefour was recently rebuked for the use of Olympic emblems in its Nanjing retail location.  Hanging Olympic banners and propping up Olympic mascots in-store is forbidden without paying the appropriate sponsorship fees under Olympic license agreements.  Another story from China illustrates that this isn’t just a matter of preventing unauthorized use of the Olympic rings, but also one of banning the display of any unauthorized logo of any company. Nike’s swooshes were covered up (this was regular advertising appearing in a Beijing pedestrian underpass) since Nike is not an official sponsor. 

This isn’t always a hi-tech affair – inside the stadium, the brand cops will use duct tape to mask any renegade brand that might be picked up by the cameras. If a reporter brings an Apple laptop, they’ll cover up the logo while its in the stadium to avoid the perception that Apple is getting free Olympic advertising.    

As the 2008 Olympics draw to a close, it’s clear that the Chinese experience is a preview of what we can expect to see in Vancouver and Whistler in 2010 when the enforcement of the Olympic and Paralympic Marks Act will be in full swing.  We’ll review Olympic advertising guidelines in 2010.

Related Reading: http://www.ipblog.ca/?p=115

 

Calgary – 09:30 MST

Microsoft announced today that it is embracing certain interoperability principles in connection with its bread-and-butter products such as Windows Vista including the .NET Framework, Windows Server 2008, SQL Server 2008 and Office 2007.  This means making technical specifications and information available to make it easier for third-party software to operate with Microsoft’s products.  Presumably the thinking is that if more third-party products can work with Microsoft software, then this will increase sales for Microsoft.  It does not mean that Microsoft software will be made available under an open source model.

In short, while this will result in lots of headlines that couple the word “Microsoft” with the word “Open”, this does not signal a move by the software giant into open-source territory.  For Microsoft, some form of openness is inevitable – particularly in light of two unavoidable forces: market imperatives (read: Google) that show the success and value of open-source and collaborative technologies; and the decision against Microsoft by the EU’s Court of First Instance last fall, that ordered Microsoft to open up (Judgment of the Court of First Instance in Case T-201/04 Microsoft / Commission).

As part of its announcement, Microsoft has promised not to sue open source developers for “development and non-commercial distribution” of software that draws on these open protocols.  But developers of commercial applications must still come back to Microsoft to obtain a license, on “reasonable and non-discriminatory terms, at low royalty rates”.  It remains to be seen how this will play out with developers in practical terms.  Many developers are understandably skeptical given Microsoft’s antagonistic history with the open source community.  

 

Calgary – 13:15 MST 

 

An interesting article in the NY Times gives an update on the US patent reform process and the battle lines that are drawn between large technology companies such as Intel, Microsoft, IBM and Apple, who are looking for ways to take away leverage from small-time patent holders, and the pharmaceutical industry which traditionally relies on robust patent protection.’

And if you want some more light reading, try the draft report prepared by the Senate Judiciary Committee on the Patent Reform Act of 2007.

 

Calgary – 15:25 MST

There seems to be a run on BusyBox litigation this fall and the lawyers at the Software Freedom Law Center (SFLC) have been busy; last week they filed another copyright infringement lawsuit against Verizon Communications, Inc., alleging violation of the GNU General Public License (GPL). The open source movement is expanding past the world of software into areas of biological and life sciences. Because of the growing interest in this area, we have decided to compile a list of resources regarding open source organizations and law.

Software

Software Freedom Law Center: http://www.softwarefreedom.org/

Free Software Foundation: http://www.fsf.org/

Open Source Initiative: http://www.opensource.org/ 

Biotech / Life Sciences

The BiOS Initiative:http://www.bios.net/

BiOS Compatible Agreement Listing:
http://www.bios.net/daisy/bios/licenses/2997.html

Public Intellectual Property Resource for Agriculture: http://www.pipra.org/

Tropical Disease Initiative: http://www.tropicaldisease.org/

WCLP: http://www.westcoastlicensing.com/index.htm 

AFMnet: http://www.afmnet.ca/ 

LES Presentation Slides: lespresentation-open-source.pdf

Calgary – 16:00 MST

 

The lawsuit Andersen and Landley v. Monsoon Multimedia Inc, (No. 07-CV-8205) which promised to tackle the enforceability of the GPL head-on has settled, with Monsoon agreeing to appoint an Open Source Compliance Officer to monitor its use of open source software. Flush with this success, the lawyers at the Software Freedom Law Center promptly filed two new lawsuits, this time against Xterasys Corporation and High-Gain Antennas, LLC, also for violation of the terms of GPL in connection with the use of BusyBox open source code.

Calgary – 20:35 MST

In Canada, many contracts contain “limitation of liability” clauses – in the intellectual property context, this can include technology licenses, software development contracts, outsourcing agreements and so on. For example, a typical clause may indicate that, regardless of the cause of the breach, the liability of one party is limited to a certain dollar amount.

Can these clauses actually limit liability? Generally, if the clause is well-drafted, clear, and isn’t buried in the fine-print then yes, a limitation of liability will be upheld by courts in Canada. There are exceptions: A court will refuse to uphold a limitation of liability clause if there has been a “fundamental breach” of the contract; in other words, a breach which goes to the very heart of the contract, and one party is deprived of the whole benefit of the contract. Courts will also look at whether the parties are in an equal bargaining position. And whether the limitation will result in an “unfair and unreasonable result”.
Here are a few examples, from the internet law context and also from general commercial law:

Zhu v. Merrill Lynch HSBC, 2002 BCPC 535 (CanLII) : this is an interesting internet law case in which Mr. Zhu first placed, then cancelled, an online sell order for shares on Merrill Lynch HSBC’s NetTrader system. He then placed a second sell order. The first sell order was never cancelled, with the result that two sell orders were processed, leaving Mr. Zhu in a short position. He claimed losses of $9,000 for having to make up the shortfall. Merrill Lynch HSBC sought to rely on the limitation of liability clause in its terms of service, but the court refused to uphold it. Two significant factors were the lack of evidence that Mr. Zhu ever assented to the terms, and also the higher degree of care required when handling financial investments.

Whighton v. Integrity Inspections Incorporated, 2007 ABQB 175 : a recent Alberta case where a house inspection failed to disclose the extent of repairs required; the house inspector sought to rely on a $10,000 limitation of liability. The court pointed to unequal bargaining power and relied on the “unfair and unreasonable result” argument to deny the limitation clause.

Fraser Jewellers (1982) Ltd. v. Dominion Electric Protection Co., 1997 CanLII 4452 (ON C.A.): in this Ontario case, the Court of Appeal upheld a limitation of liability clause on behalf of a security company whose security system failed during an armed robbery of a jewelry store. The store sued after losing $50,000 in diamonds, and the security firm pointed to its contract which limited liability to “a sum not exceeding the annual service charge of $890”. The court upheld the limitation clause.

Calgary – 21: 35

In what appears to be the first US case to test the limits of the GPL (General Public License), an organization known as the Software Freedom Law Centre (SFLC) has spearheaded a lawsuit against Monsoon Multimedia for alleged violation of the terms of the GPL. 

Monsoon uses an open source software application known as BusyBox, which is subject to the GPL, but it is alleged that Monsoon has failed to make the source code available to its customers.  Such a failure would violate the terms of the GPL.  By breaching the GPL Monsoon would lose its rights to use the BusyBox software.  The suit seeks an injunction preventing Monsoon from using the BusyBox software in its own products.  BusyBox is a popluar component included in Linux-based devices and applications developed by Nokia, IBM, Sharp, HP and others.

The case may settle if Monsoon releases the code.  If it proceeds to trial, the lawsuit will test the enforceability of the GPL and will provide much-needed guidance in this area.  So far in Canada and the US the GPL has been enforced informally but has never been directly tested in court.  It also serves as a reminder for businesses using open source software:

• When developing software (in-house or out-sourced) be sure to have clear guidelines and policies regarding the use of open source applications;
• Get advice on the license terms which apply to open source applications: not all open source licenses are the same;
• Determine what the impact will be for proprietary software and what disclosure will be required to comply with the open source license terms.

Calgary 11:45 MST

U.S.-based drug-maker Pfizer  scored a win this month at the Canadian Federal Court in its fight with Ranbaxy.  Ranbaxy, a generic drug manufacturer based in New Delhi, is India’s largest pharma company.  The Canadian court granted Pfizer’s application for an order preventing Ranbaxy from launching its generic product in Canada until expiration of Pfizer’s patent in 2016.  It is expected that Ranbaxy will appeal this decision.  Ranbaxy has enjoyed some success in other jurisdictions in getting its generic products approved.

In Canada and the U.S., billions of dollars worth of patented drugs will expire or go “off patent” in the next five years, which means competition will continue to intensify among brand name and generic drug makers for marketshare.  After patents on blockbuster drugs expire, the brand name manufacturers are trying new tactics. Merck’s Zocor cholesterol pill generated over $4 billion in sales in 2006.  After the Zocor patent expired, Merck announced plans in 2007 to cut prices of Zocor to try and stave off competition from incoming generics.  

We’re likely to see more of these patent battles between the Pfizers and Ranbaxys of the world.

 

Calgary – 11:00 MST

In our earlier post about open-source software, we made reference to the SCO Litigation, a sprawling nest of lawsuits entangling SCO, IBM, Novell, Red Hat, and licensees of the Unix software system such as DaimlerChrysler. 

The central issue was SCO’s contention that IBM had, without SCO’s authorization, contributed proprietary Unix code to the open-source Linux system.  If Unix was owned by SCO and the code was contributed without SCO’s consent, then this allegation threw doubt on the legal status of Linux and in turn the entire open-source service industry that has grown up around Linux.

Last Friday, a US court ruled that the copyright in the Unix system belongs to Novell, not SCO.  This deflates SCO’s central claims for relief for copyright violations and breach of contract.  The litigation has taken on a life of its own, so I’d be surprised if Friday’s ruling wasn’t appealed.  But it does provide some measure of relief for proponents of open-source.

Calgary – 11:50 MST

After Talk America bought AOL’s long distance telephony business, it amended several terms in the service contract, adding an arbitration clause, a class-action waiver and a New York choice-of-laws clause.  Talk America implemented these amendments by posting them to its website.

When a customer tried to sue Talk America, lawyers attempted to deflect the lawsuit, invoking the mandatory arbitration clause and citing the class-action waiver.  However, in this case the customer had originally signed on with AOL, prior to the amendments made by Talk America. 

In Douglas v. U.S. District Court for the Central District of California, No. 06-75424 (9th Cir. July 18, 2007) the Court of Appeals put these amendments to the test.  Generally the court decided that the online postings were not binding on the customer, noting “Parties have no obligation to check the terms on a periodic basis to learn whether they have been changed by the other side.” 

In Canada, this issue was considered by the Ontario Superior Court in its 2002 decision in Kanitz v. Rogers Cable Inc. (2002), 58 O.R. (3d) 299.  In Kanitz, Rogers posted the amendments on its customer support webpage and the court decided that Rogers had provided its customers with sufficient notice of the amendments.  Mandatory arbitration provisions and class-action waivers (such as the ones at issue in Kanitz) are now ineffective in Ontario under consumer protection legislation that was introduced in July, 2005 in response to the Kanitz decision.

How does a company amend its service contracts? Very carefully.

Online postings of contract amendments are more likely to be effective when the original contract permits such changes, the customer is provided with sufficient notice of the changes, and the notice provides a clear explanation of the changes.  The changes must comply with local consumer protection legislation.

 

Calgary – 12:30 MST

On Jan. 9, 2007, the US Supreme Court handed down its decision in MedImmune, Inc. v. Genentech, Inc. resulting in a significant change to the licensing landscape.  In this case, MedImmune had entered into a licensing agreement with Genentech under which MedImmune was to pay royalties for the use of Genentech’s “Cabilly I” patent and (when it issued) the “Cabilly II” patent.  When the second patent issued, Genentech sent a letter requiring the payment of royalties for the use of the second patent.  MedImmune paid under protest, then turned around and sued the licensor on the basis that the second patent was not valid or enforceable.  By continuing to make the payments, MedImmune kept the license alive.

The essential question in the case was whether a patent licensee was obliged to withhold its royalty payments and therefore commit a material breach of the license agreement before it had grounds to sue to declare the patent invalid?  Prior case law said that a licensee did have to effectively breach the agreement before it had standing to sue.  This decision overturns that line of cases and permits a licensee to challege the validity of the patent in court, while still making payments as a licensee and keeping the license.  For MedImmune, breaching and terminating the license would have effectively shut down its own business.

For patent licensors, there are two practical points to remember:

1.  Watch how you word your letters to licensees when politely requesting (or aggressively demanding) royalty payments, as such letters can be construed as a threat of litigation, providing grounds for a declaratory suit by the licensee;

2.  Consider reviewing language in the patent license to see if licensees can be forced to waive any right to challenge the validity of the licensed patent.

The fallout from this decision will be watched closely by both patent holders and their licensees.

Calgary – 12:32 MST

 

 

In an earlier post we answered some common questions about trade-marks. Here are a few more practical issues about usage guidelines:

Q: What are “trade-mark usage guidelines”?

A: A set of “trade-mark usage guidelines” is like a rule-book on how a trade-mark should be used and displayed. These guidelines are designed to guide those who might not otherwise know (or care about) the specifics of how the trade-mark should appear. Guidelines of this type might specify the type of font, the particular colours which should be used, the size and relative position, and the placement of the trade-mark in relation to other elements on the label, or page or ad copy. They should go into enough detail to direct someone in the proper and consistent use of the trade-mark.

Q: Why are they necessary?

A: Trade-mark usage guidelines are necessary because consistency in the appearance of the trade-mark is very important to maintain the validity and strength of the mark over time. If a trade-mark changes too much over time or is inconsistent in the way it is used, it may lose distinctiveness and be open to attack by competitors. Look at the distinctive script used in the Coca-cola trademark. It has been used in the same way since the 1880s and strict guidelines ensure that the relative size, colour and shape of the script remain consistent across time and across a multitude of uses, from bottle and pop can labels to every conceivable type of spin-off merchandising.

Q: When would trade-mark usage guidelines be necessary?

A:  Trade-mark usage guidelines are necessary when others within your company, or others outside your company who are licensed to use your mark, need to reproduce the trade-mark regularly in the course of advertising, labelling, packaging or corporate communications. It is a way of setting and maintaining certain standards when you don’t have direct control over the use of the mark. Here are a few examples: In a large company, guidelines can be distributed to the marketing department, so that the person in charge of the online advertising can be reading from the same set of standards as someone producing corporate T-shirts, or someone sending instructions to an ad agency producing magazine ads or the intern designing the annual report. These are all uses that technically take place within the company or within the direct control of the company. Another trade-mark owner may have franchised its business model so that a hundred individual franchisees all use the mark for their own local advertising across the country or in different countries. Usage guidelines will ensure brand consistency across the entire franchise. Guidelines can also be useful for resellers, authorized distributors or service providers.

Q: Can you give me some tips on trade-mark usage guidelines?

A: Yes, when developing trade-mark usage guidelines, you should keep in mind several things: Who is your audience? Present your guidelines in a way that makes sense for those using the mark. It may make sense to keep the guidelines confidential within the company. It may make sense to publish guidelines on the internet, if that is the most effective way to protect the integrity of the brand. Your marketing department may simply need some basic guidance by email, with a designated “official” file attachment containing the approved form of the mark. Or, you may need a more involved explanation of trademark usage. Some companies prepare detailed guidelines that explain exactly what to do and what not to do. Also, look at what marks you are trying to control. Make sure you list and identify the marks governed by the guidelines. Some marks may not need to be covered by the guidelines. Sone marks may be old forms of the trade-mark that you wish to phase out in favour of a new colour scheme or style as part of a controlled evolution to a new brand.

For a few examples of effective trade-mark usage guidelines, see:
Sun Microsystems
Macromedia
Apple

Calgary – 00:06 MST