By Richard Stobbe

Can an inventor be granted a patent posthumously?

The answer is a clear yes, as illustrated by the experience of one well-known inventor: Steve Jobs is named as an inventor on hundreds of U.S. utility and design patents, over 140 of which have been awarded since his death in 2011. The Patent Act provides for a patent to issue after the death of the inventor, and the issued patent rights would be treated  like any other asset of the inventor’s estate.

The Patent Act refers to “legal representatives” of an inventor which includes “heirs, executors, …assigns,… and all other persons claiming through or under applicants for patents and patentees of inventions.”

There are a few important implications here: A patent may be granted posthumously to the personal representatives of the estate of the deceased inventor.

This also means that executors of the estate of a deceased inventor are entitled to apply for and be granted a patent under the Act. Employers can also benefit from patent rights granted in the name of a deceased inventor, where those rights have been assigned under contract during the life of the inventor, such as a contract of employment.

The term of the patent rights remain the same: 20 years from the filing date, regardless of the date of death of the inventor.

There are well-established rules on filing protocols in the case of deceased inventors, in both national and international phase applications: make sure you seek experienced counsel when facing this situation.

Calgary – 07:00 MST

By Richard Stobbe

There is a rule in Canadian trademarks law that you can’t get a trademark for a word that describes the product you’re selling. Makes sense, right? No-one should have a monopoly over a word that is descriptive of the thing they’re selling. Such a term should be open to everyone to use.

Drummond Brewing applied to register BEER BEER as a trademark for “beer”.  Wait, let’s re-read the paragraph above. Isn’t BEER BEER clearly descriptive when used in association with the sale of beer?  Drummond, apparently, did not think so when it filed its application claiming use since 2009. They held this opinion despite an earlier decision (Coors Global Properties, Inc. v. Drummond Brewing Company, 2011 TMOB 44 (March 11, 2011)) which found BEER BEER to be clearly descriptive.

There is well-known decision from the early 1980s (Pizza Pizza Ltd. v. Registrar of Trade Marks (1982), 67 C.P.R. (2d) 202), where the court decided that the mark PIZZA PIZZA was found not to be clearly descriptive of “pizza” since the expression PIZZA PIZZA was not a linguistic construction that is a part of normally acceptable spoken or written English.  If it works for pizza, why not beer?

In the decision Molson Canada 2005 v Drummond Brewing Company Ltd., 2017 TMOB 78 (CanLII),  Molson opposed this trademark, and Drummond fought back, insisting that the mark was not descriptive. Numerous experts from both sides weighed in on the meaning of the term BEER BEER as a linguistic construction. One expert provided an opinion as a sociolinguist after  consulting scholarly literature, fellow linguists, and the Corpus of English Contrastive Focus Reduplications, a collection of 203 examples of naturally occurring utterances featuring contrastive reduplicative constructions, as published in the scholarly journal Natural language and Linguistic Theory (NLLT), 2004.

I’m not making this stuff up.

In the end, common-sense prevailed and the decision-maker found that the mark BEER BEER was clearly descriptive of the product. The mark was found to be unregistrable as a trademark.

Calgary – 07:00 MST

By Richard Stobbe

How far can Canadian courts reach when making orders that seek to control the conduct of foreign companies outside of Canada? This controversial question is still being decided, bit by bit, in both Canadian and US courts.  In our past posts we have written about a 2014 pre-trial temporary court order that required Google to de-index certain sites from Google’s worldwide search results, based on an underlying lawsuit that the plaintiff, Equustek, brought against the defendants back in 2011.  Google challenged the order requiring it to delist worldwide search results, and fought this order all the way up to the Supreme Court of Canada… where Google lost.

On July 24, 2017, approximately one month after the SCC decision, Google filed a complaint in US Federal Court, seeking an order that the injunction issued by the BC court is unlawful and unenforceable in the United States. That order was granted, first on a preliminary application on November 2, 2017 and then in a final ruling on December 14, 2017. With that US court decision in hand, Google came back to the BC court which had issued the original order, to vary the scope of that order.

On April 16, 2018, in Equustek Solutions Inc. v Jack, 2018 BCSC 610 (CanLII), the BC court again rejected Google’s requests. The BC court said that the US decision (which was in Google’s favour) did not establish that the injunction requires Google to violate American law. And without any significant change in circumstances, the court reasoned, there was no reason to change the original order.  As a result, the temporary order against Google – which has been in place since 2014 – remains in place, pending outcome of the trial.

The outcome of that trial will be closely watched. As I mentioned in my earlier article, there has been very little analysis of Equustek’s IP rights by any of the different levels of court. Since this entire case involved pre-trial remedies, the merits of the underlying allegations and the strength of Equustek’s IP rights have never been tested at trial. In order for the injunction to make sense, one must assume that the IP rights were valid. Even if they are valid, it is questionable whether Equustek’s rights are worldwide in nature since there was no evidence of any worldwide patent rights or international trademark portfolio.  We can only hope that the trial decision, and Google’s decision to appeal the latest BC court decision, will clarify these issues.

Calgary – 07:00 MDT

By Richard Stobbe

A professional photographer sued the gallery that sold his works, and won a damage award for copyright infringement, infringement of moral rights, and punitive damages. In this case (Collett v. Northland Art Company Canada Inc., 2018 FC 269 (CanLII)), Mr. Collett, the photographer, alleged that his former gallery, Northland, infringed his rights after their business relationship broke down.

We don’t see many “moral rights” infringement cases in Canada, so this case is of interest for artists and other copyright holders for this reason alone. What are “moral rights”?

In Canada the Copyright Act tells us that the author of a work has certain rights to the integrity of the work, the right to be associated with the work as its author by name or under a pseudonym and the right to remain anonymous.

These so-called moral rights of the author to the integrity of a work can be infringed where the work is “distorted, mutilated or otherwise modified” ina  way that compromises or prejudices the author’s honour or reputation, or where the work is used in association with a product, service, cause or institution that harms the authors reputation. Determining infringement has a highly subjective aspect, which must be established by the author. But this type of claim also has an objective element requiring a court to evaluate the prejudice or harm to the author’s “honour or reputation” which can be supported by public or expert opinion.

Here, the court found that the gallery had infringed Mr. Collett’s moral rights when the gallery intentionally reproduced one print entitled “Spirit of Our Land” and attributed the work to another artist. By reproducing “Spirit of Our Land” without Mr. Collett’s permission, the gallery infringed the artist’s copyright in the work. By attributing the reproductions to another artist, the gallery infringed the artist’s moral right “to be associated with the work as its author”.  This is actually a useful illustration of the difference between these different types of artist’s rights.

The unauthorized reproductions sold by the gallery were apparently taken from a copy resulting in images of lower resolution and therefore inferior quality, compared to authorized prints; unfortunately, we don’t have any insight into whether inferior quality would also infringed the artist’s moral right to the integrity of the work. The court declined to comment on this aspect since it had already concluded that moral rights were infringed when the prints were sold under the name of another artist.

Lastly, and interestingly, the court found that a link from the gallery’s site to the artist’s website constituted an infringement of copyright. It’s difficult to see how a link, without more, could constitute a reproduction of a work, unless the linked site was somehow framed or otherwise replicated within the gallery’s site. The evidence is not clear from reading the decision but the artist’s allegation was that the gallery “reproduced the entirety” of certain pages from the artist’s site, which created the false impression that the gallery still represented the artist. The court noted that the gallery continued to maintain a link to Mr. Collett’s website “knowing it was not authorized to do so.” By doing so, the gallery infringed the artist’s copyright in his site, including a reproduction of certain prints. Maintaining such a link was not found to constitute a breach of the artist’s moral rights.

In the end, statutory damages of $45,000 were awarded for breach of copyright, $10,000 for infringement of moral rights, and $25,000 for punitive damages to punish the gallery for its planned, deliberate and ongoing acts of infringement.

Calgary – 07:00 MST