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   

 

Simple inventions can transform our lives. Consider this: Can we use light bulbs to transmit data wirelessly?

On TEDTalks, an inventor shows how light from a standard LED bulb can transmit data to a mobile device, in effect acting like a wireless router. When you think about it, the invention is not that revolutionary, since WiFi transmissions use standard radio frequencies, which are simply a different set of frequencies than visible light, both of which are part of the spectrum of electromagnetic radiation. This patent  (OPTICAL FREE SPACE DATA TRANSMISSION US 2011/0069958, by the same inventor, Harald Haas) discloses the use of infrared light (another frequency along the same spectrum) for wireless data transmission in an airplane, describing an invention that would enable safe inflight wireless internet. Somebody tell Alec Balwin to invest.

The use of visible light for data transmission is not new. The first use (also claimed to be the first wireless transmission) was sent by (Canadian inventor) Alexander Graham Bell in Washington D.C. in the year 1880. His patented system was called the Photophone.

Calgary – 07:00 MST

Bill C-22 (Mandatory Reporting of Internet Child Pornography by Persons Who Provide an Internet Service) (the “Act”) was passed in March, 2011 and was proclaimed in force as of December 8, 2011. The Act makes it mandatory for providers of Internet services to report incidents of online child pornography. The Act is quite broad, and businesses providing WiFi access, email services or internet content hosting – including ISPs, as well as colleges, universities, public libraries, cafés, hotels, shopping malls – are caught by the Act and could receive a report about child pornography under the Act.

For more details about reporting obligations, see: This Article.

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

 

What? Wikipedia is off-line? Please cue the other three horsemen of the apocalypse.

It’s amazing what happens when Wikipedia decides to blackout its service to protest “legislation that could fatally damage the free and open Internet…” Suddenly everyone is talking about SOPA (our November post is here) proposed U.S. intellectual property legislation that has raised concerns across the business world. Google, Twitter, Tumblr, Reddit, Mozilla and other internet companies are also in on the protest. That’s remarkable, mainly because these companies all have their own agendas (as any business does) and there are very few circumstances where they will coordinate their protest on a single issue on a specific day. Over to you, U.S. Congress.

Related Reading from slaw.ca: SOPA: What’s All the Fuss About? 

Calgary – 11:30 MST

 

Who owns the IP rights to a Twitter account?  We associate such accounts with social media tools such as Facebook, which are deeply personal in nature. But is it really any different from any online account that you would use in the course of employment, such as a workplace subscription to a data library, or a collaboration tool such as Salesforce.com? An employer based in South Carolina puts their ex-employee’s Twitter account into this category, (Link to Article) claiming that when he left the job, the employee should have left behind the login, the Twitter account, and the account’s 17,000 followers.  In its lawsuit against the former employee (Update: Phonedog v. Kravitz – Amended Complaint), Phonedog has valued the account at $340,000 ($2.50 per follower per month).  

In Eagle v. Morgan the defendant employer claims that a former employee misappropriated (among other things) a LinkedIn account and its connections.

The law is not clear in this interesting area, which overlaps with IP law, employment law, and the law of trade secrets. One of the problems with a trade secrets claim is that Twitter followers and LinkedIn connections are not secret, and it’s questionable whether competitors could derive any value from knowing the information even if it was secret. Followers and connections are just that, they aren’t paying customers. US litigation should provide some clarity on these issues as this emerges more regularly. To date, there do not appear to be any Canadian cases that consider this point.

Related Reading: Who Owns Social Media Contacts: Employers or Employees?

Calgary – 07:00 MST

 

Trade-marks traditionally protect visible brands – a design, word or slogan. The brand that is visible on packaging or advertising is like a tool to assist consumers so they know, when they consider a purchase, who stands behind the product or service. So why can’t these indicators or “tools” be non-visible? Scent marks have been registered or applied-for in other countries:

• The EU: The EU permits scent marks as long as they can be described or depicted graphically.  OHIM, the office that handles registration of Community Trade Marks (CTM), has accepted the smell of fresh cut grass for tennis balls as an “olfactory mark” (Link to Decision (PDF)).
• USA: Scent marks are capable of being registered, and there is no requirement to sumbit a drawing or graphical depiction of the mark.  The USPTO has accepted the scent of Plumeria blossoms for sewing thread and embroidery yarn, and apple cider scent or fragrance in association with office supplies.
• Australia: Scent marks are registrable, though there is a requirement that a mark must be graphically depicted.  This can be satisfied with a written description of the scent and how it’s applied. In Australia, only one scent mark has been successfully registered: a eucalyptus scent for golf tees.
• Canada: If you try to search for “scent marks in Canada”, you will find articles about woodchucks and timber wolves marking their territory. Currently scent marks are not registrable in Canada, due to the requirement that marks must be depicted visually. To get around this legal conceptual barrier to scent marks, an amendment to the Trade-marks Act would be required, which is not likely in the near future.

There are several problems associated with scent marks. First, they must (in many countries, including Canada) overcome the hurdle of visual or graphical depiction in the trade-mark application. Next, the scent mark must not reflect the natural scent or aroma of the product itself – for example, the scent of fresh-baked bread should not be registrable for bread products. And perhaps most importantly, scent marks suffer from an inherent subjectivity that is difficult to overcome: “fresh-cut grass” means something different to different people, even if you can get over the other legal hurdles of adequately depicting or describing the scent for the purposes of the application. How can the problem of trade-mark confusion be solved in light of this subjectivity, where, for example two brands of tennis balls have similar cut-grass scents applied to them?

In Canada at least, this is one frontier that we will watch from the sidelines.

Related Reading: Holograms & Other Nontraditional Trade-marks in Canada

Also, see this good overview of: Nontraditional Trade-Marks in Canada

Calgary – 07:00

 

Today we begin a 5-part series on intellectual property that is at the edge in one way or another – either a novel technology, or a familiar “asset” that is being protected in new ways, through patent law, copyright or trade-marks. We start with gestures.

Characters in movies such as Avatar, Minority Report, Ironman and The Matrix all used hand gestures to manipulate computers. Not all that futuristic anymore, at least not for anyone who has used a Wii or Kinect to play games.

Apple and Microsoft are among the innovators who are rushing to the patent office to protect the use of hand gestures in conjunction with computer hardware devices and software to perform certain functions such as, in the case of Apple’s patent application (PDF), for real-time video processing. Microsoft’s application covers the use of hand gestures to “draw” three-dimensional objects on a computer. Before you get worried that Bill Gates can stop you from gesturing your hands in the air, there are a few points to make: these applications first have to pass through the patent office, to verify their patentability. Second, a patent would only protect an invention which uses gestures in conjunction with specific software and hardware to perform the functions covered in the patent’s claims.

If issued, these patents could provide valuable ammunition in future patent battles involving the use of gestures in conjunction with mobile devices.

Calgary – 07:00 MST

 

An employer shares confidential information with an employee. When the employee departs, what obligation does that ex-employee have with respect to the employer’s confidential info?

In part 3 of our 3-part employment law series, we look at an issue critical for many technology-based businesses: trade-secrets and confidentiality. Courts in Canada have made it clear that departing employees owe certain duties to their employer. Many of these duties expire when the employment relationship ends. Any attempt to bind the employee after employment must be limited by time and geography. Put another way, non-competition and non-solicitation obligations must be limited by time and space if they are to hold up; otherwise, courts will strike them down as being an unreasonable restraint on the employee’s ability to earn a living. However, those time-and-space limitations do not apply to wrongful disclosure of “truly confidential or proprietary information” by former employees. Simply put, employees cannot disclose their employer’s secrets. Those obligations continue until the information is no longer confidential or proprietary, or limitation periods have passed.  As the court stated in a recent Alberta decision, Evans v. The Sports Corporation, 2011 ABQB 244 (CanLII) (http://canlii.ca/t/fl0b3): “It is illogical to suggest that an employer must, to validly protect its confidences and proprietary information, specify a reasonable date after which a former employee is free to use the information for his own benefit and to the detriment of the former employer.”

Lessons for business: Check your employment agreements to verify that this is covered.

Related Reading: Executives Depart with Secrets and IP

Calgary – 07:00 MST    

 

Richard Stobbe was interviewed by The Lawyers Weekly for Luigi Benetton’s article reviewing some of the top tech cases from 2011 (link to the article)

Calgary – 07:00 MST

 

Lawsuits! Infringement! Litigation! Ah, there’s never a dull moment in the wonderful world of intellectual property law, and 2012 will be no exception. Here’s our list of what to watch in the coming year:

Copyright, Copyright, Copyright: For several years running, we have predicted that copyright reform will come to Canada. It might actually happen in 2012. There is good reason for optimism this time: First, the Supreme Court of Canada heard a clutch of copyright cases in December 2011, and their decision is expected in the first half of 2012. Second, the Harper government is promising/threatening (depending on your point of view) to pass Bill C-11, the current iteration of the Copyright Reform Bill. Change will come, one way or another.

Online Terms & Cloud Computing: In one sense, “cloud computing” is just another name for a trend that has been developing for a decade. In another sense, it really does capture a new way of doing business for many IT services. We predict that the law will develop in this area in both Canada and the US, as online terms and cloud-computing contracts are tested in court. Here’s one example of a pending decision: Sony faces a class action in the US over its online terms for the PlayStation Network.

Anti-Spam Law: In 2011, we rashly stated that Canada made “headway” in the anti-spam department, with the passing of the Fighting Internet and Wireless Spam Act. Canada’s anti-spam legislation did receive royal assent on December 15, 2010. However, the law is still not yet in force. Draft regulations are being debated and negotiated, and even if they do come into force in 2012, they will almost certainly be subject to a grace period which will delay implementation until late 2012, or maybe even 2013.

New CDRP Rules: In 2011, CIRA updated the rules governing dot-ca domain name disputes. Watch for our review of the changes, and the first decisions that have been released under the new rules. 

Calgary – 07:00 MST

 

Sound familiar at Christmas time? ‘Tis the season when trade-marks play a critical role in millions of buying choices of millions of consumers. So where is the line between two marks that appear similar, for similar products? With all due respect, the Supreme Court of Canada is not known for being succinct, but I have to admit this quote from the top court does capture the issue, and in this context the term “provenance” refers to source, or which company the products come from:

• “Trade-marks in Canada are an important tool to assist consumers and businesses. In the marketplace, a business marks its wares or services as an indication of provenance. This allows consumers to know, when they are considering a purchase, who stands behind those goods or services. In this way, trade-marks provide a “shortcut to get consumers to where they want to go” […]  Where the trade-marks of different businesses are similar, a consumer may be unable to discern which company stands behind the wares or services. Confusion between trade-marks impairs the objective of providing consumers with a reliable indication of the expected source of wares or services. […] “

That is the essence of trade-mark law in Canada.

A recent case from the Federal Court (MÖVENPICK HOLDING AG v. EXXON MOBIL CORPORATION, 2011 FC 1397) has reiterated this concept, in a battle between the marks Marché Express for fast-food items sold at a convenience store, and Marché for restaurant services. The court stated that “The test to be applied is a matter of first impression in the mind of a casual consumer somewhat in a hurry who sees the [mark], at a time when he or she has no more than an imperfect recollection of the [prior] trade-marks …” Ultimately, the court decided that there was no confusion, partly since the term “Marché” was commonly used in this industry, indicating that consumers are accustomed to seeing the word and will use relatively small differences to distinguish between trade-marks.

ipblog.ca will be taking a break until January… So, for all those casual consumers somewhat in a hurry, slow down and have a great holiday!

Calgary – 07:00 MST

 

Copyright complaints against apps are now common, and this one frames the issues nicely: In Shanti Deva Korpi v. Apple Inc. , 1:11-cv-00906- LY (U.S. District Court) a photographer who posts her photos to Flikr, has filed a lawsuit against Apple, claiming that two iOS apps – one of which was entitled “Unofficial Guide to Hipstamatic” – engaged in a practice of scraping and republishing her photos, without authorization or attribution. According to the claim, this is a violation of copyright.

In Canada, the recent decision of the B.C. Supreme Court in Century 21 Canada Ltd. Partnership v. Rogers Communications Inc., deals directly with this issue (see my commentary Coming to terms with online copyright published in the November 25, 2011 issue of the Lawyers Weekly). The B.C. case is not an app-related dispute, but the court makes it clear that copyright will be enforceable in situations where content (including images) is scraped off the internet, and is then repackaged and republished without authorization.

Calgary – 07:00 MST

 

In September, 1998, Amazon applied to patent its 1-click check-out, an invention officially entitled “Method and System For Placing A Purchase Order Via A Communication Network” (Canadian Patent Application No. 2,246,933). In Canada, the patent office refused to grant the patent because it didn’t consider the invention to be patentable under the Canadian Patent Act. Amazon appealed that refusal and in 2010 the Federal Court reversed the patent office’s decision and effectively ordered the patent to be issued. The patent office still refused to grant the patent, and appealed the case up to the Federal Court of Appeal. In a decision in November 2011, the Federal Court of Appeal handed down its decision in Attorney General of Canada et al v Amazon.com, Inc., 2011 FCA 328. The appeal court has confirmed that business methods are patentable in Canada and there is no basis under Canadian law for excluding business methods from patentability in Canada.

Related Reading:

CIPO’s Software & Business Method Patent Guidelines

Business Method Patents in Canada

Calgary – 07:00 MST

 

The BlackBerry maker can’t get a break these days. On December 6th, an American company obtained a Temporary Restraining Order, from a US court barring RIM from using the mark BBX in association with software. The lawsuit is based on the registered trade-mark BBX owned by BASIS International Ltd. This has caused an embarassing renaming of RIM’s new operating system to BlackBerry 10.

Lessons for business?

• Trade-mark screening searches are critical when launching a new brand. Searches can be conducted country-by-country, and search services can screen top markets with quick “knock-out” searches to quickly determine availability.
• Sure, RIM has been beat up a bit by the markets recently, but it’s still a global titan in the mobile devices and software industry… but that didn’t stop a rival software maker from taking on a trade-mark fight. That’s because BASIS had registered trade-marks in its arsenal.  Without the benefit of a trade-mark registration, this fight would have been much more costly and time-consuming and the outcome would have been much different.
• Think about timing and territory – in this case, the preliminary injunction was rushed to court because of the BlackBerry Developer’s Conference in Asia on December 7 and 8, where the BBX mark would have been used extensively by RIM. Does a US court have jurisdiction to issue an order to a Canadian company regarding the use of its mark in Singapore? You might think the answer is no, but an American judge will have a different view. Faced with the US order, RIM decided to re-brand. 

Calgary – 07:00 MST

 

For all the IP junkies out there, this is copyright week at the Supreme Court of Canada. Five copyright cases are being heard this week tackling such issues as the copyright in music contained within downloadable games, fair dealing exceptions, and streaming music online. Break out the popcorn, you can even watch the webcast!  

Calgary – 07:00 MST

This is the second in our 3-part employment law series.

Employees are often asked to sign a set of “restrictive covenants” as part of their employment agreement. This is the case in many competitive industries, and particularly in technology companies. These clauses can include non-competition restrictions, non-solicitation obligations, and other restrictions which bind the employee after termination. In Globex Foreign Exchange Corporation v. Kelcher , 2011 ABCA 240, the Alberta Court of Appeal reviewed the enforeability of these clauses. This case provides guidance for drafting and imposing restrictive covenants. Here is a summary of some of the court’s most important findings:

• Restrictive covenants can fail due to the “lack of consideration”. The employee has to receive something of real benefit in exchange for agreeing to be bound to the restriction. An employer who wants to impose a restrictive covenant in the middle of the employment relationship must take special care, since continued employment alone does not provide sufficient consideration for a new restriction to be imposed during the term of employment. This is because the employer is already required to continue the employment until there are grounds for dismissal or reasonable notice of termination is given.
• Non-solicitation and non-competition covenants are not enforceable unless they are reasonable. What’s reasonable will depend upon the circumstances of the industry, the employer and the employee. For one of the ex-employees in this case, the court found that the restriction was unreasonably wide, because it prevented him from soliciting any customer for a period of 18 months. In other words, this restriction was not limited to customers with whom the ex-employee had a relationship during employment. The employer in this case had no legitimate interest in protecting this category of customers from solicitation by the ex-employee.
• An employer remains free to dismiss an employee at any time provided there is just cause, or there is reasonable notice of termination, or payment in lieu of notice. If none of these occurs, then the employee has been wrongfully dismissed, and wrongful termination renders the restrictive covenants unenforceable. In other words, an employee who is not terminated for just cause, or given reasonable notice or payment in lieu cannot be held to the non-competition or non-solicitation restrictions that appear in the employment agreement.

Lessons for business? Review your restrictive covenants with experienced counsel. Carefully consider the process of introducing new employment terms in the middle of an employment relationship. And handle terminations very carefully to avoid the problems of wrongful dismissal.

Calgary – 07:00 MST

How easy is it to get an injunction against Google? In Nazerali v. Mitchell, a man complained of online defamation, and obtained a preliminary injunction against the author of the allegedly defamatory content, the hosting company (Nozone, Inc.), the domain name registrar (GoDaddy) and Google. The Court ordered the injunction, which included the order prohibiting Google “from permitting the Google.com or Google.ca search engines from returning any search result from www.deepcapture.com.”  Essentially this results in shutting down the (allegedly) offending website, since the court considered it “impossible surgically to eliminate just the offending phrases”. While this seems to be a dramatic result, considering it was obtained on an ex-parte basis (the other side did not appear at the hearing), it is not without precedent in Canada.

In Canadian National Railway Company v. Google Inc., 2010 ONSC 3121 (CanLII), the court issued an interim injunction requiring Google to remove a blog hosted on Google’s Blogspot platform.

The injunction in Nazerali v. Mitchell was time-limited and is set to expire tomorrow (December 2).

Hat tip to Alan Macek for highlighting this case.

Calgary – 07:00 MST

 

The Stop Online Piracy Act is a controversial U.S. bill now working its way through Congress. The proposed law is designed (in part) to knock-out foreign websites that are suspected of infringing intellectual property rights. By targetting foreign “rogue” websites and establishing new causes of action against website operators for copyright or trademark infringement, the legislation has raised concerns about ISP liability, and about  how it impacts the operation of the domain name system. SOPA permits the U.S. Attorney General to take action against a “foreign infringing site” such as a Canadian site, and obtain a court injunction against the site. Once an injunction is issued, the A.G. can serve a copy on a number of intermediaries, who must then take action within 5 days.

• ISPs can be ordered to block access to the site by preventing DNS resolution.
• Search engines can be ordered to block the site from search results. 
• Payment networks such as PayPal can be ordered to suspend transactions between the site and U.S. customers.
• Even ad networks can be ordered to stop serving ads on the site.

We will be monitoring the progress of this proposed IP law in the US.

Related Reading: Summary of SOPA, Concerns and Implications (PDF)

Calgary – 07:00 MST  

 

My recent article can be found here: Canada’s New Anti-Spam Legislation: How can it impact your business?

Related Reading: Canada’s “New” Anti-Spam Law

 

Calgary – 07:00 MST