Lecture Note 9

Chapter 13
Distinguish between intellectual property and other
kinds of property.
Explain what is protected under copyright law.
Explain what a patent protects and how patent
protection is obtained.
Outline the protections afforded by the Industrial
Design Act.
Describe what is protected by the Trade-marks Act.
 Intellectual property(IP) is a type of special intangible
personal property
 It is a valuable business asset that can be stolen or
damaged
 Often underdeveloped, undervalued, and poorly
protected by businesses
 Intellectual property law usually requires that active
steps be taken to protect an asset
 Federal legislation deals with all aspects of IP
 Both federal and provincial courts have concurrent
jurisdiction to hear disputes with respect to IP
 Intellectual Property is intangible property that covers a variety
of creations
 Different laws apply to different creations and provide different
protections
 Intellectual Property includes:

 COPYRIGHTS TRADEMARKS PATENTS

 INDUSTRIAL PERSONALITY CONFIDENTIAL

RIGHTS INFORMATION
 DESIGNS
 Copyright literally means the right to copy.
 It means the right to prevent people from copying, performing,
publishing, broadcasting or translating the original works of
others without the permission of the owner
 Creator is called the originator
 Product is called work
 Copy right gives the creator the exclusive right to profit from
the work as well as control the creation for the specified
period.
 Work must be original and a product of independent creative
effort, and not a copy of another work
 Copyright gives the author an exclusive right to reproduce their
work for their lifetime plus 50 years after their death for most
works
 For corporations, where the author is unknown, or the work
involves movies, photographs, performances, or sound
recordings, the period is limited to 50 years only
 For performances that a sound recording is made of, the period
is 50 years up to a maximum of 99years protection.
 After the above period, the work becomes part of the public
domain, thus, no longer subject to control
 The author can use, sell or license others to reproduce their
work
 Copy right only protects the expression of the idea (the
How), not the idea itself (the What) e.g. a specific “love”
song
 As soon as a work is expressed in concrete form, even in
electronic form, it is protected
 Registration or the application of copyright symbol is not
required
 Copyright protection consist of the following rights:
 reproducing, performing, publishing, translating and
adapting the format of the work
 Conversations are not protected
 In Glen Gould Estate v. Stoddart Publishing Co. Ltd., the
court held that an interviewee cannot claim copyright in
an interview conversation because they were not put in a
permanent form.
 In order words, whoever that documents it in permanent
form will have the copyright (the interviewer in this case)
 Not all fixed expression are protected
 A newspaper article that reports of events is protected as
to the way the article is written, but not the content.
 This is because the facts/events are in the public domain
 The Copy Right Act is the law that governs copy right in
Canada
 Copy Right Act gives the author the right to prevent any
distortion, mutilation, or other modification of his work
that would be harmful to his honour or reputation.
 Copy right Act brought the Canadian law into compliance
with the World Intellectual Property Organization (WIPO)
Copyright Treaty and the WIPO Performances and
Phonograms Treaty.
 Copyright is automatic in Canada and as such no special
steps need to be taken in Canada.
 Registration is permitted under the Copyright Act for the
following reasons;
 to establish when the work was created and who created it.
 to assist with applications for recognition in foreign countries
who have signed treaties with Canada.
 to be able to sue for infringement or violation.
 Registration is not a guarantee of ownership
 Copyright is determined by the first creation date not the first
registration date.
 To qualify for copyright protection, work must be original and
fixed in some permanent form
Registration can take place by making an
application to the copyright office at the
Canadian Intellectual Property Office(CIPO)
Certificate of registration is issued on registration
 LeeRoy Washington was an accountant who specialized in
accounting and bookkeeping for small businesses. To advertise
a new idea for on-time accounting, Washington designed a new
brochure. He spent several days composing the wording and
deciding on the format and illustrations. Washington did not
mark it “© 1995 Washington,” nor did he register it. The
brochure was a success.
 Few months later, Joe Codeiro marked the brochure “© 1995
Cordeiro” and claimed he registered the brochure with the
copyright office and had a Certificate of Copyright.
 Who holds the copyright in the brochure?
Fair Dealing:
 This provides that if a copyrighted work is used for
the purposes of education, satire and parody in
addition to research, private study etc. there is no
violation of the Act
 Educational institutions may now reproduce, display,
and distribute protected works in any form of media.
 Copyrighted work can be used for research, private
study, news reporting, criticism, and review
Personal or non commercial Use:
 Permitted personal use includes private recording for
viewing or listening to a later time(time shifting) or
making back ups.
 “Mashups” are also permitted. This involves taking
portions of copyrighted works and incorporating
them into a new work
 Time shifting or recording television shows for later
viewing are permitted
Copy rights can be assigned or licensed.
Assignment involves a complete sale of the
copyright.
Authors usually assign their copyright to
publishers
Licence is permission to use it for a specified
time.
It expires and can be renewed.
 Author of the copyright retains the moral right even if after
assignment.
 Moral rights are the rights of the author or creator to prevent a
work from being distorted, altered or misused so that it does
no longer reflect the author’s intentions when it was created.
 These rights include;
 right to have name associated as creator of the work
 work cannot be modified, distorted, or defaced without
creator’s permission.
 right of the creator to choose who to associate the work with.
An employer is entitled to copyright, if the work
is created by an employee during the course of
employment unless contract states otherwise.

See section 13(3) of the Copyright Act.

Photography:
Photographers are now treated as owners of
work rather than the person who commissioned
the work
The person who commissioned the work can use
it according to agreement for private and non-
commercial purposes
Copyright is violated in the following situations:
where a person tries to obtain a benefit from the
sale, reproduction, distribution, performance,
broadcast, or other commercial use of the work
where a person copies another’s work, claiming it
as his or her own (plagiarism)
 Injunction - order by the court to stop further violation
 Anton Piller order - order by the court that the offending material be seized
 Deliver up order - order directing the offending party to deliver copies of the
infringing items to the copyright owner
 Accounting of profits - order made where it would be difficult to determine
what actual damages have been suffered
 The Copyright Act also allows the plaintiff to seek Statutory Damages instead
of actual damages
 Statutory damages in commercial copying cases range from $500-$20,000
per illegal copy
 Statutory damages for private-use copying range from $100 to $5,000 for all
of the infringements alleged in the lawsuit
 Fines up to $1 million and jail sentences of up to 5 years are also possible
under criminal penalties
 Access Copyright
 This body assists copyright owners in the collection of tariffs and royalties
 Society of Composers, Authors & Music Publishers of Canada (SOCAN)
 This body licenses the public performance of music in Canada and assist in
collection of tariffs and royalties on behalf of copyright owner
 Copyright Board
 This body handle disputes between individuals, supervise and regulate
the copyright industry, sets levies on blank audio recording devices (CDs,
DVDs etc.), reviews and approves fees for public performance or
telecommunication of sound recordings.
A patent is a monopoly granted by the
government which gives an inventor the right to
produce, sell, or profit from a specific invention
It protects the idea or concept itself in a working
model, not the expression of the idea
It comes into existence once registered
It gives protection for 20 years, but requires
disclosure of the invention
Only inventions can be patented.
Invention is defined as: “Any new and useful art,
process, machine, manufacture or composition
of matter.” (Patent Act).
New and useful improvement on a previously
patented invention is also patentable, but new
patent must be sought.
 To qualify to be patented, an invention must be have the
following characteristics:
 New - no one has been given a patent for it before
 Original work - must be a product of ingenuity
 Unique and distinguishable from other products - would not
have been obvious to others working with the technology
involved
 Utility - must perform some useful function
 novelty - must not already be known to the public (disclosure is
however allowed 1 year before the application for patent)
 It must be possible to construct and use on the basis
information supplied to the patent office.
Patents have been granted on plants and
bacteria but not on higher life forms e.g.
oncomouse
Modified gene can be patented
Some business patents are also granted in
Canada i.e., Amazon 1-Click.
A patent will be denied registration if the invention:
 Is a process or machine that is in use but has not yet patented
 Has been the subject of prior publication more than a year
before the application
 Is embodied in some product that has been sold prior to the
application or
 Could be discovered by reverse engineering or examination
 Is an improvement to an existing machine or process that
would have been obvious to someone with similar knowledge
or training
 Is for mere scientific principle or abstract theorem
 Patent protection does not come automatically, but must
be applied for and fee paid
 Applying for patents is complicated and costly
 Done through registered patent agents who will make a
search of the patent registries of Canada at the Patent
Office and similar registries
 They will submit an application and set out full disclosure
with respect to the invention
 The documentation must set out what is new and
innovative in the invention, and a fee to the Patent Office
 Federal Patent Act is the source of patent rights in
Canada.
 Government regulatory body - Patent Office, handles
applications.
 First to register the patent has priority, not the first to
create the patent.
 It is the idea that is protected in a patent, not the
expression of the idea
 To be patentable, invention must be useful, new, and
contribute to improving society by making some aspect
of production more efficient or lives enjoyable
After 20 years, anyone can use the item
patented, and the monopoly ceases.
Once a patent has been granted, the invention
process is made public.
If a patent is granted, anything produced under
that patent must state that it is patented and the
date the letters patent were granted (i.e.,
Patented, 2001)
The payment of an annual maintenance fee is
also required to maintain the patent protection
over 20-year life
Once patent has been obtained, the invention
must be used
Where patent is not used, the patent holder can
be forced to grant a licence to use the invention,
thus ensuring that the public benefits from it.
 Registration can be set aside at any time on the basis of
improper registration.
 The creator must reveal the entire invention process so
others can copy it when the patent expires, if not the
patent will be denied e.g. Viagra case
 If someone copies a patent the inventor can claim civil
law remedies; lost profits and punitive damages and
non-monetary remedies of an Anton Piller order, a
deliver up order and an injunction
 Example: Merck awarded $119 million when its patent
on anti-cholesterol drug was infringed by Apotex.
Employee has right to patent without contract
stating otherwise unless inventing was the purpose of
his employment
Patents can be assigned to third parties and can be
used as security for a corporation’s financing
arrangement
Federal and provincial courts can hear patent
infringement cases and to provide appropriate
remedies
 An industrial design is a unique pattern, shape or
ornament that appeals to the eye and is commercially
reproduced
 example: a uniquely designed chair, handle, spoon,
wallpaper or dish pattern, T shirt design, perfume bottle,
computer icon
 Must be registered within one year of the design
becoming known to the public to get protection and
only the owner can register
 Registration gives a 10 year exclusive right but after the
first 5 years a fee must be paid or the registration expires
The federal law - Industrial Design Act governs
industrial design to enable an inventor protect a
unique design, shape, or pattern
Registration must take place within one year of the
design being published or their labels should be
marked with an encircled D followed by the
proprietor's name or an abbreviation
The Act aims to protect attractive and distinctive
patterns or shapes
Product must be original, and it can be assigned
Protects 3-D design of integrated circuits.
 This covers the various components that make radios,
televisions, computers, automobiles, watches, and
most other modern products work
 The design must be registered within 2 years of its
first commercial use and the protection lasts for 10
years
Registration is done through the Office of the
Registrar of Topographies, which is part of CIPO
 Trademark is governed by the federal law - trade-marks
Act
 Trademarks applies to physical symbols such as brand
names, sounds, logos, as well as domain names and
website logos that identifies a business
 Trade-marks represent not only the actual goods or
services, but also reputation, customer relations, and
product identification collectively known as goodwill
 When the business name is the same name associated
with the product, then that name can be given trademark
registration.
Trademarks can consist of words, expressions, trade
names, designs i.e., the apple logo associated with
the word “Apple”
 Includes certification marks associated with quality
or standards such as the Canadian Standards
Association found on electrical and other appliances
 Includes “official marks” used by organizations
associated with government such as Canada Post, the
Red Cross, and 2010 Olympic name and marks
Ownership of trademark is not determined by
originator or author, but by the first to use it in
Canada, or by filing of an application to register.
It is the use of a trademark and not registration
that confers priority and the exclusive right to the
trademark (Masterpiece Inc. v. Alavida Lifestyles
Inc.)
 Trademarks do not have to be registered but it does extend protection
across Canada.
 Reasons to register:
 registration provides protection through out Canada for 15 years but can
be renewed
 acts as evidence if challenged as there is record of the date of first use.
 assist in obtaining registration in foreign countries
 necessary to enforce the infringement remedies under the Trade-marks
Act.
 The object of trademark protection is to preserve the value of goodwill
associated with the business by protecting consumers from deception
An application can be made not only for a mark
presently used but also for a proposed trademark
 Registration is complex and is usually done by
trademark agents
 Searches of indexes and registries must be made in
Canada to determine if the mark has already been
granted
 Agent makes the application to the Registrar of Trade-
marks, setting out description of the mark, the wares,
other information and fees
Disputes with respect to registration are handled
by the Registrar of Trademarks with appeals to
Federal Court
Trademarks can be challenged up to five years
after registration
Trademarks as well as all the licences associated
with them can be assigned to other companies
Restrictions set out in Act are as follows:
 Anything associated with royalty, national flags,
institutions such as the Red Cross or RCMP etc.
cannot be used without permission
 Must be socially acceptable (not obscene or illicit)
 Usually surname of living or recently- deceased
person will not permitted except the name has
already been associated with the business
Descriptive word(word that describes product
sold by various companies) cannot be registered
as a trademark
Unique sounds cannot be registered because of
the difficulty in describing them
Trademark infringement occurs when another uses a
trademark identical or confusingly similar to another
The trademark owner can sue under the Trade-mark
Act or in tort for passing off
Civil law Remedies: damages for actual loss, the
profits earned by the copier, aggravated & punitive
damages and non-monetary remedies of an Anton
Piller, a deliver up order, an Accounting and an
injunction
The Trade-marks Act provides statutory protection
for registered trademark
Unregistered trademarks and names are protected
under the common law tort of passing-off
Passing off is when any person or business advertises
their service or product in such a way as to
 lead others to believe they are being supplied by or
associated with other business, when they are not
The necessary elements to establish a passing-off
action are as follows:
 Reputation or goodwill for a product or service is
being damaged
 Mark/name similar enough to cause confusion
 Value of goodwill/reputation injured
A passing-off action will be available to an injured
party whether or not their trade mark is registered
under the Trade-marks Act
 Damages in form of monetary compensation
 Injunction to stop offending practice until the court can
deal with the matter
 Interim injunction requires the applicant to show a
strong case, indicating likelihood of success at trial and
that the balance of convenience is in the applicant’s
favour
 Anton Piller order
 Order that offending products or records be seized
before they can be destroyed/removed
 Often referred to as a civil search warrant
Anton Piller order requirements
Strong case that a violation is taking place
Danger of considerable further damage
Offending party has documents/products in
his/her possession and likely to dispose
of/destroy them before any hearing or trial
Accounting
Court determines improper profits made by
defendant that must be paid to plaintiff
Payment of royalties may be imposed
Some infringements are criminal offences under
Copyright Act and Patent Act
Criminal Code covers trademark infringement
and provides the penalties