Intellectual Property Rights Overview

September 2, 2015
by Vandana Taxali, LL.B., J.D

[slideshare id=52336147&doc=iprightspresentationsep22015-150902120541-lva1-app6891]

What Are Intellectual Property Rights (subject matters of a licence agt)

IP is original creative works reduced to a tangible form that can be legally protected. IP includes copyrights, patents, trademarks, industrial design (intangible rights) and trade secrets & confidential information. It’s intangible and invisible so easier for others to use unless physical property.
Rights of exploitation (selling, assigning or licensing)
Literary, artistic, or scientific works
There are two classes of intellectual property rights:
“Hard” intellectual property rights (patents, trademarks, copyright which are protected by legislation)
“Soft” intellectual property rights (confidential information, trade secrets and know how which are not protected by legislation but are still intangible rights)
When IP licenced = royalty or licence fee agreement that outlines the rights & obligations of each party

Patent

Gives the owner the exclusive right to manufacture, use and sell the invention (and prevent others from doing so)
Patents provide the most exclusivity & protection for 20 years from the filing of the application
Patents must meet four requirements:
Patentable subject matter (any new and useful art, process, machine, manufacture or composition of matter or improvement)
Novelty (must not be disclosed prior to filing date of application (if by third party) or prior to one year before the filing date of the application (if disclosure by inventor).
Non-obviousness (inventive ingenuity)
Utility (functional purpose)

Trademarks

Gives the owner the exclusive right to the use of the trademark in Canada in respect of the wares/services associated with it and prevent others from using the same or confusingly similar marks
Words, designs, symbols, colours, fragrances or “get-up” of package of product

Copyrights

Gives the owner the sole right to produce or reproduce the protected work.
Copyright can subsist in original literary, artistic, musical or dramatic works
Copyright includes the following rights (which may be licensed individually or bundled):
Perform the work in public
Public the work, if unpublished
Produce, reproduce, perform or publish any translation of the work
Convert a dramatic work into a novel or other non-dramatic work;
Convert any non-dramatic work into a dramatic work by way of performance in public or otherwise;
Make a sound recording, cinematograph film or other contrivance by means of which a literary, dramatic or musical work can be mechanically reproduced or performed;

Why Are IP Rights Important?

Competitive Advantage important for founders to offer something unique
Exclusive Use Copyright, trademark and patent registrations protects you from others using your names, creations and inventions
Additional Source of Revenue through Licensing
Protection Against Infringement
Note: If your business process if not protected by IP, you can still gain a competitive advantage by protecting your trade secrets and confidential information

Intellectual Property Work Sheet

1)Products & Services – List all your companies products and services (eg. Software, computer code, documentation, packaging, customer lists, supplier lists etc)

2)Categories – Group into categories and identify whether it can be protected as a patent, trade-mark, confidential information or copyright

3)Select Your Domain – When choosing a company name, brand name or trade name, choose the domain name at the same time (.com, .org and .ca are the best)

4)Choose Company Name do searches to check availability (Service Ontario, NUANS, Social Media handles and Google Searches)

5)Slogans – Write down any brand names or slogans associated with your company name

6)Unique – Make sure your trade-mark is unique and different from any other trade-mark or brand

What is Copyright?

Statutory Right
“Every original literary, dramatic, musical and artistic work includes every original production in the literary, scientific or artistic domain, whatever may be the mode of expression”.
Right to produce, reproduce, perform, adapt, translate, publish, make a recording, communicate by telecommunication, exhibit an artistic work, rights to communicate a work by telecommunication to the public and the right to rent out certain works.

What Can You Copyright?

You can copyright:

Literary
Dramatic
Musical
Sound Recordings
Communication signals in a fixed form
Etc.

You cannot copyright:

Ideas (copyright does not subsist in ideas but the expression of those ideas in a fixed form)
Public domain works
Factual information
Brand names, slogans, titles, etc.
Copyright notice not mandatory but provides protection in other countries
© [Year of First Publication]. [Copyright Owner]. All Rights Reserved.

Advantage of a Copyright Registration

Copyright is automatic. Registration is not mandatory.
Advantage äóñ presumption of copyright ownership to registrant
Onus of disproving this is on the defendant
If a defendant can prove that he/she was not aware that copyright subsisted in the work, then plaintiff is only entitled to an injunction (not damages).

Copyright Infringement

It is an infringement if a person copies the whole or substantial part of a work
Copyright is infringed if you sell, lease, distribute, exhibit by way of trade, import for sale or hire copyright protected work(s) into Canada

Remedies for Copyright Infringement

Injunction
Order for the detention of imported infringing copies
Damages
Accounting of profits
Recovery of infringing copies
Costs

Moral Rights

Two Rights :
1) The right to receive credit and be associated with your work
2) the right not to have your work changed or modified
Moral rights may only be waived and not sold or licensed

Citizenship Requirements

Author must be a citizen or ordinarily resident in Canada or
A citizen in a country to which the Copyright Act applies or
A published work must first be published in Canada or a country to which the Copyright Act applies

What Is a Trade-mark?

Word or words
Phrase
Design
Picture
Symbol
Number(s)
Shape of a product (distinguishing guise)
Packaging or label
Colour
(or any combination of the above)
A trade-mark is used to distinguish the wares/services from a competitor

Word Mark vs. Design Mark

A word mark consists of just the words
A design mark consists of the logo and graphics (with or without text)
Examples: company name, logo, slogan, brand names of products/services, shape or product or packaging

Use

You must use the trade-mark in order for you to rely on trade-mark rights
You can put the trade-mark on packaging at the time of the sale
For a service, you can use the trade-mark in the advertising of the services or when providing the services
You can file a trade-mark application based on use or proposed use

Advantages of Trade-mark Registration

Exclusive right to use the mark across Canada for 15 years (renewable every 15 years)
Process can be time consuming
Eg. IndieGoGo filed a trade-mark application October 23, 2013
They have been using it since January 14, 2008
They obtained the trade-mark registration on January 15, 2015

Common Law rights for Trade-marks (Protection if you don’t register)

Registration is not mandatory and trade-mark rights can be established under common law (case law)
However, protection under common law is limited to the geographical area where the brand is being used

Trade-marks that Cannot be Registered

Names and surnames
Clearly descriptive marks (unique is better)
“deceptively misdescriptive” marks
Words that denote a geographical location commonly known to be the place of origin of such goods or wares
Words in other languages
Words or designs that are considered confusing with a previously registered trade-mark or pending trade-mark

Remedies for Trade-mark Infringement

Injunction
Damages or accounting of profits
Destruction of infringing materials
Possible criminal prosecution
Costs

SHOPIFY

Trade name (company name) : SHOPIFY
Trade-mark: Shopify
Domain name: www.shopify.ca

OCAD UNIVERSITY

Trade names: OCAD, OCAD U, OCAD UNIVERSITäó»y,
Trade-marks: OCAD UNIVERSITY, OCADU, OCAD, ONTARIO COLEGE OF ART & DESIGN
Domain Name: www.ocadu.ca
No trade-mark application for “Imagination Catalyst”

KLEENEX

Trade name (company name): Kimberly-Clark Worldwide, Inc.
Trade-marks: Kleenex, Soft Touch, Beyond Forests, Someone Needs One (Proposed Use)
Domain name: www.kleenex.com

What is Industrial Design?

An original design of article (features of shape, configuration, pattern or ornament and any combination)
Must be appealed to by the eye
There must be some form of ornamentation

What is the Process for Registration?

Registration must be applied for within one year from the date of first publication in Canada
Offering or making the design available to the public constitutes publication

Advantages of Registration

Exclusive use to use the industrial design to an article for the purpose of sale
Registration is valid for 10 years from the date of registration

Remedies for Infringement

Damages
Injunction
Recovery of infringing material
Accounting of profits
Fines for criminal offences under the Industrial Design Act
If infringer not aware of the registration, then remedy limited to injunction (and no damages)

What Are Patents

“Any new and useful art, process, machine manufacture or composition of matter or any new and useful improvement in any art, process, machine, manufacture or composition of matter”

What Is Patentable?
Must be new or novel wasn’t known or reported before
Useful or have some utility has to have practical application
Non-obvious not obvious from prior inventions or information already available
Patent Application Process
Remedies for Patent Infringement