Intellectual Property for Litigators: Intellectual Property for Litigators: An Overview of Trademark, Copyright An Overview of Trademark, Copyright and Internet Domain Name Issues and Internet Domain Name Issues and Disputesand Disputes

Various Areas of IPVarious Areas of IP• Patents = Inventions

• Copyright = Artistic, Literary and Dramatic Works

• Trade-marks = Brands/Reputation

• Trade Secrets = Secret Formulae

• Domain Names = Web Addresses, called Uniform Resource Locators (URLs)

Trade Secrets /Breach of Trade Secrets /Breach of ConfidenceConfidence• Sui GenerisSui Generis claim with wide remedies in law and claim with wide remedies in law and

equityequity• Arise frequently from: Arise frequently from:

– joint venturesjoint ventures– employment/independent contractorsemployment/independent contractors– business proposalsbusiness proposals

• Breach of duty to keep information confidential Breach of duty to keep information confidential arises when:arises when:– information has the necessary quality of confidence about itinformation has the necessary quality of confidence about it– information disclosed in circumstances importing an information disclosed in circumstances importing an

obligation of confidenceobligation of confidence– there has been an unauthorized use of the informationthere has been an unauthorized use of the information

Lac Minerals Ltd. v. International Corona Lac Minerals Ltd. v. International Corona Resources Ltd.Resources Ltd. [1989] 2 S.C.R. 574 [1989] 2 S.C.R. 574

Trade Secrets - DefencesTrade Secrets - Defences• Not confidentialNot confidential

– known outside businessknown outside business– publishedpublished– known by employees and contactorsknown by employees and contactors– value of the informationvalue of the information– ease of reverse engineering/duplicationease of reverse engineering/duplication– money/effort expended in obtainingmoney/effort expended in obtaining

• Not communicated in circumstances of Not communicated in circumstances of confidenceconfidence– confidentiality agreementconfidentiality agreement– confidential nature impartedconfidential nature imparted– industry custom of confidentialityindustry custom of confidentiality

PatentsPatents• What is a patent?What is a patent?

– The government trades you a 20 year The government trades you a 20 year monopoly, in exchange for the benefit of monopoly, in exchange for the benefit of disclosing inventiondisclosing invention

• What can be patented?What can be patented?– Inventions: any Inventions: any newnew and and usefuluseful art, art,

process, machine, manufacture or process, machine, manufacture or composition of matter, or any composition of matter, or any new and new and usefuluseful improvementimprovement..

Patent Requirements: New, Useful, Not Patent Requirements: New, Useful, Not ObviousObvious•New

– Absolute novelty: no-one else in the world can have invented it before and made it available to the public.– Not disclosed: In Canada and the U.S., you have one year to file after public disclosure; in other countries, you may lose your right to file if you have disclosed it publicly. –Court will ask whether the public had access to the invention when the Patent was applied for.

• Useful–An invention is useful if someone can take it and use it to construct something or do something with it.–A perpetual motion machine is not useful.

• Not Obvious– Inventive ingenuity required– Identify prior art – query whether difference between the invention and the prior art would have been obvious to a person skilled in the art of the technology involved.

• Infringement may be direct or indirect Infringement may be direct or indirect – May result in directors and officers being May result in directors and officers being

brought inbrought in

• Defences:Defences:– First sale principleFirst sale principle– Non-infringement Non-infringement – Voluntary licenceVoluntary licence– Compulsory licenceCompulsory licence– InvalidityInvalidity

Patents: InfringementPatents: Infringement

• Generally concurrent jurisdiction, Generally concurrent jurisdiction, – Federal Court exclusive jurisdiction for Federal Court exclusive jurisdiction for

impeachment.impeachment.– no Federal Court jurisdiction for contractual no Federal Court jurisdiction for contractual

issues, except where only corollary to primary issues, except where only corollary to primary action. action.

– Federal Court action is Federal Court action is in rem, in rem, a declaration of a declaration of invalidity effects patent itself, not just owner.invalidity effects patent itself, not just owner.

• Technical expertise of court results in most Technical expertise of court results in most patent cases being brought in Federal Court.patent cases being brought in Federal Court.– where case stronger on equities than where case stronger on equities than

technicalities, consider Provincial Courts.technicalities, consider Provincial Courts.

Patents: Jurisdiction of Federal CourtPatents: Jurisdiction of Federal Court

Copyright – Literary, Artistic, Copyright – Literary, Artistic, Musical, Dramatic WorksMusical, Dramatic Works

CopyrightCopyright• Automatic upon creation/fixation of the Automatic upon creation/fixation of the

material, provided the material is originalmaterial, provided the material is original– includes compilationsincludes compilations– statutory rightstatutory right

• Objective: promotion of Objective: promotion of creativity/balancing of rightscreativity/balancing of rights

• Protects the Protects the expressionexpression of an idea or of an idea or information, information, not the idea or informationnot the idea or information itself.itself.

• Term:Term: life of author, plus balance, plus 50 life of author, plus balance, plus 50 yearsyears

• Owner:Owner: the author is the first owner of the the author is the first owner of the copyright, except for copyright, except for employeesemployees and and photographers.photographers.

• Assignment:Assignment: copyright can only be assigned in writing.

CopyrightCopyright

Copyright – Moral RightsCopyright – Moral Rights• Right of the author to:Right of the author to:

– be associated with their workbe associated with their work– maintain the integrity of their workmaintain the integrity of their work

• distorting, mutilating or otherwise distorting, mutilating or otherwise modifying a workmodifying a work

• using a work in association with a using a work in association with a particular product, service, cause or particular product, service, cause or institutioninstitution

• only if acts would prejudice of the only if acts would prejudice of the author’s honour or reputationauthor’s honour or reputation

• Can be waived, but cannot be Can be waived, but cannot be assignedassigned

Copyright Disputes – Copyright Disputes – Claims/DefencesClaims/Defences• Publishing and re-publishingPublishing and re-publishing• Despite s. 39(1), innocent infringement not a defenceDespite s. 39(1), innocent infringement not a defence• Parody not a defence in CanadaParody not a defence in Canada• Fair dealing – narrow Fair dealing – narrow

– private study, research, news or criticismprivate study, research, news or criticism– non-commercial non-commercial – must be ‘fair’must be ‘fair’

• Must be a substantial takingMust be a substantial taking• s. 53(2) - registration, even s. 53(2) - registration, even ex post factoex post facto, creates rebuttable , creates rebuttable

presumption that copyright subsists and is owned by the presumption that copyright subsists and is owned by the Registrant Registrant

• s. 41 - three year limitation period – commencing when the s. 41 - three year limitation period – commencing when the plaintiff knew, or could reasonably have been expected to plaintiff knew, or could reasonably have been expected to know, of the infringement know, of the infringement 

Copyright Disputes – Copyright Disputes – RemediesRemedies• Damages ‘at large’Damages ‘at large’• Statutory damages – s. 38.1 Statutory damages – s. 38.1

– $500-$2,000 per work infringed$500-$2,000 per work infringed– may be lowered to $200 per work for innocent may be lowered to $200 per work for innocent

infringementinfringement– entitled to both actual and statutory damages – but no entitled to both actual and statutory damages – but no

duplicationduplication

• AccountingAccounting• Injunctive ReliefInjunctive Relief

– Anton PillerAnton Piller

• Delivery up of goodsDelivery up of goods• Punitive and exemplary damagesPunitive and exemplary damages

Trade-marksTrade-marks• Something (typically a word, phrase or logo) that Something (typically a word, phrase or logo) that

is used by a person for the purpose of is used by a person for the purpose of distinguishingdistinguishing the wares or services the wares or services manufactured, sold, leased, hired or performed manufactured, sold, leased, hired or performed by him from those manufactured, sold, leased, by him from those manufactured, sold, leased, hired or performed by othershired or performed by others

• Purpose is to protect both traders and consumers Purpose is to protect both traders and consumers – A man not ought to sell his goods under the pretence A man not ought to sell his goods under the pretence

they are those of another manthey are those of another manKirkbi AG v. Ritvik Holdings Inc.,Kirkbi AG v. Ritvik Holdings Inc.,

2005 SCC 65, [2005] 3 S.C.R. 3022005 SCC 65, [2005] 3 S.C.R. 302

Trade-marks: Key ConceptsTrade-marks: Key Concepts• Right acquired, protected, maintained Right acquired, protected, maintained

and violated through useand violated through use– first usefirst use– continued usecontinued use

• DistinctivenessDistinctiveness– mark must connote the product in the mark must connote the product in the

relevant public’s mindrelevant public’s mind– loss through failure to police and loss through failure to police and

prosecuteprosecute

Trade-marks: RegistrationTrade-marks: Registration• Canada-wide protection without need to Canada-wide protection without need to

prove reputation in a geographic areaprove reputation in a geographic area• Other benefits Other benefits

– perfect defense to allegation of infringementperfect defense to allegation of infringement– registration cited against applicationsregistration cited against applications– limited grounds to challenge after 5 yearslimited grounds to challenge after 5 years

• Valid for 15 years, and renewable for Valid for 15 years, and renewable for additional 15 year periods (with payment) additional 15 year periods (with payment) indefinitelyindefinitely

• May not be descriptiveMay not be descriptive

Trade-marks: Common LawTrade-marks: Common Law• rights acquired by simple userights acquired by simple use

• scope of protection will depend on the scope of scope of protection will depend on the scope of the usethe use

• permits you to stop others from using the same or permits you to stop others from using the same or similar marks in association with similar products, similar marks in association with similar products, in the area where your mark has a reputationin the area where your mark has a reputation

• registration gives better rightsregistration gives better rights

• passing off action available, requires evidence of passing off action available, requires evidence of reputationreputation

Claim: Statutory RightsClaim: Statutory Rights• For owners of registered marks For owners of registered marks

– s. 7 passing offs. 7 passing off– s. 19 imitations. 19 imitation– s. 20 confusions. 20 confusion– s. 22 injury to marks. 22 injury to mark– Right to oppose registration of similar marksRight to oppose registration of similar marks

• Challenge on basis of lost distinctiveness Challenge on basis of lost distinctiveness

• Seek to expungeSeek to expunge

Best ProtectionBest Protection

Cheat SheetCheat SheetIPIP PATENTSPATENTS TMTM COPYRIGHTCOPYRIGHT TRADE TRADE

SECRETSECRET

REGISTRATIONREGISTRATION REQUIREDREQUIRED ADVANTAGEOUSADVANTAGEOUS NOT REQUIRED/NOT REQUIRED/

ADVANTAGEOUSADVANTAGEOUSN/AN/A

TERMTERM 20 YEARS 20 YEARS FROM FILINGFROM FILING

POTENTIALLY POTENTIALLY FOREVERFOREVER

50 YEARS PLUS 50 YEARS PLUS LIFE OF AUTHORLIFE OF AUTHOR

FOREVERFOREVER

MONOPOLYMONOPOLY COMPLETECOMPLETE INCOMPLETEINCOMPLETE

(CONFUSINGLY (CONFUSINGLY SIMILAR)SIMILAR)

INCOMPLETE INCOMPLETE

(INDEPENDENT (INDEPENDENT CREATION)CREATION)

NONO

SCOPESCOPE FUNCTIONAL FUNCTIONAL INVENTIONINVENTION

BRANDSBRANDS EXPRESSION EXPRESSION ONLYONLY

ANYTHINGANYTHING

Domain Names - OverviewDomain Names - Overview

• All domain names are registered through All domain names are registered through authorized private registrars with:authorized private registrars with:– Internet Corporation for Assigned Names and Internet Corporation for Assigned Names and

Numbers (ICANN) Numbers (ICANN) – Canadian Internet Registration Authority (CIRA), Canadian Internet Registration Authority (CIRA),

or or – Other national authoritiesOther national authorities

• Contracts impose binding arbitration/dispute Contracts impose binding arbitration/dispute resolutionresolution

• Parallel protection under passing offParallel protection under passing off

Domain names – Worth Domain names – Worth fighting?fighting?• How confusing is the domain?How confusing is the domain?

– How similar are the names and products or services?How similar are the names and products or services?– What is the offending site selling?What is the offending site selling?– Is it a parked page?Is it a parked page?

• Who are the defendants?Who are the defendants?– Often far overseas, shady, disinterested, shell Often far overseas, shady, disinterested, shell

companies companies – Claim may alert them to the fact that domain has Claim may alert them to the fact that domain has

valuevalue

• Is there a real danger of lost business or lost Is there a real danger of lost business or lost trade-mark rights?trade-mark rights?

VenueVenue• Arbitration Arbitration

– ICANN’s Uniform Domain Name Dispute Resolution Procedure ICANN’s Uniform Domain Name Dispute Resolution Procedure (UDRP)(UDRP)

– CIRA's Dispute Resolution Policy (CDRP) - Canadian Internet CIRA's Dispute Resolution Policy (CDRP) - Canadian Internet Registration Authority (CIRA)Registration Authority (CIRA)

• Supreme Court of B.C.Supreme Court of B.C.– Passing off – must prove:Passing off – must prove:

• the existence of goodwill, the existence of goodwill, • the deception of the public due to a misrepresentation and the deception of the public due to a misrepresentation and • actual or potential damage actual or potential damage

– Defamation? Defamation? – Other Causes of Action?Other Causes of Action?

• Federal CourtFederal Court– Only trade-mark issues and corollaryOnly trade-mark issues and corollary– Binding and easy to conduct litigation across CanadaBinding and easy to conduct litigation across Canada

• The complainant must establish that: The complainant must establish that: – (i) the domain name is identical or (i) the domain name is identical or

confusingly similar to a trademark or confusingly similar to a trademark or service mark in which the complainant service mark in which the complainant has rights; has rights;

– (ii) the respondent has no rights or (ii) the respondent has no rights or legitimate interests in respect of the legitimate interests in respect of the domain name; domain name; andand

– (iii) the domain name has been (iii) the domain name has been registered and is being used in bad registered and is being used in bad faith.faith.

Domain names: UDRP Test:Domain names: UDRP Test:

• ArbitrationArbitration– Fast, cheap and out of control Fast, cheap and out of control – Binding on international registrantsBinding on international registrants

• Commonly shell company or registered in difficult Commonly shell company or registered in difficult jurisdictionjurisdiction

– Registrar will freeze domain upon receipt of claimRegistrar will freeze domain upon receipt of claim– Automatic enforcementAutomatic enforcement

• LitigationLitigation– Broader testBroader test– More control over process, chance for discoveryMore control over process, chance for discovery– Less up-front costs (simply filing Notice of Civil Claim) Less up-front costs (simply filing Notice of Civil Claim) – DiscoveryDiscovery– Chance for settlementChance for settlement– Often preferable if respondent is in CanadaOften preferable if respondent is in Canada– Damages Damages

• Note lessons from Note lessons from Inform Cycle v. Draper Inform Cycle v. Draper 2008 ABQB 3692008 ABQB 369

Domain names: Arbitration v. Domain names: Arbitration v. LitigationLitigation

Case Law – Further ReadingCase Law – Further Reading• Trade SecretsTrade Secrets

– Lac Minerals Ltd. v. International Corona Resources Ltd.Lac Minerals Ltd. v. International Corona Resources Ltd. [1989] 2 S.C.R. 574 [1989] 2 S.C.R. 574– Cadbury Schwepps Inc. v. FBI Foods LtdCadbury Schwepps Inc. v. FBI Foods Ltd., [1999] 1 S.C.R. 142., [1999] 1 S.C.R. 142

• PatentsPatents– Sanofi-Synthelabo Canada Inc. v. Apotex Inc. Sanofi-Synthelabo Canada Inc. v. Apotex Inc. (2008), 69 C.P.R. (4th) 251 (2008), 69 C.P.R. (4th) 251

(S.C.C.)(S.C.C.)– Amazon.Com, inc. v. the Attorney General of Canada et alAmazon.Com, inc. v. the Attorney General of Canada et al, 2010 FC 1011, 2010 FC 1011

• Trade-marksTrade-marks– Kirkbi AG v. Ritvik Holdings IncKirkbi AG v. Ritvik Holdings Inc., 2005 SCC 65, [2005] 3 S.C.R. 302., 2005 SCC 65, [2005] 3 S.C.R. 302– Mattel, Inc. v. 3894207 Canada IncMattel, Inc. v. 3894207 Canada Inc., 2006 SCC 22., 2006 SCC 22– Veuve Clicquot Ponsardin v. Boutiques Cliquot LtéeVeuve Clicquot Ponsardin v. Boutiques Cliquot Ltée, 2006 SCC 23, [2006] 1 , 2006 SCC 23, [2006] 1

S.C.R. 824S.C.R. 824– Louis Vuitton Malletier S.A. v. YangLouis Vuitton Malletier S.A. v. Yang, 2007 FC 1179, 2007 FC 1179

• CopyrightCopyright– CCH v. Law Society of Upper Canada, CCH v. Law Society of Upper Canada, [2004] S.C.R. 339[2004] S.C.R. 339– Snow v. The Eaton Centre LtdSnow v. The Eaton Centre Ltd. (1982) 70 C.P.R. (2d) 105. (1982) 70 C.P.R. (2d) 105– Target Event Production Ltd. v. Cheung, Target Event Production Ltd. v. Cheung, 2010 FC 272010 FC 27

• Domain NamesDomain Names– British Telecommunications PLC et al v. One in a Million LtdBritish Telecommunications PLC et al v. One in a Million Ltd, [1998] 4 All ER , [1998] 4 All ER

476476– Law Society of British Columbia v. Canada Domain Name Exchange Law Society of British Columbia v. Canada Domain Name Exchange

CorporationCorporation, 2004 BCSC 1102, 2004 BCSC 1102– Inform Cycle Ltd. v. DraperInform Cycle Ltd. v. Draper, 2008 ABQB 369, 2008 ABQB 369

Chris Wilson, Bull Housser & TupperChris Wilson, Bull Housser & Tupper

Creative Commons Images:Creative Commons Images:Rona Proudfoot - http://www.flickr.com/people/ronnie44052/ Rona Proudfoot - http://www.flickr.com/people/ronnie44052/ BowBrick BowBrick http://www.flickr.com/people/bowbrick/http://www.flickr.com/people/bowbrick/Juli Shannon http://www.flickr.com/people/julishannon/ Juli Shannon http://www.flickr.com/people/julishannon/ Michael Jefferies  Michael Jefferies  http://www.flickr.com/people/ogcodes/http://www.flickr.com/people/ogcodes/Ed Ludwick Ed Ludwick http://www.flickr.com/people/ednothing/http://www.flickr.com/people/ednothing/Andrew Bardell -http://www.flickr.com/photos/65438265@N00Andrew Bardell -http://www.flickr.com/photos/65438265@N00Alfred Palmer, Library of congress http://flick.kr/p/4jCrawAlfred Palmer, Library of congress http://flick.kr/p/4jCraw

THANK YOUTHANK YOU

Kieran P. Moore, Cohen Buchan Edwards t: 604.231.3492 e: kieranmoore@cbelaw.com

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