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Kieran moore ip and contracts for web developers

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Who really owns your design, ideas and code?: Key tips while negotiating a contract (by Kieran Moore)

Who really owns your design, ideas and code?: Key tips while negotiating a contract (by Kieran Moore)

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  • 1. Who really owns your design, ideas & code?Contract and Intellectual Property Lawfor Design ProfessionalsKieran MooreCohen Buchan Edwardsp. 604.231.3492e. kieranmoore@cbelaw.com
  • 2. Various Areas of IP• Trade Secrets = Secret Formulae• Patents = Inventions• Trade-marks = Brands/Reputation• Copyright = Artistic, Literary andDramatic Works•Domain Names = Web Addresses, called Uniform Resource Locators (URLs)
  • 3. Patents• What is a patent? – The government trades you a 20 year monopoly, in exchange for the benefit of disclosing invention• What can be patented? – Inventions: any new and useful art, process, machine, manufacture or composition of matter, or any new and useful improvement .
  • 4. Patent Requirements: New, Useful, NotObvious•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 (consider web-boasts)•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.
  • 5. Trade-marks • Something (typically a word, phrase or logo) that is used for the purpose of distinguishing the wares or services manufactured, sold, leased, hired or performed from those of others • Purpose is to protect both traders and consumers – A man not ought to sell his goods under the pretence they are those of another man Kirkbi AG v. Ritvik Holdings Inc., 2005 SCC 65, [2005] 3 S.C.R. 302
  • 6. Trade-marks: Key Concepts• Right acquired, protected, maintained and violated through use – first use – continued use• Distinctiveness – mark must connote the product in the relevant public’s mind – loss through failure to police and prosecute
  • 7. Trade-marks: Registered• Canada-wide protection without need to prove reputation in a geographic area• Other benefits – perfect defense to allegation of infringement – registration cited against applications – limited grounds to challenge after 5 years• Valid for 15 years, and renewable for additional 15 year periods (with payment) indefinitely• May not be descriptive
  • 8. Trade-marks: Common Law• rights acquired by simple use• scope of protection will depend on the scope of the use• permits you to stop others from using the same or similar marks in association with similar products, in the area where your mark has a reputation• registration gives better rights• passing off action available, requires evidence of reputation
  • 9. Best Protection
  • 10. Trade Secrets /Breach ofConfidence• Protects secret formulae• Arise frequently from: – joint ventures – employment/ independent contractor relationships – business proposals• Breach of duty to keep information confidential arises when: – information has the necessary quality of confidence about it – information disclosed in circumstances importing an obligation of confidence – there has been an unauthorized use of the information Lac Minerals Ltd. v. International Corona Resources Ltd. [1989] 2 S.C.R. 574
  • 11. Copyright – Literary, Artistic,Musical, Dramatic Works
  • 12. Ownership of Copyright• Owner: the author is the first owner of the copyright, except for employees and photographers who are paid for negatives• Independent contractors own their work – Not necessarily what is specified by parties – Control Test – No “work for hire” in Canada• Joint authors = Joint owners• Ownership of economic rights subject to contract
  • 13. Copyright• Term: life of author, plus balance, plus 50 years• Objective: – promotion of creativity – balancing of user/public and owner rights
  • 14. Copyright• Must be a substantial taking• Protects the expression of an idea or information, not the idea or information itself.• Does not protect facts or uncopyrightable elements
  • 15. Bundle of Rights• Copyright includes a number of different rights that can be assigned or licenced separately on limited terms• Can only be assigned in writing
  • 16. Ownership of Copyright• Consider who should own the rights• Corporate ownership = chain of title – Build value in business – Easy to transfer – Leverage for raising capital – Potential tax credits (SRED)• If employer, what do you own?• If employee - be careful your side project does not become your employer’s asset
  • 17. QuickTime™ and a decompressorare needed to see this picture.
  • 18. Copyright – Moral Rights• Right of the author to: – be associated with their work – maintain the integrity of their work • distorting, mutilating or otherwise modifying a work • using a work in association with a particular product, service, cause or institution • only if acts would prejudice of the author’s honour or reputation• Can be waived, but cannot be assigned
  • 19. Copyright Disputes• Despite s. 39(1), innocent infringement not a defence• Parody not a defence in Canada• Fair dealing – narrow – private study, research, news or criticism – non-commercial – must be ‘fair’• s. 41 - three year limitation period – commencing when the plaintiff knew, or could reasonably have been expected to know, of the infringement 
  • 20. Domain Names - Overview• All domain names are registered through authorized private registrars with: – Internet Corporation for Assigned Names and Numbers (ICANN) – Canadian Internet Registration Authority (CIRA), or – Other national authorities• Contracts impose binding arbitration/dispute resolution• Can also sue in court for passing off
  • 21. Domain names: UDRP Test:• The complainant must establish that: – (i) the domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights; – (ii) the respondent has no rights or legitimate interests in respect of the domain name; and – (iii) the domain name has been registered and is being used in bad faith.
  • 22. Domain names – Worthfighting?• How confusing is the domain? – How similar are the names and products or services? – What is the offending site selling? – Is it a parked page?• Who are the defendants? – Often far overseas, shady, disinterested, shell companies – Claim may alert them to the fact that domain has value• Is there a real danger of lost business or lost trade-mark rights?
  • 23. Contracts• Required Elements – Offer – Acceptance – Consideration• Remember - only binds the parties – Make sure they are the right ones
  • 24. Key Contractual Considerations• Payment – How, when, what for?• Deliverables: – whats included? – what’s extra? – ongoing services – change orders• Use schedules• Intellectual Property Assignment or Licence• Confidential Information
  • 25. Treat your IP as if it has value, and it maybecome your most valuable asset
  • 26. IP PATENTS TM COPYRIGHT TRADE Cheat Sheet SECRETREGISTRATION REQUIRED ADVANTAGEOUS NOT REQUIRED/ N/A ADVANTAGEOUSTERM 20 YEARS FROM FILING POTENTIALLY FOREVER 50 YEARS PLUS LIFE OF AUTHOR FOREVERMONOPOLY COMPLETE INCOMPLETE INCOMPLETE NO (CONFUSINGLY (INDEPENDENT SIMILAR) CREATION)SCOPE FUNCTIONAL INVENTION BRANDS EXPRESSION ONLY ANYTHING
  • 27. THANK YOU Chris Wilson, Bull Housser & Tupper Creative Commons Images: Rona Proudfoot - http://www.flickr.com/people/ronnie44052/ BowBrick http://www.flickr.com/people/bowbrick/ Juli Shannon http://www.flickr.com/people/julishannon/ Michael Jefferies http://www.flickr.com/people/ogcodes/ Ed Ludwick http://www.flickr.com/people/ednothing/ Andrew Bardell -http://www.flickr.com/photos/65438265@N00 Alfred Palmer, Library of congress http://flick.kr/p/4jCraw NewMediaRights.org Except where otherwise noted, content is licensed under a Creative Commons Attribution 3.0 LicenseKieran P. Moore, Cohen Buchan Edwards t: 604.231.3492 e: kieranmoore@cbelaw.com

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