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IP Litigation Overview Presentation

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This is a general overview of Intellectual Property law from a presentation to litigators in Canada

This is a general overview of Intellectual Property law from a presentation to litigators in Canada


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  • 3 objectives: Outline the different forms of intellectual property,
  • Unlike patent, never has to be disclosed to the public – good because gets to be a secret – bad because disclosure loses rights KFC and Coca Cola Recipe Lac Minerals Cadbury v. FBI – information need not be secret or unique, but that could not have been produced without a ‘human brain acting upon it’
  • Duty of confidentiality Contract: What type of information is being disclosed What can the receiver do with it? What happens if they fail to abide by the agreement? Contract before disclosure Create an inventory Need to know basis Confidentiality clauses with customers, distributors, etc. Physical and electronic security Train employees Mark all documents Shred, don’t discard Avoid disclosing source code Enforce confidentiality Conduct exit interviews Action/injunction available in Provincial Courts
  • Pharland
  • Consider website disclosure Disclosure must be under contract
  • Amazon One Click patent
  • Richmond night market
  • Euro Excellence – should not try to do by copyright what cannot do by trademark law
  • Eaton Centre geese Dangers of not obtaining a waiver of moral rights: due diligence when your company is acquired – it will be used against you in negotiations, and reduce the overall value of your company; risk of not being legally entitled to modify a work, even if you have obtained an assignment of the copyright – used against owners of custom software in the 1990s when everyone had to upgrade for Y2K
  • Haiku Quality in addition to quantity No single words or short phrases If ditated by functional elements – no infringement If 1 st publication not original If taking was fact or idea
  • Election Rolling anton piller orders Veuve Cliquot Louis Vitton
  • Keep representative samples of all your packaging, labeling and advertising
  • Demand letters often not recommended – will transfer names Is there a real chance of damages beyond forfeiture of domain name?
  • ICANN is responsible for Domain Names – Contractual Inform– also a defamation claim – could hypothetically be interference with contract in certain cases
  • most straightforward way of establishing ownership is a tm registration in any country - only requires “rights” , that’s a loose term – otherwise would need really good evidence of use and goodwill – need evidence of sales, length of use, first use, advertising nature and extent, media recognition,
  • Transcript

    • 1. Intellectual Property for Litigators: An Overview of Trademark, Copyright and Internet Domain Name Issues and Disputes
    • 2. Various 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)
    • 3. Trade Secrets /Breach of Confidence
      • Sui Generis claim with wide remedies in law and equity
      • Arise frequently from:
        • joint ventures
        • employment/independent contractors
        • 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
    • 4.  
    • 5. Trade Secrets - Defences
      • Not confidential
        • known outside business
        • published
        • known by employees and contactors
        • value of the information
        • ease of reverse engineering/duplication
        • money/effort expended in obtaining
      • Not communicated in circumstances of confidence
        • confidentiality agreement
        • confidential nature imparted
        • industry custom of confidentiality
    • 6. 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 .
    • 7. Patent Requirements: New, Useful, Not Obvious
      • 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.
    • 8.  
    • 9.  
    • 10.
      • Infringement may be direct or indirect
        • May result in directors and officers being brought in
      • Defences:
        • First sale principle
        • Non-infringement
        • Voluntary licence
        • Compulsory licence
        • Invalidity
      Patents: Infringement
    • 11.
      • Generally concurrent jurisdiction,
        • Federal Court exclusive jurisdiction for impeachment.
        • no Federal Court jurisdiction for contractual issues, except where only corollary to primary action.
        • Federal Court action is in rem, a declaration of invalidity effects patent itself, not just owner.
      • Technical expertise of court results in most patent cases being brought in Federal Court.
        • where case stronger on equities than technicalities, consider Provincial Courts.
      Patents: Jurisdiction of Federal Court
    • 12. Copyright – Literary, Artistic, Musical, Dramatic Works Copy Publish Distribute Perform or exhibit in public Modify Adapt to another medium Translate Authorize others
    • 13. Copyright
      • Automatic upon creation/fixation of the material, provided the material is original
        • includes compilations
        • statutory right
      • Objective: promotion of creativity/balancing of rights
      • Protects the expression of an idea or information, not the idea or information itself.
    • 14.
      • Term: life of author, plus balance, plus 50 years
      • Owner: the author is the first owner of the copyright, except for employees and photographers.
      • Assignment: copyright can only be assigned in writing.
      Copyright
    • 15. 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
    • 16. Copyright Disputes – Claims/Defences
      • Publishing and re-publishing
      • 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’
      • Must be a substantial taking
      • s. 53(2) - registration, even ex post facto , creates rebuttable presumption that copyright subsists and is owned by the Registrant
      • s. 41 - three year limitation period – commencing when the plaintiff knew, or could reasonably have been expected to know, of the infringement 
    • 17. Copyright Disputes – Remedies
      • Damages ‘at large’
      • Statutory damages – s. 38.1
        • $500-$2,000 per work infringed
        • may be lowered to $200 per work for innocent infringement
        • entitled to both actual and statutory damages – but no duplication
      • Accounting
      • Injunctive Relief
        • Anton Piller
      • Delivery up of goods
      • Punitive and exemplary damages
    • 18. Trade-marks
      • Something (typically a word, phrase or logo) that is used by a person for the purpose of distinguishing the wares or services manufactured, sold, leased, hired or performed by him from those manufactured, sold, leased, hired or performed by 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
    • 19. 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
    • 20. Trade-marks: Registration
      • 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
    • 21. 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
    • 22. Claim: Statutory Rights
      • For owners of registered marks
        • s. 7 passing off
        • s. 19 imitation
        • s. 20 confusion
        • s. 22 injury to mark
        • Right to oppose registration of similar marks
      • Challenge on basis of lost distinctiveness
      • Seek to expunge
    • 23. Best Protection
    • 24. Cheat Sheet TRADE SECRET COPYRIGHT TM PATENTS IP ANYTHING EXPRESSION ONLY BRANDS FUNCTIONAL INVENTION SCOPE NO INCOMPLETE (INDEPENDENT CREATION) INCOMPLETE (CONFUSINGLY SIMILAR) COMPLETE MONOPOLY FOREVER 50 YEARS PLUS LIFE OF AUTHOR POTENTIALLY FOREVER 20 YEARS FROM FILING TERM N/A NOT REQUIRED/ ADVANTAGEOUS ADVANTAGEOUS REQUIRED REGISTRATION
    • 25. 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
      • Parallel protection under passing off
    • 26. Domain names – Worth fighting?
      • 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?
    • 27. Venue
      • Arbitration
        • ICANN’s Uniform Domain Name Dispute Resolution Procedure (UDRP)
        • CIRA's Dispute Resolution Policy (CDRP) - Canadian Internet Registration Authority (CIRA)
      • Supreme Court of B.C.
        • Passing off – must prove:
          • the existence of goodwill,
          • the deception of the public due to a misrepresentation and
          • actual or potential damage
        • Defamation?
        • Other Causes of Action?
      • Federal Court
        • Only trade-mark issues and corollary
        • Binding and easy to conduct litigation across Canada
    • 28.
      • 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.
      Domain names: UDRP Test:
    • 29.
      • Arbitration
        • Fast, cheap and out of control
        • Binding on international registrants
          • Commonly shell company or registered in difficult jurisdiction
        • Registrar will freeze domain upon receipt of claim
        • Automatic enforcement
      • Litigation
        • Broader test
        • More control over process, chance for discovery
        • Less up-front costs (simply filing Notice of Civil Claim)
        • Discovery
        • Chance for settlement
        • Often preferable if respondent is in Canada
        • Damages
          • Note lessons from Inform Cycle v. Draper 2008 ABQB 369
      Domain names: Arbitration v. Litigation
    • 30. Case Law – Further Reading
      • Trade Secrets
        • Lac Minerals Ltd. v. International Corona Resources Ltd. [1989] 2 S.C.R. 574
        • Cadbury Schwepps Inc. v. FBI Foods Ltd ., [1999] 1 S.C.R. 142
      • Patents
        • Sanofi-Synthelabo Canada Inc. v. Apotex Inc. (2008), 69 C.P.R. (4th) 251 (S.C.C.)
        • Amazon.Com, inc. v. the Attorney General of Canada et al , 2010 FC 1011
      • Trade-marks
        • Kirkbi AG v. Ritvik Holdings Inc ., 2005 SCC 65, [2005] 3 S.C.R. 302
        • Mattel, Inc. v. 3894207 Canada Inc ., 2006 SCC 22
        • Veuve Clicquot Ponsardin v. Boutiques Cliquot Ltée , 2006 SCC 23, [2006] 1 S.C.R. 824
        • Louis Vuitton Malletier S.A. v. Yang , 2007 FC 1179
      • Copyright
        • CCH v. Law Society of Upper Canada, [2004] S.C.R. 339
        • Snow v. The Eaton Centre Ltd . (1982) 70 C.P.R. (2d) 105
        • Target Event Production Ltd. v. Cheung, 2010 FC 27
      • Domain Names
        • British Telecommunications PLC et al v. One in a Million Ltd , [1998] 4 All ER 476
        • Law Society of British Columbia v. Canada Domain Name Exchange Corporation , 2004 BCSC 1102
        • Inform Cycle Ltd. v. Draper , 2008 ABQB 369
    • 31.
      • 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
      THANK YOU Kieran P. Moore, Cohen Buchan Edwards t: 604.231.3492 e: kieranmoore@cbelaw.com Except where otherwise   noted, content is licensed under a   Creative Commons Attribution 3.0 License