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Ownership rights in map products - an Intellectual Property perspective.
 

Ownership rights in map products - an Intellectual Property perspective.

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An introduction and general legal overview that IP plays in mapping,GIS, surveying and cadastral products.

An introduction and general legal overview that IP plays in mapping,GIS, surveying and cadastral products.

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    Ownership rights in map products - an Intellectual Property perspective. Ownership rights in map products - an Intellectual Property perspective. Presentation Transcript

    • GIS and the Law Management Issues in GIS Course Presentation, March 3, 2011 URISA OC Prepared & Presented by Lou Milrad Milradlaw 10 Relmar Rd. Toronto, ON M5P 2Y5 (947) 982-7890
    • Selected Issues
      • Ownership Rights in Map Products
      • An Introduction to Intellectual Property
      • Associated Privacy Issues
    • Ownership Rights in Map Products
      • Considerations
        • Tangible vs. Intangible
          • Paper or Mylar
          • Digital
        • Form of Delivery to Customer (User)
        • Residing Media
        • Use and Distribution Strategies/Policies
        • Internal vs. External
          • Written vs. Inferred
          • Combined/Integrated with Third Party Mapping Products
      • Common Themes
        • Rooted in 2 Major Concepts
            • Copyright
            • Licensing
        • Copyright and Licensing
          • Copyright and licensing issues will define rights ownership of underlying and resulting works, and entitlements to use
      Information Dissemination
    • The Case for Licensing
      • Is required to put a legal and structured framework around process
      • Sets out the Rules
      • Provides best flexibility to the dedicating party/licensor
      • GeoConnections –recognizes 3 broad types of license arrangements:
        • Unrestricted use license agreement
        • End-user license agreement
        • Distributor agreement
    • License Provider Needs to:
        • Avoid/limit downstream liability
        • Protect intellectual property by setting out compliance obligations
          • Copyright
          • Trade secret
          • Trademarks
        • Ensure source attribution
        • Generally enables management of compliance of user licensees by licensor
        • Controls subsequent distribution (sub-licenses)
        • Preserves rights to enforce for breach by licensee
        • Waiver or preservation of right(s) for license fee/royalties
        • Can be separate document, web-based, shrink-wrapped, click me, etc.
    • Licensing of Rights Types of Licenses
        • Exclusive
        • Non-exclusive
        • Sole
    • Intellectual Property: An Introduction
    • Copyright
        • Statutory Protection
          • Copyright Act of Canada
          • Copyright Act in the U.S.
            • Also - The Digital Millennium Copyright Act
          • Protects expression rather than underlying idea
          • Protection is based upon creation of a “Work” (literary, dramatic, musical or artistic)
          • Concepts of “compilation” and “translation”
          • Ideas or concepts traditionally protected as trade secrets (contractual obligations) and more commonly as patents
    • Copyright - Definition
      • Protection is based upon creation of a “Work” (literary, dramatic, musical or artistic)
      • Protects expression of an idea (source code), not the idea itself (algorithm)
      • Limited exceptions
      • Moral rights – Right of author to maintain integrity of the work and be associated with it as its author
    • Copyright Acquisition
      • Author is first owner except when employed
      • Registered or unregistered
      • Ensure employees, contractors and suppliers provide copyright assignments and moral rights waivers
    • Databases and Their Protection Under Canada ’s Intellectual Property Protection Scheme
      • Database Issues
        • Database considered a compilation and traditionally protected under the Copyright Act
        • However, issue is somewhat debatable in Canada and the U.S. as a result of the recent decision in Canada of Federal Court Of Appeal ’s recent decision in Tele-Direct (Publications) Inc. v. American Business Information Inc. and the U.S. Supreme Court’s much earlier decision in Feist Publications, Inc. v. Rural Telephone Service Company, Inc.
    • Differentiating The Feist Case From The Tele-Direct Case
      • Requirement of Feist
        • element of " originality " in the selection and arrangement of the data
        • necessary to demonstrate some element of " creativity " rather than merely reflecting a rather simple industrious collection or " sweat of the brow ".
      • Requirements of Tele-Direct
        • threshold requirement
          • minimal degree of skill all judgment and labor in its overall arrangement
          • rejection of “ sweat of the brow ” doctrine and concluded that previously decided cases based upon industriousness were incorrectly decided
          • also, that even if the sweat of the brow doctrine had previously applied in Canada, that concept was now inconsistent with the definition of “ compilation ” (introduced into the Copyright Act in 1993 pursuant to NAFTA)
      • Supreme Court of Canada
        • Landmark decision that enables members of the legal profession to access copies of court decisions and other legal materials in its Great Library without fear of copyright infringement.
        • Unanimously ruled that the Law Society ’s dealings with the works of three legal publishers through its custom photocopy service were “research based and fair”. The Court stated, “Research must be given a large and liberal interpretation in order to ensure that users’ rights are not unduly constrained” and “is not limited to noncommercial or private contexts.”
        • This far-reaching copyright case commenced nearly a decade ago by three legal publishers
          • CCH Canadian Limited,
          • Canada Law Book Inc.,
          • Carswell Thomson Professional Publishing
        • against the Law Society of Upper Canada, the not-for profit organization that regulates lawyers in Ontario in the public interest.
      CCH Canadian Ltd. v. Law Society of Upper Canada
    • Crown Copyright
          • Crown Copyright applies works of the Federal and Provincial Governments (Municipalities excluded)
              • Copyright Act
              • Crown prerogative
          • Regular copyright protection applies to Municipalities and Private Sector
          • Generally 50 years protection in Canada
          • International conventions may extend domestic rules to other countries
          • Issues of authorship, ownership derivative works and moral rights
          • Notice: © 2011 Know-It-All Data Sources Inc.
    • Crown Copyright
      • Applicable to works of the federal and provincial governments
      • Doesn ’t apply to municipal governments
      • Two categories
        • Common Law - Examples
          • Book of common prayer
          • Hydrographic charts
    • Where Copyright Belongs to Her Majesty
        • Section 12 of Copyright Act which states:
        • 12. Without prejudice to any rights or privileges of the Crown , where any work is, or has been, prepared or published by or under the direction or control of Her Majesty or government department, the copyright in work shall, subject to any agreement with author, belong to Her Majesty and in that a shall continue for the remainder of the calendar year of the first publication of the work and for a period of fifty years following the end of that calendar year.
        • R.S.C. 1985, c. C-42, s. 12; S.C. 1993, c. 44, s, 60.
    • International Initiatives
      • Existing Protections
        • Berne Convention
        • UCC (Universal Copyright Convention)
    • International Initiatives (contd.)
      • Developing a Global Scheme
        • World Intellectual Property Organization (WIPO)
          • "Draft Treaty on Intellectual Property in Respect of Databases"
        • The European Union - European Database Directive
          • provides for two protections or rights:
            • Copyright protection; and
            • A sui generis* protection
              • *[Latin, of its own kind] - Constituting a class alone Unique or particular to itself (the lawyer's…ad that makes no distinction among various legal and factual nuances in each sui generis case has the potential to mislead ( National Law Journal )
          • protection period of 15 years to be available from the time of making an existing database "available to the public".
            • Conceivably, could allow a protection period of up to 30 years in respect of an existing private database made available to the public near the end of the initial term of 15 years
    • Cautions Regarding Copyright And Its Ownership
      • If produced during ordinary course of employment and as part of employee ’s job function, copyright belongs to employer and not employee
        • However employee still has a “moral right” to maintain the integrity of the work unless employee signs a waiver
    • Cautions Regarding Copyright And Its Ownership (contd.)
      • If created by an outside contractor without provision for ownership being transferred, copyright ownership belongs to the contractor and not the organization engaging the contractor
        • If ownership is critical, must obtain a transfer of ownership and a waiver of moral rights
      • Copyright may be registered as either a published or unpublished work, however in order to maintain trade secret protection, it should be treated as an unpublished work.
    • Examples of Copyright
      • Computer Software
      • Plans and Specifications
      • Procedures Manuals
      • Engineering and Mechanical Drawings
      • Databases
      • Technical Notes
      • Annual Reports and Financial Statements
    • Patent: What is a Patent ?
      • An exclusive right for a limited term to prevent others from making, selling or using an invention
      • Criteria for a patentable innovation:
        • Useful
        • New
          • No prior public disclosure
          • One year grace period in U.S. and Canada
        • Unobvious
          • Must be an ‘inventive step’
    •  
    • What Can Be Patented?
        • Proper Subject Matter
          • Not for Scientific principles and abstract theorems
          • Not for application of professional skills (Canada)
          • Business Methods
            • In U.S. no prohibition, question is whether method produces a “useful, concrete and tangible result”
            • In Canada, yet to be determined
    • How is a Patent Acquired
      • Patents are granted by individual countries or regions i.e. European Union
      • Procedure:
        • Application/Examination/Issuance
        • Maintenance fees (While pending and after issue)
        • Municipal employees: If hired to invent, implied assignment of invention to Municipality and patent rights
        • Contractors: Unlikely to be an implied assignment of invention or patent rights
    • Why Patent?
      • Stop others from infringing activities - actively or unknowingly
      • Generate revenues for Target Companies by licensing or selling
      • Defensive use against others who have patents
      • Increase awareness of Target Company ’s activities
    • Trade Secrets (Confidential Information)
      • Information providing a competitive advantage
      • Not known in the industry
      • Created by employees, suppliers or contractors
      • May not be otherwise protectable by patents or copyright
      • Needs to managed – Will last until made public
      • Likely are a variety of obligations that are committed to under licenses and similar types of agreements
    • Trademarks
      • A trademark is a word or symbol used to distinguish the wares or services of an organization from the wares or services of another
      • Common Law vs. Registered (Statutory)
      • Application Process
      • Some prohibitions affecting registration
      • 15 year term
    • Some Examples of Trade Marks
    • Why Register Trademarks?
      • Generation of licensing revenues
      • Control use of Owner ’s symbols, logos and marks
      • Vehicle to enhance awareness of Organization
      • Enhances protection of Internet domain names (URLs)
      • Strategic defence of symbols, logos and marks
    • Industrial Design
      • Features of shape, pattern or ornamentation that give a manufactured article visual appeal
      • i.e. shape of sign, shape of a bus shelter
      • For protection, must be novel
      • Protects aesthetic rather than functional features of an article
      • ApplicationExaminationRegistration
      • Term
        • 10 years from registration
        • Similar protection offered by Design Patent in United States (14 year term)
    • Desirable Aspects of an Innovation/Intellectual Property Program
      • Perform an Intellectual Property Review to identify and inventory existing IP assets
      • Put policies in place to:
        • Capture and evaluate potential inventions and other intellectual property
        • Encourage employees to document innovations and disclose them to evaluation team
        • Evaluate innovations to determine if patent or other protection worthwhile
        • Govern disclosure, confidentiality and use of intellectual property
        • Ensure appropriate contractual provisions are in place with employers, contractors, co-developers, licensees, customers, etc.
      • Put licensing program in place to identify and respond to licensing opportunities
    • Additional Issues for Consideration
      • Division of ownership
      • Non-competition clauses
      • Offshore structures
      • Revenue sharing
        • Royalties
        • License Fees
        • Others
      • Valuation and commercialization
      • Philosophical hurdles
      • Strategic Alliances
      • Realization on Default
    • Privacy & Security
      • The Municipal Cloud
    • Information Collection and Privacy
        • Internet and other Technologies
          • Consumers ’ private and personal information is increasingly subject to collection, storage, manipulation and analysis through the combination of the Internet and other new technologies including:  
            • cookies
            • personal Digital Certificates
            • customer Tracking Systems
            • mass Customization and Personalized Marketing
            • dynamic Content Servers
            • database Management Systems (DBMS) and Data Mining
          • Best Practices
            • Develop, update and manage corporate-wide privacy policy that also protects on-line customers
    • Information Collection and Privacy
        • Online Access - Terms and Conditions
        • Privacy Legislation
          • Federal – PIPEDA
          • Provincial (State) – FIPPA (Ontario)
          • Municipal – MFIPPA (Ontario)
        • Contractual Terms
          • Obligations (Reciprocal?)
          • Indemnification for violation
        • Consumer Protection Legislation
      • Privacy concerns constitute a major impediment to the wide adoption of e-commerce amongst consumers around the globe
      • Consumers ’ private and personal information is increasingly subject to collection, storage, manipulation and analysis through the combination of the Internet, social media sites and other new technologies including:  
        • cookies
        • personal Digital Certificates
        • customer Tracking Systems
        • mass Customization and Personalized Marketing
        • dynamic Content Servers
        • database Management Systems (DBMS) and Data Mining
      Data Collection and Privacy
    • Managing Online Risk With Computer Security
      • Access control
        • Valid user Ids
        • Passwords
      • Antivirus Software
      • Digital Signatures
      • Encryption
      • Firewalls
      • Intrusion Detection Software
      • Spamming Filters
      • Network Security
      • Vulnerability Monitoring
      • Public Key Infrastructure (PKI)
      • Secure Sockets Layer ( “SSL)
      • Internet Certification Authority (ICA)
      • Virtual Private Networks (VPNs)
    • Lou Milrad Milradlaw 10 Relmar Rd. Toronto, ON M5P 2Y5 [email_address] (647) 982-7890 Thank You