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

1. Who really owns your design, ideas & code?
Contract and Intellectual Property Law
for Design Professionals
Kieran Moore
Cohen Buchan Edwards
p. 604.231.3492
e. kieranmoore@cbelaw.com

2. Various Areas of IP
• Trade Secrets = Secret Formulae
• Patents = Inventions
• Trade-marks = Brands/Reputation
• Copyright = Artistic, Literary and
Dramatic 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 .

5. 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 (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.

7. 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

8. 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

9. 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

10. 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

11. Best Protection

12. Trade Secrets /Breach of
Confidence
• 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

14. Copyright – Literary, Artistic,
Musical, Dramatic Works

15. 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

16. Copyright
• Term: life of author, plus balance, plus 50
years
• Objective:
– promotion of creativity
– balancing of user/public and owner rights

17. 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

18. 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

19. 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

20. QuickTime™ and a
decompressor
are needed to see this picture.

21. 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

22. 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

23. 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

24. 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.

25. 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. Contracts
• Required Elements
– Offer
– Acceptance
– Consideration
• Remember - only binds the parties
– Make sure they are the right ones

28. Key Contractual Considerations
• Payment
– How, when, what for?
• Deliverables:
– what's included?
– what’s extra?
– ongoing services
– change orders
• Use schedules
• Intellectual Property Assignment or Licence
• Confidential Information

29. Treat your IP as if it has value, and it may
become your most valuable asset

30. IP PATENTS TM COPYRIGHT TRADE
Cheat Sheet SECRET
REGISTRATION REQUIRED ADVANTAGEOUS NOT REQUIRED/ N/A
ADVANTAGEOUS
TERM 20 YEARS
FROM FILING
POTENTIALLY
FOREVER
50 YEARS PLUS
LIFE OF AUTHOR
FOREVER
MONOPOLY COMPLETE INCOMPLETE INCOMPLETE NO
(CONFUSINGLY (INDEPENDENT
SIMILAR) CREATION)
SCOPE FUNCTIONAL
INVENTION
BRANDS EXPRESSION
ONLY
ANYTHING

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