Intellectual Property

The Nature of Intellectual Property Intellectual property is the product of mental activity, i.e., ideas or inventions, of which individuality or originality is an essential feature.

Intellectual property is non-exclusive. Ideas cannot be possessed exclusively nor can a person prevent another from coming up with the same idea or a similar one. Ideas are also non-rivalrous. My possession and enjoyment of an idea does not diminish your ability to do the same.

In both common law and statutes, Canada has sought to balance the moral rights that creators have to reap the rewards of their efforts with the social costs of protection and the inefficient use of resources resulting from restrictions placed by intellectual property rights.

The main types of intellectual property are copyrights, trademarks, patents, and industrial designs.

Copyrights

A copyright protects the manner in which ideas are expressed. Copyright law provides automatic protection as long as the ideas are original to the creator/author, the work is in a fixed medium (something tangible), and the author has some connection to Canada (the idea was created in Canada or created outside of Canada by a citizen or ordinary resident or by a citizen/resident of a jurisdiction with which Canada has a treaty). However, registration under the Copyright Act206 creates a presumption that copyright subsists in the work and that the person registered is the owner.

The forms of expression protected by copyright are shown in Figure . The Copyright Act provides the original creator with the sole right to produce or reproduce the work or a substantial part of it, the right to perform or deliver the work in public, and the right to publish an unpublished work. In addition to these and other more specific rights that can be assigned by the author or creator, there are moral rights that cannot be assigned (but can be waived), chiefly the right to the integrity of the work and the right to prevent it from distortion and misuse.

Figure 6-64: Forms of Expression Protected by Copyright

The general rule is that a copyright lasts until the end of the calendar year in which the author dies plus 50 years. After that, the work protected becomes part of the public domain.

The Copyright Act provides for fair use of copyright works for the purpose of private study, research, criticism, review, or newspaper summary. There are other permitted usages such as public readings of reasonable extracts or performance of musical works by churches or schools for charitable purposes.

Work created in the course of employment is owned by the employer unless there is an express agreement to the contrary.

Trademarks

A trademark is a word, symbol, or design (or combination of these features) that is used to distinguish the wares or services of one business from those of others in the marketplace. They include ordinary marks (e.g., Nike “swoosh”), certification marks (e.g., CSA [Canadian Standards Association] approval on electrical appliances), and distinguishing guises (Coke bottle).

Trademarks are protected at common law through the tort of passing off—misrepresentation of goods, services, or a business so as to deceive the public into believing they are the goods, services, or business of another, thus causing damage to that other person.

Registration of trademarks under the Trade-Marks Act207 protects a business for years plus indefinite renewals. Some of the advantages of registering a trademark are:

·         Creates the presumption that the trademark is valid and distinctive and indeed owned by the owner.

·         Secures an exclusive right to its use throughout Canada (versus the area where the owner does business and has established a reputation).

·         Provides the right to register the trademark in other countries.

·         Provides protection against other types of infringement besides passing off:

a)     knock-offs (exact imitations);

b)     marks that will be confusing to consumers because of their similarity to the trademark;

c)      trademark depreciation, where someone uses the mark of another to depreciate that trademark’s goodwill; and

d)     imports by a distributor who is not an authorized distributor.

Patents

A patent is the right to stop others from making, using, or selling an invention or an improvement to an invention for a period of up to 20 years from the date of filing a patent application. Unlike a copyright, a patent does not exist automatically but must be granted by the appropriate government body. The proposed invention must be demonstrated to be patentable subject matter (e.g., product, composition of that product, apparatus used to make a product, or manufacturing process), novel, ingenious (or non-obvious), and useful.

Industrial Designs

Industrial designs are “features of shape, configuration, pattern, or ornament applied to a finished article to improve its aesthetic appeal.”208 Protection of industrial designs is dependent upon registration pursuant to the Industrial Design Act209 (five years with a renewal), although there may be some protection under common law as a trademark.

Remedies for Infringement of Intellectual Property Rights

In general, there are four remedies available for infringement, as shown in Figure.

Figure : Remedies for Infringement of Intellectual Property Rights

Confidential Information

Confidential information is any information that is of commercial value, such as customer lists, trade secrets, and know-how. Confidential information is not classified as intellectual property because of a Supreme Court of Canada ruling that it is not property that can be the subject of theft under the Criminal Code.

However, the law does protect confidential information in four ways:

1. Laws of licensing

2. Enforcement by the courts of protective covenants that stipulate that a buyer of the information will not divulge it to anyone else.

3. Enforcement by the courts of restrictive covenants that restrain an employee from making use of an employer's confidential information.

4. Imposition of fiduciary duties upon employees, directors, officers, and partners that prevent them from misusing or divulging confidential information acquired in the course of their relationship to the employers, corporations, or co-partners.