BLAW Readings Ch. 13 - Textbook Reading Notes Chapter 13 Business Law in Canada, Eleventh Canadian PDF

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Textbook Reading Notes Chapter 13
Business Law in Canada, Eleventh Canadian Edition (11th Edition)
Author: Yates, Bereznicki-Korol, Clarke...

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BLAW Readings Ch. 13: Intellectual Property  INTELLECTUAL PROPERTY -intellectual property: a subcategory of intangible personal property referring to ideas, info, and creative works -law attempts to balance the protection of the product of a personal’s mental effort on the one side and the free flow of new and innovative ideas, which stimulate the advancement of the commercial environment, on the other -businesspeople need to protect their intellectual property -most legislation protecting intellectual property is federal (copyright and patent legislation being exclusively granted to federal government) -Canadian copyright law protects computer software and original works published on Internet -must be contrasted to other forms of property -real property: refers to land and things attached to it -personal property: can be tangible or intangible -tangible personal property: consists of movable things in the form of goods or chattels -intangible personal property: refers to rights or claims that one person has that have value and can be enforced in the courts, such as the right to collect a debt -rights are referred to as: chose in action or a right to sue -rights protected/defined under law -when chattel is stolen/destroyed, no longer available for use by original owner -when idea is taken/used by someone else or confidential info is wrongfully communicated to another, the idea or info doesn’t change -still available to original holder, but value might be diminished -patent: gives rights to the inventor to profit from an invention -a federal legislation -Patent Act: gives rights to the inventor to profit from an invention -Trade-marks Act: trademark law applies to physical symbols, like brand names, company logos, domain names and website names -remedies available when parties misrepresent their products/services as those of another; protection sometimes overlaps with trademark legislation -easy access to technology makes information access easier; puts holders to inventions in vulnerable place to those who want to use products of others for own personal gain -Integrated Circuit Topography Act: -Industrial Design Act:  COPYRIGHT -copyright: owners of copyright holders control the reproduction of the work during that period -work is protected, not idea -protection extended to authors/artists for 50 years after their death (only 50 years if a corporation is involved, author is unknown, or work involves movies, photographs, performances, sound recordings) -after, the work becomes part of the public domain: anyone can use it -The Copyright Act: gives owner of copyright a monopoly over the use of created work, prohibiting copying or reproduction of work without permission -actual work is protected, not ideas or thoughts behind it -gives protection to original works, performer’s performances, sound recordings, communication signals MATTERS COVERED -only original work can be entitled to copyright protection -only the expression has to be original, not the idea (can’t copyright an idea)

-Copyright Act provides copyright protection for computer software and hardware -hard to distinguish between what constitutes the idea behind the software and its expression -can only copyright expressions with computer programs, not the idea -Integrated Circuit Topography Act: created to protect the design of the integrated circuit expressed in the computer chip itself -actual 3-dimensional design must be registered, and protection granted is a 10 -year period FILE SHARING -copyright holders of electronic material has legal right to prevent unauthorized copying; also allowed to rent it and control its use -copying music, movies, games is a massive problem – resulted in serious litigations -downloading peer-to-peer is lawful in Canada under certain circumstances -downloading song for purpose of sale, rental, distribution, communication by telecommunication, or by performance in public is prohibited -third parties may be subject to such orders to disclose private info of subscribers for copyright and patent troll -to succeed the party applying for a Norwich order, must show the following: a. plaintiff must have a bona fide case b. non-party must have info on an issue in the proceeding c. an order of the court is the only reasonable means of obtaining the info d. that fairness requires the info be provided prior to trial e. any order made will not cause undue delay, inconvenience, or expense to the third party or others CREATION -the creation of work generates copyright protection automatically -still, registration is wise (establishes when copyright was created, and presumption that the person in registration is the owner of the copyright) -can register online or by application sent by fax/mail -if copyright isn’t registered, remedies available for infringement may be restricted -for a person to obtain copyright protection in Canada, must be: -a citizen or resident of Canada -subject, or resident of one of the countries that adhere to the Berne Copyright Convention -person whose country is a member of the World-Trade Organization OWNERSHIP -copyright belongs to the person who created the work or to the employer where work was created as part of employment, unless there is an agreement otherwise -copyright can be assigned but moral rights are retained after assignment -moral rights: allows the artist, author, or performer to demand that her name continue to be associated with the work as its author, and new owner must not distort, mutilate or change work in such a way as to degrade it/bring harm to reputation of original author -should create a contract to set out who is entitled to copyright of work created -authors can seek compensation/obtain injunction even though someone else owns the copyright -while Act prohibits assignment of moral rights, author of work can waive them -copyright holder has complete control over rights for the author’s life plus 50 years 2012 AMENDMENTS TO THE COPYRIGHT ACT -it’s illegal to circumvent digital locks -a rights holder who noticed unauthorized downloading can send a notice to Internet service provider, who then must forward a notice to its subscriber indicating that they are performing an illegal act -after notice is served, Internet service provider required to provide offending user’s identity and other info to copyright holder so further action can be taken

-Youtube exception: non-commercial users are permitted to use copyrighted content in remixed musical performances, mashup videos, home movies set to commercial music -user must identify source of original; result must not substantially affect commercial value of the underlying work FAIR DEALING -fair dealing: expanding right to use copyrighted work under certain conditions -educational institutions can reproduce, display, distribute protected works in any form of media -educators can record/keep for a limited period of time, radio, newspaper, TV material -students receiving such materials must destroy them within certain period after course is finished COPYRIGHT INFRINGEMENT -infringing copyright includes: -where a person tries to obtain benefits from the sale, reproduction, distribution, performance, broadcast, or other commercial uses of the work OTHER EXCEPTIONS -legislation and case law can be copied without a fee – only need to remember to practice due diligence to ensure that copy is accurate and not represented as being an official version -exception for fair dealing – ex: photocopying excerpts from textbooks for use in classroom teaching -there are exceptions for educators -for cases of criticism, reviews, news reporting, must give source of author, performer, recorder, broadcaster, etc. -anyone can make recordings for their own private use REMEDIES -interlocutory injunction: an interim measure, and a permanent injunction may or may not be granted at trial -may be available in civil action, when copyright is violated -may be given before the actual trial to prevent further damage -to obtain it, plaintiff must establish a prima facie (correct until proved otherwise) case -there has to have been an infringement of copyright -if injunction isn’t granted, irreparable harm will be suffered that could not properly be compensated for by an award of damages at the trial -balance of convenience is also in plaintiff’s favor – refers to which side will suffer greatest damage if injunction is granted -injunction not normally granted if order would cause that larger business more damage than the plaintiff would suffer if injunction weren’t granted -Anton Pillar order: sometimes courts will make an order even before trial, that the offending material be seized -application made without notice because evidence has to be seized by surprise before goods or relevant documentation can be hidden or destroyed -courts issue this only when there is clear and compelling evidence of the infringement of copyright, the danger of significant damage to the plaintiff, and some indication that surprise is needed to protect the evidence -permanent injunction: prohibits the production, sale, distribution of any of the infringing products -if defendants unaware they violated copyright, only remedy available is injunction -delivery up: an order that directs the defendant to deliver all copies of infringing items in her possession or control to copyright owner -usually sought together with permanent injunctions -if infringement took place knowingly, damages/accounting may be obtained -award of damages to compensate victim for losses suffered, including lost profits that would’ve been earned had copyright not been infringed -accounting for where it would be difficult to determine what actual damages have been suffered

-punitive damages awarded in cases of flagrant violation to punish offender rather than simply compensating victim of infringement -limitation period in which action should be commenced – 3 years -if plaintiff reasonably unaware of infringement, limitation period can be extended -Copyright Act provides copyright owner with 3 additional remedies: 1. statutory damages: enables court to award damages that it “considers just” in the circumstances with general limit of between $500-$20,000 -purpose: alleviate difficulties encountered in proving exact losses suffered by plaintiff or net gain reaped by the wrongdoer -damages available against non-commercial infringer of copyrighted material of $100-$5000 2. enhanced injunction: allows court to order wrongdoer to refrain from future infringements of copyright in other works owned by plaintiff copyright owner -can be obtained if plaintiff shows it’ likely the wrongdoer will engage in future infringements -prevents repeat infringements 3. summary procedures: more expedient and less expensive than full court trials -court can make a decision based on affidavit evidence -Copyright Act also provides penalties up to $1million in fines, 5 years in prison for most serious cases -criminal code may apply THE COPYRIGHT BOARD -tariffs: set fees that users must pay for using certain copyrighted material -cable companies pay these for permission to transmit programs -Copyright Board handles disputes and levies fees -royalties: sums paid as commission for sales of a work or permission to use it -paid to musicians when radio stations play their songs -SOCAN and Access Copyright: collects fees and royalties  PATENTS -patent: government-granted monopoly that gives only the inventor the right to produce, sell, profit from a specific invention -protects the idea rather than it’s expression -invention must be new (no one else has been given patent for it and hasn’t been disclosed to public in Canada or elsewhere more than a year prior to application) -extends to the physical embodiment of the idea/concept -must be original work of inventor -must be unique and distinguishable from other products -must have some utility or perform some useful function -Purpose of Patent Act: to disclose nature of an invention to the extent that it would be possible for someone else relying on the info to manufacture the product -the more info is out there, the better it will be for economy with other inventors stimulated to make advances encouraged by the disclosed info -cant patent a scientific principle or abstract theory, or obvious improvements to other products, inventions designed for illegal purposes -non-obvious improvement on an already existing invention is patentable -higher forms of life are not patentable -can’t patent computer programs -can patent business methods (BMPs) – creates a patent monopoly on particular process or model of carrying on business CREATION

-must apply and register for patent -if someone beats you to it, you lose right to patent and will be prevented from producing/profiting from the invention -employers entitled to patent inventions of their employees unless agreed otherwise and holder of patent can assign that patent to others -joint patents: granted when several people have worked on same invention -process of obtaining a patent: 1. patent records must be searched to see if patent already exists 2. application with supporting documentation/prescribed fee must be submitted – must list what the invention is supposed to do and must have enough info so that someone looking at them could build and use the item 3. patent office will assign an examiner – may require further submissions from applicant 4. when all conditions are met, patent will be granted -for international patent agreements: -once Canadian patent granted, applications can be made for patents in other jurisdictions, but priority in those countries are based on when application was first made in Canada -Canadian patent office will grant patent to foreign applicant who applies in her own country before the Canadian applicant applies here -date of application in your country determine priority -patent grants monopoly for 20 years but requires full disclosure  TRADEMARKS -trademark: any term, symbol, design or combination of these that identifies a business service or product and distinguishes it from a competitor -can be any word, design, symbol or packaging that distinctively identifies a business or product -purpose: protect the value of goodwill and prevent other parties from misleading the public by using trademarked words or symbols for their own purposes -identifies source or manufacturer of goods rather than the product itself -ex of trademarks: “Kodak” and “Xerox”; symbols such as the arm and hammer used on company’s baking soda box -Apple logo, Nike swoosh, Mcdonald’s arches -also includes special marks used by some organizations (ex. Canadian Standard Association) -assets are protected by trademark – unauthorized use of name or mark prohibited -viewing a website with trademarks aren’t violations, but downloading info from it and using it to enhance own website without permission may be -must register for trademark -once registered, can give protection for 15 years (renewable) -proposed legislation will reduce protection period to 10 years -injunctions available against imitator and “knock-offs” -surnames can’t be trademarked or registered -only where name has become associated with another product (ex. Mcdonald’s hamburgers) will the applicant run into problems -for it to be trademarkable, has to be a distinctive feature -trademark can be lost through common usage -when trademark becomes generic it can be two-edged sword (ex. Advil) -people use these terms to describe the general type of product -results in loss of ability of original rights holder to protect those rights

-object of trademark protection: preserve value of goodwill associated with it by preventing someone from using the mark to mislead others into thinking they are dealing with the owner of the trademark when they aren’t -to enforce the right, plaintiff must show he is the owner of trademark and also that the public would likely be confused by the wrongful use of the trademark, causing damage to plaintiff -remedies available same as remedies for copyrights and patents PASSING-OFF -passing-off action: founded in tort law – prevents person from misleading public into thinking it is dealing with some other business or person when it is not -for this to succeed it must: -be proven to mislead/confuse the public -but if person were to use an attractive logo developed by someone else who hadn’t yet registered or used it in association with any business, would not succeed because logo hadn’t become associated with any business, and public couldn’t be misled -plaintiff must establish that actual/potential damage was caused -remedy: courts can order compensation be paid or offending conduct to stop -remedy available when unregistered trademark is involved -when trademark is developed and registered, it must be used INDUSTRIAL DESIGNS AND INTEGRATED CIRCUIT TOPOGRAPHY -Industrial Design Act: inventors can protect a unique design, shape, or pattern that distinguishes a manufactured article (ex. Coca-Cola bottle) -gives protection up to 10 years (will expire in 5 years if maintenance fee isn’t paid within 5 years) -protects intellectual property -design must be original work -purpose: protect attractive and distinctive patterns/shapes as opposed to useful ones -artistic designs must be registered to have protection -registration must take place within 1 year of design being published -items should be marked with capital letter D in circle -damages available for infringement if design is marked, otherwise an injunction forbidding others from using the design is available if design isn’t marked. -Integrated Circuit Topography Act: intended to protect the 3-D design of integrated circuits -protection after registration for period of 10 years -remedies: damages and injunction, payments of royalties punitive damages, seizure and destruction of offending product  CONFIDENTIAL INFORMATION -confidential information: given in circumstances where it’s clear that info is intended to remain confidential and not be disclosed -duty to keep confidence -examples would be in businesses to keep insiders (managers, investors, employees, and outsiders like contractors, consultants, suppliers) keep confidences -for info to be confidential, must not be generally known and must not already be disclosed to others -duties may arise because of parties’ relationships TRADE SECRETS -trade secret: particular kind of confidential info that gives a business-person competitive advantage -includes: customer lists, patterns, processes, jigs, other unique features unknown to competitors -for it to be a trade secret, must be valuable to business and not readily available to any other user or manufacturer

-while an employee may be required either expressly in employment contract or by implication, not to disclose trade secrets and confidential info that he acquires in process of employment, employee can use general skills and knowledge he gains on job in another employment situation -restrictive covenant: would be wise for first manufacturer to include this in employment contract -covenant must be reasonable to be enforceable because courts are reluctant to enforce such covenants against employees -owner of secret info should inform employee that they’re in position of confidence and is expected to keep info private – person can’t be expected to keep confidence that she doesn’t know is a secret REMEDIES -available for when someone wrongfully discloses info causing harm -remedies: injunction, damages, accounting, sometimes punitive damages -courts reluctant in granting injunction if it prevents employee from earning a living -can sue other companies for inducing employee to breach of contract  REGULATING INFORMATION TECHNOLOGY -Canadian Internet Registration Authority (CIRA): person wishing to claim a particular domain name or web address applies to the Domain Name Registry operated by CIRA -for small annual fee, will issue name if available -handles disputes in Canada, defines bad faith as obtaining name to resell in profit to prevent someone who has greater right from using it or to disrupt another’s business -Personal Information Protection and Electronic Documents Act (PIPEDA): necessitated that CIRA introduce new privacy policy in 2008, protecting rights of domain name registrants -personal info of individual domain na...