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UBC Law 422.002
INTELLECTUAL PROPERTY
Copyright – Jennifer A. MarlesPatents – Thomas W. BaileyTrademarks – Craig A. Ash
Oyen Wiggs Green & Mutala LLP604-669-3432
www.patentable.com
PLEASE ENSURE THAT ALL iPODS ARE TURNED DOWN DURING THE LECTURE!
Contact Information
e-mail: [email protected] Include “Law 422” in subject line Follow up if no response in 24 hours
telephone: 604-676-8967 No set office hours Afternoon (2:00-4:00) is best time
Course Materials Handouts: www.patentable.com/lectures
PowerPoint Slides for Lectures Casebook Comparative IP Table Statutory Sections for Copyright, at least:
2 through 32.3 34 through 42 46 through 53 56 through 58 64 through 64.2 79 through 91
Reference Texts - Copyright D. Vaver, Intellectual Property Law (Irwin: 1997)
D. Vaver, Copyright Law (Irwin: 2000)
Gervais & Judge, Intellectual Property: The Law in Canada (Carswell: 2005)
Canada - Fox on Copyright
Copyright Act Annotated - Leger Robic
Hughes on Copyright
Tamaro
U.S. - Nimmer
U.K. - Laddie, Prescott & Vitoria
Copinger & Skone James
Journals and Reports Reports
Canadian Patent Reporter (C.P.R.) United States Patent Quarterly (U.S.P.Q.) Reports of Patent Cases (R.P.C.) Fleet Street Reports
Journals Intellectual Property Journal (I.P.J.) Canadian Intellectual Property Review
(C.I.P.R) European Intellectual Property Review
(E.I.P.R)
Course Outline
Lecture Timing 2:00 to 3:15 - break – 3:30 to 4:30
Introductory lecture today Copyright: Jan. 12-Feb. 2 Patents: Feb. 9-Mar. 8 (no class Feb. 23) Trademarks: Mar. 15-Apr. 5
Course Outline Exam: April 20 at 9:00 a.m.
Open book exam 3 separate sections on patent, trademark
and copyright law 3 hours plus 20 minutes reading time essays and short answers option to write a paper which will account
for 40% of final grade (if paper grade exceeds exam grade) Submit outline for prior approval
Copyright Lectures Today: Overview of different types of IP
Jan. 12: Authorship, originality, fixation Jan. 19: Works, rights, ownership and
assignment Jan. 26: Infringement Feb. 2: Fair dealing, review
What is Intellectual Property?
©
®TM
PATENTED
PATENT PENDING
DESIGN
©
®
TM
PATENTE
D
PATENT
PENDING
DESIGN
©
®
TM
PA
TE
NT
ED
PA
TE
NT
PE
ND
ING
DE
SIG
N©®TM
PATENTED
PATENT PENDIN
G
DESIGN
©
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TM
©
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TM
Category Subject Matter Legislation Term Example
Patent Device, process, composition of matter
Patent Act 20 years Machine, chemical composition, process
Copyright Fixed expression of idea Copyright Act Generally author’s life + 50 years
Software, music, books, works of art, architectural works
Trademark Identifiable symbol Trade-marks Act 15 years (renewable) Words, logos, etc.
Industrial Design Aesthetic design of useful product
Industrial Design Act 10 years Furniture, golf balls, appliances, shoes
Trade Secrets & Confidential Information
Confidential subject matter of value
No civil legislationCriminal: Security of Information Act
Indefinite, so long as confidential
Recipes, business information
Plant Breeders’ Rights Variety of Plant Plant Breeders’ Rights Act 18 years Strain of blueberries, roses
Integrated Circuit Topography
3D design in semi-conductors
Integrated Circuit Topography Act
10 years Custom chips
Overview• Why is intellectual property law
booming?
– Rapid development of computer, Internet and wireless communication technologies
– Rapid development of biotechnology and health care devices and drugs
– Increased willingness of the courts to expand and enforce intellectual property rights
– Increased international commerce and product merchandising
Overview
• Competing Interests
– rights of creators versus rights of users
– freedom of information versus right to prevent misappropriation of property or invasion of privacy
– freedom to operate versus right to prevent unfair competition
TRADEMARKS
Trademark Basics
Trademarks identify the source of goods or services
Trademarks distinguish one trader’s goods or services from those of others
Trademarks signify that goods or services sold in conjunction the mark have a certain level of quality
Types of Trademarks Words Designs Composite Marks Letters Slogans Characters Non-traditional marks, such as sounds
and colours
Words
SHREDDIES
MICROSOFT
WHITE SPOT
Designs
Composite Marks
Letters
Numbers
967-1111
649
THIS BUD'S FOR YOU
JUST DO IT
Slogans
Characters
Non-traditional Marks
Musical Notes Design
CA Registration No. 359,318
Capital Records Inc.
US Registration 916,522
US Registration 1,439,132227 USPQ 417 (Fed. Cir., 1985)
Non-traditional Marks
Distinguishing Guise
CA Registration No. 730,159
Nature of Exclusive Rights
Enforceable trademark rights may arise automatically upon use of a trademark
Registration of trademarks is desirable but is not mandatory for rights to arise
Trademark rights may potentially extend indefinitely, so long as use continues
Registrability
Not all trademarks are registrable For example, trademarks which are
descriptive of the goods or services in question, or are confusing with other registered trademarks, will be denied registration
In Canada, registrations extend for a term of 15 years and are renewable
Trademark SearchesNeed to ensure trademark is available
for use and registration
Prior unregistered user would be entitled to registration over a later-filed application
So conduct 'clearance searches' before adopting a new trademark or filing an application
International Protection
Separate trademark registrations must be obtained in each jurisdiction of interest
Community Trademark Applications Madrid System – Canada is not a party
PATENTS
Patent Basics
Patents can protect implementation of ideas, not just the expression of ideas
Not all ideas fall within patentable subject matter
Patents do not protect scientific principles or abstract theorems
E=MC2
Transgenic Non-Human MammalsUS Patent No.
4,736,866
N
CH3
N
O2
S
CH3CH2
O
N
HN
O
CH2CH2
CH3
N
N
CH3
HOOC
OHCO2
H
CO2
H
VIAGRA®
Sildenafil Citrate
Tourist Map T-ShirtUS Patent No.
5,121,505
What is a Patent?
A form of monopoly for a limited period of time intended to encourage disclosure of useful inventions
A type of social contract between the inventor and the state
An incentive to innovation
Patent Applications
Patent rights do not arise automatically upon conception of an invention
No patent by “registered mail” Must obtain approval from a
government patent examiner in order to obtain enforceable rights
Patent application process is costly and time consuming
Patent Applications
Patent application process involves: filing search examination response or amendment notice of allowance or final rejection payment of issue fee or appeal
International Protection
Separate patents must be obtained in each jurisdiction of interest
“Worldwide patents” do not exist Difference between patentability and
infringement European Patent Convention Patent Cooperation Treaty
Term Patents subsist for a defined term After a patent expires or lapses the
invention falls into the public domain and may be freely used by anyone
Currently, Canadian patents extend for a term of 20 years from the application filing date
Formerly, patents extended for 17 years from the issue date
Infringement
Patents protect against independent creation - it is not necessary to prove access or copying
The “claims” of a patent define the scope of monopoly which the patent affords
Cost & Complexity
Patent applications are significantly more expensive to prepare and file than trademark or copyright applications
Patents are also typically more expensive to enforce than other forms of intellectual property protection
Statistics from a survey by the American Intellectual Property Association
ENFORCING INTELLECTUAL PROPERTY RIGHTS IN THE UNITEDSTATES - MEDIAN COSTS
Discovery Trial $ 601,000 $ 1,201,000 Patent infringement suit $ 150,000 $ 249,000 Trademark infringement suit $ 99,000 $ 180,000 Copyright infringement suit $ 202,000 $ 399,000 Trade secret misappropriation suit
PATENT INFRINGEMENT SUIT COSTS THROUGH:
Discovery Trial $ 200,000 $ 301,000 Less than $1 million at risk $ 450,000 $ 748,000 $1 to $10 million at risk $ 1,208,000 $ 1,993,000 $10 to $100 million at risk $ 1,983,000 $ 3,042,000 more than $100 million at risk
i4i v. Microsoft
The Great Cookie War(1984), 82 C.P.R. (2d) 224 (F.C.T.D.)
(1989), 11U.S.P.Q. (2d) 1241 (Dist. Ct., Delaware)
V.
OTHER TYPES OF IP
Trade Secrets Trade secrets are protected by the
common law so long as the information remains secret
– “breach of confidence” Patents require disclosure of an idea -
the word “patent” is derived from a Latin word which means “laid open” or “revealed”
Patents will eventually expire Trade secrets potentially indefinite
Trade Secrets Some inventions are better maintained
as trade secrets Trade secret protection may be
available for new ideas which do not constitute patentable subject matter
EXAMPLES OF TRADE SECRETS:
1. formulae and processes;2. computer software;3. recipes;4. manufacturing processes;5. fixtures, jigs, plant layout, assembling processes;6. combinations of parts;7. internal office memoranda;8. sales training materials;9. strategies for bidding on new work;10. inventory data and projections, detailed unit costs, profit
data;11. ideas for television programs and newspaper contests;12. information about mineral claims;13. customer lists.
AGREEMENT
Know all men by these presents, that for and in consideration
of the fact that Dr. J. J. Lawrence of the city of St. Louis Mo. has
furnished me with the formula of a medicine called Listerine to be
manufactured by me, that I Jordan W. Lambert, also of the city of
St. Louis Mo., hereby agree for myself, my heirs, executors and
assigns to pay monthly to the said Dr. J. J. Lawrence his heirs,
executors or assigns, the sum of $20 for each and every gross of
said Listerine hereafter sold by myself, my heirs, executors or
assigns in testimony whereof I hereinto set my hand and seal,
done at St. Louis, Missouri, this the 20th day of April, 1891.
-SEAL- Jordan W. Lambert
Trade Secrets Trade secrets provide no protection
against independent creation Protection is lost once the idea
becomes available to the public If trade secret can be reverse
engineered, cannot be protected as such
Industrial Designs Industrial designs protect visual or
aesthetic features of new articles of manufacture whereas patent protection functional features
Term of protection is 5 years renewable for one further 5 year term
In the United States industrial designs are referred to as “design patents” and extend for a single term of 14 years
D
Plant Breeders’ Rights
• protects new plant varieties that are distinct from known varieties, uniform and stable
• all plant species eligible for protection, but not algae, bacteria and fungi
• gives exclusive rights, including the right to sell, and to produce, propagating material for purposes of sale
• procedure of government application and examination
• territorial rights – apply in each country of interest
Plant Breeders’ Rights
• new variety must be given a name (“denomination”) that must be used by all those who market that variety
• term of protection is 18 years, subject to payment of annual maintenance fee
Personality Rights• well-established in the U.S.• newly developing tort of “misappropriation
of personality” in Canada requires:1. unauthorized use of an element of a person’s
personality (voice, image, video, name etc.);2. the use creates an identifiable link between
the individual’s personality and products or services (i.e. suggests endorsement of the product by the person); and
3. commercial exploitation of the personality.
COPYRIGHT
Copyright basics
Copyright protects the expression of new ideas, not the ideas themselves
Copyright arises automatically in works capable of protection
Registration of copyright is optional Copyright is an incorporeal right - a
“chose in action” No copyright in future works
Subsistence of Copyright
Subject matter
Originality
Fixation
Qualifying authorship
– literary works
– musical works
– artistic works
(photographs, sculptures, architectural works)
Subject Matter
– software (literary)
– dramatic works– performances– sound recordings– communication
signals
Originality Threshold of originality required is low -
a high degree of creative skill or artistic merit is not required
Work must be the product of the author’s skill and labour and must not be copied from another’s work
Telephone directories, engineering drawings and maps may qualify for copyright protection
Fixation
Copyright does not apply to transient occurrences such as sporting events or live performances, although a film, videotape or broadcast of the event would be protected
Copyright must be expressed in a material form capable of identification and having a more or less permanent endurance
Qualifying Authorship
Author must be a citizen or resident of a treaty country or there must be first publication in a treaty country
Since Canada implemented the Agreement on Trade-related Aspects of Intellectual Property (TRIPS) in 1996 virtually all works are eligible for Canadian protection
Term of Protection
Generally speaking, the term is 50 years following the end of the year in which the author dies
Joint Authorship Posthumous works Photographs
Ownership
Author of the work is ordinarily the first owner of copyright
Works for hire: employee or independent contractor?
Crown copyright Copyright Assignments must be in
writing: Section 13(4) of the Copyright Act
Nature of Exclusive Rights
Bundle of rights set forth in Section 3 of the Copyright Act
“Sole right to produce or reproduce the work in any material form whatsoever”
Also sole right to authorize other parties to perform such acts
Infringement
Infringement occurs when a person exercises one or more of the exclusive rights of the copyright owner without their license or consent
Must ordinarily prove access and substantial reproduction
“Fair Dealing” is an exception to copyright protection
International Protection
Berne Convention is a a multilateral copyright treaty having effect throughout most of the world
Most foreign countries grant reciprocal protection for Canadian authors
Affixation of the copyright symbol is not mandatory
International Aspects• Berne Convention – 1886 and revisions
– National treatment; minimum protections; no formalities
• Universal Copyright Convention – 1952– Countries that required formalities; shorter term
• Rome Convention – 1964– Protection for neighbouring rights
• NAFTA – 1994
• TRIPS – 1996 – WTO countries– Requires compliance with Berne
International Aspects• WIPO Treaties - 1996
– Copyright Treaty
– Performances and Phonograms Treaty
• Aimed at protection in the digital age
– Right of “making available”
• Canada is a signatory but has not yet implemented these obligations