Chapter 5: Intellectual Property Flashcards
1
Q
Intellectual Property components
A
- Ideas as property:
The Nature of ideas
The economics of ideas - Intellectual property law
Copyright
Trademarks
Patents
Industrial designs
2
Q
Two aspects of The Nature of Ideas
A
- Exclusive possession
- Non-exclusive possession
3
Q
The nature of ideas: Exclusive possession
A
Enjoyment of a thing while prohibiting use by others
- Easy with respect to tangible goods (e.g. cars)
- Difficult with respect to information (e.g. ideas)
4
Q
The nature of Ideas: Non-exclusive possession
A
Thing can be enjoyed by several persons simultaneously
- One’s enjoyment does not diminish another’s (e.g. me watching a TV show does not stop you from watching same show)
- Natural occurrence for information and ideas
5
Q
Two aspects of Economics of Ideas
A
- Natural scarcity
- Artificial scarcity
6
Q
Economic of Ideas: Natural scaricity
A
Naturally occurs when demand exceeds supply
7
Q
Economic of Ideas: Artificial scaricity
A
IP (“intellectual property”) law creates a market for information
- Reduces supply of information
- Increases value of information-based assets
- Provides incentives to create ideas
8
Q
Intellectual Property
A
- IP law aims to protect the products of the mind
- Provide an incentive to create, invent, design, breed
- Balance incentive with public interest
- Solution: the limited time monopoly
E.g. Patent term
E.g. Copyright term
9
Q
Trademarks
A
- Words, symbols, or designs that distinguish one’s goods or services from another’s in marketplace
Protect business’s brand (image, reputation, goodwill)
Serves public interest by assuring consumer that will receive expected quality (e.g. the Maytag® repairman) - May be sold or licensed: e.g. as part of franchising deal
- Trademark owner may stop others from using mark with similar wares and services
10
Q
Registering a Trademark
A
- Right arises only after mark used with wares or services
- Registration not required for ownership of trademark
- Registration not absolute proof of ownership
11
Q
Advantages of registering a Trademark
A
- Protection across Canada for 10 years (previously 15 yrs.). Can be renewed indefinitely with continued use and fee payment
- Burden upon challenger to disprove ownership
- Enforced through statutory remedies
12
Q
Unregistered Trademarks
A
- Also known at common law marks and use the ™ symbol instead of the ® used with registered marks
- Unregistered trademarks
Protected only in geographic area of use
Enforced through tort of passing off - Risk management
Register all variations on mark, name, or logo
13
Q
Categories of Trademarks
A
- Ordinary marks
- Certification marks
- Distinguishing guises
14
Q
Describe ordinary marks and give an example.
A
Distinguish goods and services with words or designs.
Ex. “Tom’s House of Pizza®” “Pizza Made to Perfection TM”
15
Q
Describe certification marks and give an example
A
Demonstrate that goods or services meet standards.
Ex. “Organic”
16
Q
Describe distinguishing guises and give an example
A
Identify unique shape of product or package.
Ex. Distinctively shaped Coca-Cola® bottle.
17
Q
New categories of Trademarks in Canada
A
New categories (sound, motion, smell and holograms) are now allowed in Canada.
18
Q
Trademark Infringement: Passing-Off
A
Elements of common law tort of passing-off
- Plaintiff has goodwill or reputation in name, mark, or logo
- Defendant represented itself in manner that resulted in misrepresentation or confusion to the public
- Plaintiff suffered or likely to suffer harm
Scope of tort
- Protection for both registered and unregistered trademarks
- Protection limited to location of reputation
19
Q
Registered trademark rights may be infringed in additional ways:
A
- Unauthorized use: exact imitation
- Knock-off: similar product and similar mark
- Trademark dilution: acts that tarnish the value of trademark
- Unauthorized importation of an authentically branded product
- Confusing use in the marketplace
20
Q
Trademark Infringement: Remedies
A
- Compensatory damages in tort: Monetarily repair plaintiff’s wrongful loss
- Accounting of profits: Monetarily disgorge defendant’s wrongful gain
- Injunction: Order prohibiting continued infringement
- Delivering up: Order requiring disposal of offending items
21
Q
What are “compensatory damages in tort” for trademark infringement remedies?
A
Monetarily repair plaintiff’s wrongful loss.
22
Q
What is “accounting of profits” for trademark infringement remedies?
A
Monetarily disgorge defendant’s wrongful gain.
23
Q
What is “injunction” for trademark infringement remedies?
A
Order prohibiting continued infringement.
24
Q
What is “delivering up” for trademark infringement remedies?
A
Order requiring disposal of offending items.
25
Copyright
Copyright does not protect ideas, but rather the manner in which ideas are expressed
- Cannot copyright star crossed lovers who are members of warring families
- Can copyright Romeo & Juliet, West Side Story…
No need to register CR, but recommended
26
Requirements for copyright protection in Canada
- Work must be original (not copied from another source)
- Work must be fixed (e.g. recorded, written down)
- Author of work must be connected to Canada
Work created in Canada or
Work created by a Canadian or
Work created by a person resident in a treaty member state
27
Copyright Act - Subject Matter
Work:
- Dramatic
- Artistic
- Literary
- Musical
Other subject matter:
- Performer's Performances
- Makers of Sound Recordings
- Broadcasters
28
Works: Literary
- Software
- Compilations
- Letters
- Brochures
- Game Texts
- Sont LYrics
- Prose, Poetry
29
Works: Musical
- Song notes
- Compilations
30
Works: Artistic
- Maps/Charts
- Architectural Drawings
- Compilations
- Photographs
- Engravings
- Paintings
- Scultures
31
Works: Dramatic
- Chorography
- Mime
- Scenic Arrangement
- Recitation
- Fixed Acting Form
32
Copyright Act Rights
- Economic
- Moral Rights
- Neighbouring Rights
33
Economic Rights
- Primary: Produce, perform, publish
- Derivative: To fix work, or convert work into different forms
E.g. convert novel into sound recording
- Economic Rights only apply to Works
- Can be assigned or licensed
34
The bundle of rights held by the copyright owner
- the right to produce, reproduce, perform, or publish a work
- the right to translate a work
- the right to convert a dramatic work into a novel, non-dramatic work, or sound recording
- the right to a non-dramatic or artistic work into a dramatic work through public performance.
- the right to communicate a work by telecommunication.
- the right to reproduce, adapt, or present a work by film or photograph
- the right to present an artistic work at a public exhibition
- the right to create a sound recording of a musical work
- the right to license computer software
- the right to reproduce any performance that has been fixed.
- the right to fix any performance that has not yet been fixed.
- the right to reproduce, license, or publish sound recordings
- the right to fix or reproduce broadcast signals
- the right to authorize another broadcaster to simultaneously retransmit the signal.
35
Moral Rights
- Generally, right of author to
Right of attribution / paternity
Right of integrity over a work
Right to be associated with work
- Moral rights
Cannot be assigned or licensed
Can be waived
- Moral rights apply to all works and performer’s performances
36
Neighbouring Rights
- Particularized commercial rights vested in “other subject matter”
Performer’s Performances
Broadcasts
Makers of sound recordings
37
Marry Rights to Subject Matters
Work: All economic and moral
- Artistic
- Dramatic
- Musical
- Literary
Other subject matters
- Performer's Performance: Moral and neighbouring
- Broadcasters: Neighbouring
- Makers of sound recordings: Neighbouring
38
Forms of expression not protected by Copyright
- Slogans
- Short phrases
- Titles for songs
- Names of computer programs
- Factual information
39
Copyright Ownership and Economic Rights
- Author generally owns copyright
- Exception
Employment context
Employer generally owner if created in course of employment
Independent contractor not covered by exception
Risk management: contract should expressly transfer to business
40
Duration of Copyright
- Canada: author’s life plus 50 years
Artist is deemed to die on the 31st Dec in the year of death
- European Union and the United States: author’s life plus 70 years
- Work subsequently falls into public domain
Works belong to world at large
Works can freely be used by anyone
41
Permission to use Copyright
May need permission to use copyright matter
- From copyright owner
- Copyright collectives
Organization administers rights for members
- Private copying and blank audio recording media levy
Fee added to price of blank recording materials collected by copyright collectives and distributed to copyright holders
Compensation for presumed copyright violations
42
Copyright Infringement
- Unpermitted use of all or substantial part of work may be copyright infringement
- Copyright protects entire work, and may protect a portion of work. Infringement if integrity of whole undermined
E.g. 60 out of 14 000 lines of software lawful
E.g. few bars from pop song unlawful
- Act done in private may not be infringement
E.g. “happy birthday” at basement party lawful, but not on TV
43
Infringement and the Internet
- Internet reduces costs of legitimate distribution, but increases risk and ease of copyright infringement
- Canada’s new copyright modernization act provides new measures to guard against digital copyright infringement
44
Canada’s new copyright modernization act provides new measures to guard against digital copyright infringement:
- Technological protection measures (digital locks)
- File sharing/ISP liability
- Requires ISPs to notify customers of suspected infringement upon receipt of notice from owner
- Other provisions
45
Right to use Copyright Works
- Rights to use, sometimes called “exemptions” more commonly ”Fair Dealing” (fair use in the USA)
- Use of works as fair dealing
46
Use of works as fair dealing
- Private study, research, criticism, reporting
- Newly added: education, parody, satire
- Further additions: format-shifting, time-shifting, “mash ups” backups
47
Canada's Copyright
SCC affirmed fair dealing as a “user right” enabling significant access to copyrighted works
- Set low threshold for coming within fair dealing category
E.g. purpose of “research”: Interpreted broadly and from user perspective, Includes lifelong learning and daily information seeking
E.g. “private study” can occur in a classroom or group activity
- Risk management: learn the new fair dealing provisions
48
Infringement
Unauthorized public performance, publication, or reproduction
Ex. Every time a song is played without authorization, etc.
49
Copyright is not infringed when...
there is “fair dealing” of the work
Ex. For research, private study, education, parody or satire does not infringe copyright
“Fair” in light of purpose, character, amount, or alternatives and the nature of the work and effect of the activity on the work
If something is actually being used for fair dealing or not.
50
Infringement of Copyright: Other personal use and non-commercial uses
- Cases where copyright is allowed to be used.
Ex. Creation of a new, unique work, through remixing, “mash-ups,” collage or other creative techniques, is permitted on the following conditions:
- It is not for commercial purposes.
- The original materials were published or otherwise made publicly available.
- You credit the source and creator of the original materials, if this is reasonable under the circumstances.
- The original materials you use seem to come from a legitimate source. You haven’t pirate it, etc.
- Your new work does not have a substantial potential impact on the value of the original materials.
51
Remedies for infringement
- Damages for lost income by the owner or conversion of property: Conversion of property is when someone takes the property and essentially converts the ownership to their own.
- Accounting for profits made by the defendant: If a defendant profited off of a work that was not their to profit from then they have to give those profits to the copyright holder.
- Injunction to restrain continued infringement: To stop the infringer form continuing to infringe.
52
What governs the Patent Act
Governed by federal statute
53
Patents
- Rights exist only after grant of patent by the government (not automatically upon invention)
Different from copyright
- Protects exclusive use of a new invention
It is the use that is protected in this case.
- Lasts 20 years
- Full disclosure of the invention must be made
54
Can all inventions be patentable?
No, not every invention can be patentable.
55
For an invention to be patentable, it must be..
- An art, process, machine, manufacture, or composition of matter or an improvement to such
- New: It must not have been disclosed publicly before, unless it has been communicated by the applicant.
- Useful: Has to add some sort of value, like commercial value, etc. It has to enhance a business process or a manufacturing process.
56
How can business methods be patented?
Business methods can be patented if meet criteria in the legislation
Ex. Amazon “one-click” patentable as a process
57
What happens after 20 years of a patent?
After the 20 years the invention is free to be used in the public domain.
58
To protect public interest, a patent may be challenged for abuse of patent rights, including circumstances where:
Where Canadian demand is not being met
- If an organization holds a patent for a particular product or item and they are not able to meet the demand of the Canadian market, they could be the ability of others to use the patented invention.
Patentee is damaging public interest by refusing licences
- If there is some sort of public interest in having more product out there to meet the demand and the patentee is refusing to issue licenses, there could be action to facilitate mandatory licensing.
59
Scope of Patent Rights: Compulsory licensing
Patent holder may be required to grant a license to manufacture the product
- The government would step in and say “you have to license this to other organizations so that demand can be met and public interest.”
Ex. Generic drug system in Canada
- There is compulsory licensing in place for drug patents in Canada.
