Too Funny - “Sumi”

November 28th, 2007

There hasn’t been a new posting on CopyrightWatch.ca for a while now, but they sure cracked me up with their posting just a bit ago Truth in trademarking.

Luckily, the Olympic and Paralypic Marks Act is not yet in force (as far as I’m aware), so I think we’re still safe to refer to the Vancouver Organizing Committee for the 2010 Olympic and Paralympic Winter Games (VANOC) to note that it recently unveiled new mascots, including one who’s named Sumi.

The terms “Vancouver Organizing Committee for the 2010 Olympic and Paralympic Winter Games” and “VANOC” are deemed to be Olympic or Paralympic marks (until December 31, 2010), whose adoption or use by a person in connection with a business, as a trade-mark or otherwise, is prohibited by the Act (with some exceptions).

For some background on VANOC and the Olympic and Paralypic Marks Act see Micheal Geist’s posting entitled Should the Vancouver Olympic Organizers Own “Winter”? or Clark Wilson LLP’s posts Olympic Trademark Legislation and Olympic Trademark Legislation Closer to Becoming Law.

Considering that this Olympic Marks Bill was on the Fast Track, I’m actually surprised that it has not yet come into force (through order of the Governor in Council, as required by section 15 of the Act).

As a side note, I’m seeing some similarities with VANOC’s web linking policy to those of Captain Copyright back in 2006, including that VANOC prohibits a linking website from having materials that are harmful to the Olympic Movement and that VANOC reserves the right to deny or rescind permission to link to their website for any reason in their sole and absolute discretion.

See Howard Knopf’s posting Linking to Access Copyright as well as Michael’s Captain Copyright and the Case of the Critical Link.

Free Patent Calendar for 2008

November 26th, 2007

PATSCAN’s Bizarre Patent Calendar for 2008 (pdf) is now available.

I like the entry for December (i.e. US 6,490,999) for a leash and collar combination to walk one’s snake. It even includes a feature for reducing the snake’s concertina movement through the collar

Snake Leash & Collar

For more details on this particular invention, see the inventor’s website at www.snakewalker.com. There are even a few movies showing how the leash and collar work.

Canadian Patent Database and freePat

November 23rd, 2007

The Canadian Intellectual Property Office has recently added features to the online patent database.

CIPO states that the new features include:

  • Highlighted search term: terms defined in the original query will be highlighted on document detail pages.
  • Improved navigation: search results pages are now numbered for easier access to specific pages.
  • Toggle between languages: Switching from English to French and vice versa is possible on all pages.
  • One click access to images: Images are now accessible through a single click. Images that are not available are denoted with “N/A”.
  • Database update indication: Dates at the footer labeled “Last updated” indicate the date in which the content of the database was last updated. Footers with the label “Date modified” indicate the date in which major changes were made to the layout of the web page.
  • Single browser window viewing: Detailed patent pages will open in the same browser window as the search results pages.

I’m especially happy about the last feature, the single browser window, since it annoyed me to no end that new windows would constantly open up while browsing through the search results.

Thanks, CIPO, for continuing to update our online database. Many other countries do not have online availability of their patents or only limited information; see for example Duncan Bucknell’s post about the lack of a good Indian patent database and the online petition he set up to make indian patent information public.

Unfortunately, however, CIPO’s changes also affect freePat which now appears to be unable to download Canadian patents.

I suspect it’s because CIPO has now renamed the directories where the image files are stored. Also the original version of freePat made queries to patents1.ic.gc.ca while the new patent database appears to be at patent.ic.gc.ca (without the “1″). I tried simply changing the base URL (to remove the “1″), but that didn’t seem to fix it (patents1.ic.gc.ca also seems to automatically redirect to patents.ic.gc.ca anyway). CIPO also announced that it was merging strategis.gc.ca with ic.gc.ca, but I don’t think that’s the issue either, since freePat does not refer to the “strategis” portion at all.

I’ll try to spend some time to investigate this further. If anyone comes up with a solution in the mean time, please email me.

New “Unstuffy” Australian Trade Marks Law Blog

November 20th, 2007

Recently, Nicholas Weston, Lawyers & Trade Marks Attorneys, celebrated the launch of the Australian Trade Marks Law Blog.

According to their About page, Nicholas Weston is an unstuffy Australian law firm delivering trade marks and other commercial legal services to clients worldwide.

I’ve added their RSS feed to my newsreader and I’ll be following their future posts with interest. I also did like their review of the Madrid System, which unfortunately Canada is not a party to. Even Nicholas Weston commented that “the process towards accession is moving slowly in Canada.”

“Born again” believer in Copyright Law

November 16th, 2007

Howard Knopf has an interesting post today, entitled Canada’s Stronger Copyright law - a baker’s dozen examples, wherein he lists thirteen examples of why Canadian copyright law is much stronger than U.S. copyright law. My favourite is his number 3:

3. We pay a fortune to SOCAN for performances in countless bars, restaurants, retail stores and other small business establishments. The USA notoriously exempts these establishments, contrary to a WTO ruling against the USA which the USA continues to flout. The USA is the most famous adjudicated current violator of international copyright law.

I personally haven’t done much analysis to compare the copyright laws between our country and that of our neighbour, but do tend to agree with his statement that it is nothing short of ridiculous to say that Canada is know for having the weakest copyright protection in the G8.

Howard also suggests that the problem with US copyright propaganda is that the US is a “born again” believer in copyright law, that until 1976 its laws were drastically weaker than almost any other developed country anywhere and that, even now, some question the U.S.’s compliance with the Berne Convention, on such issues as moral rights.

Have a look at Howard’s post to see the other twelve reasons in his baker’s dozen.

Access Copyright sues Staples/Business Depot for Copyright Infringement

November 15th, 2007

Just released via Google News, it appears that Access Copyright is suing retailer Staples/The Business Depot for copyright infringement, claiming $10 million in damages over unauthorized photocopying by store customers.

Access copyright is a Canadian copyright collective. Regular readers of my blog might remember my previous posting about Access Copyright’s superhero Captain Copyright and its related website that educated children about the virtues of copyright and the evils of plagiarism (site is now offline).

Hmmmm, depending on the exact nature of the copying and reasons therefore, the case of CCH Canadian Ltd v Law Society of Upper Canada is probably quite relevant. There our Supreme Court held that a library was not liable for copyright infringement because any photocopying, on copiers provided by the library, was for research purposes thereby triggering the fair dealing exemption in our Copyright Act. The Supreme Court also ruled that the Law Society did not authorize copyright infringement by maintaining self-service photocopiers in the Great Library for use by its patrons.

Maybe Access Copyright is hoping that Staples will subscribe to the iCopyright services which is supposed to be able to transact a license to use/copy any content from any publisher in any language or currency within 30 seconds. See the In Focus: iCopyright, Inc. article posted today on EContent which notes that “Access Copyright will be the distributor and operator of the iCopyright system for publishers, universities, and corporations in Canada”.

Update:

Michael Geist now has a posting up on his blog. He likewise notes that the Supreme Court’s jurisprudence appears to side with Staples.

Leopard and the Tao of Steve

November 15th, 2007

Rob Hyndman, in his post entitled Your Leopard is Eating My Self-Esteem, comments on the flurry of comments he received on his previous post yesterday (81 comments at the time of writing) and how it’s hard to avoid the conclusion that some folks have too much of their self-esteem tied up in their choice to use a Macintosh computer. Actually, I think Apple now just calls them Macs (must be a remnant of my 1984 Macintosh pioneer days).

Rob notes that, in one sense, this phenomenon is a miracle of branding and a remarkable accomplishment by Apple. David Canton comments, that it seems like Apple has gone beyond a brand to become a (pick 1): cult, political cause, religion.

Not surprising really, considering the Evangelism marketing used in the past, and perhaps still, by Apple.

Apple’s Canadian trade-mark application for LEOPARD (currently allowed) can be found here.

Also have a glance at The Tao of Steve, an article last month by Elizabeth Spiers, which contains her musings as to the real reason we keep buying Apple products.

Sophistication of a Dead Fish

November 13th, 2007

CTV.ca reports that an Australian man was fined for pirating “The Simpsons Movie” to the Internet after recording it on his cell phone. His fine was about US$888.00 (or roughly $832.59 CAD).

The man’s defence lawyer was quoted as saying:

It would appear that this young man had the sophistication of a dead fish, … I have sat and spent time with this young man, … and I am quite satisfied that he had no idea what he was doing.”

In Canada, infringers are usually liable whether or not they knew they were infringing the copyright of another. Sometimes a defendant who proves he was “not aware of and had no reasonable ground for suspecting that copyright subsisted” in a work will be liable only to an injunction (section 39 of the Canadian Copyright Act).

However, Professor David Vaver in his book Copyright Law (Toronto: Irwin Law, 2000) notes that:

This defence is worded and interpreted so narrowly that few defendants have raised it successfully. Purity of mind or intent counts for little; ignorance or mistake of law for even less. The user does not succeed by showing he did not think he was infringing, or that everybody else is doing likewise “so I thought it was all right” (the Cosi Fan Tutte defence). He must show that he did not know and could not reasonably have suspected that the work had copyright. Asking for permission - or getting it from the wrong person - works against him, for why seek permission except if one already suspected there was copyright? And any initial innocence disappears for the future once the user is alerted to facts that should make him suspect the work had copyright. [Note 57: 1 De Montigny v. Cousineau, [1950] S.C.R. 297 at 312.]

As such, Canadian copyright infringement is probably fairly close to the strict liability end of the spectrum. But maybe having the “sophistication of a dead fish” would be sufficient to meet the Canadian requirment for a Section 39 defence. It would be interesting to see a case on that (please email me if anyone knows of such a successful defence in Canada).

As a side note, it looks like Australia is making , or may have already made, copyright infringement there a “no-fault” offence - see last year’s entry at the Intellectual Property Watch entitled Australia Eyes No-Fault Copyright Infringement Offences.

(Hat tip to Julie)

Mr. Justice Bastarache speaks on SCC’s decision in the Schmeiser case

November 13th, 2007

Duke University’s The Chronicle reports that the Honourable Mr. Justice Michel Bastarache, of the Supreme Court of Canada, criticized that court for the 2004 decisions in the Monsanto Canada Inc. v. Schmeiser case, which he said implies that a higher life form is patentable.

Duke University School of Law held an ABA Animal Law Conference over the weekend which featured numerous speakers and group sessions for lawyers and scientists to explore and discuss the evolution and development of laws relating to the use of animals in bioengineering. Mr. Justice Bastarache was one of the speakers.

Mr. Justice Bastarache, along with Iacobucci, Arbour and LeBel JJ., dissented in the Schmeiser case wherein the Supreme Court ruled that genes and cells are patentable subject matter, but which also confirmed its earlier ruling (in the Harvard Mouse case) that higher life forms cannot be patented [para. 21]. The majority in the Schmeiser case ruled that Mr. Schmeiser infringed a patent with claims to genes and cells, but having no claims to higher life forms such as the canola plant, by “using” the patented seeds to grow the higher life form (i.e. the canola plants) [para. 97].

What is interesting is that, in Canada, judges have traditionally declined to speak out in public on anything relating to substantive legal issues; so as to better assure their independence. In fact, many still think it unwise for judges to speak except through their judgments. Others, however, advocate freedom to speak out even where there is no necessity, arguing that there is much to gain from improving public understanding of the task judges face and how they go about it. See the remarks of the Right Honourable Beverley McLachlin, Chief Justice of the Supreme Court of Canada, in her speech entitled The Role of Judges in Modern Society.

As such, I think it very interesting that Mr. Justice Bastarache decided to comment on his views surrounding the patentability of higher life forms in a forum outside of dissent in the Schmeiser case. I would have liked to have been there.

Sears Canada Sued by Martha Stewart Unit

November 8th, 2007

CNN reports that Martha Stewart Living Omnimedia Inc. has sued Sears Canada Inc., alleging that the Canadian company failed to pay required royalties for use of the trademark “MARTHA STEWART EVERYDAY” on a line of merchandise.

The CNN article further notes that the lawsuit was filed Wednesday in federal court in Manhattan, New York. I suspect the lawsuit is based on a breach of contract (between Sears Canada Inc. and Martha Stewart Living Omnimedia Inc. ) and this contract contains a clause whereby the parties agreed to enure to the jurisdiction of State of New York or something along those lines - because all of the sales activity by Sears, of the Martha Stewart branded merchandise, would have occured in Canada.

A quick search of the Canadian Trade-mark Office reveals that Martha Stewart Living Omnimedia, Inc. does have a pending trade-mark application for MARTHA STEWART EVERYDAY. It was filed a decade ago (back in 1997), but was only recently advertised in the Trade-marks Journal last month. Hmm, maybe Sears Canada Inc. will oppose the application (although that probably wouldn’t help it with any contractual obligations it has).

Free Video Lecture on Canadian IP

November 5th, 2007

The Court, a blog where Canadian scholars, practitioners and law students comment on recent decisions of the Supreme Court of Canada, has posted a free video lecture by David Vaver, Professor of Intellectual Property and Information Technology Law, University of Oxford.

The video lecture assesses how the Supreme Court is interpreting Canada’s intellectual property laws and how its decisions may affect legislative policy. The lecture further notes that the Supreme Court has become more interested and competent in this field than was the case even a couple of decades ago. Two decisions of the Court, Compo Co. Ltd. v. Blue Crest Music et al. (1979), [1980] 1 S.C.R. 357 and Euro-Excellence Inc. v. Kraft Canada Inc, 2007 SCC 37 are particularly compared.

The posting at The Court notes that this lecture was first delivered on Oct. 24th, 2007 when Osgoode Hall Law School welcomed back one of its former faculty members to deliver the Lewtas Lecture. During the question period after the talk, Professor Vaver shared his thoughts on additional topics, including the place of anti-circumvention provisions of Technological Protection Measures (TPMs) in copyright law, the ability of IP law to deal with technological changes, and the use of IP law to support business models.

I think it fantastic that Osgoode Hall Law School has put up this video lecture, especially since such free video lectures about Canadian intellectual property law are very rare. Actually, it may even be the first free webcast video lecture on Canadian IP (if anyone knows of any others, please email me).

The video is just under 1 hour and 15 minutes in lenght.

Fun Trade-marks

November 2nd, 2007

It’s been a while since I’ve had a Fun Trade-marks posting, but both this week’s (pdf) and last week’s (pdf) Trade-marks Journal had a number of amusing trade-mark applications advertised:

GETTING DIRTY IS GOOD - 1,341,164, by Unilever Canada Inc. for proposed use in relation to laundry detergent. Seems like the laundy detergent industry is starting to focus their advertising on something more important than clean clothes - i.e. kids having fun outside. For those interested, fellow Canadian blogger, Alex Beker, has some comments about Unilever’s ad campaign on his blog entitled “How did you come up with it?” (hmmm, I like the title of his blog). I’m also thinking that GETTING DIRTY IS GOOD for laundry detergent sales.

THE PRINCE OF DARKNESS - 1,342,217, by Diageo Canada Inc., for proposed use in relation to beer. Diageo owns such brands as GUINNESS, SMIRNOFF and TANQUERAY. I would have thought the mark more suitable for a red wine as opposed to a beer.

SEXY MONKEY - 1,344,528, by Sexy Monkey Inc., in relation to women, girls and baby clothing and accessories.

LOOK GOOD NAKED - 1,288,170, by TanTowel, Inc., in relation to self-tanning lotions, creams and gels, see here.

Voluntary Disclaimers – May Still Be A Good Idea

October 22nd, 2007

In my previous posting I noted that there is case law which holds that a lack of a disclaimer is not a proper ground for an Opposition and that, therefore, the recent Practice Notice (which states that the Canadian Trade-mark Office will no longer require disclaimers) is probably not going to result in increased oppositions; even if no voluntary disclaimers are made by applicants.

However, there was some hint in that case law which suggested that a lack of a disclaimer might be a concern for a trade-mark owner further down the road. In particular Mr. Justice Heald, in the case of Schenley Distilleries Ltd. v. Registrar of Trade Marks and Bodegas Rioja Santiago, S.A. (1974), 15 C.P.R. (2d), stated that “…[i]t seems to me that the proper time for the appellant to raise his argument on disclaimer… would be after registration”.

How could this be then? Three of the four grounds for holding that a registration is invalid, listed in Subsection 18(1) of the Trade-marks Act, are pretty much equivalent (in substance) to the grounds of opposition listed in Subsection 38(2); i.e. (i) the trade-mark is not registrable, (ii) the trade-mark is not distinctive and (iii) the applicant is not the person entitled to registration of the trade-mark. Thus if a lack of a disclaimer is not a ground for opposition (which includes these three), how would it be a ground for “invalidation” (where these three are, in substance, pretty much the same)? The fourth ground for holding that a registration is invalid is that the trade-mark has been abandoned. But nowhere in s.18(1) is there any explicit reference to a lack of a disclaimer. Where then is the concern, you might ask?

Well, a careful look at Section 57 will reveal that there the Act provides the Federal Court with powers to amend or strike entries in the register and it also uses rather broad wording (e.g. without listing itemized grounds or conditions as is the case with s.18 and s.38). Section 57 simply reads as follows:

The Federal Court has exclusive original jurisdiction, on the application of … any person interested, to order that any entry in the register be struck out or amended on the ground that at the date of the application the entry as it appears on the register does not accurately express or define the existing rights of the person appearing to be the registered owner of the mark.

Hmmm, having a registration without a disclaimer to a descriptive portion of the mark is probably not an accurate expression of the rights of the registered owner.

See, for example, the case of General Motors of Canada v. Decarie Motors Inc. (2000) 9 C.P.R. (4th) 368. There the Federal Court of Appeal, in a Section 57 application, compelled the trade-mark owner enter a disclaimer to the surname DECARIE (surnames are objectionable due to paragraphs 12(1)(a) of the Act). In particular, the Federal Court of Appeal , at para. 41, ordered:

… the respondent to file, within sixty days of the present judgment, a disclaimer to the exclusive right to use the word DECARIE outside the trade-mark DECARIE LOGO DESIGN; following which I would request the Registrar of Trade-marks to amend accordingly the trade-mark DECARIE LOGO DESIGN, number TMA 474,485, dated April 10, 1997. If the respondent does not comply with such order, within sixty days of the present judgment, the said trade-mark would be expunged in toto.

Thus there is certainly some risk in having a registration without a proper disclaimer, should the registration be challenged in Federal Court under Section 57. This risk ranges from being compelled to enter a disclaimer to a total expungement of the registration.

Therefore it may not always be in a trade-mark applicant’s best interest to obtain a registration without a disclaimer. And with the Trade-marks Office now no longer requiring disclaimers, and with the lack of a disclaimer not being a ground for opposition, I suspect that we will see an increase in such Section 57 applications at Federal Court (where costs can be awarded against a trade-mark owner who is compelled by the Court to subsequently enter a disclaimer).

Lack of Disclaimers – Not a Ground for Opposition

October 22nd, 2007

In a previous posting I noted that the Canadian Trade-marks Office recently published a Practice Notice stating that the Registrar of Trade-marks will no longer require an applicant for registration of a trade-mark to enter disclaimers for those portions of the trade-mark that are not independently registrable.

I still don’t know what prompted this Practice Notice (as far as I know, there was no recent case or legislative amendment that touched upon this particular issue). My theory at the moment is that since Section 35 does not make it mandatory that the Registrar require trade-marks (the section states that “The Registrar may require an applicant… to disclaim…”), the Trade-marks Office is perhaps using this as a means to reduce the workload for their Examiners. See also the case of Schenley Distilleries Ltd. v. Registrar of Trade Marks and Bodegas Rioja Santiago, S.A. (1974), 15 C.P.R. (2d) 1 where Mr. Justice Heald commented that “…without so deciding, that had Parliament intended the provisions of s. 34 [now 35] to be mandatory, they would have said so by apt language, thus substituting “shall” for “may” in line one thereof…”.

Anyway, the fact is that the Canadian Trade-mark Office will no longer require disclaimers, although voluntary disclaimers are still accepted.

Some practitioners feel that this is a good thing and that perhaps we should try to get registrations without disclaimers because it is felt that a voluntary disclaimer can be viewed as an admission that the disclaimed term is unregistrable by itself and/or that it weakens the entire registration as a whole. Others feel that voluntary disclaimers might be advisable to reduce the chance of attracting an Opposition (by third parties that want the applicant to include a disclaimer so that an otherwise unregistrable portion of a mark remains easily available to others to use).

I’m not yet sure on the first of such reasons, although I do think a disclaimer weakens the registration – I mean that’s what a disclaimer is. Whether a voluntary disclaimer is an “admission” of some sort, I don’t know yet. Section 35 does provide that “…the disclaimer does not prejudice or affect the applicant’s rights then existing or thereafter arising in the disclaimed matter…”. So clearly if the Registrar insists upon a disclaimer under this section, such a disclaimer should not affect the applicant’s rights. Whether this part of section 35 also applies to “voluntary” disclaimers made without a request under the section, I haven’t had a chance to fully research yet (if anyone knows of a case on point, please email me).

At any rate, upon reviewing the case law, it does appear that a lack of a disclaimer is not a proper ground for an Opposition. See the Canadian Schenley Distilleries case noted above where Mr. Justice Heald ruled that:

The short answer to this proposition is that there is no provision in s. 37(2) [now 38(2)] for such a ground to be a basis for opposition to registration. It may well be that the Registrar should, in accepting subject application, have required such a disclaimer, or it may be that he should still do so at the time registration is granted (if he has that power under s. 34 [now 35], as to which question, it is unnecessary for me to express an opinion). The fact remains that as I read s. 37(2) [now 38(2)], a failure to disclaim is not a ground of opposition. It seems to me that the proper time for the appellant to raise his argument on disclaimer… would be after registration.

See also the cases of Imperial Tobacco Co. Of Canada Ltd. v. Philip Morris Inc. (1976), 27 C.P.R. (2d) 205 and Thomas J. Lipton, Ltd. v. Salada Foods Ltd. (No. 3) (1979), 45 C.P.R. (2d) 157.

So those fearing that a lack of voluntary disclaimers is going to result in more oppositions can take some comfort in the above cases. However, there may still be some reasons to consider adding a voluntary disclaimer beyond opposition concerns. Stay tuned as I’ll explore Mr. Justice Heald’s comments, about raising the disclaimer issue “after” registration, in my next blog posting.

Trade-mark Office Practice Notices

August 26th, 2007

A couple of interesting Practice Notices were put out by the Canadian Trade-marks Office recently.

Disclaimers:
Effective August 15, 2007, the Registrar will no longer require an applicant for registration of a trade-mark to enter disclaimers for those portions of the trade-mark that are not independently registrable.

Voluntary disclaimers will continue to be accepted. See Disclaimers Notice here.

My first thought on that was “wow, what prompted that”. Anyone have any ideas? The Notice itself is silent w.r.t. to any recent case or decision that might have motivated this change in practice.

Official Marks:
A few days ago, CIPO put out another Trade-marks Practice Notice, this time dealing with how CIPO treats s.9 - Official Mark applications. See the Official Marks Notice here.

I suspect this Notice was motivated by the decision in the See You In - Canadian Athletes Fund Corporation v. Canadian Olympic Committee case, 2007 FC 406, (April 18, 2007). See my previous blog post on that decision - which noted that the Federal Court held that evidence of use and adoption should also be filed, along with evidence of proving that one qualifies as a public authority, when applying to have an official mark advertised by the Registrar.

The Notice provides some guidance on evidence of adoption and use of an official mark, including that in the See You In case, it was held that a common feature of both “adoption” and “use” is that there is an element of public display, and that sections 3 and 4 of the Trade-marks Act may assist in the interpretation of the meaning of “adoption” and “use” of official marks.

The Notice also provides examples of cases where there was insufficient evidence of adoption and use of official marks.

Maybe we’ll see more Official Marks published in the Trade-marks Journal now. There had been very few, if any lately (although there is one in last weeks Journal).