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: jmarles@patentable.com 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

©

®

TM

©

®

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