The Carlton Not Elaborate Enough for Copyright Protection

By Stacey Dunn

The US Copyright Office has rejected “The Carlton” dance from The Fresh Prince of Bel-Air as a choreographed routine worthy of copyright protection. While instantly recognizable for decades, the US Copyright Office says that The Carlton is merely a “simple routine that is not registrable as a choreographic work”. In coming to this conclusion, the Copyright Office detailed the dance in cringe-worthy detail, stating that the

dancer sways their hips as they step from side to side, while swinging their arms in an exaggerated manner. In the second dance step, the dancer takes two steps to each side while opening and closing their legs and their arms in unison. In the final step, the dancer’s feet are still and they lower one hand from above their head to the middle of their chest while fluttering their fingers.

Such detail may be required for a Copyright Office decision; but, of course, most know the dance:

https://giphy.com/explore/carlton-dance

The US Copyright Office’s refusal raises questions of copyright protection in Canada. Would The Carlton be protectable as a “choreographic work”, a subsection of “dramatic work”, under the Copyright Act? Unfortunately, the Copyright Act offers no guidance as to what may be covered, barely elaborating to define a choreographic work to include “any work of choreography, whether or not it has any story line”. A choregraphed dance that is fixated and original may be covered under the Copyright Act, but there is very little Canadian case law to elaborate on how complex a dance must be to constitute a choreographic work.

In FWS Joint Sports Claimants v. Canada (Copyright Board) ([1992] 1 FC 487), the Court held that playing a sports game cannot be a choreographic work “because, unlike a dance, a sporting event is for the most part a random series of events. The unpredictability of the action is inconsistent with the concept of choreography”. In Pastor v Chen (2002 BCPC 0169), a case where a dance instructor sued his former dance student for teaching the instructor’s version of a Cuban form of Salsa called “La Rueda”, the Court held that the “uniquely choreographed moves and dance styles” were covered by copyright. However, the dance was extremely complex, requiring a minimum of three couples and each move is done by a “call” from the leader. Furthermore, the instructor was successful on the basis of a breach of confidentiality agreement and the Court’s comments regarding copyright in the dance were merely in obiter.

The question remains as to how elaborate a dance must be to constitute a choreographic work in Canada; however, similarly to the US, something as simple as The Carlton may not warrant protection in Canada.

Brion Raffoul supports Boys and Girls Club of Ottawa at 2nd Annual Charity Skiathon at Camp Fortune

Natalie Raffoul as a Campaign Cabinet Member helped the 2nd Annual Charity Skiathon double its net proceeds for the Boys and Girls Club of Ottawa (BGCO).

The firm was also a proud Sponsor of the day and recruited other business leaders to join its ski team for a gorgeous day at Camp Fortune.

Over $150,000 was raised in one day(!) for the BGCO, an organization supporting Ottawa’s children and youth since 1923, by specializing in after school and weekend programs for kids aged 6 to 18.

To see some great local coverage of the event, please follow these links:

Ottawa Business Journal

Ottawa Citizen

Canada’s Patent Rules: Changes Coming!

By Stacey Dunn and Dominique Lambert

Recent implementation of the Patent Law Treaty has required Canada to update its Patent Rules. While the expected changes will modernize patent laws and their administration, patent owners should be mindful of some of the anticipated pitfalls.

Filing Dates

Under the new Rules, an Applicant can obtain a filing date by submitting: an indication that a Canadian patent is sought; the Applicant’s information; and a document describing the invention in any language. A translation of the invention description document into English or French and the filing fee may now follow at a later date.

Late translations and late filing fees do not apply to PCT national phase applications.

Furthermore, Applicants may now obtain a filing date on a holiday or on the weekend as electronic communications will be deemed received on the day they are submitted, even if the Patent Office is closed.

Priority Claims

If the priority claim requirements are not complied with, the priority claim will merely be disregarded rather than being deemed abandoned.

Priority documents now must be certified copies.

Certified copies of each priority document must be submitted or made available through an acceptable digital library. This requirement will not apply when the priority document is an earlier Canadian application or a national phase application that already satisfied its PCT priority document requirement.

Restoration of Priority Claim

The Office will now provide a two-month extension beyond the twelve-month period for claiming priority. Applicants may now file an application up to fourteen months from the earlier filed application and restore priority.

The two-month extension is available only if the delay was unintentional.

Streamlined Process for Amending an Application After Allowance

Applicants are no longer required to withhold paying the final fee to let an application go abandoned to re-enter examination. The new Rules allow for requesting a Notice of Allowance to be withdrawn, after which the Application re-enters Examination and the Application may be amended.

Timelines for responding to an Office Action or Notice of Allowance have been shortened to four months (from six), and the deadline for requesting examination has been shortened to four years (from five).

Notice Required from Patent Office Prior to Abandonment

Under the new Rules, an Application will not go abandoned for failure to pay maintenance fees or to request examination without prior notification of a deadline. A notice letter will be sent establishing a deadline of the later of six months from the missed deadline or two months from the notice date.

If a maintenance fee deadline is missed, the new deadline may not be known until the late notice has been issued by the Office.

42 Month Deadline for National Phase Entries is No Longer “As of Right”

The twelve-month deadline extension for entering national phase in Canada after the thirty-month deadline is not available “as of right”.

Late entries now require a statement that the failure to enter by the thirty-month deadline was unintentional.

While these changes are a step in the right direction for patent practice, Patent Applicants should be aware of the tightened timelines and additional requirements coming into force within the year.

If you have any questions regarding the new Rules, please do not hesitate to contact us at [email protected].

For economic outcomes of Sidewalk Toronto we need to talk about intellectual property

Natalie Raffoul collaborates with Jim Hinton, a patent lawyer and principle at Own Innovation, to discuss the critical importance of having strong intellectual property expertise advising the government on IP rights, in particular on the ownership of patent and data rights, when negotiating public-private partnership (P3) agreements and in setting government policy on such P3 agreements.

Their article appeared in the business section of The Globe and Mail on February 18, 2019

Read the full article here

Natalie Raffoul to attend the Licensing Executive Society International (LESI) Winter Planning Meeting as Co-Chair of the Education Committee

Brion Raffoul’s Managing Partner, Natalie Raffoul, will be attending the Licensing Executive Society International (LESI) Winter Planning Meeting in Miami from January 25-27, 2019. Ms. Raffoul is Co-Chair of the Education Committee. The Winter Planning Meeting provides an opportunity for the global LES leadership to meet and plan the year ahead for the society and also learn from intellectual property licensing industry experts. The LESI will meet again for its Annual Meeting in May in Yokohama, Japan. https://www.lesi.org/events/2019-winter-planning-meeting

Natalie Raffoul to attend the 1st Asia Pacific YMC LES International Meeting in Hong Kong

Ms. Raffoul will be attending the 1st Asia Pacific Licensing Executive Society International Young Members Congress Meeting in Hong Kong on November 30th, 2018. Ms. Raffoul will be leading a panel of distinguished international speakers to discuss the challenges around managing international intellectual property disputes.  Natalie will  bring her perspective on managing IP disputes for her own clients where you have enforcement or defence issues arising on patent assets outside of Canada, particularly in the US or Europe.  Ms. Raffoul has been successful in settling numerous international patent and design infringement disputes on behalf of her Canadian and foreign clients.  

Natalie Raffoul to attend the IPBC Global Asia Meeting in Shanghai

Ms. Raffoul will be attending the IPBC Global Asia in Shanghai, China from December 2nd to 4th, 2018. Brion Raffoul is a sponsor of the 2018 Asia IP Elite Gala Dinner for celebrating inductees into IAM’s Asia IP Elite.  Ms. Raffoul will be announcing the recipient of the Electronics Team of the Year, among a shortlist of companies: Canon, DJI, Hon Hai, Maxell, and Panasonic. Stay tuned for the winning team!