Brion Raffoul will be closed on October 14, 2019 for Canadian Thanksgiving. The Canadian Intellectual Property Office is also closed, so any patent or industrial design deadlines falling on October 12 to 14, 2019 are extended to October 15, 2019.
By: Liz Gray
A fantasy novel set in Toronto is the centre of a trademark controversy. The cover of James Bow’s new book, The Night Girl, features shadowy fantastical figures running along a rooftop with the iconic CN Tower on their left. The image of the CN Tower was obtained from a stock photo site under a Creative Commons license.
But, to the surprise of Bow and the book’s publishers, the CN Tower’s owner is alleging that the cover violates their trademark. According to representatives of Canada Lands Company Ltd. (CLCL), the Crown corporation that manages the CN Tower, every image of the CN Tower is protected as a trademark. They are asking that the cover be redesigned for subsequent print runs, but Bow and his publishers are pushing back.
A lawyer for Bow is asking CLCL to drop the matter. Ren Bucholz points out that ‘confusion’ is the basic yardstick for trademark infringement, and that The Night Girl is a fantasy novel “featuring a strong female protagonist who helps trolls and goblins succeed in the human world through her work at an employment agency”, rather than a guidebook or map. It is unlikely, according to Bucholz, that anyone would see this cover and think that CLCL believes the CN Tower to be overrun with trolls.
The matter is still ongoing, but one thing is clear: stock photo licenses might not always tell the full story.
“It’s impossible for any organization to have all the best ideas”
~ General Electric, Open Innovation Manifesto
Open Innovation as an R&D strategy may seem counter-intuitive; traditional corporate culture dictates the use of secret R&D labs that operate in an information silo. However, open innovation can offer many competitive advantages, such as complimenting your company’s internal skills and know-how with external knowledge and ideas, lowering R&D costs, and increasing differentiation in the market.
For example, in 2000, the Canadian gold mining company Goldcorp Inc. crowdsourced gold prospecting in an under-performing mine; Goldcorp knew they were sitting on a literal and figurative gold mine but their geologists could not find the main deposits of gold. Goldcorp created a challenge for the general public; they released all Goldcorp’s geological data (going back as far as 1948) and offered $575,000 in prize money to the innovators that could find the elusive gold deposits. At the time, this type of open innovation was contrary to traditional mining practices: Goldcorp was admitting they were unable to find the gold and was releasing all their proprietary data. However, Goldcorp’s challenge led to more than 110 gold deposits that yielded over $6 billion worth of gold.
So, if that doesn’t answer why open innovation is a worthy consideration for any business, consider that patent filings in Canada have not increased significantly in the past ten (10) years. However, this stagnation is not an issue of lack of funding. Indeed, statistics from Industry Canada indicate that Canada is second only to the United States when it comes to venture capitalist funding.
Collaboration between companies and with the public at large should be considered to invigorate innovation in Canada. In another successful example of open innovation, Bombardier held a contest to solicit urban mobility designs. They created a social media open innovation community integrated with live, offline workshops. The contest rules stipulated that the winners must transfer their IP to Bombardier in exchange for a small prize. Bombardier also kept a right of first refusal for a year for all non-winning ideas. By creating a community around innovation, even outside their company, Bombardier created a sense of self-determination and pride in the community, that resulted in innovation pouring into Bombardier. Indeed, Bombardier received input from 2,486 participants from 102 countries that contributed 4,239 designs, 25,979 evaluations, 8,565 comments and 3,445 messages on Bombardier’s proposed urban transportation projects. As a bonus to uncovering a gold mine of innovation, Bombardier customers were very receptive to their more open and customer-orientated brand.
However, it is important to note that “open” innovation does not necessarily mean the innovation is in the public domain; the devil is in the details. IP ownership provisions should be clearly outlined in an agreement between all involved parties. The following questions can be helpful in outlining the preferred ownership details:
- Who will own the IP stemming from the project (foreground IP)?
- What about jointly created IP (joint ownership/management of IP assets should be approached with caution)?
- Consider motivation factor for crowdsourcing when innovators own their IP?
- Does a royalty-free license in perpetuity make sense given the motivations of the IP owner (i.e., the company or the innovator)?
- What IP do the innovators and the company already own (background IP)?
- Who owns the feedback stemming from the project?
- Should a right of first refusal be included for IP that is not exploited during the project?
The bottom line: open innovation can be a great way to invigorate innovation within your company without resorting to a significant increase in R&D funding.
By: Edward Wu
Following the Government’s recent decision to ratify the Patent Law Treaty (PLT), the Orders in Council (OIC) published that the amendments to the Patent Act and Patent Rules under the Economic Action Plan 2014 Act and Economic Action Plan 2015 Act will come into force on October 30, 2019. Furthermore, the new Patent Rules will be published on July 10, 2019, under the Registration Number SOR/ 2019-0251.
The following important changes will be coming into force on October 30, 2019:
42-Month Deadline for National Phase Entries No Longer “As of Right”
The 42-month deadline for Patent Cooperation Treaty (PCT) National Phase entries is no longer “as of right”. To utilize the 12-month extension, Applicants must submit a statement that the failure to meet the regular 30-month deadline was unintentional. Clients should be aware of the shortened period for national entries and make corresponding arrangements.
Requirements of Certified Copies for Priority Documents
After October 30, 2019, certified copies of priority documents must be filed with the Office; however, this requirement does not apply if the priority document is an earlier Canadian Application or, in the case of a national phase entry, where the PCT priority document requirement has already been satisfied. Clients should be aware of this change and make preparations for document certification, if necessary.
Easier to Obtain Filing Dates
International clients can now obtain a filing date without translating the Description because the new Patent Rules will no longer require an English or French Description for obtaining a filing date. The translation of the Description may now follow at a later date.
Furthermore, the new Patent Rules will allow Applicants to obtain a filing date on any day of the year by filing electronically, even on days where the Patent Office is closed for a holiday or the weekend. This important change will allow Applicants to obtain a quick filing date prior to any disclosures being made.
Restoration of Priority Claim
The new Patent Rules provide relief for Applicants that unintentionally miss the deadline for a priority request. The 12-month period for priority claims may be extended to fourteen (14) months if the Applicant submits that the delay was unintentional. However, the Federal Court may revoke the priority request if they later determine that the delay was intentional. Clients should be aware of the limited application of this new right of restoration for priority claims.
Please refer to Brion Raffoul’s previous article for more information regarding the new Patent Act and Patent Rules.
By Dominique Lambert
Following the amendments to the Patent Act to comply with the requirements of the Patent Law Treaty (PLT), and proposed amendments to the accompanying Patent Rules, the Canadian Intellectual Property Office (CIPO) has drafted revised administrative procedures for the Manual of Patent Office Practice (MOPOP).
The new Patent Act and Patent Rules are expected to come into force in the Fall of 2019. Many sections of the MOPOP will need to be revised.
This Public Consultation is an opportunity for IP practitioners, IP owners, or any person interested in the Canadian Patent regime to provide feedback on the revised procedures that will be applied by the Office.
The Consultation will be open from March 26, 2019 until May 27, 2019.
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:
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) ( 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.