Intellectual property rights are considered indispensable to businesses today. These rights are economic drivers in global and Canadian markets. “Intellectual property used to be the tail that failed to wag the dog in commercial transactions. Now it is the dog itself.”i Currently intellectual property represents a significant portion of the value of many corporations. Moreover, intellectual property is an integral aspect of a variety of transactions as intellectual assets represent corporate capital and are a key factor in corporate transactions. There is consequently a need to understand the variety of rights which fit under the umbrella of intellectual property rights in Canada. This chapter introduces three key types intellectual property rights that are of particular importance to doing business in Canada, namely copyright, trademarks, and patents.
Other types of intellectual property rights under statute or jurisprudence in Canada include industrial designs, plant breeders’ rights, trade secrets, and integrated topography rights. The Supreme Court of Canada has held that each type of intellectual property right has a distinct purpose. No type of intellectual property right is to be used to try to extend the term of rights in any other type of intellectual property right after it has expired.
1. COPYRIGHT
Rights and obligations with respect to copyright in Canada are articulated in the Canadian Copyright Act (the “Copyright Act”) and its related regulations. Copyright is granted to protect the expression of ideas but not the ideas themselves. Copyright protection is defined in the Copyright Act to include rights in several categories of expressions, including works, performer’s performances, sound recordings, and communication signals. These categories include works such as literary works, artistic works, cinematographic work, dramatic works, computer programs, compilations, etc.
Copyright Test: The Canadian test for copyright requires that copyright only subsists in a work that is original. Although not defined in the Copyright Act, the term “original work” has been defined by the Supreme Court of Canada to be more than a mere copy of another work, and the expression of an idea is an exercise of skill and judgment involving intellectual effort. Notably, the Supreme Court of Canada through its decisions have rejected the “sweat of the brow” or “industriousness” standards of originality that are applied in some other countries.
Scope of Copyright: In Canada, copyright vests upon the creation of a work or other copyright protectable subject matter. Although there are several procedural benefits to registering copyright, one does not need to register the work or other subject matter in order to obtain copyright protection. Generally, copyright lasts during the life of the author of the copyright and for 70 years after the death of the author or performer. There are some variations to that term for certain types of copyright, including a copyright fixed in a sound recording or a communication signal.
Copyright Owner: The first owner of copyright will be the author or performer, except if the copyright is created by an employee in the course of their employment, in which case the copyright will be owned by the employer. Canada does not have a work-for-hire doctrine as is applicable in some other countries. When copyright is granted, the owner thereof holds the sole right to produce or reproduce the work or any substantial part thereof in any material form whatsoever; to perform the work or any substantial part thereof in public or, if the work is unpublished, to publish the work or any substantial part thereof. A person who utilizes any of the copyright owner’s rights without authorization to do so (e.g., a person who copies copyright without authorization) infringes the copyright. However, the Copyright Act sets out several exceptions to infringement, including fair dealing exceptions (e.g., research, private study, education, parody or satire, criticism or review, and news reporting, and other exemptions (e.g., non-commercial user-generated content, activities by educational institutions, reproduction for private use, etc.).
Copyright Registration: The process to seek copyright registration in Canada can be completed entirely online. The only information required to register most copyright is: the title, the category, the names of owner(s) and author(s), and a statement as to whether the work or other subject matter has been published or not. A declaration of the person registering the copyright must accompany this information along with payment of the required fee. It should be noted that copyright registration only serves as prima facie evidence that copyright subsists in the work and of ownership and/or authorship of the work.
Moral Rights: Canadian copyright law specifically provides an author of a work and a performer of a performance with “moral rights” therein. A moral right is a right of integrity in the copyright, and includes the rights to be associated with a copyright or to remain anonymous. A moral right is independent from any economic rights associated with copyright. Whereas economic rights rest with the owner of the copyright, moral rights reside solely with the author of the work or the performer of the performance, irrespective of any agreement or arrangement between the creator and any third party. Unlike economic rights, moral rights cannot be assigned but can be waived either in whole or in part. Thus, a mere assignment of a copyright does not constitute a waiver of moral rights.
Collective Societies: There are a number of collective bodies in Canada which act in a similar manner to the Licensing Division of the U.S. Copyright Office which administers the compulsory and statutory licenses mandated by the United States Copyright Act. Participation in Canadian Collective Societies is at the discretion of the owner of the copyright. These societies often have associations with the societies of other countries and will collect and share royalties where necessary.
2. TRADEMARKS
In Canada trademarks are governed by the Canadian Trademarks Act (the “Trademarks Act”) which defines the term trademark to mean: “a mark that is used by a person for the purpose of distinguishing or so as to distinguish goods or services manufactured, sold, leased, hired or performed by him from those manufactured, sold, leased hired or performed by others.” A trademark creates a connection in the mind of the public between the mark and the provider of the goods and services, which are provided in association with the mark. The inherent value associated with a trademark itself lies in the goodwill that is generated by the trademark owner through use of the trademark over time.
Types of Trademarks: A traditional trademark may include numbers, a word or words, a design, a symbol or any combination thereof, and is used to associate particular goods and services with a specific source. Trademarks can further include: three dimensional shape of any goods or of an integral part of the packaging of any goods; a mode of packaging goods; a sound; a scent; a taste; or a texture. Trademarks can further comprise certification marks, which define a standard for a good or service.
Canadian laws further strictly prohibit the general registration and use of certain arms, crests, flags and designs in addition to any word or symbol that may lead to the belief that particular goods or services are attributable to the Crown. These marks are deemed official marks, prohibited marks or “s.9 marks,” and are generally reserved for use by the Crown, government bodies, and public authorities such as hospitals and universities. The grant of an official mark provides for use of the subject trademark with any goods or services in all possible classes of goods and services.
Registered Trademarks: Owners of trademarks that are registered with the Canadian Trademark Office are granted the exclusive right to use the trademark throughout Canada in association with the goods or services identified in the registration. Rights in registered trademarks extend for ten years from the date of registration and are renewable for subsequent ten years period, for, at least theoretically, an infinite duration. Trademarks that are confusingly similar to pre-existing marks, that lack distinctiveness, that are surnames (of a person who is living or has died within the preceding 30 years), that are geographic indicators, or that merely describes or is misdescriptive of the goods or services with which the mark is utilized, will not be registrable in Canada.
Common Law Trademarks: In Canada, registration of a trademark is not absolutely necessary in order to enjoy a form of trademark protection. Canadian laws recognize a level of protection for unregistered marks in Canada. However, it should be noted that the protection granted to an unregistered mark is less-extensive than that granted to a registered mark. In the case of a challenge to an unregistered mark, the burden of demonstrating the validity of the mark rests with the owner of the unregistered mark. To achieve common law rights for an unregistered trademark, the mark must be used in association with the goods or services for a length of time whereby traditional trademark features such as distinctiveness and exclusivity can be established. The rights attaching to unregistered trademarks will be read narrowly and in direct geographic proportion to the distinctiveness and recognizability of the mark. Generally, courts have not permitted unregistered marks to receive rights in geographic regions beyond their region of notoriety.
Trademark Infringement & Passing-Off: Infringement of a trademark is defined in Trademarks Act to occur if the trademark owner’s exclusive rights of use are utilized by another person without the owner’s authorization. Passing-off is another violation of trademark rights identified in the Trademarks Act. Passing-off occurs if a person sells their goods/services under the pretense that such goods/services are the goods/services of another. As the Supreme Court of Canada has stated, the three criteria needed to demonstrate a valid action on the basis of passing-off are: (i) the existence of goodwill; (ii) deception or misrepresentation to the public with respect to goods/services; and (iii) actual or realizable damage to the trademark owner.
3. PATENTS
Patents in Canada are governed by the Canadian Patent Act (the “Patent Act”). A patent grant generally provides an exclusive right of control over an invention for a specified time period (20 years from the date of filing the application). Inventions are defined in section 2 of the Patent Act as “any new and useful art, process, machine, manufacture or composition of matter, or any new and useful improvement in any art, process, machine, manufacture or composition of matter.”
Patentability Test: Generally, to be deemed patentable, an invention needs to: (i) be novel; (ii) have utility; (iii) be non-obvious; and (iv) deemed to be patentable subject matter. Where one of these elements is missing, the grant of a patent will not occur, or a granted patent may be revoked at a later date.
Patent Rights: A grant of a patent offers the patent owner the exclusive right, privilege and liberty of making, constructing and using the invention and selling it to others to be used. Some exceptions to this right are defined in the Patent Act. For example, section 23 sets out that patent rights cannot be used to prevent the use of an invention in a ship, vessel, aircraft or land vehicle of any country that enters Canada temporarily and is employed exclusively for the use of those aboard the craft. Moreover, patent rights may be overridden in the instance that an abuse of rights occurs. Canada applies a “first to file” system to patent grants, and the Patent Act grants a term of 20 years from the filing date to patents filed on or after October 1, 1989.
An issued patent enjoys a presumption of validity. However, a number of challenges may be raised to invalidate the whole or part of a patent. These include: anticipation, wherein the challenging party alleges that the invention was not novel prior to the claim date; obviousness; ambiguity, wherein the Court examines the patent for language that when fairly read is avoidably obscure or ambiguous, regardless of whether the defect is due to design or carelessness or want of skill; inventorship, wherein the Court verifies that those listed as the inventors are the true inventors; deemed abandoned or failure to reinstate; and material allegation, which could include a failure to name an inventor willfully for the purpose of misleading, but the misrepresentation must be material.4
Patentable Subject Matter: Patent rights in Canada are not isolated to physical inventions (e.g., tools or devices), but can also be extended to processes and methods. There are however certain inventions for which patent rights cannot be granted in accordance with Canadian statute and case law. For example, the Patent Act explicitly identifies scientific principles and abstract theorems as subject matter that is non-patentable. Other subject matters that are deemed non-patentable by case law include games, medical treatments and higher life forms.
Patent Infringement: A first step upon the launch of a patent infringement challenge is construction of the claims of the patent at issue. In Canada the purposive construction test is applied to claims construction for the purpose of both patent validity and patent infringement. Claims construction is to be undertaken outside of any considerations relevant to a particular allegation of infringement or invalidity. The actual test that the Supreme Court of Canada articulated has two distinct steps. First, adopting the knowledge of a fictional skilled reader—being the common knowledge of a worker skilled in the art to which the patent relates—the court must isolate descriptive words and phrases which identify the elements of the invention within the claims. Second, the court is to decide whether a skilled reader would consider the isolated element to be clearly intended to be essential or whether, that skilled reader would, as of the publication date of the patent, appreciate that a particular element could be substituted without affecting the working of the invention. The test is to be applied on a claim-by-claim basis in order to identify all of the essential elements as of the date of publication of the patent application. Purposive construction should only involve tools of interpretation found within the “four corners of the specification,” which includes a written description of the invention, at least one claim and may include drawings. This approach denies the application of prosecution history (or file wrapper) or any other external device to claims interpretation.
Infringement will not be held to have occurred if an essential element is substituted or omitted in the allegedly infringing device. However, if only non-essential elements are substituted or omitted it is possible that infringement has occurred. In Canada damages may be sought for infringement occurring during a period after the patent is granted, as well as for any period of infringement between the publication of a patent application and the grant of the patent. Additionally it should be noted that selling an invention disassembled, as a kit, may still be deemed to be infringe patent rights in Canada.
Patent Licenses & Assignments: A patent owner may voluntarily license a patent right in whole or in part. Moreover, a patent may be licensed by way of a compulsory licence for abuse of the patent right, or for reasons related to public health. An order for the grant of a license proscribed under the Patent Act operates as if it were embodied in a deed granting a licence executed by the patentee and all other necessary parties. The content of a voluntary patent licence is not proscribed by Canadian law, and thus the scope and context of such an agreement is left to the discretion of the contracting parties.
A patent may be assigned to a third party or entity, in whole or in part, by way of a written assignment by a patent holder, or inventor, or may alternatively be bequeathed in a patent holder’s will. Such an assignment is to be registered with the Canadian Intellectual Property Office along with an affidavit of a subscribing witness, or other proof, showing that the assignment has been signed and executed by the assignor.
i Melvin Simensky, ‘The New Role of Intellectual Property in Commercial Transactions’ (1992-1993)10 Ent. & Sports Law. 5.