Private Right of Action under Canada’s Anti-Spam Law

When Canada’s Anti-Spam Law (CASL) came into effect in 2014, certain sections relating to a “private cause of action” enforced through the Courts did not take effect until 1 July 2017.  With the date of 1 July2017 rapidly approaching, this article will review what this private cause of action may mean to individuals and businesses.  There must be an underlying commercial purpose to trigger the application of CASL and there must be an absence of express consent.  The prohibited activities CASL is intended to capture are the sending of unsolicited electronic messages (section 6), the diverting of electronic messages to another destination (section 7) and the installing of a computer program on another person’s computer system (section 8).
To this point,   the Canadian Radio-Television and Telecommunications Commission (CRTC) has been the only entity with the ability to enforce CASL.   As of 1 July, the “private right of action” comes into effect and organizations that are not CASL compliant, will be subject to lawsuits brought by affected individuals.  The legislation will allow affected individuals to sue organizations and their officers, directors and agents for alleged CASL violations.  If, after a hearing, the Court is satisfied that the Defendant/Respondent has engaged in prohibited activities, the Court has the power to order the Defendant/Respondent to pay to the Plaintiff/Applicant compensation for actual loss or damages suffered, along with monetary penalties.   The maximum monetary penalty for sending unsolicited electronic messages is $200 for each message, to a maximum of $1,000,000 per day.  The maximum monetary penalty for diverting electronic messages is $1,000,000 per day.  The maximum monetary penalty of installing computer programs on another person’s computer is $1,000,000 for each contravention.   Of course, the Court is not going to order the maximum in each case.  The Court will consider the nature and scope of the prohibited activities, the financial benefit obtained from the prohibited activities, any history of previous contraventions, the compensation awarded to the Plaintiff/Applicant, and  the Defendant/Respondent’s ability to pay.
It is apparent that there are financial incentives now in place to entice persons who are aggrieved to launch this new private right of action under CASL.  If you do business on the internet which involves the extensive use of email, care must be taken to ensure that you have mechanisms to secure express consent, so that your activities do not become prohibited activities.  If the business you do on the internet has been adversely affected by a third party who has engaged in prohibited activities, you may seriously consider launching an action under CASL to  obtain compensation for your losses, along with whatever monetary penalty you can convince the Court is warranted to curb such activities in future.

Use of Photographs

A number of years ago I was asked to rescue an advertising agency.  The advertising agency required a picture of a dancer for the advertising campaign for a large company.  The advertising agency had obtained clearance from the photographer, but had not paid any attention to the identity of the dancer in the picture.  For their purposes, it did not matter as long as a dancer was depicted.  It turned out that the dancer was famous and regularly charged a fee for endorsing any product or service.  All licensing of the dancer’s image was done through a licensing agency, which instructed a legal firm to contact the large company.  My client, the advertising agency, took the “high road” and undertook to bear the cost of rectifying their mistake.  I negotiated a licensing fee, which the advertising agency promptly paid.  However, they had learned a rather expensive lesson.  As I am a lawyer and the matter was settled out of court, in light of the duty of confidentiality that I owe my clients, I am unable to divulge the identity of my client, the identity of the large company, the name of the famous dancer or the settlement amount.

To be clear, it is not necessary for a person to be famous for him or her to have the right to demand a royalty or license fee for use of their image in advertising.  For example, under the British Columbia Privacy Act, it is a tort (meaning it is illegal) for a person to use the name or portrait of another for the purpose of advertising or promoting the sale of, or other trading in, property or services, unless that other, or a person entitled to consent on his or her behalf, consents to the use for that purpose.  Though, to be clear, a person is not liable to another for the use, for such  purposes, of his or her portrait in a picture of a group or gathering, unless the person complaining of the use of the picture is (a) identified by name or description, or his or her presence is emphasized, whether by the composition of the picture or otherwise, or (b) recognizable, and the person who used the picture, by using the picture, intended to exploit the plaintiff’s name or reputation.  Many other jurisdictions have similar laws.

The recent case of Saad v. Le Journal de Montreal, illustrates the more common issue with use of photographs or images, being infringement of copyright (rather than unauthorized use of a person’s image). Le Journal de Montreal was doing an article on a person and asked that she provide a photograph to be used along with the article.  Le Journal de Montreal did not pay attention to the identity of the photographer or ascertain ownership of copyright in the photograph.  The photographer sought compensation for the unauthorized use of the photograph.  Le Journal de Montreal first argued that they had no knowledge that their use of the photograph would constitute infringement.   The Court did not accept that argument as newspapers regularly have to deal with photographs and the photographers name was on the photograph.   Le Journal de Montreal then argued that they fit into an exception provided in the Copyright Act that allows use of a photograph as “fair dealing” for the purpose of news reporting.  The Court noted that in order to invoke the “fair dealing” exception Le Journal de Montreal would have had to acknowledge the source of the photograph by giving the photographers name.  Furthermore, the photo had nothing directly to do with the subject matter of the news article and, therefore, was not “for the purpose of news reporting”.  In the result the photographer was awarded $2000 plus costs.

Legal firms with experience in intellectual property, such as Thompson Cooper, are asked to address these type of issues relating to photographs relatively often.   Parties wishing to use a photographs of persons should be aware that proper authorization  may require  not only the consent of the copyright owner, but also, in some circumstances, the consent of the person who is the subject of the photograph.

CAT CHASES DOG (DANGERS ASSOCIATED WITH PUBLICLY ACCUSING A COMPETITOR OF INFRINGEMENT)

A client called me the other day to discuss some steps he wished to take against a competitor who was infringing his patent.    The client wanted to write letters to some major companies that were purchasing product from the competitor, to make them aware of the infringement and advise them that he would be forced to sue them if they continued to purchase the competitor’s product.  The second step he wished to take was to place an advertisement in a magazine widely read in the industry, to inform companies in the industry of the alleged infringing activity by the competitor.  I advised my client that there were some practical reasons why taking these steps might end in disaster.   Firstly, when you threaten companies with legal action, they are not inclined to do business with you.  In other words, it is bad for business to sue customers.  Secondly, when you make statements tending to discredit the business of a competitor you are “potentially” breaching section 7 (a) of the Trademarks Act which reads:
“No person shall make a false or misleading statement tending to discredit the business, wares or services of a competitor.”
My client protested that everything he was going to place in the letters and the advertisement was absolutely true.    In the recent Federal Court case of Excalibre Oil Tools V. Advantage Products, a businessman with the same attitude as my client found out the hard way the risks of making statements about a competitor that turned out to be false.   Advantage sent letters to customers of Excalibre alleging infringement of three patents. However, when the patent infringement action subsequently proceeded to Court, Advantage Products lost; the Court found key claims to be invalid and the remaining valid claims not to be infringed by Excalibre.  The case is presently proceeding to the “damages” phase to determine the amount Advantage Products is going to have to pay as compensation to Excalibre for making false and misleading statements that discredited the business of Excalibre.   Why give your competitor grounds to counter-claim?  If you believe your competitor is infringing, communicate directly with the competitor and, if the matter remains unresolved, sue.

Internet Cases on Websites involved with “Scraping”

“Scraping” occurs when a business pulls commercial content from the websites of other businesses using web crawlers or other technologies, and then uses that commercial content for its own commercial purposes.
On April 13, 2017, a decision was rendered in the United States in the case of Craigslist, Inc v. RadPad Inc.  Craigslist alleged that RadPad had “scraped” thousands of Craigslist user postings.  It also alleged that RadPad had harvested user contact information to send spam in an effort to entice Craigslist users to switch to RadPad’s competing service. The Court awarded $60.5 million in damages, including:  $40 million based upon violations related to harvesting from 400,000 emails, $20.4 million for copyright infringement based upon “scraping” commercial content from the Craigslist website, and $160,000 for breach of contract as the scraping activities breached the terms of use for the Craiglist website.
On April 6, 2017, a decision was rendered in Canada in the case of Trader Corporation v. CarGurus.  Trader and CarGurus are competitors in the digital marketplace for new and used vehicles in Canada.  CarGurus “scraped” car dealership websites for photos of cars for sale.  Of the 197,740 photos that were obtained and used by CarGurus, Trader was able to prove that 152,532 of the photos had been taken by photographers paid by Trader.  CarGurus argued that, as the images were located on the car dealership servers and not on CarGurus server, CarGurus had not reproduced the photos but had merely “framed” them.  The Court found that CarGurus had made the photos available to the public for commercial purposes and rejected the suggestion that the photos had not been “reproduced” and rejected any “fair dealing” defence.
CarGurus then  argued that it was entitled to the benefit of section 41.27 of the Canadian Copyright Act, which is intended to protect search engines such as GOOGLE and which reads:
Injunctive relief only — providers of information location tools
41.27 (1) In any proceedings for infringement of copyright, the owner of the copyright in a work or other subject-matter is not entitled to any remedy other than an injunction against a provider of an information location tool that is found to have infringed copyright by making a reproduction of the work or other subject-matter or by communicating that reproduction to the public by telecommunication.
Conditions for application
(2) Subsection (1) applies only if the provider, in respect of the work or other subject-matter,
(a) makes and caches, or does any act similar to caching, the reproduction in an automated manner for the purpose of providing the information location tool;
(b) communicates that reproduction to the public by telecommunication for the purpose of providing the information that has been located by the information location tool;
(c) does not modify the reproduction, other than for technical reasons;
(d) complies with any conditions relating to the making or caching, or doing of any act similar to caching, of reproductions of the work or other subject-matter, or to the communication of the reproductions to the public by telecommunication, that were specified in a manner consistent with industry practice by whoever made the work or other subject-matter available through the Internet or another digital network and that lend themselves to automated reading and execution; and
(e) does not interfere with the use of technology that is lawful and consistent with industry practice in order to obtain data on the use of the work or other subject-matter.

Meaning of information location tool
(5) In this section, information location tool means any tool that makes it possible to locate information that is available through the Internet or another digital network.

The Court rejected this defense.  The Court found that the section did not afford protection to providers, like CarGurus, that gathered information on the internet and made it available to the public on the provider’s own website.  CarGurus was not acting as merely a search engine.

Having won the case, Traders sought “statutory damages”, the provisions of which read:
Statutory damages
38.1 (1) Subject to this section, a copyright owner may elect, at any time before final judgment is rendered, to recover, instead of damages and profits referred to in subsection 35(1), an award of statutory damages for which any one infringer is liable individually, or for which any two or more infringers are liable jointly and severally,
(a) in a sum of not less than $500 and not more than $20,000 that the court considers just, with respect to all infringements involved in the proceedings for each work or other subject-matter, if the infringements are for commercial purposes.

If just the statutory minimum damages were granted, these damages would have amounted to $500.00 per photo x 152,532 photos owned by Trader for a total of $76,266,000.00.

However, the Judge felt that an award of $76,266,000 would be grossly out of proportion to the severity of the infringement and modified the award as a special case to $2 per photo x 152,532 photos owned by Trader for a total of $305,064.  In making this determination, the Judge applied section 38.1(3) of the Copyright Act, which reads:

Special case
(3) In awarding statutory damages under paragraph (1)(a) or subsection (2), the court may award, with respect to each work or other subject-matter, a lower amount than $500 or $200, as the case may be, that the court considers just, if
(a) either
(i) there is more than one work or other subject-matter in a single medium, or
(ii) the award relates only to one or more infringements under subsection 27(2.3); and
(b) the awarding of even the minimum amount referred to in that paragraph or that subsection would result in a total award that, in the court’s opinion, is grossly out of proportion to the infringement.

The factors that the Court considered in  deciding to treat this matter as a “special case” were the fact the CarGurus had not acted in bad faith and had, in fact, obtained a legal opinion that the conduct was permissible before engaging in the activity.  Unfortunately for CarGurus, the legal opinion was wrong because the lawyer involved incorrectly assumed that the photos belonged to the dealerships. Further, the Court felt that there was some bad faith on the part of Trader.  Although the parties had corresponded in an attempt to settle the dispute prior to litigation, Trader intentionally did not disclose the critical fact that Trader owned the photos until after litigation was commenced.

These cases will provide some guidance to those whose business model involves “scraping” content from the websites of others.

Video Games And Circumvention of Technological Protection Measures

In late 2012, the Canadian Copyright Act was amended to prohibit the circumvention of technological protection measures (TPMs – e.g. digital locks). ,  The relevant section of the Act reads:
Definitions
41 The following definitions apply in this section and in sections 41.1 to 41.21.
circumvent means,
• (a) in respect of a technological protection measure within the meaning of paragraph (a) of the definition technological protection measure, to descramble a scrambled work or decrypt an encrypted work or to otherwise avoid, bypass, remove, deactivate or impair the technological protection measure, unless it is done with the authority of the copyright owner; and
• (b) in respect of a technological protection measure within the meaning of paragraph (b) of the definition technological protection measure, to avoid, bypass, remove, deactivate or impair the technological protection measure. (contourner)
technological protection measure means any effective technology, device or component that, in the ordinary course of its operation,
• (a) controls access to a work, to a performer’s performance fixed in a sound recording or to a sound recording and whose use is authorized by the copyright owner; or
• (b) restricts the doing — with respect to a work, to a performer’s performance fixed in a sound recording or to a sound recording — of any act referred to in section 3, 15 or 18 and any act for which remuneration is payable under section 19. (mesure technique de protection)
Prohibition
• 41.1 (1) No person shall
(a) circumvent a technological protection measure within the meaning of paragraph (a) of the definition technological protection measure in section 41;
(b) offer services to the public or provide services if
 (i) the services are offered or provided primarily for the purposes of circumventing a technological protection measure,
 (ii) the uses or purposes of those services are not commercially significant other than when they are offered or provided for the purposes of circumventing a technological protection measure, or
 (iii) the person markets those services as being for the purposes of circumventing a technological protection measure or acts in concert with another person in order to market those services as being for those purposes; or
(c) manufacture, import, distribute, offer for sale or rental or provide — including by selling or renting — any technology, device or component if
 (i) the technology, device or component is designed or produced primarily for the purposes of circumventing a technological protection measure,
 (ii) the uses or purposes of the technology, device or component are not commercially significant other than when it is used for the purposes of circumventing a technological protection measure, or
 (iii) the person markets the technology, device or component as being for the purposes of circumventing a technological protection measure or acts in concert with another person in order to market the technology, device or component as being for those purposes.

The Copyright Act sets out various exceptions that permit reproduction of works subject to copyright.  However, even the various exceptions that allow reproduction do not permit circumvention to make such reproduction.  A reproduction will only be permitted under the various exceptions if the person making the reproduction:
“in order to make the reproduction, did not circumvent, as defined in section 41, a technological protection measure, as defined in that section, or cause one to be circumvented”
The first court decision considering the circumvention of TPMs is Nintendo of America Inc v King et al.,  (Go Cyber Shopping (2005) Ltd) a decision of the Federal Court of Canada, which issued in March 2017
Nintendo’s game consoles and game cartridges contain technological protection measures (TPM)  which are intended to prevent persons from using their game consoles with unauthorized copies of Nintendo game cartridges.   Go Cyber Shopping (2005) Ltd sold “game copiers” that would mimic the function of Nintendo game cartridges so that they could be used on Nintendo’s game consoles.  Go Cyber Shopping (2005) Ltd. sold “mod chips” that would enable the user to disable the TPM in order to use pirated game cartridges.
A first issue considered by the Federal Court was whether the Nintendo protection should be considered a TPM as contemplated by the Act. The court found that it was.

A second issue considered by the Court was whether Go Cyber Shopping (2005) Ltd could claim protection under the exception that allows modifications for the purpose of compatibility, which reads:
Permitted acts
30.6 It is not an infringement of copyright in a computer program for a person who owns a copy of the computer program that is authorized by the owner of the copyright, or has a licence to use a copy of the computer program, to
• (a) reproduce the copy by adapting, modifying or converting it, or translating it into another computer language, if the person proves that the reproduced copy
(i) is essential for the compatibility of the computer program with a particular computer,
(ii) is solely for the person’s own use, and
(iii) was destroyed immediately after the person ceased to be the owner of the copy of the computer program or to have a licence to use it

The Federal Court found that the exception did not apply to these facts.

A third issue considered by the Court was, while Go Cyber Shopping (2005) Ltd was facilitating copying, they were not actually infringing copyright themselves. Members of the public that used the Go Cyber Shopping (2005) Ltd circumvention technologies were the actual infringers.  Upon a reading of the section, the Court found that Go Cyber Shopping (2005) Ltd did not have to actually infringe copyright to be caught by section as “the uses or purposes of the technology, device or component are not commercially significant other than when it is used for the purposes of circumventing a technological protection measure”.

Nintendo sought statutory damages.  Section 38.1 of the Copyright Act, which allows a Court to award statutory damages reads:
Statutory damages
• 38.1 (1) Subject to this section, a copyright owner may elect, at any time before final judgment is rendered, to recover, instead of damages and profits referred to in subsection 35(1), an award of statutory damages for which any one infringer is liable individually, or for which any two or more infringers are liable jointly and severally,
(a) in a sum of not less than $500 and not more than $20,000 that the court considers just, with respect to all infringements involved in the proceedings for each work or other subject-matter, if the infringements are for commercial purposes;

A fourth issue was how to apply the statutory damages calculation. The Court determined that it would base a statutory damages award upon the number of “works” (games) that Go Cyber Shopping (2005) Ltd technology made illegally accessible.  Citing a need for deterrence the Court awarded the maximum amount of $20,000.00 per work (game).   The Go Cyber Shopping (2005) Ltd technology allowed access to 585 of Nintendo’s catalog of games.  The award, therefore, amounted to $20,000.00 x 585 for a total of $11,700,000.00.

In addition, Nintendo sought punitive damages to punish Go Cyber Shopping and further deter other would be infringers. The Court considered the disregard for Nintendo’s rights and the length of time Go Cyber Shopping had continued their activities and awarded a further $1,000,000 in punitive damages.

In summary, the award in the Nintendo Case totalling 12,700,000.00 should deter potential infringers and encourage game developers to include technological protection measures in their products.

Patent agents are not stifling Canadian inventors

We are indebted to Robert Barrigar for permitting us to post this article that was published in the Globe and Mail on March 8, 2017.  Mr. Barrigar is past-president of the Intellectual Property Institute of Canada (IPIC) and was registered as a Canadian and U.S. patent agent and served four years on the Patent Agents Examining Board.

Innovation is a hot topic these days, but often not fully understood. The role of patent agents is one of the most misunderstood subtopics, and a recent argument in these pages (of the Globe and Mail) that patent agents are impeding innovation in Canada only served to cloud the waters. While the author recommended government action to redefine the regulation of Canadian patent agents, he failed to recognize that the Intellectual Property Institute of Canada (IPIC) had previously, on its own initiative, recommended such to the federal government. Canadian patent agents obtain protection for the inventions of Canadian clients; they do not present obstacles, except charging for their services.

It is important to understand the difficulties faced by Canadian innovators. Our market is small compared to that of the United States. For this reason, it is often more difficult for a Canadian innovator to receive financing for obtaining and exploiting a patent than is the case in the United States. Canadian innovators typically prefer to obtain U.S. patents as a first priority, and Canadian patents, at best, a second priority. Accordingly, a Canadian patent agent has to understand the requirements of U.S. patent law and practice, as a Canadian agent will often be charged by a Canadian client with writing and prosecuting a U.S. patent application. The principal challenges to Canadian innovators – financing, marketing, competition – do not involve Canadian patent agents.

A typical Canadian patent agent has a university degree in science or engineering, and an aptitude for effective communication about technical matters relating to clients’ inventions. Historically, the Canadian patent profession has been governed primarily by the Patent Act and Patent Rules, and secondarily by IPIC. At the present time, this set of relationships is under review both by IPIC and the federal government.

The patent profession is sufficiently small that no specific patent-agent-oriented university accreditation is available for individuals who plan to become professional patent agents – they must rely upon their work experience to qualify for writing the patent agents examinations, which they must pass in order to become registered. They need not have been apprenticed to a registered patent agent, but having had such as a mentor and tutor is clearly advantageous.

The members of the Examining Board who set and mark the examinations that must be passed for registration as a Canadian patent agent are appointed by the Commissioner of Patents. The chairperson of the Board and at least three other members must be professional employees of the Patent Office.

When I served on the Examining Board, the pass rate was appreciably below 50 per cent, partly due to the writing of the examinations by lawyers of limited experience; inadequate technical analysis; lack of familiarity with applicable statutory and case law and regulations; and inadequacy of written expression. It is clearly not in the public interest to accept as members of the patent profession those who cannot pass the patent agents examinations. Canada does not need consultants who fail to comprehend the complexities of patent practice nor those who draft inadequate documents. Perhaps the most underrated desirable qualification for a patent agent is adequacy of expression. Unfortunately, not even a PhD nor a law degree guarantees that this quality is among those obtained through an individual’s education. This reflects a deficiency in Canadian education at lower levels.

It is important to note that inventors may represent themselves before the Patent Office; they do not need to retain a patent agent. But they would be well advised to do so, as serious and sometimes irreversible errors can easily be made by untutored inventors. Chances are that any consultant who attempts to draft a patent application without having been registered as a patent agent will be at risk of drafting a legally invalid or economically useless or inferior document. And any such consultant who attempts to respond to a Patent Office Examiner’s objection will face the same set of problems.

It is important to note that patent agents are not, per se, advocates for clients’ inventions. Clients may wish to obtain and enforce their own patents, but they may wish to invalidate others’ patents or obtain opinions so that they do not infringe such. Subject to avoidance of conflicts of interest, patent agents must be prepared to assist clients to obtain any of these objectives.

Breaking News for Online Businesses

There have been some recent court decisions that will be of interest to online businesses. Once an “online” business is successful, it is just a matter of time before competitors try to divert traffic intended for the successful business to their own competing websites.  One way of diverting traffic is through the use of websites with similar names.  With the rapid rise of social media, such as FACEBOOK, aggressive competitors are also establishing social media accounts with similar names.   Another way, a more legitimate way, is through the acquisition of “sponsored” links, such as GOOGLE ads.   These sponsored links appear in the search results whenever keywords associated with the successful business are entered into the search engine.

The old news is that in the case Michaels v. Michaels Stores Procurement Co, decided March 15, 2016, Canada’s Federal Court of Appeal stated that the Federal Court had jurisdiction to order the transfer of a confusing domain name.  The new development is that in the case of Thoi Bao Inc v. 1913075 Ontario Ltd, decided December 7, 2016, Madam Justice McDonald of the Federal Court went a step further and ordered the defendant to transfer to the plaintiff his FACEBOOK account, his TWITTER account and “any other social media accounts under his ownership or control” that were confusing with the business of the plaintiff.   In light of this decision, a successful business now has a remedy to use against competitors who are diverting traffic through the use of confusingly similar social media account names.

The other development relates to “passing off”, the court-created protection against trade misrepresentations.  In order to be successful in an action for “passing off”, among other things, the plaintiff must show that there has been misrepresentation creating confusion in the public.  The old news is that purchasing sponsored links, in and of itself, does not constitute “passing off”.   This was established in the Federal Court decision in Vancouver Community College v. Vancouver Career College (Burnaby) Inc., in which the Trial Judge held that the time frame for determining whether there was confusion was when the consumer reached and viewed the defendant’s website.   The Trial Judge found that there was nothing confusing at the defendant’s website and thus that any confusion was not sufficient to meet the requirements for “passing off”.  The new development is that on January 26, 2017 the Federal Court of Appeal reviewed the Trial Judge’s decision.  The Appeal Court determined that the Trial Judge had erred and that the correct time to assess confusion was when the consumer viewed the search engine results page.  The Court of Appeal noted that the sponsored link merely indicated VCCollege.ca, without any content that would distinguish the defendant’s business from that of the plaintiff.  In the circumstances, the sponsored link was confusing and constituted passing off.  If your successful business has been the target of intentionally confusing sponsored links, you now have a remedy.  Conversely, if your business pays for sponsored links, you must ensure that your sponsored links identify your business and are not confusing.

Copyright, Design and Trademark – A Cautionary Tale

There is a relationship between copyright, design and trademark as they apply to physical products.  Copyright protects “works of artistic craftsmanship”.   Design protection can be obtained for features of shape, configuration, pattern or ornament of useful articles.  Trademark rights may extend to the shaping of wares (products) with such unique shapes being referred to as “distinguishing guises”.  (The old-style glass bottle used by Coca Cola is a good example of a distinguishing guise trademark; the consumer knows what the product is merely from the container.)   It is possible for a product to be subject to all three, copyright, design and trademark at some time during the product’s life cycle.  However, copyright, design and trademark each have their limitations.

When an entrepreneur launches a new product, he or she does not know how successful the product may become.  Sometimes public apathy toward a new product is deflating.  At other times, the response exceeds even the entrepreneur’s expectations.  For that reason, it is not unusual for an entrepreneur to introduce a product into the marketplace and to wait and see how the product sells before seeking protection.

The Court decision rendered on December 14, 2016 in the case of Corocord Raumnetz v. Dynamo Industries is a cautionary tale that helps explain aspects of the relationship between copyright, design and trademark.  Corocord is a manufacturer of playground equipment. Some years ago, Corocord introduced into the market a new playground structure.  Under Canadian law, the playground structure was protected by copyright as a work of artistic craftsmanship at the time of introduction into the marketplace.  Copyright protection does not require any active steps to file paperwork with a government office, although there are advantages in doing so.

Fast forward ahead several years.  By that time, Corocord’s playground structure had become quite successful.  The law suit against Dynamo Industries was triggered when Dynamo introduced a similar product into the marketplace and they ended up bidding against each other on a contract for a playground installation. Corocord sued Dynamo.

Corocord tried to enforce their copyright against Dynamo.  Unfortunately for Corocord, copyright is only intended to protect “works of artistic craftsmanship” that are sold in limited quantities.  The right to sue Dynamo under copyright law was lost, due to the fact that the playground structure had been reproduced in quantities exceeding fifty (50).  Corocord had been too successful to continue to rely upon copyright.  Corocord could have sued Dynamo under design law.  Unfortunately for Corocord, an application must be filed with the Canadian Intellectual Property Office for design protection within 12 months of the playground structure being introduced into the marketplace.  The time had passed, Corocord had waited too long. Corocord tried to sue Dynamo under trademark law, which does not have a time deadline. In order to succeed Corocord had to establish that their playground structures had become so well known that the relevant market would automatically associate the distinctive shape of the playground structure with Corocord.  Unfortunately for Corocord, they had not, as yet, become successful to the extent that the distinctive shape of the playground structure was associated with them.

What could have or should have Corocord done?  It was okay for Corocord to rely upon copyright in the beginning.  Within 12 months Corocord knew that their playground structure was achieving success in the marketplace.  It was a fatal error of Corocord to not apply for design protection before the 12 months deadline for doing so expired.  With design protection, Corocord could have stopped similar products from entering the market.  Subsequently, when design protection was about to expire, they could have applied for trademark protection  in the hope of extending their protection indefinitely on the basis that the distinctive shape of the playground structure had become well know and is associated solely with Corocord.  However, now their ability to obtain trademark protection in future is doubtful.  The distinctive shape of the playground structure will no longer be associated solely with Corocord.  Dynamo is in the market providing playground structures with the same distinctive shape and other competitors may soon follow.

Attention Entrepreneurs!

I want to make entrepreneurs aware that they do not have to struggle alone, they can obtain assistance from VIATEC’s accelerator programs in order to fulfill the mission of increasing the number of successful technology companies that start and grow in the Greater Victoria area.

RevUP Program
Their RevUP Program focuses on the business challenges that technology companies with rapid-growth issues in British Columbia often encounter. By participating in RevUP, companies will be able to get personalized help with some of the common issues that hinder business growth: building scalable revenue and customer acquisition models, ensuring efficient operational processes and accessing capital opportunities. Individualized action plans, personal leadership coaching and targeted skill development are what make RevUP effective when it comes to addressing these needs. The benefits of the RevUP program include: Individualized action plans, Personal leadership coaching from Executives in Residence (EiRs), Targeted skill development, Professional support services from experts in marketing, sales, & IT, and Networking opportunities.

Venture Acceleration Program
Their venture acceleration program is designed to guide, coach and grow ambitious early-stage technology entrepreneurs. It is delivered by a team of Executives in Residence (EIRs) and supported by a province-wide network of mentors. The benefits of the Venture Acceleration Program include: Biweekly 1-on-1 coaching by Executives in Residence, Holding companies accountable to meeting goals, Personal experience running successful businesses, connections to networks (If I can’t help I know someone who can), broad reach to EiR network in BC, Reviews of proposals, pitch decks, etc, Exposure to mentors with diverse knowledge base, Networking with other startups to promote sharing of knowledge, talent, & resources, potential collaboration, Accelerator-only workshops targeting specific skills, Member only discounts on events, services (legal counsel, accounting, SEO), & partner programs, Connections to Accelerators across BC, Quarterly Reviews & ad-hoc meeting with full EiR panel & select mentors, Access to VIATEC’s job board & company listings, Promotional opportunities to be Tectorian of The Week, online News Releases, etc.

Entrepreneurship@Program
Similar to the venture acceleration program, their Entrepreneurship program is offered at no charge for a period of 6 months! This is perfect for the entrepreneur who expects to ramp their venture to a position of revenue and/or investment within the 6-month period.  The benefits of the Entrepreneurship Program include: Ensuring that the business basics have been established, Assisting with market definition, product fit and early adopter identification, Providing support and direction on business strategy, sales, marketing, Determining actions for market entry, including channels to market, partnership opportunities, key influencers, decision-makers and demand drivers, Leveraging existing relationships and knowledge to accelerate business development and help gain early traction.

For more information visit the VIATEC website at www.viatec.ca or email Rob Bennett rbennett@viatec.ca

Rapid Proto-typing through 3D Printing

singleright

Sandy Colvine of Revolution 3D printers recently gave me a tour of their premises on Henry Avenue in Sidney, along with a demonstration of their 3D printing capability. As a follow up, Sandy has provided me with some background on the current state of 3D printing which may be of interest to you.

Rapid prototyping technology, like 3D printing, allows creators see their dreams come to life. Advancements in additive manufacturing technology means 3D printers are, reliable enough to be used for manufacturing, and versatile enough to print in a range of materials. Some of these materials include biodegradable plastics, flexible rubbers and high-strength alloys. Now a prototype or part can be made in a matter of days rather than months; designs can literally be changed overnight.

Low volume manufacturing with 3D printers means there is no need to stock thousands of parts made abroad. A 3D printer service, as offered by Revolution 3D Printers can make products to order, when they are ordered. They can also produce a vast library of parts.  At Revolution 3D Printers, we offer a one stop shop prototyping service for people that want to bring an idea to the market. We help creators with conceptual design, turning their idea into a digital model and getting a prototype into their hands. We also help entrepreneurs take the next step into production by preparing their design for the manufacturing method that suits their needs. We help inventors turn their ideas from a sketch to a product sold. To learn more, visit our website Revolution3DPrinters.com or reach us with your questions at sales@Revolution3DPrinters.com