When to Fight and When to Settle

I received a settlement cheque today on a patent infringement action. Although the cheque is for several thousand dollars, I estimate that the other side would have paid as much in legal fees had they chosen to fight. You can say what you like about the manner in which the other side found themselves in that position; I am of the opinion that the opposing lawyer acted with integrity in extracting his client from a difficult situation. The opposing lawyer’s client also gets full marks for accepting his lawyer’s advice and making the decision to write the cheque to end the dispute. I have another file on my desk in which the response to the infringement claim has been much different. The opposing lawyer is being as difficult as possible, hoping that my client will get discouraged and will go away. This strategy undoubtedly works in some situations where the infringement has ended anyway and further legal action to recover damages for past infringement may seem to be just not “worth it”. However, in this case, the infringement continues. Far from being discouraged, my client is irritated and becoming more determined; I have received instructions to move the litigation forward. I will first seek to have their defence struck and to obtain a summary finding of infringement. I will then seek an order for recovery of all of their profits. The other lawyer and his client appear to believe they are in a safe position, because on paper the client has been losing money. However, in calculating profits, the court takes revenues received and deducts only materials and labour. The court will not consider the fact the owner of the business has monthly payments on a bank loan, overhead costs, and draws a management salary in order to survive. I am just as often on the other end of these type of disputes. I am currently acting on behalf of Lighthouse Brewing regarding a controversy with one of their brand names. I have great respect for Michael Bierman of Lighthouse Brewing who made the tough decision early and is currently in the process of changing the brand to avoid the controversy. Making these kind of decisions early in a dispute serves to prevent a small problem from becoming a huge problem. Win or lose, it always costs money to fight.

Photographers Rights

Once or twice a month, we receive calls from photographers, regarding unauthorized use by a third party of one of their photographs. These calls often relate to a digital image that the photographer has posted online (e.g., on Facebook), that has subsequently been incorporated into a commercial website.Under Canada’s Copyright Act, a photograph is an “artistic work”, and is subject to protection for the life of the author plus 50 years. Copyright includes the sole right to produce or reproduce a work or any substantial part in any material form whatever. It is an infringement of copyright for any person to do, without the consent of the owner of the copyright, anything that only the owner of the copyright has the right to do.In the event of infringement of copyright in a photograph, the photographer has three years within which to seek relief from the Court. The Copyright Act provides for remedies in the form of an injunction to stop use of the photograph and damages for what the copyright owner has lost. A professional photographer may be able prove such loss through evidence of prices paid for images in the past, but an amateur photographer generally has no history of past sales. In addition to damages, the copyright owner can seek part of the profits the infringer has made from the infringement. However, it may difficult to show that the use of a photograph directly resulted in any profit; for example, a photograph of an eagle used on the website of a plumbing company. Fortunately, the Copyright Act also provides for “statutory damages” of not less than $500 and not more than $20,000, where the infringement is for commercial purposes. For a professional photographer, the unauthorized user may be their own customer. Unless the parties agree otherwise, when a photograph is commissioned by a customer, the photographer owns the copyright in the photograph and the customer may only use the photograph for private or non-commercial purposes. Under the Copyright Act, photographers also have “moral rights”, which include the right to maintain the integrity of the work and the right to be named as the author of the work. Moral rights may be infringed where a photograph is altered (e.g., cropped) in a manner that is harmful to the photographer’s reputation or where the photographer’s name is removed from the image.A summary of the law in this area would not be complete without a mention of the powerful “fair dealing” exception under the Copyright Act. Fair dealing for the purpose of news reporting does not infringe copyright if the source and, if available, the name of the photographer, are mentioned. In the case of Allen v. Toronto Star Newspapers, Allen was a professional photographer who had taken a photograph of politician Sheila Copps. A number of years later, Ms. Copps ran for the leadership of the Liberal Party and the photograph was used by the Toronto Star without permission. The Court held that the purpose of the reproduction was to aid in the representation of a news story relating to the leadership aspirations of the politician and, as such, fell within the fair dealing exception.

Ownership Rights vs. Public Domain and User Rights

This article is intended to be a brief outline of aspects of Canadian law relating to intellectual property and the public domain.  When intellectual-property ownership rights exist in a product, a purchaser of the product will generally only obtain limited “user rights”.  In contrast, when something is in the “public domain” there are no ownership rights and it is available for any member of the public to use without permission and without limitation.  As an intellectual-property lawyer, a general failure by members of the public to understand this distinction and how ownership rights are created or lost, keeps me busy.
When an inventor creates a patentable invention, the invention enters the public domain 12 months after public disclosure, unless an application is filed with the Patent Office within that period.  A patent gives the inventor ownership rights, subject to payment of an annual fee, for a period of 20 years from the filing date of the application; after which the invention will enter the “public domain”.   For example, Alexander Graham Bell’s patents relating to the telephone are all public domain.
When a person creates an attractive design for a functional object, such as a chair; the design enters the public domain 12 months after public disclosure unless an application is filed with the Industrial Design Office within that period.  An industrial design registration gives the designer ownership rights in the design, subject to a 5 year renewal fee, for a period of 10 years; after which the design will enter the “public domain”.   For example, when one sees the same chair made by numerous companies, it is a strong indication that the design is in the public domain.
When a user purchases an article that is protected by a patent or industrial design registration, the user acquires a “user right” to use that article without paying further payments to the inventor.  The user also acquires a “user right” to conduct normal maintenance to keep the article in good condition.  However, the “user right” does not include the right to reconstruct major components of the article.
Regrettably, inventors and designers attending our office to seek protection are often shocked to discover that they have missed their time period and that their creations are now public domain.
Another form of intellectual property, copyright, relates to written works, recordings, software, music etc. Unlike patents and industrial designs, copyright arises automatically upon the  creation of a suitable work; registration is merely an optional public notification that need not take place within a specified time period.  The usual term of copyright is the life of the author plus 50 years; once copyright in a work has expired, the work enters the public domain.  For example, the works of  Shakespeare, Jane Austen and Charles Dickens are all in the public domain.  The rules concerning photographs are slightly different; the photographer acquires rights for a period of 50 years from the date the photograph was taken.  “User rights” in the copyright area are primarily limited to personal use, the user may not distribute or make a commercial use of the literary work, although the law has carved out special exceptions, such as: news reporting, persons with disabilities (e.g., audio books for the blind), libraries, and education.  The most common legal issues in this area relate to users using text or photographs for commercial purposes, such as on a commercial website.
In your personal and business dealings you will encounter some items or materials that are clearly public domain, some that clearly have limited user rights and some that you are uncertain into which category they fall.  If in doubt, I urge you to seek legal advice and avoid potential legal problems.

Why You Should Care About Copyright

Copyright is a type of intellectual property that applies to literary works (deemed to include software), artistic works (e.g., graphic designs and web designs), musical works and dramatic works. Copyright protects the form of expression rather than the idea or content expressed.  For example, copyright protects the words of a novel (the expression), but not the plot or themes (the idea or content).

Businesses are routinely involved in the creation of  works subject to copyright, but often fail to consider ownership of copyright.  Unless there is an agreement to the contrary: a)  if an employee creates a work subject to copyright in the normal course of his employment, the copyright belongs to the employer; and b) if a contractor creates a work subject to copyright in the performance of a contract, the contractor owns the copyright and the customer has an implied licence to use the work for the purpose for which it was created.

The presumption of employer ownership in the employer-employee situation, makes sense to most people.  However, the presumption of contractor ownership in the contractor-customer situation  may come as an unpleasant surprise to the customer.

For example, if a business retains a graphic design firm to create a brochure for a run of 1,000 and their agreement says nothing about ownership of copyright, then the design firm owns copyright in the brochure and the business has an implied licence (that is, permission to do something implied by operation of law), to a run of 1,000.  If the  business were to later have 10,000 copies printed without the design firm’s permission, the design firm would be legally entitled to compensation for copyright infringement.

Another example is where a business retains a programmer to create some custom enterprise software for use by the business.  Again, absent an agreement to the contrary, the programmer owns copyright in the software and the business has an implied licence to use if for the purpose for which it was created (that is, in its business operations).  This means that, although the business paid the development costs for the software, the programmer, not the business, is entitled to sell copies of the software to others.

Thus, in a customer-contractor situation that may give rise to a work subject to copyright, it is important for the parties to have a clear and documented understanding about who will own the copyright.  It is usually possible to reach agreement on this issue as either party may be willing to give up ownership of copyright for an adjustment in price or other consideration (e.g., the right to make more copies of a brochure at a low or no charge).

Border Enforcement of IP Rights by Customs Officers

Businesses can obtain assistance from the United States government to prevent the importation of counterfeit goods into the United States (19 CFR 133).  On March 1, 2013 first reading was given to a proposed Canadian law (Bill C-56) which would give Canadian businesses a similar right to obtain assistance from the Canadian government to prevent importation of counterfeit goods into Canada.  The proposed law sets forth a procedure for Canadian businesses to follow and protects government officials from liability for steps that they may take in intercepting shipments and holding them for a period of time.  This law is long overdue and I hope for speedy passage.

World Wide Web – When Do You Cross the line?

World Wide Web – When Do You Cross the line?

In this article we will discuss two recent cases that may of interest to businesses and individuals regarding the World Wide Web.  There is a great deal of information on the web that is useful to business.  Recently the Supreme Court of British Columbia was asked to consider what use companies can make of information taken from competitor’s websites, in the case Century 21 Canada Limited Partnership et al v. Zoocasa Inc.  Zoocasa was using information taken from the Century 21 website.  The lawyer for Zoocasa argued that information made available on the internet must be available for use by everyone through indexing, linking and otherwise, without contractual restrictions.  It was suggested that this was required for the proper functioning of the web.  The lawyer for Century 21 argued that Zoocasa had breached the contractual terms accepted by users of the Century 21 website.  Mr. Justice Punnett decided that although the manner of contracting had changed, traditional contract law still applied to the web.  The Century 21 website had Terms of Use associated with the website; Zoocasa had actual notice of those Terms of Use, had accepted them and were bound by them.   In addition, Century 21 had copyright in the pictures and articles on the website.  In taking the pictures and articles, Zoocasa had infringed the copyright of Century 21.  The lesson to be taken from this case for website owners, is to establish Terms of Use and ensure that users of your website have notice of those Terms of Use and accept them to create an enforceable contract.

In this world of GOOGLE, FACEBOOK, and LINKEDIN, there is also a great deal of information on the web regarding individuals.  In most cases, it is completely proper to access this information.  For example, I had to examine a witness under oath a few months ago and availed myself of information that was on his FACEBOOK page to assist me.  Recently the Ontario Court of Appeal was asked to consider where the line should be drawn with respect to intrusions into one’s privacy in the case of Jones v. Tsige.  Winnie Tsige was the common law partner of the former husband of Sandra Jones.  Ms Tsige was also a bank employee.  Ms. Tsige used her position at the bank to repeatedly access online records that are not accessible to members of the public and inspect Sandra Jones private banking records.  Presumably, this information was being passed along to Mr. Jones for use in a dispute with Mrs. Jones.  The Court found this intrusion to have crossed a line.  This is an unusual situation of an abuse of bank databases by a bank employee and may not have had much application to the rest of us, were it not for the fact that the Ontario Court of Appeal had to create a new cause of action of intrusion of privacy to give Sandra Jones a remedy.  That remedy is now a precedent.  The boundaries of the remedy will be set by future cases.  It will likely be relied upon by celebrities against overly aggressive paparazzi.  Should you be so unfortunate as to experience some intrusion into your privacy that is excessive, unwarranted and deserving of sanction, you should speak to your lawyer.