Some time ago, I travelled to Calgary to try to settle a legal dispute through mediation. In mediation, a mediator attempts to guide the parties to a negotiated settlement. However, in this case the arrangement was that if the parties could not arrive at a settlement, the mediator would change roles and become an arbitrator, that is, authorized to impose a settlement upon the parties. My client and I travelled to Calgary for the weekend, in the expectation that we would fly back Sunday night having resolved the dispute. My client’s view was the same as mine, that even a poor settlement would be better than a great lawsuit. Time was also important, as my client had to resolve the dispute with the Calgary Company, before he would be free to enter into a new agreement with another company that was waiting in the wings for the dispute to be resolved. The mediation did not go well. Every time we made progress, the opposing lawyer would inflame the discussions with allegations of “facts” that my client strongly disputed. The point was reached where my client told me that he had had enough and he wished to move on to the arbitration phase. The matter then took an unexpected turn. Instead of hearing submissions and rendering a prompt decision, the arbitrator required a “Statement of Claim” to be prepared and served by a first date, a “Statement of Defence” to be prepared and served by a second date, an exchange of relevant documents to take place by a third date, examination of the parties under oath by a fourth date, and a “trial” at the Alberta Law Society Offices in Calgary on a fifth date, and indicated that a written decision would be rendered by him by a sixth date. Under the schedule set forth by the arbitrator, it took another 11 months for the dispute to be resolved. In another matter, I attended a settlement meeting in Edmonton with the General Manager of a biotech company. The General Manager had to report to a wealthy individual who was the major shareholder and financial backer of the biotech company. On the other side of the negotiating table was a person from the University’s commercialization office and a person heading up a biotech research team. The person from the University’s commercialization office had to report to a University oversight committee. The people in the room rapidly had a meeting of the minds and reached agreement on all issues, subject to approval of the persons to whom we reported. It was in the reporting back that the agreement fell apart. The major shareholder and financial backer, and the University oversight committee repeatedly came back with further conditions which made the job of settling the matter more difficult. The first settlement meeting gave rise to a second and then a third settlement meeting, as each side tried to cope with shifting and evolving instructions. I recently read an article regarding Federal Court Prothonotary (type of judicial officer) Mireille Tabib’s experiences as a mediator, which inspired this commentary. The article, along with my own experiences, provides the following “rules” to follow when entering into negotiations of a legal dispute. The first rule is to start at an early stage, where the focus is still on business concerns and has not yet shifted to “winning” the legal case at all costs. The second rule is to focus on commercial realities, that is, what will “work” as a settlement and not the details of the claim that are often in dispute. The third rule is that everyone doing the actual negotiating must have full authority to settle.
I recently read an article entitled “The scope and limitations of Non-Disclosure Agreements”. The article explained that a non-disclosure agreement is an agreement in which a party receiving information (Receiving Party) agrees to take reasonable precautions to protect from disclosure information received from a party disclosing information (Disclosing Party). The article then went on to list a series of matters that must be addressed in a well drafted non-disclosure agreement, including: identifying the information that is to be protected, identifying that the information is being disclosed in order to permit the Receiving Party to complete a specified task for the Disclosing Party, setting forth rules regarding disclosure to employees and safe storage of the information while the task is being undertaken and requiring the destruction or return of the information when the Receiving Party has completed the specified task. The article also touched upon remedies available to the Disclosing Party in the event of a breach of the agreement. Although the article was well written, in my opinion, the author neglected to touch upon a significant limitation of non-disclosure agreements. Most non-disclosure agreements contain the following provision: “The Receiving Party shall have no obligation with respect to such information where the information has become publicly known through no wrongful act of the Receiving Party”. Entrepreneurs carefully go around and have non-disclosure agreements signed by parties who are assisting them by manufacturing and supplying components. Non-disclosure agreements are also signed by parties who are assisting in the preparation of business plans, creating brand names and logos, setting up websites, and setting up marketing plans. Finally, non-disclosure agreements are signed by parties being approached for investment capital and by parties being approached to assist in marketing and wholesale distribution. Then on the day of the launch of the product or service, all of the Receiving Parties who signed non-disclosure agreements are released from their obligations, as the Disclosing Party has publicly released the information and thus that information has become “publicly known through no wrongful act of the Receiving Party”. Non-disclosure agreements are fine for having preliminary discussions, but once the Receiving Party is working with you, a further agreement needs to be put in place that prevents the Receiving Party from competing with you while they are working with you and for a period of time (for example 2 years) after they cease working with you. As a practical matter, one or more of the parties you are relying upon as a member of your team may have better connections and more resources than you do. Once they are released from their obligations under the non-disclosure agreement by your public disclosure, they may come to the realization that they are in an excellent position to deliver the product or service and they no longer need you. Of course, they will delay acting until they have the opportunity to gauge the market response to your new product or service. Get the additional agreements signed. After you have taken all the risks and proven there is a market for the product or service, there will be imitators. Make sure the imitators are not parties who you thought were members of your team.
This is a SLIDESHARE presentation given to the Better Business Bureau at a “Lunch N Learn” on August 17, 2016. Some names that businesses choose are simply NOT PROTECTABLE. This presentation is intended to make persons selecting business names aware of the rules used by the Trademarks Office in reviewing and approving Trademarks. Included is an overview of unregistered and registered Trademarks. If you are only acting locally and have no internet presence, it is not critical that you register your Trademark. If you are doing business over the internet, it is critical that you obtain Trademark protect in Canada and in many cases also in the United States. http://www.slideshare.net/ThompsonCooperLLP/the-name-game-protecting-product-or-business-names
In Re Simon Shiao Tam, a decision of the United States Court of Appeals for the Federal Circuit rendered December 22, 2015, was recently brought to my attention. Mr. Tam named his band “THE SLANTS” to make a statement about racial and cultural issues in the United States. When he applied for Trademark protection, his application to register THE SLANTS was rejected as being “disparaging” of oriental people pursuant to a section of U.S. Federal law that bars registration of Trademarks that consist of “immoral, deceptive or scandalous matter or matter that may disparage … persons, living or dead, institutions, beliefs, or national symbols or bring them into contempt of disrepute”. Mr. Tam won his case through a constitutional argument. The First Amendment to the US Constitution reads in part, “Congress shall make no law … abridging the freedom of speech”. The Court of Appeals indicated that it is a bedrock principle of the First Amendment that the government may not penalize private speech merely because it disapproves of the message it conveys. The Court of Appeals found the provisions regarding “disparaging” Trademarks unconstitutional and commented, without deciding, that the prohibition against registering immoral or scandalous Trademarks may similarly be unconstitutional. The Tam case has wide implications. There has been a much publicized dispute between native groups and the Washington Redskins Football team over their use of the disparaging term “Redskins”. The Court of Appeals noted that there are currently awaiting appeal other Trademarks applications raising First Amendment issues including:
STOP THE ISLAMISATION OF AMERICA,
THE CHRISTIAN PROSTITUTE,
HAVE YOU HEARD THAT SATAN IS A REPUBLICAN,
RIDE HARD RETARD,
MARRIAGE IS FOR FAGS,
DEMOCRATS SHOULDN’T BREED,
2 DYKE MINIMUM,
DON’T BE A WET BACK,
N.I.G.G.A. (NATURALLY INTELLIGENT GOD GIFTED AFRICANS).
There is a similar provision under Canadian law (section 9(1)(j)), that prohibits the registration of Trademarks that are scandalous, obscene or immoral. The writer has handled a few cases where this objection has been raised. The leading Canadian court decision, which dealt with an application to register BUBBYTRAP (for women’s bras), requires Canadian Trade-marks Examiners to take into consideration evolving standards of what Canadians would consider scandalous, obscene or immoral. The writer was successful in convincing the Trademark Branch that the Trademark CALIFORNICATE was not one that the Canadian public would view as scandalous obscene or immoral. The Tam case in the United States raises an interesting issue, as to whether the Canadian Trademark law regarding scandalous, obscene and immoral Trademarks is contrary to the provisions concerning “freedom of thought, belief, opinion and expression” in our Canadian Charter of Rights and Freedoms. Is the U.S. approach to the freedom of speech the best approach? Personally, I would prefer that there be some limits on Trademarks that are scandalous, obscene or immoral in order to avoid a stream of swear words and off colour expressions being protected by Trademark. What are your views? Communicate with the writer at firstname.lastname@example.org.
Question: I filed for patent protection. Should I still have potential Licensees sign a secrecy agreement?
Answer: Secrecy Agreements can get in the way of licensing discussions. Many companies you approach will not sign secrecy agreements. In fact, large companies often require you to sign an agreement confirming that they are not bound by secrecy. If discussions are going well, do not hesitate to reveal more information. Bear in mind that a patent application is not “made public” until 18 months after its filing date. The company you are negotiating with can only see such information as you choose to share with them. If you feel that they are just pumping you for information, do not share more information until they show their good faith by placing a serious proposal before you. These types of proposals are called Letters of Intent, they contain a financial proposal that is subject to receiving and reviewing further information.
Question: What should I ask for?
Answer: Generally it is best to capture the company’s interest and then invite them to make the first proposal. There are a number of reasons for this. A first reason is that you may undervalue the technology, whereas if you let them make the first proposal you generally will get more. A second reason is that you may overvalue the technology. If the company feels you have unrealistic expectations, the company may break off negotiations. A third reason is that every industry has “industry norms”, for example 5% is a typical royalty in some industries. A fourth reason is that many companies have a “history” of past dealings that they are influenced by (i.e., “this is how we generally structure our licensing deals”). If you can get a company to make any form of proposal at all, there is potentially a deal to be made. The greatest problem in licensing is facing the enormous inertia in every industry. Unless a prospective licensee is actively looking for a better way of doing things, it can be difficult to get their attention if what the industry has been doing for years is still “working” just fine. An industry executive can lose his or her position spending money on a solution when there was no generally understood problem.
Question: What should I expect to see in the proposals received from companies?
Answer: It is unlikely that you will be offered a single large lump sum payment. Instead you are likely to receive an offer that includes an initial payment of $10,000 to $50,000 and a royalty percentage of sales. The reason for this is that an executive who pays a huge lump sum on a technology that does not work out is placing his or her career in jeopardy. If the technology proves itself over time, a buyout offer may come down the road.
Question: How do I know if the proposal is reasonable?
Answer: There are “rules of thumb” that are applied to gauge whether a proposal makes sense. One such rule is the “rule of 25”. The rule of 25 is sometimes criticized as not taking into account all factors. This is true, but it works for many situations. Under the Rule of 25, the labour and materials required to manufacture a product are deducted from a wholesale price for the product to arrive at a gross profit figure. This gross profit figure intentionally does not include overhead, advertising or administrative costs. According to the Rule of 25, the company is taking all of the risks and should be entitled to 75% of the gross profit. You receive 25% of the gross profit for bringing this opportunity to them and providing patent protection to protect their market. However, the final royalty percentage is never set out in a license agreement as 25% of percent of gross profit. Instead the royalty is converted to a percentage of the wholesale invoice price. The reason for this is that you need a number that can easily by audited by an inspection of customer invoices.
We stated above that the Rule of 25 does not take into account all factors. For example, the Rule of 25 does not take into account additional costs that may be incurred in preparing to manufacture a new product. This can easily be accommodated through a “step royalty”. A step royalty is a royalty that steps up or down, depending upon the circumstances. To accommodate the costs incurred in preparing to manufacture, you may agree to take a lower royalty until those costs are recovered and then your royalty will “step up” to a higher level. Step royalties are used in a variety of situations. For example, to get volumes up, royalties sometimes “step down” with volume. In such a situation there may be a royalty of 7 % on the first 50,000 units sold each year, a royalty of 5% on the next 50,000 sold each year and a royalty of 4% on all units over 100,000 sold each year.
Question: Is there any rule of thumb for assessing a lump sum offer?
Answer: Accounting firms can make projections to determine the amount of royalties expected to be generated over the life of a patent. The accounting firms can then give you a “current value assessment” so that you have a calculation of what lump sum is appropriate as a replacement for the royalty. This works well when you have been receiving royalties for a number of years. When the product has not even been on the market and has no sales history, the number is essentially a creative fiction, even working from the best information available. Even when royalties have been paid for a number of years, the accounting firm must make some assumptions regarding changes to product price due to cost of living and growth of market share that may turn out to be false. When you have a large lump sum offer presented to you, consider what the alternatives are and how receiving the funds will affect your life.
One client of mine received a 10 million dollar offer and turned it down. The reason was that he was perfectly happy with the quarterly royalties he was receiving and it did not take an accountant to see that he would be making well over 10 million dollars over the next 5 years by simply keeping his existing royalty stream. Another client of mine received a 2 million dollar offer and accepted it. There were no sales. He could not afford to put the product on the market himself. If the 2 million dollar offer was withdrawn he had no viable alternative. He had a wife, two young children, a mortgage and debts incurred in developing the technology. Receiving the 2 million dollars now would have a major positive impact on his life.
Question: What should I look out for in any proposal?
Answer: It is a mistake to focus just on the financial details of the offer. One should look carefully at what obligations are being imposed back upon you. Those obligations could cost you more than you will receive. Who has to pay the expenses associated with completing and maintaining patents in Canada and the United States? If the company wants foreign patent protection, who has to pay the expenses associated with completing and maintaining the foreign patents? Who has to pay the expenses associated with enforcing the patent against infringers?
If you have granted an “exclusive” license (which often is the case), you need minimum performance requirements to ensure that your technology is not shelved.
On a human level, you and your technology need a “champion” within the company. Someone you feel is committed to the technology and will drive the implementation of the technology within the company. Preferably, someone you can relate to.
Americans are reputed to be more litigious than the people of other nations, including Canada. A number of our firm’s clients have been involved in legal actions in the United States. These legal actions generally occurred when our client had commercial success, or was on the verge of having success, in the United States. In some of the lawsuits, our client was the defendant, that is, our client was being sued for patent infringement. For example, a client with a natural gas control product was taking substantial business away from a major company in the field. The major company sued the client asserting infringement of a group of patents, including a claim for “convoyed” sales. “Convoyed” sales are sales of non-patented products (wire, tubing, etc.) sold along with infringing products, the thinking being that such convoyed sales would not have occurred except for the infringement. In other lawsuits, our client was the plaintiff, that is, our client was suing for patent infringement. For example, a client in the field of non-destructive testing had patented technology for checking for gas leaks that used a non-toxic vapour that carried a dye. When the client starting taking substantial business away from the industry leader in gas leak detection technology, the industry leader copied the technology to avoid a further erosion of its market share. This forced our client to bring legal proceedings in the United States to enforce its patent rights. Our client spent well over a million dollars in legal fees before finally achieving success in the litigation. However, in order to avoid a repetition of such an expense, the non-destructive testing client subsequently purchased a policy of infringement insurance. There are two types of infringement insurance, defensive policies to protect you when you are sued and abatement policies to protect you when your intellectual property rights are infringed. The cost of the policies depends upon industry sector, gross revenues and other factors. There is generally a minimum 10% co-pay requirement. The important take away is that infringement insurance exists. It is provided by specialized insurance companies and not by general commercial insurance companies. Since acquiring infringement insurance, the non-destructive testing client has become involved in five U.S. patent lawsuits. They estimate that having the infringement insurance has saved them at least 2 million dollars. There is a further benefit in having infringement insurance. For example, not too long ago, we sent a “cease and desist” letter to an alleged infringer, and received a very aggressive and belligerent response. We notified the infringement insurance company. After receiving a letter from the infringement insurance company, the attitude of the alleged infringer changed completely. Presumably because the presence of infringement insurance demonstrated to the alleged infringer that our client had the financial backing to litigate the dispute, the alleged infringer got in touch with our office and the matter quickly settled. If your company is having commercial success in the United States that is at least in part based on your intellectual property rights, or you are operating in a field in which other players have intellectual property rights, you may wish to review your circumstances to determine whether infringement insurance would be beneficial for you.
There is one aspect of European Trademark law related to how the European Union Implemented the so-called International Classification system for goods and services, which I have always found objectionable. There are 34 broadly defined classes of goods and 11 broadly defined classes of services in the International Classification system. In Canada and the United States, when you apply for Trademark protection you must identify the goods and/or services with which the Trademark is associated. A very specific list must be presented, using ordinary commercial terminology, for example, “adhesives”. To be clear, the US has adopted the International Classification system, but still requires a description of the specific goods and/or services. By contrast, under European Trademark Law, the applicant is able to specify all of the goods and/or services in each of the classes in which any of the applicant’s goods and/or services fall. . For example, an applicant for a European trademark registration having a trademark associated with “adhesives”, would be able to list the general goods description for the class containing “adhesives” (Class 1), as follows:
“Chemicals used in industry, science and photography, as well as in agriculture, horticulture and forestry; unprocessed artificial resins, unprocessed plastics; manures; fire extinguishing compositions; tempering and soldering preparations; chemical substances for preserving foodstuffs; tanning substances; adhesives used in industry”.
When the Europeans tie up the entire class, this creates enormous problems for a Trademark Lawyer, such as myself. My client can have his Trademark refused because someone else has a similar Trademark in the same class. However, if the actual products were compared, it might be clear that confusion between the marks is unlikely, for example because the products are different, they are sold through different wholesale and retail channels, and they are sold to different customers. For example, adhesives may be sold by chemical companies to distributors who supply adhesives to the lumber industry where they are used to glue wood chips together to form sheets of fibreboard. In comparison, manure is sold by agricultural feedlots to suppliers who either sell the manure in bulk to agricultural businesses or in bags to consumer for use as fertilizer. Just because “adhesive” and “manure” are both in Class 1 does not necessarily mean that the Trademarks will be confusing. Thankfully, we have received notification that changes to this objectionable aspect of European Trademark law came into effect on March 23, 2016. All European Trademark Owners have been given a deadline to specify the goods and/or services with which they are using their Trademark and, in future, persons applying for European Trademarks will have to similarly specify the goods and/services. This is extremely important, due to the treaties we have entered into with the Europeans that permit them to Register their Trademarks in Canada. It is also important to avoid Canadians being “blocked” when they are trying to protect their Trademarks in Europe.
Getting a Court to order the transfer of a domain name has been a problem. Many Judges of the Federal Court have claimed that they are without jurisdiction to order the transfer of a domain name. Their rationale has been that domain names are “personal property”, which, under the division of powers in the Canadian Constitution, is within the “Property and Civil Rights” jurisdiction of the Provinces. Unfortunately, many Supreme Court Justices in the Courts of the various Provinces have also claimed that they are without jurisdiction. The result has been unsatisfactory to Trademark Owners. I was personally involved in a case in the Supreme Court of British Columbia, in which the presiding Justice hearing the case gave us Judgement but refused to order the transfer of a domain name when the defendant undertook “not to renew” the domain name. My client was forced to monitor the expiry of the domain name, wait for the reinstatement period to expire and then, potentially, compete with others to acquire the domain name after it expired. This ridiculous result is not an isolated example. Until the recent Federal Court of Appeal decision in Michaels v. Michaels Stores Procurement Company, there was a vacuum. The Federal Court of Appeal found that when a domain name is a “mechanism” used to infringe a Trademark, the domain name became an “instrument of confusion in the marketplace”. Further, the Court of Appeal held that the jurisdiction to order delivery up of the domain names in question (e.g. michaels.ca) is firmly rooted in section 53.2 of the Trade-marks Act, which gives the Court a wide discretion to grant the remedies it considers necessary to give effect to rights that have been infringed; and in subsection 20(2) of the Federal Courts Act which gives the Court jurisdiction to order any appropriate remedy known to common law or equity. This decision is good news for Trademark owners and will allow better policing of the internet, at least for .ca domain names under Canadian court jurisdiction.
Historically there has always been a difference between “goods” and “services” under Trademark law. Section 4(1) of the Trademarks Act states that a Trademark must be marked on the goods themselves or on the packaging. Software was always a type of “goods”. For those of us old enough to remember, software used to be sold on floppy disks. As technology evolved, the floppy disks were replaced with a CD-ROM format. The Trademark for the software could be found on the CD-ROM, on the written instruction manual and on the box that held them. With the rise of the internet, software came to be sold “on line” with the software and the instruction manuals only available through electronic download. The “goods” remained essentially the same, just their mode of delivery changed. The Trademark still appeared on the “goods” at the time of download and on the boot-up screen every time the software was initialized. This was captured in the catch all portion of Section 4 (1) of the Trademarks Act that indicates that marking can be “in any other manner so associated with the goods that notice of the association is given”. In recent years, the software business has increasingly evolved into a “service” arrangement (referred to as Software as a Service or SaaS). Customers pay a fee to access software that is resident in the “cloud” accessible over the internet. There are no longer “goods” changing hands in the traditional sense. No software is downloaded. This “cloud” environment sets the backdrop of the recent case of Specialty Software v. Bewatec. Bewatec was successful before the Registrar of Trademarks in invalidating Speciality Software’s Trademark MEDINET on the basis that the Trademark was not being used for “goods” as claimed. Specialty Software asked the Federal Court to overrule the Register of Trademarks and declare the MEDINET Trademark valid based upon the sale of licenses for use of software in the cloud. February 18, 2016 Justice O’Reilly rendered his decision indicating that software licenses are “goods”, albeit “intangible goods”. Wikipedia defines an “intangible good” as a good that is intangible, i.e. incapable of being touched. I have now read a number of articles on the recent decision of the Federal Court of Canada in the Specialty Software v. Bewatec case. The case is being heralded as a ground breaking decision that “demonstrates that courts will adapt legal concepts to modern technology”. I think the fanfare is premature. Firstly, the case may be overturned on appeal. Secondly, if the case stands it could give rise to some unintended consequences. I can certainly understand Justice O’Reilly wishing to uphold the MEDINET Trademark. However, his decision blurs the traditional distinction between “goods” and “services”, by including “intangible” goods in the definition of goods. The “intangible” good was a license. We use licenses every day in various forms. A license is simply a form of permission to use. For example, a ticket to ride on the ferry is a form of license. B.C. Ferries provides a transportation “service”. I am of the view that the Specialty Software v .Bewatec decision is just the start of the discussion and not the end. I am currently contacting my software clients to review their Trademarks. If they are now delivering their software through the “cloud”, I am recommending that they update their Trademark Applications to specify “services” in addition to “goods” and avoid the controversy altogether.
I was listening to the radio the other day and caught the tail end of an interview concerning the Trans Pacific Partnership (TPP). The comment that attracted my attention was a statement that the Intellectual Property provisions of the TPP agreement would cost Canada 57,000 jobs. The same evening the TPP agreement was on the evening television news and the person interviewed indicated that the ability of Canada to change its laws would be hampered. I have now read the Intellectual Property provisions of the TPP agreement, which are found in the 75 pages which comprise Chapter 18 and accompanying schedules. The agreement indicates that countries may change their laws “provided that such measures are consistent with the provisions of this Chapter”. As indicated by the television commentator, Canada would be in breach of the agreement if, after signing, the government chose to pass laws that contradict the provisions of the TPP agreement. Looking for the lost 57,000 jobs, I found that most of the 75 pages are consistent with the laws of Canada as they presently exist. The copyright term has been lengthened, but that change is unlikely to cost any jobs. Canada’s previous copyright term was the life of the author plus 50 years after his or her death. The TPP agreement provides for a copyright term of the life of the author plus 70 years after his or her death. In Canada, there is a government approval process before a company can sell agricultural chemical products, pharmaceuticals, or biologics (complex molecules such as proteins that are isolated from plants, animals or micro-organisms, or made using biotechnology). The TPP agreement provides for a “patent term adjustment”, lengthening the term of a patent when there are delays in the government approval process. This change will give drug companies a few more years of protection and will slow the introduction of generic drugs into the Canadian market. As part of the government approval process, companies must submit test data and, where applicable, data from clinical trials. There is presently no law, prohibiting subsequent applicants for government approval from using test data submitted by an original applicant. The TPP agreement provides that subsequent applicants are prohibited from using the test data submitted by the original applicant for a period of 10 years when seeking government approval for agricultural chemicals, 5 years for pharmaceuticals, and 8 years for biologics. This will also slow the introduction of generic products into the Canadian market, as generic manufacturers are forced to either wait or develop their own test data and conduct their own clinical trials. I have no way of assessing whether 57,000 jobs will be lost. However, it is reasonable to assume that there will be a loss of jobs in the generic drug industry as these provisions begin to affect generic drug manufacturers based in Canada. However there are some answers missing from the dialog, that would help me decide whether or not I am in favour of TPP. How many jobs may be gained in other sectors with the signing of TPP? How many jobs may be lost if we do not sign TPP? We rely upon our exports, being frozen out of TPP may not be good for Canada in the long run.