Canada Archives - Page 8 of 13 - The Angle

Category Archives: Canada

Foreign Certificate of Registrations of Copyright may not suffice to prove ownership of copyright in Canada

January 18, 2021 Amy Tang

Proving chain of title to a work is essential for any party wishing to assert copyright infringement. However, this is not always easy, given that the author of the work is not required to register its copyright to acquire the protection by copyright law, provided that the author is Canadian or a citizen of any of the signatory countries to the Berne Convention for the Protection of Literary and Artistic Works of September 9, 1886.[1] Further, in any civil proceeding in which a defendant puts in issue either the existence of copyright or the title of the plaintiff to it, the author shall be presumed to be the owner of the copyright unless the contrary is proven.[2] Given that copyright exists from the moment the original work is created and that the title of ownership may easily be passed around since its existence, it is important to keep a robust documentation of the chain of title of a work.

Canada, Trademark

The Case of the ‘Missing S’

January 13, 2021 David McLauchlan

At What Point Can Trademark Owners Claim Damages When a Registered Mark Infringes?

Under section 19 of the Canadian Trademarks Act, “… the registration of a trademark in respect of any goods or services, unless shown to be invalid, gives to the owner of the trademark the exclusive right to the use throughout Canada of the trademark in respect of those goods or services.” (our emphasis) That exclusive right is said to be infringed if another person, among other things, sells goods in association with a confusingly similar trademark or trade name. (s. 20(1)(a)) The owner can then institute legal proceedings against the allegedly infringing party (s. 52 ff) and, if they are successful, obtain monetary compensation or other remedies.

But what happens if a registered trademark is later expunged and the use of that mark is held to be infringing another trademark owner’s trademark rights? When does the protection of section 19 cease? In other words, when can another registered trademark owner obtain damages for that infringing use?

Canada, Patents

Ontario Court Affirms the Enforceability of Patent No-Challenge Clauses

December 16, 2020 Mark Vanderveken

In a recent decision[1], the Ontario Superior Court of Justice, Divisional Court (the “Court”), affirmed the enforceability of patent restrictive covenants (so-called “no-challenge clauses”) in settlement agreements.

In 2014, Loops L.L.C. and Loops Flexbrush L.L.C. (“Loops”) and Maxill Inc. (“Maxill”) entered into a settlement agreement to resolve a patent infringement action by Loops against Maxill. The agreement, governed by the laws of Canada and Ontario, contained a no-challenge clause in which Maxill agreed “not to directly or indirectly assist any person in attacking the validity” of certain Loops patents.[2] Loops subsequently commenced actions in Ontario and Utah claiming Maxill breached the agreement and infringed a U.S. patent covered by the agreement.[3] Loops filed a motion for an interlocutory injunction in the Ontario action. The motion judge dismissed the injunction request.[4] The motion judge found that a strong prima facie case was lacking because Loops’ evidence was rebutted by the fact that the no-challenge clause was not reasonable in the public interest, based on U.S. caselaw principles.[5]

Canada, Intellectual property, Trademark

IAM Global Leaders

November 30, 2020 Intellectual Property Group

Jean-Nicolas Delage Recognized as IAM Global Leader for 2021
Fasken partner, Jean-Nicolas Delage, has been recognized in the 2021 edition of IAM Global Leaders Guide.

Now into its second year, the IAM Global Leaders Guide brings together the world’s foremost private practice patent experts. Congratulations Jean-Nicolas! Read the full guide here.

Jean-Nicolas is the co-leader of the Technology, Media and Telecommunications group and specializes in intellectual property strategy for rapidly growing technological clients.

Learn more about our Technology, Media and Telecommunications group

Canada, Copyrights, Trademark

“Zombie” Privacy & IP Rights: Protecting the Rights to an Individual’s Image after Death: Part 2 of 2

October 31, 2020 Mark Penner and John P. Beardwood Comment

Part 2: Intellectual Property

In Part One of our series on protecting individuals’ images after their death, we examined the privacy rights that govern the use of these ‘zombie’ celebrities, just in time for Halloween. We considered what privacy rights attach to dead celebrities, and whether these rights can be exercised by their estates/heirs. In this Part Two, we will consider what intellectual property rights could govern this so-called resurrection of dead celebrities!

As you will recall from Part One, it is not surprising that movies and concerts are reaching back to long dead stars to “perform” for audiences. What intellectual property rights govern the resurrection of a dead celebrity? If property rights are the best way for a deceased’s heirs to protect the image of the deceased, how can the “property” regime of intellectual property rights assist?

There are a number of statutory IP regimes as well as common law causes of action which can allow online influencers and the estates of deceased celebrities to control and monetize these valuable assets and continue to monetize as technology allows them to do so.