If you came to a restaurant and asked if they could make a good steak for you, and the waitress told you that they’re not sure but they are sure going to try very hard – what are the odds you would order it?
If you asked the waitress how much the steak is going to cost, and she told you that it costs $10 to place it on the grill and then the chef is going to charge you by the minute depending on how difficult it is to cook it to the perfect temperature – how likely would you be to order it?
If – not being convinced that they are any good at steaks – you then asked the waitress if they would offer you a refund if the steak would not come out right, and told you that there would be no refunds because they would have invested a lot of time, products and effort trying to the best of their abilities – would you ever order it from that place?
Below is a typical response that a business owner would receive from the vast majority of law firms and trademark agents in Canada to the question how much it would cost to register a trademark in Canada and whether or not the firm would provide any guarantees:
With regard to approximate costs, we attach a copy of our latest Schedule of Fees for your reference. For your convenience, we highlight the approximate costs of preparing and filing a single trademark application as $XXX plus official fees of $XXX. If the trademark application proceeds directly to allowance, the fees applicable to registration of the trademark application will be about $XXX plus official fees of $XXX.
If an adverse examination report is issued during examination, we will docket such response and report to you with our recommendations to overcome the objections raised in the adverse report as well as the approximate costs. The prosecution costs for the matter will vary depending on the nature of the objections raised and the hourly rate of the lawyer preparing the response. The writer’s hourly rate is $XXX. The approximate cost of reporting to you will be from $XXX. Complex objections requiring submission of evidence are subject to highly variable cost.
Most applications take 14 – 18 months from the date of application to achieve registration if there are no significant delays, but if the application is ultimately unsuccessful, we do not offer a refund.
No wonder most business owners are terrified of registering their trademarks in Canada. A low-cost application fee is simply a bait to get the customer in the door to then bill and bill until the application is either registered or refused. What business owner would not agree to pay a few extra hundred dollars after investing a thousand already? And then just another few extra hundred dollars here and there?
Don’t believe me? Call any law firm in Canada and ask two questions:
1. Can you guarantee a fixed flat rate that would cover the entire process from start to finish, including responses to all office actions that may be issued during the process?
2. Do you guarantee that the trademark will be registered, and if the application is ultimately unsuccessful, will I get my money back?
Now compare their response with the answer you will receive from the Trademark Factory:
We charge a flat rate of $2,000 + tax + government fees for one trademark application in Canada (the total comes to $2,690). This amount covers everything from the initial search of registered trademarks, drafting and filing the trademark application to unlimited follow-up correspondence with the Trademarks Office, responding to all office actions, filing the declaration of use, and obtaining the registration certificate.
We guarantee that the Canadian Intellectual Property will approve your trademarks. Otherwise, you get all of your money back, including the fees you paid to the government.
If you use a remarkable name, logo or tagline for your business, the Trademark Factory™ is the perfect solution to register them as trademarks in Canada.
Often, I get requests to draft a simple agreement whereby the business owner who paid or is about to pay for some content created specifically for that business would own copyright in what they pay for.
Just today, I got a call from an existing client. They hired a videographer to create videos for their business. Now the videographer is claiming that my client does not own copyright in the videos. However surprising this may be to most people, the videographer is correct, at least from the legal standpoint.
Unless there is an assignment of copyright in writing, the copyright remains with the person who created the work, in this case, the videos.
Often, the client’s situation does not justify hiring a lawyer to create a completely customized agreement.
So I decided to share the template that I developed as a result of many years of writing these agreements in different jurisdictions.
If you hired someone to create content for you or you are about to hire someone to create content for you and you don’t have a budget to document the transfer of intellectual property from your contractor to you, you should definitely check out these templates. They may not ideally fit your situation and are not offered as legal advice, but in my experience, they should take care of 90% of the situations that usually arise around such facts.
This is where you can download standard Content Creation and Copyright Assignment templates at a fraction of what it would cost you to have a lawyer draft a customized contract. Check out the previews and see for yourself that the level of details covered in these templates greatly exceeds anything that you can download for free on the Internet.
Hoping that this will be of value to you.
CIPO offers a very sophisticated trademarks search on its website.
Unfortunately, as with most government websites, the interface is less than user-friendly.
This is why I created my own script that allows you to search for registered trademarks and trademark applications and displays information in a much more visually pleasing way.
Unfortunately, because of how CIPO’s database is designed, my search can only be used for the basic search, not the advanced search.
Feel free to use it. And if you do – please don’t forget to tweet about it!
Today I am extremely excited to announce the arrival of a new service, IP Strategy Review.
Most business owners with great ideas that need to be protected try to control their legal bills by not going to see a lawyer until they need to be saved. Some try to proactively limit the scope of lawyers’ involvement by googling something and coming to see the lawyer with a very specific (and often unhelpful) request.
No business can make strategic decisions about protection of its most valuable assets, unless it understands what these assets are and how they can be protected. With IP Strategy Review, I provide to you, at a fully predictable flat rate, a customized strategic solution outlining which areas of IP can help protect your ideas and intellectual property and which legal steps can be taken to achieve that protection.
IP Strategy Review provides a true benefit at a predictable cost, without forcing the client to pay for unnecessary services. It is a consultation during which we will discuss your business and determine which strategies would make sense from the legal, business, PR and economic points of view.
This service develops upon my two policies: I never sell my clients unnecessary services and I always prefer to sell value to my clients, not my time.
It comes in three packages. Please visit the IP Strategy Review Page for more details.
In my post Perception of the Law, I wrote that for most clients, the law is seldom anything more than a matter of risk management.
The first thing that comes to mind when one hears about risk management is, of course, insurance.
Some time ago I met with David W. Hamilton, the president of Front Row Insurance Brokers, a company that arranges insurance for feature films, TV, documentaries, commercials, new media, fairs and festivals, museums and art dealers, musicians, tour liability, recording studios - you name it.
I invited David to share some information about what his firm does, and this is what we came up with.
So if a company wants to get insurance against risks relating to infringement of IP, what kind of insurance policy would it be?
This is what is called Errors and Omissions Insurance. It covers legal liability and defense for the production company against lawsuits alleging unauthorized use of titles, formats, ideas, characters, plots, plagiarism, unfair competition or privacy, breach of contract.
It also protects against alleged libel, slander, defamation of character or invasion of privacy. This coverage will usually be required by a distributor, broadcaster or financier prior to the release of any theatrical or television production. Production financing will usually not flow until E&O coverage is in force.
What is involved with getting the E&O Insurance for a film?
1. Applicant and its counsel should continually monitor the production at all stages, from inception through final cut, with a view to eliminating material which could give rise to a claim.
2. The script should be read prior to commencement of production to eliminate matter which is defamatory, invades privacy or is otherwise potentially actionable.
3. Unless the work is an unpublished original not based on any other work, a copyright report must be obtained. Both domestic and foreign copyrights and renewal rights should be checked. If a completed film is being acquired, a similar review should be made of copyright and renewals on any copyrighted underlying property.
4. If the script is an unpublished original, the origins of the work should be ascertained - basic idea, sequence of events and characters. It should be ascertained if submissions of any similar properties have been received by the applicant and, if so, the circumstances as to why the submitting party may not claim theft or infringement should be described in detail.
5. Prior to final title selection, a Title Report must be obtained.
6. Whether Production is fictional or factual, it should be made certain that no names, faces or likenesses of any recognizable living persons are used unless written releases have been obtained. Release is unnecessary if person is part of a crowd scene or shown in a fleeting background. Telephone books or other sources should be checked when necessary. Releases can only be dispensed with if the Applicant provides the company with specific reasons, in writing, as to why such releases are unnecessary and such reasons are accepted by the Company. The term “living persons” includes thinly disguised versions of living persons or living persons who are readily identifiable because of other characters or because of the factual, historical or geographic setting.
7. All releases must give the applicant the right to edit, modify, add to and/or delete material, juxtapose any part of the film with any other film, change the sequence of events or of any questions posed and/or answers, fictionalize persons or events including the release and to make any other changes in the film that the applicant deems appropriate. If the person is a minor, consent has to be legally binding.
8. If music is used, the applicant must obtain all necessary synchronization and performance licenses from composers or copyright proprietors. Licenses must also be obtained on prerecorded music.
9. Written agreements must exist between the applicant and creators, authors, writers, performers and any other persons providing material (including quotations from copyrighted works) or on-screen services.
10. Whether the production is factual or fictional, if distinctive locations, buildings, businesses, personal property or products are filmed, written releases must be secured. This is not necessary if non-distinctive background use is made of real property.
11. If the Production involves actual events, it should be ascertained that the author’s sources are independent and primary (contemporaneous newspaper reports, court transcripts, interviews with witnesses, etc.) and not secondary (another author’s copyrighted work, autobiographies, copyrighted magazine articles, etc.).
12. If the Production involves actual events, it should be ascertained that the author’s sources are independent and primary (contemporaneous newspaper reports, court transcripts, interviews with witnesses, etc.) and not secondary (another author’s copyrighted work, autobiographies, copyrighted magazine articles, etc.).
13. Shooting script and rough cuts should be checked, if possible, to assure compliance with all of the above. During photography, persons might be photographed on location dialogue added or other matter included which was not originally contemplated.
14. If the intent is to use the Production on Videotapes, Videocassettes, Videodiscs or other technology, rights to manufacture, distribute and release the Production must be obtained, including the above rights, from all writers, directors, actors, musicians, composers and others, connected to the work, including proprietors of underlying materials.
15. Film Clips should not be used unless licenses and authorizations for the second use are obtained from the owner of the clip or party authorized to license the same, as well as licenses from all persons rendering services in or supplying material contained in the film clip; e.g., underlying literary rights, performances of actors or musicians. Special attention should be paid to music rights as publishers are taking the position that new synchronization and performance licenses are required.
16. In addition, dead persons (through their personal representatives or heirs) have a “right of publicity”, especially where there is considerable fictionalization. Clearances must be obtained where necessary. Where the work is fictional in whole or in part, the names of all characters must be fictional. If for some special reason particular names need not be fictional, full details must be provided to the Company in an attachment to the Application.
17. Consideration should be given to the likelihood of any claim or litigation. Is there a potential claimant portrayed in the Production who has sued before or is likely to sue again? Is the subject matter of the Production such as to require difficult and extensive discovery in the event of necessity to defend? Are sources reliable? The above factors should be considered in your clearance procedures and recommendations.
How much does the E&O insurance cost?
Premiums for E&O vary based on the content of the production. Every project is unique and requires a unique, custom E&O policy.
To give some idea about the cost of a typical policy: industry standard three year policy for a straightforward documentary would cost $3,000 to $4,000, while a similar policy for a feature film would normally cost $5,500 to $7,000.
Does insurance eliminate the need for lawyers?
Not really. To get insurance, you would need to have your lawyer review clearances, which means your lawyer will need to sign a document declaring that all important IP-related issues have been dealt with. Insurance companies also have their lawyers clear the application.
Insurance is not a "get out of jail free" card. It is meant to provide protection if something unexpected happens, not to back up a sloppy or, worse even, rogue business.
Unless you are serious about getting your legal work done properly, no insurance company is going to do it for you.
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