Who would have thought that the week before Christmas would be so fruitful on important decisions in the area of intellectual property.
First, the Supreme Court of Canada has delivered a landmark decision in Cinar Corporation v. Robinson. In it, the Supreme Court of Canada unanimously dealt with many crucial issues pertaining to how copyright cases will be resolved in the future:
– the scope of protection afforded by the Copyright Act;
– the meaning of the words “substantial part” that set out the threshold for copyright infringement;
– rules regarding disgorgement of profits;
– rules regarding non-pecuniary damages; and
– rules regarding punitive damages.
Despite Supreme Court’s unanimity, this decision in fact further blurs the line between unprotectable ideas and protectable expression of ideas by adding a significant degree of subjectivity in the analysis. The Court refused the approach whereby the court first determines the original elements in the plaintiff’s work, then filters out unprotectable elements from that list, and, finally, compares the remaining protectable original features with what was actually used by the defendant. Instead, the Supreme Court preferred the holistic approach where “The character of the works will be looked at, and the court will in all cases look, not at isolated passages, but at the two works as a whole to see whether the use by the defendant has unduly interfered with the plaintiff’s right.”
This case likely turned on the single issue that defendants had access to the plaintiff’s work and knew that plaintiff would object to their use of it. The court wanted to land a helping hand to an author who failed to carry out a project whereas a very similar project was later carried out by several parties some of whom were originally involved in the plaintiff’s project.
It is what some lawyers call “the degree of sneakiness” that decided the case. In other words, the entire copyright law analysis only happened after the judges internally decided that the plaintiff should be rewarded and the defendants should be punished.
While I typically always support those whose rights are infringed in copyright law suits, this may be the case when bad facts make bad law, because I’m not sure that I agree (from the description of the two works, and without having had a chance to compare the actual works) that what was used was more than unprotectable idea.
Time will tell what this case will mean in terms of development of Canadian copyright law.
The second case is the case decided by BC Court of Appeal that affirmed the landmark decision of BC Supreme Court in Woodpecker Hardwood Floors (2000) Inc. v. Wiston International Trade Co..
I already wrote about the facts of the case with a brief analysis before, but briefly here they are again: a BC flooring company that’s been around for over a decade realized that its competitor, another flooring company from the same city trademarked the word “Woodpecker” as its own.
The dilemma – do we spend a ton of money on rebranding or do we spend a ton of money on lawyers to fight this through – was entirely avoidable. All the first company had to do was register its trademark first.
They decided to fight for their trademark. BC Supreme Court granted an injunction recognizing the first company’s prior right in the trademark. Now, the BC Court of Appeal has agreed.
Happy ending? Not really, unless you mean a happy ending for all lawyers involved in this case.
Now that the case has been through the BC Supreme Court level and the Court of Appeal level, the first company has probably spent close to 100 times the amount that it would have cost them to register their trademark when they were starting out.
If anything, it would have been a good insurance policy.
Remember, registering trademarks is within the reach of any business that’s more than just a hobby. It’s a long-term investment that is crucial for any business that spends time, money and energy on branding and marketing.
Now, that there is a way to register your trademarks with a Triple Peace-of-Mind Guarantee™, you are committing a crime against your business if you are not protecting its trademarkable assets!
Speaking of how we help our clients register trademarks, here’s a testimonial from another happy customer:
P.S. Merry Christmas, Happy New Year and Happy Holidays!
As I was watching the latest Dragons’ Den on my laptop a couple of days ago, I was bombarded with the same advertisement, over and over again.
Ford was adamant to show me how great their new car is.
The ad closed with this line:
Only Ford has Ecoboost fuel economy
Curiously, the ad does not explain what the Ecoboost fuel economy actually is or how it is better (if at all) from all other options that exist on the market today.
What matters is that only Ford has it.
How do they achieve this unique position on the marketplace?
They have a registered trademark for the word ECOBOOST®
Now, nobody can use the word ECOBOOST in association with automobiles and automobile engines.
What the system does is irrelevant, because trademarks do not protect the substance, only the name.
But this is a great example how protecting a name can boost your advertisement, marketing and (hopefully) sales.
P.S. If you look at our Trademark Factory™ website, you will notice that we do what may look like the same thing there when we claim that we offer our unique Triple Peace-of-Mind Guarantee™
Our offer is indeed unique, but even if (when) other law firms decide to copy our offer, they still would not be able to call it a “Triple Peace-of-Mind Guarantee”, because it is our trademark.
Are you using a special name to refer to the uniqueness of your offer? See if you can register it as a trademark for FREE with no strings attached.
In a recent case Woodpecker Hardwood Floors (2000) Inc. v. Wiston International Trade Co., Ltd. and Wiston Building Materials Co., a BC Supreme Court judge granted a court order (injunction) preventing the owner of a registered trademark “WOODPECKER” from using it because this name for many years had been used by that company’s competitor who neglected to register their trademark.
Woodpecker Hardwood Floors have been using the brand since at least 2000, without registering it as a trademark with the Canadian Intellectual Property Office (CIPO).
Lo and behold, in 2011 a competitor, Wiston, a company started in 2009, filed an application for the trademark WOODPECKER with CIPO, which application has matured to a registration in 2013.
Mr. Justice Silverman found that “Having two ‘Woodpeckers’ selling hardwood flooring within a mile of each other in Richmond would seem to run contrary to public interest.” Because Woodpecker Hardwood Floors started using their mark years and years prior to Wiston, the judge recognized that Woodpecker Hardwood Floors had the prior right that trumped Wiston’s right to the registered trademark.
This case has 3 important lessons for Canadian businesses. They are nothing new to trademark lawyers, but this case presents a great example of how poor IP strategy can spell trouble.
So here are the three things to remember:
1. A trademark registration is not a tool to override pre-existing rights of your competitors. Even if you succeed with such registration, it will not be worth much because it can be taken away from you easily and it cannot really be enforced against the competitor anyway.
2. Had Woodpecker Hardwood Floors registered their trademark early, the Canadian Intellectual Property Office would never have registered a confusingly similar trademark for Wiston, so all of this would have been a non-issue to begin with.
3. If the old Woodpecker had registered its trademark, it would have cost at least 10-15 times less compared to having to take Wiston to court over an unnecessary dispute.
I’ve said it many times, if you have developed a valuable brand for your business and you have not registered it as a trademark, you are not being serious about your business. It’s not even about bringing a knife to a gunfight. It’s about bringing a blindfold to a gun fight – simply hoping that somehow things will figure themselves out. Even if they occasionally do, the cost may be prohibitive.
With the Trademark Factory™ offering a unique new way to register trademarks in Canada with a Triple Peace-of-Mind Guarantee, there is really no excuse for neglecting to protect your valuable business assets!
I will be holding a flood of workshops and presentations in the next 30 days.
I thought I’d put them all in one place, here.
October 8, at 11am PST: Branding Your Fitness Business with Velocity Athletic Training Radio
October 17, at 4pm PST: Intellectual Property in Plain English at Capilano University BOSS Entrepreneurship Program
October 21, at 7pm PST: Developing and Protecting Online Brands with Internet Masterminds Group Meetup
October 30, at 11am PST: Terms of Endearment: Contracts for Wedding Professionals at Frame to Finish Expo with Canon
November 2, at 11am PST: Legal Foundations and Intellectual Property at SFU Entrepreneur of the Year Jumpstart program
Looking forward to sharing my passion for intellectual property!
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Tags:CollectivismPhilosophySmall BusinessNew Copyright ActFair Dealing