This will be the first post in a long series about amendments to the Canadian Copyright Act.

For ease of reference, I recommend that you open the Copyright Act with all revisions in a new window.

The first few changes are to Section 2 of the Copyright Act.

First of all, the definition of “moral rights” is amended to reflect the new reality that moral rights will now also cover performers’ performances. I will discuss this amendment as I get to the new s. 17.1 of the Act.

Second, the definitions section now also contains references to “WCT country” and “WPPT country”. The former means a country that is a party to WIPO Copyright Treaty, and the latter means a country that is a party to WIPO Performances and Phonograms Treaty. It would be logical to conclude that Canada, having signed the 1996 WIPO treaties on December 22, 1997 will finally implement them some 15 years later.

The term “treaty country” has been amended to also include WCT countries (but not WPPT countries). This is done because the term “treaty country” is only used with respect to copyright in works throughout the Act, not copyright in the other subject-matter.

BOTTOM LINE: the changes to s. 2 of the new Copyright Act are merely technical, so my assessment of the amendments is neutral.

On June 29, 2012, Copyright Modernization Act finally received Royal Assent. It is expected to come into force in the next few months by order of the Governor in Council.

I have also created a revised version of the Copyright Act consolidated with all amendments.

I have consciously refrained from commenting its provisions before it became final. In my opinion, the biggest problem with the Copyright Modernization Act is that it never answered the question of why we have copyright laws at all. I wrote about it in more detail in my article Modernization of the Inconceivable.

The current reform is hardly more than a spineless compromise. To me, it looks like it was borne out of a discussion went like this: “Let’s take this right from this group of people and give it to that group of people. But in order for us to be able to do it without creating too much of a stir, let’s also take this right from that group of people and give it to this group of people. Nobody’s going to be happy, but we have a chance of finally pushing this through the Parliament.”

The resulting Act is even more unreadable than the current one. The order of provisions and their numbering was and remains highly illogical. Only now it is even more so.

Some of the provisions are horrible from the linguistic point of view. For example, s. 19(1) now reads as follows:

(1) Right to remuneration – Canada

  If a sound recording has been published, the performer and maker are entitled, subject to subsection 20(1), to be paid equitable remuneration for its performance in public or its communication to the public by telecommunication, except for

(a) a communication in the circumstances referred to in paragraph 15(1.1)(d) or 18(1.1)(a), if the person entitled to the equitable remuneration is entitled to the right referred to in those paragraphs for that communication; and

(b) any retransmission.

Who’s entitled to what?

Unfortunately, regardless of what I or anybody else thinks about the new law, creators, businesses and lawyers will have to live by it.

This is why, having been silent on the changes to the Copyright Act before, I will now be publishing a series of blog posts explaining my position on each and every amendment, as to whether it makes the Act better or worse.

Many people find it ironic when I say that Canada tends to have very little respect for intellectual property.

Hinting on my Russian background, they counter, “Yeah, right, how about this huge Russian torrents website, where you can get pretty much anything you want for free and with impunity?”

Indeed, this may seem like a contradiction at the first sight. However, not really.

While Russia’s piracy rates are huge, I’ve always felt that there the majority of people know that they are doing something wrong when they are downloading other people’s works without authorization. It’s more of an “I’m a bad boy, and I know it” kind of attitude.

Things are different in Canada. Here, the attitude is: It benefits the great majority of the public to have free access to this work, hence it should not be illegal for me to download it, even if the copyright owner protests.”

While taking something that belongs to another without permission is bad enough, I strongly believe that it is much worse to do it under the false pretense that there is nothing wrong with doing it.

It’s bad enough when a bully takes away a toy from a child. It’s much worse when the bully’s parents find a myriad of reasons why it was OK for the bully to do it and why the child should have shared the toy with the bully in the first place.

Yesterday, I attended a Franchise Show in Vancouver.

It was a great event, even though less populated than expected due to good weather.

One thing I could not help but notice was the use by many franchisors and potential franchisors of the ™ sign next to their trademarks.

In context of franchising, this is a symptom of one of two very problematic scenarios.

In the first scenario, the franchisor actually has obtained the registration of its trademark, but continues to use the ™ sign in its marketing materials instead of the ® sign. Not only does this substantially depreciate the perceived value of the franchisor’s brand in the eyes of potential franchisees, such use is also confusing.

In the second scenario, the franchisor has not even applied for registration of its trademark. Granted, there are many businesses for which a registered trademark is an unnecessary luxury. This is the case where the trademark is not something that causes customers to buy from the business. Things are very different, however, in case of franchising. It is the brand that is the franchisor’s product, not what the brand offers to end customers. If a franchisor hopes to build a Canada-wide net of franchisees, it cannot rely on the notoriety of its trademark in one Province. Without a federally registered trademark, the value of the franchisor’s offering is questionable.

To recap, these are some of the benefits that a registered trademark (®) has over an unregistered trademark (™) in Canada:

– The right of exclusive use of the trade-mark across Canada with goods and services covered in the registration, with no geographical limitation to the area where reputation and goodwill has been established;

– No one can register a trademark that is the same as or confusingly similar with your registered trademark;

– The registration is prima facie evidence of your ownership and in a dispute involving a registered trademark, you do not have to prove ownership, the burden of proof is on the challenger;

– Registrar of Trade-marks will notify the owner of a registered trademark of the advertisement of somebody else’s trademark application if the Registrar is in doubt whether that other trademark is registrable;

– The right to sue for trademark infringement pursuant to Sections 19 and 20 of the Trade-marks Act;

– The right to sue for depreciation of the value of the goodwill pursuant to Section 22 of the Trade-marks Act;

– A registered trademark becomes incontestable after being registered for five years: a person who relies on common law rights may be unable to protect and register its trademark if another party registers a confusingly similar trademark and that mark is on the register for more than five years.

If you run a business that uses or sees franchising as its business model, wait no longer – Register your trademark in Canada now!

One of the most common misconceptions surrounding the law of trademarks in Canada is how trademarks relate to trade names. This misconception can have very costly consequences.

Trade names are used to identify a business or a company. Trade names are the “who” of the business. Customers do business with a business bearing the trade name.

Trademarks are used to identify products or services. Trademarks are the “what” of the business. Customers buy products and services bearing the trademark.

In very simplistic terms, customers buy trademarks from trade names.

Every business registered with the Registrar of Companies or incorporated (provincially or federally) has a trade name. But neither the reservation of a corporate name nor the formation of a corporation create a right to use the business name of the corporation in that jurisdiction.

How can that be? The government registers my business name and I can’t use it? Yes. Unfortunately, corporate registries don’t really check if the name submitted for the registration violates any prior rights. In other words, just because a provincial corporate registry approved your name for registration does not mean that you don’t violate someone else’s prior right (in a trade name or a trademark) and that you will not be compelled to change it in the future.

Rights in corporate names are treated like rights in unregistered trademarks, which means that they are nonexistent outside the geographical areas where the business is actually making use of and it known for its name.

Even if you register a corporate name that no one else had thought of before, it does not give you the right to stop others from using it, unless you can prove that other person’s use of the name creates confusion.

Just because you came up with a fancy company name that helps you attract customers for whatever products or services you are offering does not mean that your name, or brand, is a trademark. If you are not using your trade name as a trademark, your don’t have trademark protection for your trade name.

Trade name can be registered as a trademark, but only if you use it as such, that is, to identify products or services. This is often referred to as using the trade name as an adjective, as opposed to a noun.

Let’s say, your company is called Awesome Software Inc. and you make software. If you phrase your marketing materials to say that “Awesome Software Inc. offers such great titles as Text, Calculator and Presentations”, you are using “Awesome Software” as a trade name. If you phrase them to say “We offer Awesome Software™ Text, Awesome Software™ Calculator and Awesome Software™ Presentations”, then you are using “Awesome Software” as a trademark.

The classic example is, of course, Microsoft® Windows®. We don’t buy Microsoft, we buy from Microsoft. But because “Microsoft” is a part of the name of the product we buy (and part of the reason why we buy it), it is also protected as a trademark in its own standing.

If you believe that a substantial number of your customers are attracted to your business because of your trade name, you should consider using the trade name as a trademark and getting it registered as a trademark.

In other words, if you consider your trade name a factor that gives you a competitive advantage, you should not rely merely on registration of the company name with the Registrar of companies. You should accord the asset that you care about the protection that it deserves, and the only way to do it is through registering it as a trademark.