Archive for June, 2010
ipblog.ca will be taking a break over the summer. We’ll be back in the Fall to pick up developments such as:
- Canadian Copyright Reform (with Parliament breaking for the summer, there will be no further Parliamentary debate on Bill C-32 until September);
- The US Supreme Court’s decision in the Bilski case (relating to patentability of business methods and software);
- Changes to the Canadian rules in assessing patentability for “computer-implemented inventions”;
- The Canadian Intellectual Property Office’s plans to expedite the examination of so-called “green technology” patent applications;
- Developments in licensing, trade-marks, internet law and trade-secret law.
Have a good summer.
Calgary – 09:00 MTNo comments
The Canadian Intellectual Property Office has released a draft version of Chapter 16 of the Manual of Patent Office Practice (MOPOP), relating to “Computer-Implemented Inventions”. The chapter is open for public review and comments between June 16, 2010 and August 19, 2010 and is available through the MOPOP Updates web page. The current revision process provides more detailed guidance and examples regarding computer-implemented inventions.
This development in Canada is being closely watched in parallel with the pending release of the Bilski review of business-method patents and computer-implemented inventions in the US.
Calgary – 09:00 MTNo comments
The Electronic Frontier Foundation has published an interesting article on Apple’s iPhone Developer Program License Agreement under the (strange) heading “All Your Apps Are Belong to Apple“ which is garbled from both a grammatical and legal perspective. The Developer Agreement has some zingers in it, to be sure, but it certainly doesn’t claim any ownership over developers’ apps.
If you are a developer, you own your apps. (Section 3.1 of Schedule 1: “…Apple shall not acquire any ownership interest in or to any of the Licensed Applications or Licensed Applications Information, and title, risk of loss, responsibility for, and control over the Licensed Applications shall, at all times, remain with You.”)
Calgary – 08:00 MTNo comments
The iP3 Forum in Toronto on June 21, 2010 provides an arena to discuss the potential of Apple’s Touch Platform. A business track provides analysis and insights on how to leverage the Platform’s market potential. The technical stream gets into the details of designing and app development.
I will be speaking on the subject of “App Law: The Legal Side of Mobile Apps” including a review of the law of iP3 Apps, copyright issues, trade-mark issues, intellectual property ownership, and a review of app licensing. I also look at tips for mitigating risk under app development agreements, and an update on the latest in app lawsuits.
For registration details, see: This Link
Calgary – 08:00 MT
The Canadian government has introduced the next version of its long-awaited and much-debated copyright reform bill (Bill C-32, the Copyright Modernization Act). Here are a few interesting highlights:
- Format & Time Shifting: (Sections 29.22 and 29.23) The new law would allow consumers to “format shift” music from commercial CDs to hard-drives, iPods or other devices. It would also permit “time shifting” of TV programs. However, this right does not override the anti-circumvention restrictions. Put another way, if you have to crack a digital lock in order to make the shift, then you can’t legally shift.
- Back-Ups: (Section 29.24) The proposed law allows users to make backup copies, but again, this right is subject to the anti-circumvention restrictions. It’s hard to find a commercial DVD now that doesn’t have digital locks, which means that in practical terms, any back-ups of personal DVDs would have to break a lock, would violate the anti-circumvention restrictions, and would thus be prohibited under the new law.
- Software Interoperability: (Sections 30.61 and 41.12) Interestingly, the anti-circumvention rules do not apply if you want to circumvent a digital lock on software, “for the sole purpose of obtaining information that would allow the person to make the program and any other computer program interoperable”. This need not be for personal use… so does this mean that competitors can legally hack each other’s code for the sake of interoperability?
- The YouTube Exception: (Section 29.21) There is an interesting exception for “Non-commercial User-generated Content”. Basically, if you construct a mash-up using bits of copyright-protected material, then this kind of creation will not infringe copyright, as long as it is for personal use and doesn’t have a “substantial adverse effect, financial or otherwise, on the exploitation or potential exploitation of the existing work”.
- ISP Liability? (Section 27(2.3)) This new section might be called the Anti-Napster provision since it makes clear that copyright will be infringed by anyone who provides an Internet service that is designed “primarily to enable acts of copyright infringement”. This raises the question of the liability of Internet Service Providers, though some language has been sprinkled in to provide comfort to ISPs.
Before it becomes law, it must pass through Parliament and withstand any lobbying efforts by industry and consumers.
Calgary – 14:30 MTNo comments
The government has introduced proposed amendments to the Personal Information Protection & Electronic Documents Act (PIPEDA). The changes to the federal law are wide-ranging and will have a significant impact on privacy law here in Canada. Here are a few highlights from a business perspective of the proposed changes in Bill C-29, and once it passes into law, we’ll provide an overview:
- Business Transactions: If you want to disclose personal information during negotiations for a “prospective business transaction”, the proposed changes under Section 7.1 will be of interest since they permit “…organizations that are parties to a prospective business transaction” to “use and disclose personal information without the knowledge or consent of the individual” as long as the organizations have entered into an agreement restricting use, and imposing “security safeguards appropriate to the sensitivity of the information”. If the transaction does not proceed, then the information must be returned or destroyed. This moves the federal law into line with the approach taken in Alberta.
- “Business Contact Information” would be specifically excluded from the purview of PIPEDA. This category of personal information refers to an individual’s name, position name or title, work contact details and e-mail address.
- “Employee personal information” will be treated differently under the new law, since the changes make it clear that consent is not required for the collection, use and disclosure of such information as long as it is to “establish, manage, or terminate the employment relationship” as long as the employer has notified the employee. This is best done at the outset of the employment relationship. Again, this brings PIPEDA in line with the Alberta law.
Calgary – 09:00 MT
The trade-mark Moto Mirror is registered in Canada for use with truck and automobile mirrors. However, the owner of the mark did not actually manufacture the mirrors. In a series of licensing agreements, the owner of the mark authorized other companies to make and sell the mirrors under the Moto Mirror brand. This is common enough, and is permitted under Canadian trade-mark law, as long as the owner maintains the required degree of control over the “character or quality of the trade-marked wares”. So what degree of control is required?
In Tucumcari Aero, Inc. v. Cassels, Brock & Blackwell LLP (March 9, 2010), the Federal Court of Canada reviewed this question. The Court has reinforced the concept that indirect control will satisfy the requirement, and indicated that: “What is required is that the registrant be able to control product quality through the exercise of its contractual rights vis-à-vis the intermediary which, in turn, is entitled to control product quality under contract with the sub-licensee. So long as there is a continuity of quality control that can be effectively maintained by the registrant under the chain of contracts no special conditions or language are required.”
Lessons for business?
- When licensing trade-marks, make sure you get legal advice to ensure your license agreements are properly drafted;
- The court was clear that “no special conditions or language are required” as long as it is clear that the owner controls product quality through the chain of contracts.
Calgary – 08:00 MT