Identifying and Protecting
Intellectual Property Assets
Justine Whitehead
STIKEMAN ELLIOTT LLP
Ottawa, Ontario
What is “intellectual property”?
 Certain creations of the mind can be considered
“property”, because legal means exist to allow
owners to exclude others from using the property
 Intellectual property (IP) is an intangible asset
 IP is protected to encourage creators, but public
interest is also balanced in the statutory schemes
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Why should you care about intellectual
property?
 IP issues arise for employees and for entrepreneurs
 Often a major portion of a company’s assets
consist of registered and unregistered intellectual
property
 Identifying and protecting IP adds value to
business
 Issues involving the identification and protection of
IP arise in a number of contexts:
– Creation
– Registration or other protection
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What is confidential information?
 There is no statutory or commonly accepted
definition: confidential information / proprietary
information / trade secrets often used
interchangeably
 Confidential information is information which is not
in the public domain and which provides the owner
with a business advantage
 If a product can be reverse engineered, its make-up
generally can not be considered confidential
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“Hard Work” or “Springboard” Secrets
 Absolute secrecy not always required
 Publicly available information that requires
expenditure of time and effort to compile can be
protected:
– Calgary Winter Olympics site case (Pharand Ski Corp. v.
Alberta (1991), 37 C.P.R. (3d) 288 (Alta Q.C.)
– Clamato case (Cadbury Schweppes Inc. v. FBI Foods Ltd.)
[1999] 1 S.C.R. 142
 Liability may be limited to value of head start and
defendant may not be precluded from future use
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How is confidential information protected?
 Before disclosure
– Ensure adequate physical security measures
taken
– Monitor relevant publications/speeches by
employees
– Watch out for “dumpster diving”
– Carefully consider and define the confidential
information to be disclosed when executing
non-disclosure agreements
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How is confidential information protected?
Common law rights of action
 Breach of contractual terms, whether express or implied
 Breach of confidence
 Breach of fiduciary duty
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Action for Breach of Confidence
 To establish a breach of confidence, three elements
must be shown:
– The information itself must have the necessary quality of
confidence about it;
– That information must have been imparted in
circumstances importing an obligation of confidence; and
– There must be an unauthorized use of that information by
one party to the detriment of the party whom the
confidential information belongs
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Ownership of confidential information
 If an employee creates valuable confidential information, who
owns it?
– Courts generally presume employee owns, unless:
 Express contract to the contrary
 Individual hired for purpose of inventing, or
 Individual is a fiduciary and thus has a higher duty of good faith
towards the company
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Is everything an employee knows
confidential information?
– A company can protect objective knowledge
(e.g. trade secrets or formulae)
– A company cannot stop a former employee from
using his or her subjective knowledge (e.g. the
skills and aptitudes that are transferable from
job to job)
– Often not easy to distinguish between the two
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Patents - Introduction
 A patent is a statutory monopoly granted under the
Patent Act for inventions
 Patents typically have a term of 20 years
 The monopoly grants the right to exclude other
from making, using or selling the invention
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What is protected?
 Each patent application (“specification”) contains
two distinct parts – disclosure and claims
 Patent protection is afforded to the claims as set
forth in the patent registration
 Each individual claim is, in effect, a separate and
distinct monopoly awarded to the inventor
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What is the test for patentability?
 Novel
– Watch out for public disclosure and prior art
 Non-Obvious
– An objective test using “person skilled in the
art”
 Useful
– Invention must work
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Ownership of Inventions
 Inventor [the person who first independently
thought of the invention and objectively
manifested the idea]
 Employee
 Independent Contractor
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Industrial Designs
 Industrial Design Act grants a statutory monopoly
to protect the esthetic aspects of a manufactured
article
 Term of 10 years from date of registration
 Exclusive right to make, use and sell items
embodying the design
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Copyright - Introduction
 What is “copyright”?
– A property right in certain types of works, such as literary, artistic and
musical works
– Copyright is separate from the rights in the tangible creation
– Copyright owner has the exclusive right to produce or reproduce the
work or any substantial part thereof in any material form whatever
 What is “original”?
– Creative spark not necessary, but need more than mere “sweat of the
brow”
– an original work is the result of an exercise of skill and judgment in
the production of that work
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What is protected?
 Copyright protects the particular expression of an idea, and
not the idea itself
 What can be a “work”?
– Literary, dramatic, musical or artistic endeavours
– Computer software, tables are considered literary work
– Protection extends to almost anything written, composed, drawn or
shaped including commercial advertisements, jingles, company logos
 Work created outside Canada may be protected by copyright in Canada if
the author was a citizen of or ordinary resident in a country that is a WTO
member or that is a signatory to the Berne Convention or the Universal
Copyright Convention
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Who owns copyright?
 Usually the author of the original work
 But if an employee creates a work in the course of
employment, that work belongs to the employer
 An assignment of copyright must be in writing
 When the author is the owner of the work, an assignment is
effective only for the life of the author plus 25 years, after
which the copyright reverts to the author’s estate
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What are moral rights?
Right of integrity
 Infringed where work, on an objective basis, is distorted, mutilated,
or otherwise modified to the prejudice of the honour or reputation
of the author
Right of paternity
 Where reasonable in circumstances, to be associated with the work
as its author, by name or pseudonym, or to remain anonymous
Moral rights non-assignable, but subsist for the same term as other copyright
rights
– Moral rights can (and should) be waived in any copyright assignment
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How long do copyrights subsist?
 Generally, for the life of author plus 50 years
 Some exceptions (e.g. photographs)
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Trademarks - Introduction
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Trade-mark/Trade Indicia
 What is a “trade-mark”?
– A trade-mark is a word, logo, phrase (or any
combination thereof)
– A trade-mark identifies the source or origin of
products and services and distinguishes one
merchant’s offerings from those of its
competitors
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How do trade-mark rights arise?
 Trade-mark rights are created by “using” the trademark, and maintained by continuing its “use”
 “Use” for goods
 Appear on the goods (wrappers, labels, packaging), or
brought to attention of consumer another way
 At the time of sale
 In the normal course of trade
 “Use” for services
 Appears in advertising relating to the services
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How are trade-marks protected?
 A trade-mark registration lasts 15 years and is renewable in
perpetuity
 A registration gives an owner the right to the exclusive use of
the trade-mark throughout Canada in association with the
goods/services for which it is registered
 Common law trade-mark rights support tort of passing off. To
be successful, a plaintiff must show:
– Reputation, or goodwill, acquired in the market place and attached to
the goods/services provided in association with the mark;
– Misrepresentation by the defendant causing confusion as to the source
of the product; and
– Actual or potential damage to the plaintiff due to the defendant’s
conduct.
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Benefits of Registration
 Registration grants right to exclusive use
throughout Canada, even if the trade-mark is not
actually used throughout Canada
 Registration can also allow the owner to defend
itself against a third party trade-mark infringement
claim, if the owner is sued for using its mark as
registered
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Benefits of Registration – Access to
Statutory Rights of Action
Imitation (section 19)
YOPLAIT for yogurt vs. YOPLAIT for yogurt
Confusion (section 20)
YOPLAIT for yogurt vs. YOUPLAY for yogurt or
YOPLAIT for butter
Depreciation of goodwill (section 22)
GOODTIME cars: all the quality of a FERRARI,
without the exorbitant price!
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Who owns the trade-mark?
 The entity that uses the trade-mark to distinguish
its goods and services from others owns the trademark right
 If one can prove prior use of a mark or a
confusingly similar mark, ownership can be
challenged
 There can be instances of conflict between trademark rights and copyright rights (if a contractor
designs a logo for you, make sure you get the
copyrights to the logo assigned to you in writing)
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What is the difference between a trademark and a trade name?
 Trade name: the name under which any business
is carried on, whether or not it is the name of a
corporation, a partnership or an individual
 A trade name is used for the purpose of
distinguishing the owner’s business (not
necessarily its goods and services) from the
businesses of others
 Corporate name registration does not automatically
entitle a company to use its name as a trade-mark
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What is the difference between a domain
name and a trade-mark?
 Domain names identify website addresses of businesses
 Domain names are more user-friendly than having to enter a
number-based IP (Internet Protocol) address
 A trade-mark owner can stop others from using the same or
a confusingly similar trade-mark as part of a domain name
for a competitive product or service, if such use is likely to
cause confusion in the minds of the public about the source
of the goods/services
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Justine Whitehead
Tel: (613) 566-0541
jwhitehead@stikeman.com
www.stikeman.com