Generally, inventor owns the right There may be cases where employer owns rights by contract with an employee inventor US & – employee owns right, but employer has non-exclusive license to work the patent EU – mandatory employee compensation for patent Canada – nothing specific about employer-employee in the PA so left to contractual rights (CL – employee is entitled to the benefits) Ex – University research? Determine using “within the scope of employment” – professor using university equipment vs using their own comp as hobby What about a freelancer and not employee? No rights to employer and the inventiveness belongs to freelancer unless an implicit/explicit agreement exist Government ownership – s.20 Governments and crown corporations can own & acquire patents as well Federal gov – owns inventions by federal employees within the of their employment duties Gov are not required to compensate inventor. But they can make discretionary award or waive its ownership right OF s 45: patent rights are granted for a term of 20 years from the filing date of the patent SCOPE OF PATENT The rights are limited by the scope of claim in the patent The have to set out “distinctly and explicitly” what the scope is But, the reality is that patents are drafted quite vaguely to maximize the scope of patent rights, or due to difficulty in describing the invention Purposive construction – what this means is that claim should be claimed purposively, and allow judges to claim differently from what the literal of the patent claim provide (Whirlpool) Catnic case – demonstrate that is what a skilled architect, reading the patent at the date of publication, would have understood it to be [patent claims should be constructed in a purposive approach] FACTS & HOLDING Claim by C that W had double patented certain technology in their washer machines. Court found the patents were all valid (no double patenting) and that purposive approach was appropriate. Whether the patent was invalid as double patenting. Whether “purposive construction” was proper approach for patent claim construction. RULE Claims should be constructed in a purposive manner (in light of the claim, looking at the purpose of the inventionfrom literal construction)
s.41 - Technological Protection Measures & Rights Management Information Definition of TPM - s.41 CA Anti-circumvention CR owners who have had TPMs applied to or rights management info to CR works, have been granted additional ability to “police” their CR interest Rights of CR owners with respect to TPMS – s.41.1(1) CA No person shall (a) circumvent a technological protection measure within the meaning of paragraph (a) of the definition “technological protection measure in s.41 (2007) FACTS & HOLDING Use of themes and language from the Holy Blood and the Holy Grail in the DaVinci Code (Dan Brown). Court found that Brown only took generalized propositions, at too high a level of abstraction to qualify for copyright protection RULE The facts, the themes and the ideas cannot be protected but how those facts, themes and ideas are put together (the expression) can be protected FACTS (p.47) RULE To determine whether there was substantial copying for CR infringement, the cumulative effect (not necessarily the quantity) of the features copied from the work must be considered – qualitative & holistic approach - in order to determine whether those features amount to a substantial part of plaintiff’s skill and judgment expressed in his work as a whole. Reproduction may not be an infringement, but substantial reproduction might be. Substantially similar works? Qualitative and quantitative standard: A decision on substantiality is best reached by considering not only what was taken but the context of the taking, including what the taker did with it. Is the copyrighted work, the source? To see this: of copying Infringement inferred from access of independent creation rebuts inference of copying Question of fact - Very complicated process. Substantiality Analysis
Works other than Computer Programs Substantiality Uniquely distinctive the taking significantly impair the first work? The author’s ability to benefit from her work? Is the 2nd author unjustly enriching themselves? Do the 2 works compete against each other? Infringement in Computer Programs Canadian Approach – abstraction analysis: Delrina Corp. v. Triolet Systems (p.39) This abstraction analysis is unique to comp programs, other works are evaluated on substantiality Abstraction: weed out from CR protection those portions, which can’t be protected by CR Comparison: Determine if there is substantial copying Filtration: Disregard copied elements of the work that either have no originality, are dictated by functional considerations or are otherwise mere ideas US approach: Computer Associates International Inc v. Altai Inc Abstraction-Filtration-Comparison – s.27(2) CA – secondary infringement arises when a person sells, rents, distributes, trades in, exhibits, imports infringing copies of works or possesses them for purposes in circumstances where that person knew or should have known the copies infringed CR. Authorization vs. Secondary Infringement Authorization is enabling infringement (ex – employer putting a copy machine in the room of copyrighted work) vs. Secondary infringement (need proof of infringement, and also the knowledge aspect) & [knowledge std in secondary infringement: of that a reasonable man] Both are flooring companies. P claim that D infringed CR in the design of carpet tiles. & HOLDING Did the D have knowledge that its carpet design infringe P’s CR? YES RULE As cite in Apple Computer Inc v Mackintosh – “Knowledge” is notice of facts to a reasonable man that a breach is being committed. Knowledge is to be inferred from facts of case and burden of proof rests on P
HOLDING Here, the penguin marks are held not to be substantially different; and holds the same dominant features as the old mark. Thus, Mark continues to be in use in Canada, no abandonment. Various grounds for TM Infringement Unauthorized “use” of the identical TM s.19 Confusing uses of TMs s. 20 Uses that depreciate the value of the goodwill s. 22 Protection against passing off (s. 7(b)): Protects of registered and unregistered TMs *Note: Recall that use under s. 4 is viewed narrowly, except with respect to s. 22, where it has a more broad definition. TM – s.19 concerns with the “use” of an exact, precise mark while s.20 – the “use” of a confusing mark “Use” here “use” as a trademark, not just any use – “use” as a source of product Use as a “trademark” (under s.19) is different than use as a “mark (under s.4) “Use” as a trademark depends on (1) nature & purpose of the use and; (2) consumer’s perception of Y’s use Example X: “BROOKS” in association with Adidas shoes, Y: BROOKS nearly same quality as Adidas but with cheaper price Q - Is Y infringing X’s TM under s.19? Did Y use “BROOKS” to distinguish its goods as being a source while actually the source of the goods is X? Have to consider: Look at nature and purpose of the use – look at packaging, the way goods appear in the product Consumers’ perception of Y’s use – will they see it separately as Y’s own goods, or will they see it as X’s. Scenarios: May be infringing if using TM to distinguish one’s product May be infringing if it is used to confuse the consumer May not be infringing if the purpose is to simply provide honest information to consumers & [1968] [Infringement under s.19; Uses that depreciate the value of the goodwill s. 22] FACTS