Even Santa needs to get it in writing


The 2016 Fashion Santa.  photo source:  yorkdale.com

A Toronto mall and its former “Fashion Santa” are having a snowball fight over the character.  The mall hired a new Fashion Santa this year instead of the person who played the role before. The dispute is over who owns the character and name. They even have duelling trademark applications for Fashion Santa. 

In the end it comes down to the facts (including whether the individual is an employee or an independent contractor, and who developed the character) and the nature of any agreement that might exist.

While disputes over public characters makes for good press, this kind of dispute is actually not that rare.  Disputes often occur between individuals and the entity that hires them over who has rights to intellectual property. 

Typically the individual claims they created something before they were hired, or that they are really independent contractors providing a service.  The business claims either that it created it on its own, the employee merely had an idea that it then developed, or the employee developed it as part of the employee’s duties.  These issues can be difficult to sort out, as the facts are often fluid, and subject to different points of view. 

The best and easiest time to sort out ownership issues is at the beginning, and put it in writing.  But it may not be on the parties’ minds then.  Ownership and rights issues often get controversial only when something becomes successful and money gets involved – such as the publicity and success of Fashion Santa. 

Cross-posted to Slaw


7 things that can haunt you if you don’t document IP others create

top legal issues for tech bus

When employees create stuff (“creative works” in copyright parlance) as part of their jobs, the employer owns it. That includes things like computer code, photos, artwork, promotional material, text documents, and web designs.

But if it is created by someone else, the default is that the contractor owns it, not the company. That includes every possible arrangement you can think of other than employment. It could be an outside design company, some people that you “borrowed” from your friend’s business because they had some spare time or expertise that you needed, or a person you paid to create something.

It is crucial to get in writing either before it is started, or when the material is delivered, an assignment of the material, waivers of moral rights, and promises that they really created it themselves and haven’t “borrowed” it from the internet or some other source.

Here are 7 things that can haunt you if you don’t document IP others create:

  1. Financing, VC funding, or that sale of your business to the 1000 pound gorilla in your space that was your exit strategy can be scuppered if you can’t prove you own things.
  2. That person who helped you out that you now need to sign off is now somewhere on another continent and unreachable.
  3. That person who helped you out that you now need to sign off sees desperation and dollar signs and insists on an outrageous payout for their signature.
  4. That person who helped you out that you now need to sign off insists that the IP was and still is theirs, and that they own a piece of your company.
  5. It may turn out that the person used open source code that has turned your product into an open source product.
  6. It may turn out that the person used code that was not properly licensed and you now have to recode your product all over again.
  7. You may get a demand from an image company insisting on a large payment for the use of images that are now central to your advertising or brand.


When “use” is not trademark “use”

Law sometimes hinges on subtle distinctions that are not obvious, and can lead to surprising results.  The meaning of the word “use” for trademark purposes, for example.

A key principle of trademark law is that a business must actually “use” its trademark to keep its trademark registration alive, or to enforce its trademark rights against others.

But the legal concept of “use” for trademark purposes is narrower than most would suspect, and can result in a surprising loss of trademark rights for a business.

For example, a trademark on the side of a building, or on a business card, or on letterhead is not “use”.

A couple of recent cases in the Federal Court and the Federal Court of Appeal remind us of this.

It is common to register a corporate name as a trademark.  That’s fine if it is actually used as a trademark – but mere use as a corporate name is not enough to amount to trademark use.

Similarly, mere use of the trademark within an email or other text is not enough if it looks like the rest of the text.  It must somehow  look different than the rest of the text.

For example, if your company name is Abcd Widgets Inc, and your trademark is ABCD, the use of Abcd Widgets Inc. is not use of the trademark.  ABCD must be used independently.  And in text, using abcd is not use, but using ABCD may be, as it looks different than the surrounding text (unless, of course, the rest is in all caps as well.)

Cross posted to Slaw

A really dumb idea

For the London Free Press – March 14, 2014

Read this at lfpress.com

In February a “Dumb Starbucks” store appeared in Los Angeles. At first glance the coffee shop may have seemed like any other Starbucks store, but it gave away “dumb” versions of items sold by the Seattle-based coffee company, such as “Dumb Iced Espresso” and “Dumb Vanilla Blond Roast”.

People lined up to get in when it first opened, many probably thinking it was a real Starbucks. At least, that is, until they noticed the word “Dumb” in from of all the signage and product names, saw the interior, or actually tasted the products.

Dumb Starbucks turned out to be a publicity stunt. To extend the ruse, the creators anticipated the “how is this legal?” question. They published FAQs stating that because of parody exceptions to copyright and trademark law adding the word ‘dumb” meant that they were technically “making fun” of Starbucks. The shop said that by doing this, it allowed them to use the Starbucks trademark under a law known as “fair use.” The FAQ defined fair use as a legal doctrine that permits use of copyrighted or trademarked material in a parody without permission from the rights holder.

Although the shop was a fully functioning coffee shop, the FAQ stated “that for legal reasons Dumb Starbucks needs to be categorized as a work of parody art. So, in the eyes of the law, our ‘coffee shop’ is actually an art gallery and the ‘coffee’ you’re buying is considered the art”.

This legal explanation caused a bit of a kerfuffle for a short time until it became apparent that the FAQ was as fake as the store.

That legal explanation was a nice try, but conveniently overlooked some things. Such as the fact that fair use exceptions like parody rely on a fairness test and are not absolute. And the fact that the basic purpose of adding “Dumb” to the Starbucks brands was to trade on the goodwill Starbucks has earned for their brands.

Parody and satire have existed as fair use exceptions to copyright and trademark law in the United States for some time. They were added to Canadian copyright law in 2012. The Canadian Copyright Act states that fair dealing (as it is called in Canada) for the purpose of research, private study, education, parody or satire does not infringe copyright.

To determine whether fair use or dealing is indeed fair, the courts look at criteria such as its purpose; its character; the amount; available alternatives; the nature of the work; and the effect of the use on the original work. In other words, was it a reasonable thing to do, how necessary was it, and might it hurt the copyright owner?

This turned out to be a short-lived publicity stunt, but if anyone actually thinks they can trade on the goodwill of another’s brand by simply adding “dumb” to the name to turn it into a parody or satire they are just, well, dumb.


3D printer revolution

Today’s Slaw post:

3D printing has become a popular topic lately.  While 3D printers that print objects similar to how ink jet printers print words have been around for many years, the cost has come down dramatically, and will continue to come down. 

3-D printers are a disruptive technology, and as with any disruptive technology, the law will have to react to issues that come with it.  Possible issues include intellectual property, product liability, and use for criminal purposes.

There has been a lot of negative press lately about using 3D printing to create plastic guns.  To me that says more about the US gun culture than 3D printing.  Like most technologies, 3D printers can be used for good and evil.  And like most new technologies, it will take a while for the real uses to emerge.

Home 3D printers are now available, but we are a long way from having one in every house.  They are becoming accessible though – the office supply chain Staples recently announced it will provide 3-D printing services at its stores in Belgium and the Netherlands. Here are some examples of what a basic 3D printer can do.

3D printers have been a boon to engineers and architects, who have used rapid prototyping techniques for many years.  This article talks about how Ford uses 3D printing to create prototype metal parts such as transmission parts and brake rotors.

3D printing is being used to manufacture parts with complex shapes.   This new more fuel efficient jet engine uses 3D printed metal nozzles that are lighter in weight due to an advanced design producible only on 3D printers.

3D printing also has intriguing medical possibilities.  3D printed body parts – using live tissue – is a real possibility.  And it has been used to create relatively inexpensive replacement hands.  This video about the Robohand is well worth the 10 minute investment.



European Parliament votes against ACTA

Today’s Slaw post:

Over the last few years there has been much controversy over the negotiation of the international Anti-Counterfeiting Trade Agreement, or ACTA. Problems included that it was being negotiated in secret with little information being disclosed, lobby groups were granted unequal access, and the substance of the agreement proposed heavy handed enforcement.

It was signed last October, but apparently needs to be ratified by a certain number of signatories before it comes into effect. And even after that, the substantive provisions of international treaties such as this are not binding on individuals in any country until that country adopts laws that are consistent with the treaty.

Michael Geist reports that, while it is not dead yet:

the European Parliament voted overwhelmingly against the agreement, effectively killing ACTA within the EU. The vote was 478 against, 39 in favour, with 165 abstentions This is a remarkable development that was virtually unthinkable even a year ago. Much credit goes to the thousands of Europeans who spoke out against ACTA and to the Members of the European Parliament who withstood enormous political pressure to vote against the deal.

Remarkable indeed.


What’s that sound? A trademark

For the London Free Press – May 14, 2012 – Read this on Canoe

A movie studio’s roaring success opened the door for sounds to be trademarked

When one thinks of trademarks, the usual things that come to mind are word marks (the name of a company or product such as “Harrison Pensa” or “President’s Choice”) or design marks (the logo for a company or product such as the Ford blue oval or the McDonald’s arches).

Trademarks can also be registered for colour applied to an object (such as the Nerds On Site red cars, or the UPS brown delivery vehicles). And now we can register sounds as trademarks.

The Canadian Intellectual Property Office (CIPO) recently announced that it will accept applications for sound marks.

Sounds have been registrable as trademarks in the United States and other countries for some time. CIPO’s new position on accepting sound marks results from a long battle by Metro Goldwyn Mayer to register its roaring lion sound.

CIPO’s resistance to registering sound marks apparently arose because the wording of the trademarks act requires marks other than word marks to be filed as a drawing. Sound marks simply didn’t fit into the act’s registration requirements.

Many large brands have distinct sounds that form an important part of their television, radio and Internet advertising campaigns. It is logical that they should be able to file for a trademark for those, as they are no less of a brand than its word mark, logo or colour.

Indeed, sounds that don’t rely on language can become a powerful universal international brand.

We all recognize, for example, the MGM roar at the beginning of a movie, the NBC chimes on television shows and the Intel sound on computer ads.

An applicant for a sound mark registration will have to follow strict rules on the form of the application. It will also have to comply with requirements that apply to trademark registrations generally, such as not being descriptive, and not confusing with existing marks.

Applicants will need to file a recording of the sound, along with a description of the sound and a drawing representing the sound.

Now that these types of applications will be accepted, it will be interesting to see which companies rush to register their sounds in Canada, and how CIPO will approach its decisions regarding which sounds they will accept and which they will not.



Terms of use needs balance

For the London Free Press – April 2, 2012 – Read this on Canoe

Have you ever considered what a service provider – such as a cellphone company or social networking site – can do with the photos and other content you send or post using that service?

Sometimes the terms of use of the service provider are so broad they give the provider the right to use it for things such as their advertising, or to be able to sell user content for the service provider’s own gain.

Terms of use, or terms of service, are the rules we agree to when we contract to use a service. That might take the form of a written contract we sign when we purchase a cellphone, or the click-wrap agreement we click “I agree” to when we subscribe to a social media service such as Facebook or Pinterest.

Terms of use often include some form of licence or permission language stating what the provider can do with content users send or post using the service. Defining that is important to make clear what rights the service provider has to that content. In most circumstances, that licence language should grant the service provider rights to the content that it reasonably requires to provide its services.

Occasionally, these licence permissions are drafted overly broad and grant the service provider the right to do almost anything it wants with the content.

For example a cellphone provider was recently criticized for language that said it: “will be free to copy, disclose, distribute, incorporate and otherwise use the content and all data, images, sounds, text, and other things embodied therein for any and all commercial or non-commercial purposes.”

In most cases, such overly broad language is not a nefarious plot to acquire user content for the service provider’s own use or profit. It is more likely the result of contract drafting that has not been thought through properly.

The drafter was rightly thinking the terms of use needed some licence language to define what the service provider can do with the user’s content. And the language does indeed give the service provider the rights it needs. So from that perspective the clause works.

But the clause is a failure because it grants rights that the service provider doesn’t need, and doesn’t want. And it fails to look at the issue from the perspective of what uses a user would be comfortable granting to the service provider.

In other words, the clause does not balance the rights and needs of the parties.

So why would a service provider care, given that most people don’t bother to read terms of use?

Some people do read them, and eventually the language will end up being publicly criticized. That doesn’t bode well for the reputation of the service provider, and it may never know how many potential users voted with their feet and didn’t use their service because of the overly broad language.

Stop SOPA – PIPA protest

That’s the title of my Slaw post for today.  It reads as follows.

Here are some of the sites that are going dark today, or changing their home pages in protest over the proposed US legislation. For more information on why this legislation is so bad, check out these sites, or search for “SOPA” on Slaw or Techdirt.com, or just Google it.


Boing Boing



This is Google’s US site. Google’s Canadian homepage does not seem to be affected.

Michael Geist


Why Sopa & Protect-ip are bad ideas

There is proposed legislation in the US that would give broad rights to block entire web sites based on mere allegations that a small part of it might have some infringing content.   The legislation is backed by the entertainment industry as an anti-piracy measure.  There is a groundswell of opposition against the legislation, but it is still very possible that it could become law.

Mike Masnick of Techdirt has a great article explaining in detail what the problem is.