IP: What intellectual property do you have?

Knowing what intellectual property you own, how to deal with it, and how to protect it can be a daunting task. This article is a high-level summary of common types of intellectual property. 

Trademarks 

Trademarks originated in marks put on ancient pottery to identify the artisan. They indicate both the source and quality of the merchandise. Consider the image that comes to mind when seeing well-known trademarks such as Tim Horton’s, Apple, or Ferrari. 

Trademark registrations last for 10 years but can be renewed every 10 years. 

Trademarks can be a word, a phrase, a design, and even things such as sounds and scents. 

Limited common law trademark protection is available without registration. Registering a trademark gives better protection and makes enforcement easier. Registration is obtained on a country-by-country basis. So if a business’ market includes the United States or other countries, trademark protection should be obtained there as well. 

Businesses should register a trademark to protect branding if they are planning to use the trademark for a long time, are investing significant effort and money in marketing or advertising, or attempting to increase credibility or market image. 

If a business wishes to adopt a new trademark, it is important to seek advice at the outset. 

There are many restrictions in the Trademarks Act on what can be registered. For example, it can’t be confusingly similar to someone else’s trademark. It can’t describe your product (such as “cold ice cream”) or where your business is located (such as “London legal services”). It must be distinctive and not be something that a competitor might obviously use.  

Putting “TM” beside a mark can claim a common law trademark. While the “®” symbol should only be used for a registered trademark, “TM” can be used to identify a registered mark, a mark that has been applied for, or a common law mark. 

More information about trademarks is in our free Trademarks Guide.

Copyright 

Copyright is the right of an author of a creative work to prevent others from copying that work. Creative works include computer code, brochures, manuals, web pages, books, songs, movies, and blog posts. Copyright lasts for the life of the author plus 70 years. 

Copyright is about the expression of an idea, not the idea itself. For example, if I invent cold fusion and write about it, copyright stops others from reproducing my article but does not stop them from making the invention I describe. A patent would stop others from making the invention. 

Copyright is automatic. Registration is not required, although registering a copyright in some circumstances is a good idea.  

Marking something as copyright is not required. It is a good idea, however, to include a copyright notice, such as “© David Canton 2024. All rights reserved”. This makes people less likely to copy it. For anything on the internet, it helps counter the myth that it is free to use. 

Copyright is a valuable tool to protect a business’s interest in its creative works and products. It can also bring risks if the business uses material belonging to others. 

Caution should be used when incorporating images or video within a website, brochure, or product. So-called “royalty-free” images found on the internet may be free for personal purposes, but not for commercial use. Sometimes images are licensed for use on a print brochure but not on the internet, for use on a time-limited basis, or geographic basis. 

Artificial intelligence comes with some interesting copyright issues.  For more information, download Issues in Artificial Intelligence.

Care should be taken to ensure that third-party material is properly used and licensed if necessary. If others are creating material for you (such as creating your website or coding software), you need to obtain assurances that they have acquired all appropriate rights to the material for the intended use. You also need to get in writing whether you will own what they create, and if not, what you are allowed to do with it.  

Businesses often overlook the need to document ownership and rights to their own technology and creative works. In general, if an employee creates something, then the employer owns the copyright to it. But if it is created by someone other than an employee, that person or entity owns it unless there is an explicit agreement otherwise. The ownership and assignment of copyright in such materials should be documented at the time they are created. Badly done, it can ruin deals, lose financing, and cost money. 

Imagine the difficulty of proving to a lender or a potential purchaser of your business that you actually own your core technology, when various people — who may or may not have been employees — created it. Imagine the difficulty of getting those individuals or companies to execute assignments or acknowledgments after the fact when they are either nowhere to be found or not motivated to co-operate.

Moral rights 

Moral rights are related to copyright. A moral right is the right of the author of a work to be identified as the author. It is also to ensure the author’s reputation is not diminished by the use of the work. While copyright can be assigned, moral rights can only be waived. Moral rights waivers should be included as a matter of course in all agreements with any person providing any creative work, whether it be images, text, or computer code. They should also be included in employment contracts. 

Moral rights are not often litigated, but not getting them waived can cause roadblocks for many types of transactions.

Patents 

A patent is the exclusive right to make or sell an invention. Patents apply to a new and useful art, process, machine, manufacture, or composition of matter. It must be novel, non-obvious, and have real-world value. 

Patents last for 20 years. 

Once the subject of the patent is disclosed to the public, it is not possible to obtain patent protection. In Canada and the U.S., there is a one-year grace period, which is not the case in other countries. 

Disclosure includes a demonstration, a trade show, a published thesis, or marketing material. All too often, a business decides it may have created something patentable, but discovers when discussing the creation with a patent lawyer that it is impossible to obtain the patent due to prior disclosure. 

If a business believes that something may be worthwhile patenting, it should discuss it early, before publication, with a patent agent to determine whether it is indeed patentable and what options are available. 

Unlike the Copyright Act, the Patent Act does not deem employee creations to be owned by the employer. It depends on the circumstances and the role of the employee. It is prudent to cover this issue explicitly in employment contracts. 

Registered industrial designs 

These are called design patents in the United States. They protect design elements of a product that are unrelated to its function. Such as swirls on a bottle, or a unique grill design for a car. 

Registered industrial designs last for 10 years and can’t be renewed. However, some designs can also be protected as trademarks. So, in the right circumstances, an expiring industrial design can continue to get protection as a trademark.

Trade secrets 

A trade secret is a simple concept. Don’t tell anyone the details and treat it as confidential. To get protection as a trade secret one must be able to demonstrate that intent and show the steps taken to keep it confidential. Trade secrets are useful for anything that can’t easily be reverse-engineered such as the formula for Coca-Cola or Kentucky Fried Chicken. 

Concluding thoughts 

Getting intellectual property issues right is important and is far easier to do upfront than later. Intellectual property issues can be complicated and often controversial as new technologies — such as artificial intelligence — challenge business models and the ability of laws to deal with them.

David Canton is a business lawyer and trademark agent at Harrison Pensa with a practice focusing on technology, privacy law, technology companies and intellectual property. Connect with David on LinkedIn and Twitter.

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