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Canadian Intellectual Property Law and Strategy

Canadian Intellectual Property Law and Strategy Trademarks, Copyright and Industrial Designs

Author: John McKeown
Publisher: Oxford University Press USA
ISBN: 9780195369427
Published In: April 2010
Format: Paperback , 464 pages
Jurisdiction: U.S. ? Disclaimer:
Countri(es) stated herein are used as reference only

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Multifaceted investigation of Canadian IP procurement practices, providing valuable advice to attorneys on both sides of intellectual property litigation in government contracts
Provides practical guidance to avoid pitfalls of government IP contracting, and remedies for government misuse of IP rights
Written in collaboration by three prominent intellectual property litigators whose combined experience spans the private and government sectors

Canadian Intellectual Property Law and Strategy provides a comprehensive overview of Canadian law relating to trademarks, copyright and industrial designs, along with strategic, practice-oriented commentary regarding how such laws can best be used for business advantage.

This book provides a unique, strategic, transnational approach to protecting IP rights in Canada for legal practitioners outside Canada. It is a single, unified source for trademark, copyright, and industrial design law in Canada, including detailed analysis of the processes required to obtain and maintain intellectual property protection, with helpful examples drawn from the author's extensive practice experience.

Canadian Intellectual Property Law and Strategy is organized into three parts:
The first part of the book is devoted to trademarks. The book, in addition to providing an overview of Canadian trademark law, deals with how a foreign trademark owner can use the system most advantageously. The initial focus is on acquisition of rights while later chapters describe the best strategies to maintain and protect trademark rights in Canada.
The second part of the book is devoted to copyright, with a broad, business-oriented treatment that reflects the potentially far-reaching impact of the law. The approach is of a general commercial nature, emphasizing how rights can be protected in Canada. Specific attention is given to understanding which rights are available and the steps that should be taken to protect those rights, whether by means of the appropriate assignments and registrations, or enforcement actions in the Canadian courts.
The third part of the book focuses on industrial designs, and explains what needs to be done and when by manufacturers to protect their products. The emphasis is on the steps required to protect and assert rights against infringers.

Readership: Patent litigators, in-house counsel, or any attorneys considering an action for patent infringement or are facing a patent infringement action in Canada

I. Protection of Trade Marks in Canada
Trade Mark Legislation in Canada
Definitions
(a) Trade Mark
(b) Distinctiveness
(c) Prohibited Marks
(d) Official Marks

Registrability
(a) Descriptive or Deceptively Descriptive Trade Marks
(b) Acquired Distinctiveness
(c) Names of the Wares or Services

Acquisition of Rights
(a) Adoption
(b) Making Known
(c) Proposed Use
(d) Trade Marks Registered Abroad

Trade Mark Use
(a) The Concept
(b) Wares
(c) Services
(d) Exported Wares

Entitlement
(a) Marks that Have Been Used or Made Known in Canada
(b) Marks Registered and Used Abroad
(c) Proposed Use Marks

Applications
(a) Content
(b) Examination
(c) Disclaimers
(d) Advertisement

Registration and Marking
(a) Allowance
(b) Effect of Registration
(c) Marking

Assignments and Licences
(a) Assignments
(b) Licences

Expungement
(a) Section 45 Proceedings
(b) Expungement by the Federal Court

Confusing Trade Marks
(a) The Statutory Criteria
(b) Inherent Distinctiveness
(c) Duration of Use
(d) The Nature of the Wares, Services or Business
(e) The Nature of the Trade
(f) Resemblance

Opposition Proceedings
(a) Statement of Opposition
(b) Evidence
(c) Hearing
(d) Appeal

Infringement
(a) The Concept
(b) Depreciating the Value of Goodwill Attached to a Trade Mark
(c) Actions for Infringement
(d) Remedies

Common Law Rights

II. Domain Names
(a) Basic Concepts
(b) Availability of Domain Names
(c) Protecting Domain Names as Trade Marks
(d) Cybersquatting and Related Problems
(e) Criticism or Gripe Sites

III. Understanding Copyright
Copyright Legislation in Canada
(a)
Introduction

Definitions
(a) Acquisition
(b) Originality
(c) Fixation
(d) Compilations
(e) Derivative Works

Literary Works
(a) What is Protected?
(b) The Rights Associated with Literary Works

Dramatic Works
(a) What is Protected?
(b) Rights Associated with Dramatic Works

Musical Works
(a) What is Protected?
(b) Rights Associated with Musical Works

Artistic Works
(a) What is Protected?
(b) Rights Associated with Artistic Works

Cinematographic Works
(a) What is Protected?
(b) Rights Associated with Cinematographic Works

Performers Rights
(a) What is Protected?
(b) Rights Associated with Performers Rights

Sound Recordings
(a) What is Protected?
(b) Rights Associated with Sound Recordings

Broadcasters Rights
(a) What is Protected?
(b) Rights Associated with Broadcasters Rights

Moral Rights
(a) The Nature of the Rights
(b) Infringement

Term of Protection
Ownership
(a) Authorship
(b) Works of Joint Authorship
(c) Special Classes of Works
(d) Contracts of Service

Crown Copyright

Assignment
(a) Requirements
(b) Devolution
(c) Bankruptcy

Licences
Registration and Marking
(a) Automatic Protection
(b) Effect of Registration
(c) Marking

Infringement and Exceptions
(a) Concept
(b) Authorizing Infringement
(c) Secondary Infringement
(d) Exceptions
(e) Actions for Infringement
(f) Remedies

Copyright Board and Collective Administration of Rights
(a) Jurisdiction
(b) Collective Administration of Rights

IV. Understanding Industrial Designs
Industrial Design Legislation in Canada

Definitions
(a)
Subject Matter
Originality
(a) Nature of the Concept
Publication
(a) The Meaning of Publication
Applications
Registration and Marking
(a) Designs Registered After June 1993
(b) Designs Registered Before June 1993
Term of Protection
Ownership
(a) Author
(b) Designs Executed for Consideration
Assignment
Licence
Expungement
Infringement
(a) Concept
(b) Actions for Infringement
(c) Remedies

John S. McKeown, Partner

James McEwen, a founding partner of Stein McEwen & Bui, has prepared and prosecuted patent applications in computer hardware and software, control systems, mechanical and optical devices, semiconductor manufacturing, batteries, and display device technologies. In addition, Mr. McEwen has prepared and been involved in patent validity and infringement opinions, reissue and reexamination proceedings, intellectual property licensing and settlement negotiations, intellectual property licensing with elements of the Federal government, trademark prosecution, domain name disputes, trade secret protection, and provided litigation support in patent infringement claims. David S. Bloch is a partner with the law firm of Winston & Strawn, LLP., at their San Francisco office. David focuses his practice on complex intellectual property disputes, as well as the intersections of antitrust, government contracts, and intellectual property law. He is a graduate of Reed College (B.A.) and The George Wash

University (M.P.H., J.D. with honors), and served as a Fellow in International Trade Law at the University Institute of European Studies in Turin, Italy, in 1997. Richard M. Gray is the Director of the Intellectual Property Office, and Associate General Counsel, in the Acquisition Law Division of the Department of the Air Force, Office of the General Counsel. His primary duties include advising members of the Secretariat and Air Staff on intellectual property and technology transfer issues, and representing the Air Force on interdepartmental and interagency committees pertaining to intellectual property and technology transfer, including chairing the Defense Acquisition Regulations Council's Patents, Data, and Copyright Committee. For these subject matters, Mr. Gray also participates in regulatory and statutory drafting, and coordinating Air Force reporting to Congress and the Government Accountability Office. Additionally, Mr. Gray practices in the areas of cyberspace and computer

information management, information assurance, e-authentication, and information technology acquisitions.

"This book provides a comprehensive resource for U.S. practitioners with respect to intellectual property law in Canada. Its organization is clear and concise, with practical information easily accessible to the reader."
--Deborah Lively, Thompson & Knight LLP

"John McKeown's book is an excellent resource for anyone who needs information about IP legal issues in Canada. It includes both a thorough reference to relevant case law and statutes, as well as invaluable practical advice from an IP lawyer with a wealth of experience. It belongs on the shelf of any IP practitioner with clients who reside in or do business with Canada."
--Jim Davis, Partner, Arent Fox LLP, Washington D.C.