By: Christopher Heer & Annette Latoszewska
While intellectual property can be a substantial asset, failure to take steps to protect your intellectual property and/or to assure yourself that your business activities do not infringe the intellectual property rights of others can quickly render intellectual property a liability. Protecting your business from becoming involved in intellectual property litigation, whether as plaintiff or defendant, will save you time and money.
Crafting a comprehensive intellectual property strategy today can reduce the risk of your business defending or initiating intellectual property litigation in the future. While owners of intellectual property often take comfort in their right to sue in the event of a dispute, it’s important to note that a lawsuit represents a substantial financial and temporal burden. Litigants often assume that, if they are successful, they will recoup their costs. While costs are commonly awarded to successful litigants, they are never recouped in their entirety.
When considering your business’ unique intellectual property strategy, you may want to speak with an intellectual property professional to ensure that your strategy effectively addresses all of your intellectual property assets and identifies any potential liabilities.
Copyright consists of the exclusive right to produce or reproduce, perform or publish a creative work. Any creative work the copyright in which is owned by your business may be marked with the copyright symbol, ©, irrespective of whether that copyright is registered.
While copyright subsists in a work whether or not it is registered, registered copyrights are a valuable asset of your business and are an important part of an intellectual property strategy directed at avoiding litigation. By creating a formal, public record of the existence and ownership of copyright, registration may reduce the likelihood of a copyright dispute. Registration reflects a certain commitment to the protection and enforcement of your copyright and individuals seeing this may be deterred from infringing that copyright out of fear that you may be motivated to take legal action against them. When infringement does occur and, in an effort to avoid litigation, a cease and desist letter is first sent to the alleged infringer, such letter tends to have greater effect when the sender can point to a registered copyright which has been infringed by the recipient’s actions. This is yet another way that registering your copyright can help you to avoid litigation in the future.
Trademarks distinguish the goods and services which originate from your business from those sold and provided by others. Similar to copyright, trademarks do not need to be formally registered in order for their owners to enjoy certain exclusive rights in those trademarks.
Registering your business’ trademarks in Canada comes with a number of advantages. For one, registration prevents other businesses from registering the same or confusingly similar trademarks in Canada. Your registered trademarks will be cited against applications for confusingly similar trademarks by the trademarks examiner. Trademarks examiners do not check applications for trademarks against any unregistered trademarks, meaning that a confusingly similar trademark could be allowed to register if owners of unregistered trademarks to not themselves monitor for applications filed for such marks.
As is the case with any intellectual property asset, being able to cite a duly registered Canadian trademark in a letter to an individual which is alleged to have infringed or to be infringing that mark tends to result in more effective letter and greater likelihood of settlement out of court. Registration may also deter infringement altogether.
Patent Pending Notice
If your business has a pending patent application for an invention which is featured in one or more of its products, you are encouraged to indicate the same with the words “patent pending” on the product itself, its packaging or marketing material therefor. Providing notice of the pending patent may discourage competitors from copying your product. You may use “patent pending” in association with the product for as long as your business continues to prosecute the patent application.
Avoiding Infringing Upon Competitor’s Intellectual Property Rights
Just as you do not want other businesses to use your intellectual property without your permission, other businesses don’t want to see their intellectual property rights being infringed by you.
Images founds on websites like Google Images are not always free for you to use. It is important to verify the ownership of the image and confirm the terms under which you may use reproduce it. Note that even images purchased from websites like Shutterstock may have restrictions on their use. For example, certain licenses to use one or more images may be intended for personal use or for small-scale commercial use. Some licenses may provide that the images cannot be modified. Lawful use of miscellaneous works found on the internet may require a licensing agreement between your business and the owner, which usually involves paying the owner to use their work.
In summary, the best ways to protect your business from intellectual property litigation all revolve around being conscious of your intellectual property rights and the intellectual property rights of others and being proactive as opposed to reactive when it comes to protecting and enjoying them.