Knitter's Guide to Copyright: Copyright Basics
The Knitter's Guide to Copyright: Copyright Basics
E. Other forms of legal protection for your creations
5. Confidential information or trade secrets
1. Neighbouring rights
Usually, copyright protection is given to a work that is created by an author--a book or a script is written, a portrait is painted--but in Canada, protection is also afforded to those people who don’t actually create a work, but make use of an existing work. This protection is referred to as a neighbouring right.
As an example, let’s say that a playwright writes a script and a musician writes an accompanying score. A theatre group performs the play in front of an audience, accompanied by an orchestra playing the score. A performance of the play is taped, then broadcast at a later time to television viewers. The score is also recorded separately as a soundtrack. A proprietary right can arise with respect to each one of these actions.
The script, assuming it is sufficiently original, is protected by copyright. The performance of the play, the performance of the score, and the broadcast of the play, however, arose because of the original script and score. Nevertheless, there are rights associated with each of them.
A discussion of these rights is beyond the scope of this FAQ (for the moment), but for example, the Copyright Act protects a “performer’s performance”, which is the performance of an artistic, dramatic, or musical work, or a recitation or reading of a literary work, even if this performance or reading is not recorded. It does not matter if copyright has expired in the underlying work (the play or the score, for example); the performance is still protected, although other people may perform the play or score as well.
The Act gives the owner of the performer’s performance the right to make any type of recording of the performance or a copy of the recording (referred to as a “fixation”), to communicate the performance to the public by telecommunication, to perform it in public by telecommunication (as long as it is not broadcast by radio waves), to deal in copies of the recorded performance, and to rent out sound recordings of the performance. This is different from the copyright in the underlying literary, musical, or artistic work. A performer’s performance also includes improvisational pieces which were not previously scripted or scored.
There is also specific protection for sound recordings and for communications signals.
The Copyright Act also provides protection for moral rights--an author’s right to integrity in his work. It is an infringement of an author’s moral rights to make any modification to a work that prejudices the honour or reputation of the author; clear examples of this are mutilation or association with a disreputable cause. Moral rights are not common to all countries.
2. Industrial designs
An industrial design registration (referred to in the U.S. as a "design patent") is granted for designs (features of shape, configuration, pattern, or ornament and any combination of those features that, in a finished article, appeal to and are judged solely by the eye) that are applied to an article. These designs can include the carving on a chair back, a fork handle shape, or a running shoe tread, as long as the design is not there only because it serves a useful purpose on the article to which it is applied.
No one but the owner of an industrial design may make, import, sell, rent, or offer for sale or rent, any article for which the design is registered and to which the design is applied, for a maximum of ten years. This protection includes designs that do not “differ substantially” from the registered design, although in determining whether or not a difference is substantial, reference is had to how much the registered design resembles any previously published designs.
Industrial designs do not arise automatically upon creation of the design, as copyright protection does. The Industrial Designs Act requires that a registration must be obtained and renewed after five years in order to claim this type of protection. Also, an industrial design is granted only for novel designs that are distinguishable from the prior art. Contrast this to copyright law, where protection is available for a work so far as it is original to the author. Like copyright, the owner of the industrial design must enforce the rights him- or herself.
Sometimes, the artistic work underlying an industrial design may be protected by copyright, which is a more useful form of protection; industrial designs may be enforced against identical or similar designs that are applied to the same type of article, whereas copyright enforcement is not limited to the same type of article. However, the Copyright Act limits the scope of protection for designs or artistic works that are properly within the realm of industrial designs, in order to avoid unfair duplication or extension of rights under both regimes.
3. Patents
3.1. What is a patent?
A patent gives its owner (the patentee) the exclusive right to make, use, or sell the invention claimed in the patent. Anyone who, without permission, makes, uses, or sells in Canada the claimed invention, infringes the patent.
Physically, a patent is a document issued by the government which sets out what the invention is and how you go about making it. The patent also contains a set of claims, which describe that in which the patentee claims to have an exclusive right. To be liable for patent infringement, the infringer must be doing what the claims describe. (Although this sounds simple in principle, patents are not pleasant documents to read. They are usually highly technical and the claims resemble single sentences which run for a paragraph containing very bad grammar; however, drafting them is truly an art form.)
Patents are granted by the government as part of a “bargain” between the inventor and the public. In exchange for the right to prevent other people from using her invention for a certain period of time, the inventor gives to the public all the information needed to make her invention, so that others may engage in research and development built on her work.
3.2. What can be protected by patent?
Patents are granted for new and useful inventions, consisting of any art, process, machine, manufacture, or composition of matter, or a new and useful improvement over one of these items. An invention can include techniques or methods, chemical compounds, new uses for chemical compounds, machines, and micro-organisms.
Some types of subject matter are specifically excluded from patents. Matter that is properly protected under other statutes, such as industrial designs, trade-marks, copyright, integrated circuit topographies, and new plant varieties, is excluded. Natural phenomena, scientific principles, and abstract theorems, are not inventions, although they may be newly discovered; a novel application of a phenomenon, principle, or theorem, though, is patentable. Methods of medical treatment are also excluded, although the tools or drugs used in medical treatment are patentable.
In order to obtain a patent, the invention must be new, useful, and non-obvious.
New means that the invention must not have been available to the public, anywhere in the world, before the patent application is filed. Outside the United States and Canada, there is effectively a prohibition against obtaining a patent if the invention is shown at all to customers first, for example. In the U.S. and Canada, there is a grace period for disclosures by the inventor or someone who obtained information from the inventor. In that case, a patent application must be filed within one year of disclosing the invention or it will cease to be new.
Useful means that the invention must work. It does not have to work well, but it must at least do what the inventor says it will do.
Non-obvious means that the invention must be inventive. There must be something to the invention that sets it apart from what others have been doing in the relevant field, which would not have occurred to the ordinary skilled worker to do.
Just like a copyright or an industrial design, the patentee or the licensee must enforce their rights against infringers themselves.
3.3. How do you get a patent?
Patents do not arise “automatically” like copyright. It is necessary to obtain a patent through a lengthy application process.
The applicant must draft a specification, which includes the disclosure (the part that explains what the invention is and how it works) and the claims (the part that explains what the applicant says are its exclusive rights). This specification, together with a formal request for a patent, is sent to the Patent Office together with an application fee. Unless the applicant specifically requests it, the application essentially lies dormant for 18 months (a confidentiality period). After 18 months, or earlier if the applicant requests it, the application is published so that any member of the public may read it. The application is then examined to determine whether it meets the statutory requirements (stylistic requirements, novelty, non-obviousness, utility) and amendments are made, if necessary. Eventually, the application is either rejected by the Patent Office, or it is allowed and upon payment of a final fee the patent is issued.
On average, this process takes two to three years and costs several thousand dollars (if the applicant hires a patent agent to draft and prosecute the patent application; the applicant can always try to do it him or herself).
3.4. Where and for how long is a patent effective?
The exclusive rights granted by a patent now expire 20 years after the date the application was filed. For certain patents that were issued from older applications, the term is the longer of the 20-year term, or 17 years after the date the patent was actually granted.
Patents are territorial. Each country may only issue a patent which is effective within its own jurisdiction. An applicant may apply in as many countries as it chooses, and there are mechanisms in place to facilitate applications in multiple countries at once. However, to obtain a patent in each country, the applicant must satisfy the legal requirements in each country, which may vary.
4. Trade-marks
A trade-mark is a slogan, word, design, or symbol which serves to indicate a person’s or business’s goods and services. Some famous trade-marks include PEPSI (a word), McDonald’s golden arches (a symbol), and the shape of a Coke bottle (a shaping of a package). Trade-marks may be registered or unregistered; registration has significant advantages. In either case, the trade-mark must be used as a trade-mark in order to benefit from protection.
A trade-mark is used by being marked on goods or packages of goods that are sold in the normal course of trade. It is not enough to merely advertise the trade-mark; it must actually be applied to the goods or packages at the time of sale. In the case of services, which are intangible products that cannot be marked, it is sufficient to display the mark in performing or advertising the service.
If the owner of a registered trade-mark fails to use the trade-mark properly, then the associated trade-mark rights may be lost.
Registering a trade-mark grants to the trade-mark owner the exclusive right to use the trade-mark in Canada in association with the goods or services for which the trade-mark was registered. Anyone else who does this without consent is infringing the trade-mark. It is also infringement to use a mark that is confusingly similar to a registered trade-mark, or to use the trade-mark in a way that is likely to depreciate the goodwill associated with the trade-mark. It is up to the trade-mark owner to enforce its trade-mark rights.
If a trade-mark is not registered, the owner may still protect the trade-mark, but legal protection will be limited to the geographic region where the trade-mark was used or made known (a registration grants rights across the country). The unregistered owner cannot allege the types of infringement that a registered owner can claim; instead, the unregistered owner must bring an action for passing off, and must establish three things: first, that the public associates a certain degree of goodwill or reputation with the trade-mark; second, that the defendant has made a misrepresentation to the public; and third, that the trade-mark owner has consequently suffered injury. Even if the defendant was using the identical unregistered trade-mark, the trade-mark owner must still prove these three conditions. If the trade-mark had been registered, it would have been sufficient for the trade-mark owner to prove that the identical trade-mark was being used on similar wares or services.
(An aside on orthography: you might note that Americans spell it "trademark", while the British spelling is "trade mark", two words. Why the hyphen in the Canadian spelling? No special reason. When the Trade-marks Act was drafted, a hyphen was inserted, and no one bothered to take it out.)
5. Confidential information or trade secrets
All of the forms of intellectual property protection mentioned above include some element of publication. Works protected by copyright are generally available to the public (although recall that a copyright owner has the right to not publish a work). The patent bargain requires disclosure by the patentee in exchange for exclusive rights. Industrial designs are for use on articles, and when an industrial design registration is granted, the public may view the registration. Trade-marks need to be displayed and used in order to maintain protection.
On the other hand, sometimes there is information that doesn’t fit into any of the categories of copyright, industrial design, patent, or trade-mark, or needs to be kept secret because it gives the owner a competitive advantage. Such information may be protected by the owner as confidential information. This is a legal concept that does not require registration.
In order to preserve confidential information or a trade secret, the owner of the information must treat it as confidential. The information must be kept secure. If it is revealed to any other person, it must be done under conditions indicating that the transmission of the information is confidential. The best way to do this is by having the owner and the recipient of the information sign a confidentiality (or “non-disclosure”) agreement. Without a signed agreement, in the case of use or misuse of the confidential information, it is more difficult for the owner to prove that terms of confidentiality were in place.
Protecting information as a trade secret can be spectacularly successful (for example, the formula for Coca-Cola; if it had been patented, then anyone could have replicated the formula decades ago) but it has significant limitations. If a third person, who is not bound by any terms of confidentiality, discovers the information, then this third person is at liberty to use it. Had the information been patented (if it were suitable for patenting), then during the life of the patent even this third person would not have been able to use the information.