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Holbeche Law IP #savepepe character copyrightAt some point, cartoonist Matt Furie’s Pepe the Frog character went from “peaceful frog-dude” to recurring character in white supremacist memes. Furie responded by partnering with the Anti-Defamation League in a #SavePepe campaign. He also made a YouTube™ video about some of his experiences in this respect.

Copyright Dispute Resolved

On another front, Matt Furie and his pro bono lawyers were recently successful in settling a copyright dispute without resorting to litigation. (You can read the American Bar Association’s report here.) It seems, the dispute was over a children’s book which likewise featured a frog named Pepe but promoted “conservative” views. In the book, Pepe took on a bearded alligator named “Alkah” and tried to bring law and order to a “Wishington” farm.

Under the settlement, the author of the unauthorized book has admitted to the copyright infringement and agreed to:

• Cease any further use of the copyrighted character, image, or name of Pepe the Frog. And,

• Pay all past profits earned from his book to the Council on American-Islamic Relations.

Crowdfunding Success for Character

Meanwhile, Pepe’s creator has now closed a successful Kickstarter™ crowdfunding campaign. So, the frog character might next appear in a new comic book more consistent with its roots. Funders should expect delivery of the comic by this December.

Just in time for the holiday season?

 

Holbeche Law IP Intellectual Property Protection ChinaOn July 25th, China opened its first IP protection center. According to report(s), it was established in the Pudong district of Shanghai, a leading district for certain emerging industries there.

The IP protection center will work with the country’s State Intellectual Property Office to protect IP rights. Accordingly, its initial focus will be on Pudong’s high-end equipment manufacturing and biopharmaceutical industries.

National IP Plan in China

First, the center serves as a pilot in a planned national platform. It aims to make for fast patent approvals. Additionally, it offers quicker and better rights protection and enforcement, with streamlined complaint channels to investigate suspected violations of patents, trademarks, and copyrights.

China has made great strides in its IP protection regime over the past few decades. So, this new protection center should help owners obtain even better IP protection.

Also, more industries should be included in the platform, in the future, in keeping with regional development patterns.

 

With its network of foreign associates, HOLBECHE LAW can help clients protect and enforce IP in China.

 

Typically, if you want registered ​​trademark protection somewhere – e.g., in Canada and/or the United States – you must apply for protection in each jurisdiction separately. Clients often may be interested in registering their trademarks in Canada. (Also, or instead, they may be interested in trademark registrations in the US and elsewhere.)​​

To get underway, your trademark lawyer / agent will need a list of any goods and services you already offer, and those you intend to offer, in association with the trademark.

You should note that, even without registering, a measure of protection will exist under the common law for any who have already been using the trademark in their business.

With a registration, however, a trademark owner typically will have much better rights than they would without one. For example, you could then have protection across Canada, with your trademark being presumed valid and enforceable against others.

You would then have a better basis to keep others from using / infringing on your trademark, passing off their goods and services as yours, and trading on the goodwill you’ve established in association with your trademark. And, yes, that includes an ability to sue them (should it come to that).

The trademark application procedure includes an advertisement phase, when your application will be advertised by the Canadian IP Office. At that time, any interested 3rd parties can come forward and oppose your application if, for example, they had been using the trademark for years but had never bothered to register it.

Also, apart from opposition proceedings, 3rd parties could seek to expunge any trademark registration you might obtain. But, 5 years after registration, your trademark registration will become incontestable.

A trademark affords protection against any confusingly similar use in the marketplace, not just against exact matches. And, so, it can be a powerful tool, with great value, for your business.

Of course, HOLBECHE LAW would be pleased to discuss these and any related issues in significantly greater detail, if you would like to get the firm’s help with trademark matters going forward.

It seems, the young at heart weren’t the only ones who had trouble making sense of Instagram’s terms of use. The Washington Post reported that actual youngsters also found them hard to understand.

A UK privacy lawyer, Jenny Afia, reworked the terms and conditions – and renamed them as “Our Rules if you want to use Instagram” – to include the following simplified passages, among others:

• Don’t let anyone else use your account.
• Keep your password secret.
• Don’t bully anyone or post anything horrible about people.
• Don’t post other peoples’ private or personal information.
• You have the right to feel safe using Instagram.
• Don’t send us ideas on how to improve Instagram.
• Officially you own any original pictures and videos you post, but we are allowed to use them, and we can let others use them as well, anywhere around the world. Other people might pay us to use them and we will not pay you for that.
• We may keep, use and share your personal information with companies connected with Instagram. This information includes your name, email address, school, where you live, pictures, phone number, your likes and dislikes, where you go, who your friends are, how often you use Instagram, and any other personal information we find such as your birthday or who you are chatting with, including in private messages (DMs).
• We are not responsible for what other companies might do with this information.
• We can change these rules whenever we like by posting an update on Instagram, whether you notice it or not.

Now, it likely comes as no surprise that kids can actually figure out what these passages mean.

And, maybe we all can benefit from this sort of initiative – Instagram and other online providers not least of all…

More understandable legal writing can make for a better meeting of the minds, and more enforceable terms, conditions, and agreements.

 

With simple and clear writing, HOLBECHE LAW can help clients prepare better agreements to protect and enforce their IP.

 

Whether you and a few friends invented the next big thing – or even if you came up with it all by yourself and just need the right help on your way to market – you might benefit by incorporating and holding your invention in the new company. However, incorporation’s not for everyone and, incorporated or not, some believe partnership to be more “straight-forward”.

Good news, if you happen to be thinking about a partnership (or find yourself already in one), patent rights can be jointly owned / co-owned. (Co-inventors, for example, often find themselves the default co-owners of an invention.) Though, before you leap and in any event, it makes sense to first look at some of the consequences associated with co-ownership of patent rights.

First: Should you later go your separate ways, then without an agreement to the contrary, each co-owner will have an independent ability to work the invention, or to assign their individual patent rights to someone else. That means, for example, your co-owner and former partner could assign her rights in the invention to some big and powerful competing multi-national corporation, who’d then have an independent ability to make, use, and sell, etc. your invention without accounting to you. It also means you both would need to act together to enforce your patent rights.

Second: The default position in Canada – again subject to any contrary agreement – provides that a co-owner can’t license their patent rights to a 3rd party without getting the other co-owner(s) on board too. That means, for example, even after a split, you’d need your co-owners on board to set-up and collect an ongoing royalty stream from someone else who you found to license the invention from you.

Third: On the other hand, in the United States, each co-owner may be able to independently exploit (e.g., license) the invention, without getting the consent of their co-owners and without accounting to them. That means, by default (barring an agreement to the contrary), your co-owner may be able to independently license the invention to someone and collect royalties from them, without getting you on board.

So, it makes sense to understand the repercussions and, possibly, to consider reaching some agreement with your partners and co-owners if you want to vary from any of the default positions above.

Aside: If you contemplate joint / co-ownership of any other IP (e.g., for trademarks or copyrights), then keep in mind that joint ownership works somewhat differently for other forms of IP, and likely may be wholly inadvisable for your trademarks…

You should contact a patent lawyer and agent (e.g., at HOLBECHE LAW 😉 ) for more info on joint / co-ownership of inventions and patent rights.

(Also, you may want to reconsider if incorporation might yet prove the more straight-forward afterall…)

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The contents of this website were offered for informational purposes only and should not be construed as legal advice. A visit to this website does not create a lawyer-client relationship. You should consult a lawyer (preferably at HOLBECHE LAW 😉 ) for individual advice regarding your individual situation.

Image above by Jonata (Own work) [CC BY 3.0 (http://creativecommons.org/licenses/by/3.0)], via Wikimedia Commons

Conan O’Brien, TBS, Conaco and a number of writers have been deposed in a lawsuit which alleges infringement of Mr. Robert Kaseberg’s copyright in five jokes.

An article by The Hollywood Reporter says that some of the defences at issue include independent creation, lack of originality, and fair use.

No laughing matter?

You have a good idea. It could be an invention with the potential to change how people do business, or a catchy brand name for your next venture. You want to take it to the next stage and do something with it. Here are three tips on how to protect your good idea and secure the first-mover advantage.

1. Discretion: Be Initially Careful How and With Whom You Share It

Whether you want to on-board investors or take an offering to market, the early stages of any idea’s development can be the most risky. When first starting out, make sure you can trust your potential business partners, investors, and advisors to act in your best interests and to keep your valued ideas confidential. Certain professionals, like a lawyer you retain, will be obligated to do so. For others, you should consider a (written) confidentiality agreement before sharing your ideas and business plans with them.

2. Protection: Consider Applying for a Trademark or Patent

Next, before going to market, consider protecting your catchy brand name with a trademark or filing a patent application to protect your revolutionary invention. Otherwise, down the road, you may find yourself with unwanted competition and no exclusive rights, nor any way to distinguish your business from innumerable others.

Your business’ Intellectual Property can include confidential information, patent pending inventions, trademarked brand names, and copyrighted works. Like other property, the more time and effort you put into your Intellectual Property (or IP), the greater its potential value. Also like other property, IP can be an asset and its value can be captured within your enterprise. To do so, you should also consider getting the right IP ownership and assignment documents in place out of the gates – i.e., to ensure that all your IP will be held by your business and to make things as attractive as possible for your potential investors.

3. Initiative: Secure the First-Mover Advantage

It makes sense to map out how Intellectual Property filings and protection can best fit within your larger go-to-market strategy. When done correctly, patent and trademark protection can help you secure a “first-mover advantage” for your business.

With the right confidentiality agreements and IP protections in place, you might also (or instead) consider whether there may be any opportunities to commercialize your IP under a joint venture agreement or with licensing and royalties.

One more thing: Whether or not you apply for protection on your IP, your business materials can (and should) put others on notice of your intention to protect your proprietary trademarks and copyrights – e.g., by using the ™ and © symbols. These symbols can be used for registered and unregistered trademarks and copyrights alike. So, make sure you take advantage of the IP protections freely available for your business.

Of course, having a great idea can be a good start, but properly executing it (with the right team of advisors and partners by your side) will be what makes it thrive.

Kevin Holbeche is an Intellectual Property lawyer and registered patent and trademark agent with over 15 years of experience. Previously a partner in one of Canada’s biggest law firms, he founded HOLBECHE LAW in 2016 to assist those who want to protect, manage, buy, sell, license and enforce their intellectual property. Kevin helps to build IP asset portfolios, and to make deals happen for the companies and people who own them. Visit www.patentpatent.com for more information.

This article originally appeared in the March 2017 issues of Neighbours of Lorne Park, of Neighbours of Port Credit, of Neighbours of Mississauga Road, and of Neighbours of High Park published by Best Version Media

Many find that provisional US patent applications can provide good value, if used correctly. Such an application secures a priority filing date for an invention, and provides it with “Patent Pending” status.

A provisional US patent application affords 1 year to decide whether, or not, to follow-up by filing any regular patent applications in the various countries and regions of interest. In this way, clients can put off the costs of those regular patent applications, and inexpensively secure a “Patent Pending” priority filing date, while on-boarding investors and otherwise starting to commercialize their technology in the meantime.

It makes sense, should a client be interested, to make sure that – from the start – one properly navigates some of the potential pitfalls which otherwise might be associated with improper use of provisional US patent applications.

(And, of course, HOLBECHE LAW would be happy to help in this respect 😉 )

With the rise of Minecraft – a popular video game and online phenomenon – some players have started creating interactive ‘Redstone’ calculators and computers within its virtual confines.

[Aside: ‘Redstone’, a virtual material in Minecraft, can be used in the game much as someone might use electrical components and wiring in the real world.]

Minecraft™ platform users can then operate these virtual computers to actually perform calculations (e.g., as demonstrated in this Youtube™ video) and provide other real world utility. Numerous other video “games”, online and otherwise, allow users to create new and original virtual property constructs that offer functionalities in the real world.

Now, from an intellectual property perspective, a work must be both creative and original for copyright to subsist. And, to be granted a patent, inventions must be useful, new and ingenious. Accordingly – and as the lines between gamification, virtual worlds, and the real one become increadingly blurred (e.g., with the advent of augmented reality) – we may soon find greater public interest in seeing how these and other virtual constructs might properly prove worthy of intellectual property protection…

For now though, perhaps, you should just stay tuned.

Where do Canadians file, and who files in Canada, for IP protection?

The Canadian IP Office has released the IP Canada Report 2016.

It seems that, other than Canadians, most applicants for IP protection in Canada come from the United States, Germany, Great Britain, Japan, France, Switzerland and China.

And, outside of Canada, Canadians most often file for IP protection in the US, China, EUIPO, EPO and OHIM.

The Canadian IP Office will change how it examines geographic names in trademarks.

See the linked Practice Notice for guidance on ‘Geographic Names’ that can be ‘Clearly Descriptive’ or ‘Misdecriptive’, or even ‘Deceptively Misdescriptive’.

Forty years ago, Canada granted its 1 millionth patent. Today, the Canadian IP Office celebrates this milestone, and invites you to watch their new video which appears on the Innovation, Science and Economic Development Canada channel on YouTube.

The video provides general information on patents in Canada, including what they can protect, the exclusive rights they grant, and the role of innovation in Canada.

As the video suggests, you can learn more about patents at Canada.ca/patents

(And, of course, HOLBECHE LAW will be happy to help in this respect too 😉 )

Last night’s United States presidential election may still be fresh in many peoples’ minds.

Earlier this year, in May, the US Patent and Trademark Office (USPTO) had issued an Office action against an application which was filed to protect a DRUMPF trademark in the United States. The Office action refused the application due to an alleged association with then presidential candidate (and now new president-elect) Donald J. Trump, without his consent. A response was due on 5 November 2016.

As this due date fell over the weekend, the response was effectively due on Monday.

Now, the USPTO’s online records indicate no timely response has been filed to the Office action. If so, in due course, the DRUMPF trademark application may be deemed abandoned.

Love this linked photo, which appeared on Facebook, from a personality / IP rights perspective… In the foreground, Bill Murray – at a Chicago Cubs pennant race game – wears a t-shirt parodying both a couple old movies (in which he starred) and a new one (in which he had a cameo).

In the background, others appear readily identifiable. Take a look, for example, at the fellow you can see over Mr. Murray’s left shoulder (on our right) in the above-linked photo. He seems somewhat skeptical of the spectacle. Did he think he would see this photo on Facebook? Has he actually seen it there? These days, anyone with a Facebook™ account (including, perhaps, the fellow seen in the linked photo) could tag him(self) in any copies of the photo which might have found their way onto Facebook.

Now, would this seemingly skeptical fellow be happy with this photo? (Did he get a chance to ask for a retake?) Did whoever first uploaded it to Facebook represent they had this fellow’s permission to do so? And, what would happen if he now asked Facebook to take it down?

Layers upon layers. So rich.

Plus, I mean, all that noise aside, the shirt? And, on Bill Murray?

Excellent.

After a California resident live-streamed his son’s birth on Facebook, a clip from the video was broadcast by ABC’s “Good Morning America” and also appeared online on Yahoo.

It was reported that the father has since sued Yahoo and ABC for infringing his copyright in the video. Among other things, he seeks monetary damages of at least $150,000.

It remains to be seen whether the companies may shelter behind “fair use” principles in the United States – e.g., by successfully arguing that this baby’s live-streamed birth was newsworthy.

The Canadian IP Office invites you to check out their new video which appears on the Innovation, Science and Economic Development Canada channel on YouTube.

Viewers will see the video provides basic information about copyright in Canada, including the types of works that can be protected, the ability to use the © symbol in copyright notices, and the duration of protection in Canada – i.e., generally the duration of the author’s lifetime plus another 50 years.

As the video suggests, you can learn more about copyright, and copyright registration in Canada, at http://Canada.ca/copyright.

(And, of course, HOLBECHE LAW will be happy to help you in this respect too 😉 )

In 1928, Philip Francis Nowlan wrote a Buck Rogers novella called Armageddon 2419 A.D.

Recently, as reported in The Hollywood Reporter, various filmmakers and producers seemed interested in making a movie based on the novella. But, it appears, that interest was quelled when a Buck Rogers publisher’s family trust claimed that copyright still subsists in the novella, and that a license would be required to make the movie. A court was asked to rule on whether the original Buck Rogers novella had entered the public domain. But, the court refused to consider the question, indicating that it lacked immediacy – since no studio seemed firmly committed to producing a movie based on it.

So, there it stands. And, it seems, the Buck Rogers novella may remain in a sort of suspended animation for some time to come. The question of its copyright / public domain status may yet be revived, in some distant future, should any navigate a license to produce a movie based on it, and/or should some intrepid studio “commit” to the project.