Intellectual Property

In highly competitive industries, it is imperative that businesses and individuals protect their trade secrets and confidential information. We assist with preparing confidentiality agreements, non-disclosure agreements (NDA), and trade secrecy agreements on your behalf. We can also provide counsel if there has been a breach of any of these agreements.

We advise clients on key copyright issues including:

• Authorship
• Ownership
• Subject matter
• Licensing
• Assignment
• Permissions
• Registration
• Notice
• Fair dealing
• Moral rights
• Term
• Reversion
• Infringement and remedies

We have experience working with clients in a broad range of activities such as software, government, advertising, visual arts, publishing, design, technology, photography, education, architecture, film, television, and the internet.

Boughton Law’s Intellectual Property Practice Group also drafts and reviews copyright provisions and agreements, conducts due diligence, gives chain of title opinions, and counsels clients on protecting, exploiting, and enforcing copyright.

Frequently Asked Questions

What is copyright?

The exclusive right to copy, publish, record, perform, broadcast, translate, convert or adapt an original creative work or permit someone else to do so.

What does copyright protect?

Original literary, dramatic, musical and artistic works. Originality does not require quality, skill or artistic merit, so long as the work originates with the author and is not copied from someone else.

What are examples of original works?

• Literary works: software, tables, compilations, books, poems, and film scripts
• Dramatic works: plays, films, and cartoons
• Musical works: advertising jingles, songs, and symphonies.
• Artistic works: maps, blueprints, paintings, sculptures, photographs, and drawings

What is not protected?

• Ideas or concepts, unless it is an expression of them
• Names, titles, slogans or short word combinations are not protected by copyright, although they may be protected as trade marks
• Features of shapes, configurations, patterns or ornamentations which are mass produced

Who owns the copyright?

sually the author or creator, unless the work was created in the course of employment – in which case it may belong to the employer – or the copyright has been legally transferred to someone else. Much depends on whether you are an independent contractor or employee and whether there was an agreement to the contrary.

What is the difference between an employee and an independent contractor, and how can I tell whether there was “an agreement to the contrary”?

The courts look at the degree of control exercised by the “employer”, the ownership of the tools, the chance of profit and risk of loss, and how integrated the person is in the employer’s business. This is a tricky area in which it would be wise to get legal advice.

How is ownership of copyright transferred?

Copyright ownership can be transferred to someone else by a legal assignment in writing signed by the owner.

What if I commissioned and paid for the work to be done, but there is no written assignment?

Unless the work was a photograph, portrait, engraving or print, if there is no written assignment the copyright ownership may still be with the author or creator.

How can I not own the work when I paid for it?

It is possible to own the physical copy of the work, but not the right to reproduce it. For example, you can buy an original painting and own the physical canvas, but not have the right to make copies of that painting for resale unless you have a written assignment of copyright from the owner or a licence to reproduce it.

What is the difference between an assignment and a licence?

An assignment is a transfer of ownership of the copyright to a work. A licence is an agreement which gives the licensee permission to use or reproduce the work under certain conditions.

What is copyright infringement?

It is an infringement to use copyright material without the permission of the owner.

What if I only take part of the work or make some changes?

If there is a substantial similarity and you do not have permission, it is still infringement.

Aren’t there some exceptions under the Copyright Act?

Yes, there are “fair dealing” exceptions which allow the use or reproduction of a copyrighted work for private study, research, criticism, review or news reporting, but these are fairly narrow.

How long does copyright last?

With some exceptions, copyright generally lasts for the life of the author or creator plus 50 years.

Am I free to copy a work after the term of protection has expired?

Yes if you stick to the original. Although Shakespeare’s plays are in the public domain, it would still be an infringement to copy a recent Penguin edition of “Hamlet”, complete with its annotations, footnotes, and editorial comments, because separate copyright subsists in that version of the original work.

Do I have to register?

No, protection arises automatically on creation. However, there are some advantages to having a registration if there is a dispute.

What are the advantages of registration?

Registration creates a legal presumption that the registrant is the copyright owner. It also limits the defences available to the defendant in an infringement action and may entitle the owner to damages.

Is a Canadian copyright enforceable outside of Canada?

Yes if it is a country which belongs to the Berne Convention, the Universal Copyright Convention, the Rome Convention or the World Trade Organization, but it may be advisable to register your copyright in certain key countries such as the United States.

How do I register?

You can download an application and instructions from the Canadian government website at http://strategis.ic.gc.ca and file it electronically. The fee is $50.
If you want to make sure you get it right, we can prepare and file the application for you.

*See Fine Print

The publishing industry is one that deals heavily with copyright and intellectual property. In the past, Boughton Law has represented leading publishers, writers, editors, and agents. We have extensive experience advising our clients on copyright, licensing, defamation, and privacy. We also draft, negotiate, review, interpret, and enforce publishing and agency agreements for books, periodicals, and websites.

If you are a writer or work in the publishing industry, we can advise and represent you for specific issues such as:

• Moral rights claims
• Options on future work
• Triggering out-of-print and reversion of rights clauses
• The effects of royalty provisions
• Electronic rights
• Joint authorship
• Agency disputes
• Copyright infringement
• Fair dealing exceptions
• Libel and defamation
• Negotiating subsidiary rights
• Obtaining permissions
• Branding strategies
• Privacy concerns

Regarded as some of the most competitive industries, the software, technology, and e-commerce sectors require that you have strong protection of your intellectual property and the right documentation in place. We provide a range of services to these clients which includes the preparation and negotiation of software development agreements, software licensing and distribution agreements, end-user licenses, call centre agreements, web-linking agreements, domain name protection, strategic alliances, and other contracts related to the commercialization of intellectual property.

Registering for, enforcing, and protecting a trade mark are key components securing your intellectual property. We have considerable experience advising clients about clearance, registration, monitoring, licensing, transfer, and the enforcement of trade marks.

Some of the services we offer are:

• Availability searches
• Registrability opinions
• Due diligence review
• Chain of title investigations
• Preparation, filing, and prosecution of Canadian applications
• Oppositions and cancellation proceedings
• Local and foreign registration
• Maintenance and renewal
• Assessment and management of international trade mark portfolios
• Enlisting watch services for both specific market sectors and on the internet
• Advice on infringement and passing off matters
• Representation in injunction and seizure applications
• Advising, negotiating, and documenting the assignment, licensing, and control of trade mark rights

Frequently Asked Questions

What is a trade mark?

A word or words, symbol, design or combination which distinguishes one product or service from another and identifies the source for purchasers (e.g. STARBUCKS for coffee.)

Who can apply?

Individuals, partnerships, companies, legal associations, and joint ventures.

Why register?

Registration in the Canadian Intellectual Property Office (CIPO) is proof of ownership, warns competitors of your prior rights, and is enforceable against infringers anywhere in Canada.

Registration is not mandatory, but has some important advantages:

• Others can search the register to avoid a conflict with your mark
• The CIPO can refuse registration to a confusingly similar mark
• It is enforceable anywhere in Canada
• You can use it to claim priority in other countries
• It is virtually incontestable after five years
• It supports the registration and protection of a similar domain name
• It can be an important intellectual property asset

What does the process of registration involve?

There are several stages:

• Searches to identify any conflicts or problems
• Preparing and filing the application
• Examination by the CIPO
• Advertisement in the Trade Marks Journal if it is approved
• Opposition if a third party objects
• Allowance if there’s no opposition
• Registration

Does a registered business, trade, corporate, or domain name have the same legal effect as a registered trade mark?

No. A registered trade mark will generally prevail over all of these if there is any confusion over similar wares or services.

If two trade marks are confusing, which one has priority?

The one that was filed or used first in association with goods or services in Canada.

What trade marks are not registrable?

• Marks which are confusing with an existing trade mark.
• Names and surnames, unless they are famous.
• Words which are clearly descriptive or deceptively misdescriptive of the goods or services or where they come from, eg. MINTY for mints.
• Prohibited marks such as the Red Cross emblem or the flag of a country.

Why do a search?

To anticipate and perhaps avoid a conflict with another confusingly similar mark later on, when the potential consequences can be expensive and disruptive.

Does a trade mark have to be used before an application can be filed?

No, you can file based on proposed use, but it has to be used before registration will issue.

How long does it take to get a registration?

12 to 18 months from filing to registration if there is no objection/opposition and the trade mark is in use, but the important thing is to file and establish your right to the trade mark as soon as possible.

How long is a registration good for?

15 years, renewable indefinitely so long as the mark is in continuous use.

Does a Canadian registration protect the mark outside of Canada?

No, but we can help you to file applications to protect the mark in other jurisdictions.

What information do you need to prepare and file an application?

• Applicant information – your name and address
• Trade mark – if it is a design, submit a clear copy
• How you came to own the trade mark –  include the name of any party who owned or used it previously
• Use of mark in Canada – describe how, since when and with what kind of wares or services
• Who else will be using the mark – include how the mark is being used or will be used
• Wares or services – describe any wares or services to be associated with the trade mark
• Pending applications outside of Canada – details of any pending applications/registrations for the same mark

What should foreign applicants and associates take note of?

• No power of attorney or other legalization is required
• Canada does not follow the International Classification System so goods and services should be described in ordinary commercial term
• Canada is a signatory to the Paris Convention so foreign applicants from other member countries can claim convention priority if the Canadian application is filed within 6 months of the original filing
• The applicant does not have to sign the application
• Filing in our local CIPO office has the same effect as filing in Ottawa
• Vancouver is 3 time zones behind Toronto, Montreal and Ottawa, so we have an extra 3 hours to meet any urgent deadlines

*See Fine Print

As an industry that places special importance on authenticity and origin, wine production and related intellectual property safeguards require special attention and industry specific knowledge. Our lawyers have expertise in the wine industry, and our clients range from small, family operated, terroir driven wineries in the Okanagan to large multinational wine brands from Australia, the United States, and Europe.

We offer a range of services including advising on the protection and enforcement of:

• Brands
• Trade marks
• Certification marks
• Geographical indications
• Distinguishing guises
• Vineyard designations
• Copyright in label designs
• Marketing and packaging

Boughton Law has previously acted as counsel for wineries on the purchase and sale of assets, and we have reviewed and drafted wine-related agreements. We also advise on corporate, immigration, tax, regulatory compliance, and succession issues in conjunction with other legal teams at our firm.