June 18, 2009
Rock legend Eddie Van Halen, best known as the lead guitarist of Van Halen, is reportedly taking legal action against Nike over the alleged use of his signature guitar color scheme on Nike’s new Nike Dunk runners. Van Halen had the red, white and black splattered design most commonly associated with his “frankenstrat” guitar copyrighted in 2001. Van Halen is claiming that the Nike shoes are damaging his image and “causing irreparable harm and damage” to his design. Nike has refuted the allegations and stated that “the Dunk shoe design is not substantially similar to any of the Van Halen designs, and Nike has not referenced the Van Halen name or image as part of any marketing campaign or promotional material associated with the shoe.” Interestingly, Van Halen recently released his own shoe line called or EVH shoes, which feature the recognizable pattern.
This case is noteworthy because it demonstrates the importance of intellectual property rights and how some protect such assets. Having a copyright gives Van Halen the right to control how his design can or cannot be used. Intellectual property rights allow owners to protect their assets against infringement and defend their rights in court. A successful claim may result in monetary damages, an injunction from the use of the infringing material or destruction of the infringing material. Van Halen is taking advantage of the court process by claiming damages and the destruction of all products associated with the Nike Dunk runners. On the other hand, lawsuits can be expensive and that in order to infringe the materials have to be substantially similar. It’s questionable whether the Nike Dunks bare a substantial similarity to Van Halen’s guitar design. Remember the high profile decision between The Wyrd Sisters, a Winnipeg folk group, and Warner Bros. Entertainment Inc. that saw the band lose a considerable amount of money (including $140,000 in costs) when the judge ruled that the band’s name would not be confused with a band in one of the Harry Potter movies.
Finally, Van Halen may be “running with the devil” and inviting himself up to his own copyright infringement lawsuit. The EVH shoe line has been argued by some as bearing a striking resemblance to Converse All-Stars, a company that just happens to be owned by – you guessed it – Nike.
May 13, 2009
You have probably seen the ® or ™ symbol on products or in advertisements. But what do these symbols mean and when is it appropriate to use them?
Generally, the ® or ™ symbols are used in connection with a trade-mark, which is a word, symbol or design used to distinguish the wares or services of one person or organization from those of others. Trade-marks can be valuable intellectual property.
The Trade-marks Act (Canada) (the “TM Act”) does not contain any marking requirements. However, trade-mark owners often indicate their registration through certain symbols, namely, ® (registered) or ™ (trade-mark). Although the TM Act does not require the use of these symbols, in Canada, the ™ and ® symbols may be used whether the trade-mark is registered or not. However, while this is not a requirement of the TM Act, the ® should be used only if the mark is registered with the Canadian Intellectual Property Office. If the ® is used and the mark is not in fact registered, it may be possible for someone to argue its use amounts to false advertising. The ™ suggests the mark is not registered, but can help establish distinctiveness in the mark.
One should be especially careful using the ® outside in Canada. In certain jurisdictions, including the U.S., ® may only be used by the owner of a mark following registration with that jurisdiction’s trade-mark office. For example, if a Canadian company is marketing a product in the U.S. and its mark is not registered with the U.S. Patent and Trademark Office, it would not be able to use the ® in connection with its mark and could only use the ™, even if the company has been using ® in Canada all along.
Businesses should consider having their intellectual property “audited” by legal counsel with an expertise in the field and, in doing so, developing an appropriate trade-marks business strategy. When I advise my clients on trade-marks matters I often rely on the expert counsel of my friends and colleagues Jolin Spencer (whom I should thank for this blog post), Robert Watchman and Howard Nerman, all of whom have expertise in trade-marks law.
February 5, 2009
Patent just one way to protect invention: there’s also copyright, trademark and more
In my October 5, 2005 column in the Winnipeg Free Press I discuss using copyright and trademarks as ways to protect intellectual property.
February 5, 2009
Warning: Inventor holds copyright
In my September 7, 2005 column in the Winnipeg Free Press I discuss ownership of intellectual property.