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.

It’s been a thrilling week for my colleagues at Pitblado LLP as it was announced earlier this week that we were to be the 1st Canadian law firm to be a guest blogger on the must-read slaw.ca.  Yours truly, three of my colleagues from our firm’s Information & Ideas Practice Group as well as our firm’s librarian each contributed one post a day this week to slaw.ca on cutting edge legal topics.  Here’s what we covered…

On Monday, I posted “What Would Happen If One of your Employees Posted a Video of an Irate Customer on YouTube?”, which I cross posted on my blog earlier this week.  The post highlights a YouTube video of an irrate customer as a reminder to Canadian businesses of the powers of new technologies such as YouTube and the corresponding need to protect against the dissemination of this type of video through employee privacy training and the adoption and enforcement of privacy and procedures.

On Tuesday, Carol Lynn Schafer posted “Do TOS Have the Final Word on our Fundamental Rights and Freedoms?”, which discusses the controversial effects of Terms of Service on popular websites such as Facebook and Twitter.  As Carol Lynn notes, Terms of Service should be drafted with the bigger picture in mind and can no longer be seen as standard agreements that can be treated with a one size fits all approach.

On Wednesday, Jolin Spencer posted “Whose Property Is It, Anyway?”, which discusses the questions that come into play when employees leave their positions.  For example, what can an employee take, and what must they leave, when they vacate their position? As Jolin points out, no business wants its intellectual property assets walking out the door with a former employee.

On Thursday, our firm’s librarian, Karen Sawatsky, posted “Legal Research Bootcamp – Winnipeg Style”, which discusses her experience collaborating with members of the Manitoba Bar Association and the Law Society of Manitoba to create a CLE for articling students on legal research. The Legal Research Bootcamp is a first for Manitoba students, and aims to bridge the gap between when students start their articles and when CPLED begins in the fall.

And last but not least, today Adam Herstein posted “Manitoba: Innovative Fighter of Child Sexual Exploitation”, which focuses on Manitoba’s recent enactment of The Child and Family Services Amendment Act (Child Pornography Reporting) (Manitoba) and how Manitoba is the first province in Canada to enact legislation that makes it mandatory for a person who encounters child pornography to report it to authorities.  Adam also notes that Canada has a national tipline called Cybertip.ca for reporting the sexual exploitation of children.

Thanks to slaw.ca for the opportunity to contribute!

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.

For the basics on metadata, read here. As you’ll learn in more detail, “metadata” is data about data. It’s detailed information that is automatically created about an electronic document when you use Microsoft Word, PowerPoint or Excel. It can include the name of the person or organization that created a document, the date that it was created, the identities of people who modified a document, including the time and day they did so, the name of the computer that was used to create a document and detailed revisions to a document, including past modifications and deleted text not visible on your computer screen. If not properly managed, metadata can help other businesses steal your intellectual property, learn about your business processes and view personal information that you’re legally required to protect under privacy laws.

One practical way to deal with metadata is to use metadata scrubber software. Some are costly but well worth it, including Payne Metadata Assistant and Workshare Protect. There are also free tools available including a Microsoft one (but it is only for Office 2007) and one offered by Javacool Software. Of course, I’d recommend that you work with technology professionals to determine the best metadata scrubber software for your business. Regardless of whether you use one of these or other tools, it’s important that you deal with metadata in some fashion. I hope these links help provide you with a good place to start!  Feel free to Leave a Comment below if you know of other metadata scrubber software worth recommending.

Website Terms of Use are important to read, especially if you’re then going to post information on or through the website.  If you’re a Facebook user, read its Terms of Use to determine if you actually agree to them.  If not, you may want to reconsider continuing to be a Facebook user or you may want to simply refrain from posting content that you don’t want to fall under the scope of its Terms of Use. 

If your business has a website, check to see if it has a comprehensive Terms of Use document that’s been customized accordingly. Terms of Use are vital documents for websites because they set out the ground rules regarding – among other things – the ownership of content, licence rights, use of the website by minors, user submissions/postings and intellectual property rights.  They are intended to serve as legally binding contracts between website operators and users, so they’re pretty important!

Facebook may have suffered a public relations setback last week, but for a commercial enterprise it was on the right path when it reviewed and tried to customize its Terms of Use to meet its business objectives.  All businesses that have websites should review and, if necessary, modify their Terms of Use on a regular basis.

Copyright Act changes both right and wrong

My July 6, 2005 column in the Winnipeg Free Press discusses Bill C-60, amendments to the Copyright Act.

Timely questions for those seeking to run the nation: technology, intellectual property should be on politicians’ agendas

My December 7, 2005 column in the Winnipeg Free Press poses potential technology and privacy questions to the candidates in the upcoming federal election.

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.

Warning: Inventor holds copyright

In my September 7, 2005 column in the Winnipeg Free Press I discuss ownership of intellectual property.