Written by Dominique T. Hussey, L.E. Trent Horne and Jeilah Y. Chan
Delay in asserting IP rights can be detrimental to obtaining quick injunctive relief, and evidentiary gaps can make your case a non-starter. It is therefore important for a business to be prepared to advance claims against infringers instantly. This week we equip you with tips to move your business to the ready position.
Copyright, Patents, Trademarks
Care About Copyrights?
Document Ownership and Register Copyrighted Works
All businesses have valuable copyrighted works, for example in the form of a website, code, advertising materials, or a logo. These works are often created by employees or, far worse, outside consultants, who, as authors, may retain significant rights in these works. If you would be aggrieved if a competitor were to copy them, you need to ensure the business in fact owns the rights. Particularly for a high-volume content-driven business, it is important to ensure ongoing documentation of copyright assignment and waiver of moral rights. How? Develop a protocol to track creation of works, authors and assignment paperwork. There is nothing easy about locating the whereabouts of former consultants to sign paperwork, assuming they are even willing. And, although not required, it is important to register copyright for these works as soon as possible, because registration provides (a) a presumption of copyright validity and (b) the notice that is the prerequisite for entitlement to a damages award.
Paid for Patents?
Prepare Your Litigation Tool Kit in Advance
A patent is a document evidencing the right to sue to protect market exclusivity in the patented invention. If you have spent the money to procure patent protection, it is for one or more of three reasons: to increase your valuation, monetize through licensing, or freeze out competitors. For at least the latter two, willingness to sue infringers is critical. For the patent to provide any leverage, you need to be able to assert the patent in litigation and have a credible offense. You should prepare in advance for the inevitable documentary discovery and to have an arsenal of documents at the ready to prove your case. This will include lab notebooks, plans, and notes evidencing the source and evolution of inspiration to tell the story of the invention. You will need a certified copy of the patent, the file history, and information about any commercial embodiment of the invention including its sales. Keep track of your inventors who have moved on to other companies or retired, yet may remain critical to the litigation.
Treasure Your Trademarks?
Register Your Trademarks and Keep a Paper Trail
A strong brand is a valuable asset to a business—it is the face of your business and can be the driving force in generating revenue. To ensure that you have the broadest range of remedies available in the event a competitor takes or uses confusing versions of your brands, registering your trademarks is critical. Without a registration you have no right to sue for trademark infringement. An unregistered mark can only be asserted in a passing off action, which can be a more difficult case to meet than infringement. It is also important to document and retain examples of use of your trademarks and receipts for sales and advertising spend. This will allow you to establish accurate dates of use and distinctiveness needed to support the monopoly granted by your trademark registrations.
More on each of these tips to come in our series of IP Litigation tips.
Equip is our platform for curated, key intellectual property cases. Delivered weekly, Equip distills the current substantive and procedural issues in Canadian IP litigation, equipping you with the key points for your business.