Copyright & Trade-mark

I recently had a client send me a news item from a local TV station.  The story was about how GPS-enabled smartphones automatically geotag the pictures they took.  Those geotags, a few bits of longitudinal and latitudinal information that indicate where the picture was taken, embedded in the picture’s metatdata, then presumably followed the pictures as they were uploaded to Facebook, Flickr, or wherever else pictures go these days. 

The piece was couched in the fear mongering that TV news does so well, portraying the issue as a dire threat to our children – with suggestions that strangers online would track them down to where the pictures were taken – where they lived, where they played, where they ate. Now certainly this is an issue, but if you let pictures of your children be circulated to strangers on the internet in the first place, you probably have bigger problems to deal with than just the metadata issue.  Google “privacy settings.”

Fear mongering aside though, there is certainly a privacy issue associated with various electronic activities.  And as people smarter than me spend time figuring out how electronics are going to make our lives more fun (for us) and profitable (for them), the proliferation of new technologies and new applications won’t be slowing down any time soon.  The legal advice is therefore just this – be as aware as you can be about the entire electronic footprint that you are leaving when you interact with technology.

In our practice we exploit, er, leverage, the intersection of ignorance and technology to its full advantage all the time.  We review metatdata in documents to determine version histories or to see which author originally drafted a precedent.  We use social media to gather public information about evil-doers. We sometimes look at the date stamp and country of origin information in e-mail headers. We may even track the occasional IP address if we have to.

The point is, if you’re our client, be aware of the issue.  Be skeptical of new technologies and new uses for old technologies – check them out before you use them.  And if you’re not our client, keep on being stupid.

And I should note that Facebook (currently the biggest online photo repository on the planet) automatically strips the sort of metadata from pictures that indicate where it was taken as of the time of the writing of this post, so wandering gangs of pedophiles will probably not be using it as a tool to steal your children – Twitter and external-load sites like Photobucket though are fair game.  Somehow the news story mentioned above missed that fact.

Scott R. Young

One of the best reasons to incorporate is so that your business becomes an asset that you can transfer to the next generation.  A well-organized corporation can be the primary source of wealth for families.  Yet many small business owners don’t take the necessary step of following up their incorporation with succession planning for the business.

If you are the sole shareholder of a corporation, or the primary directing mind behind a corporation, then you need to have a plan in place.  In addition to your own Will and the selection of an Estate Trustee, you need to have written documentation that sets out your directions so that your business does not lose value in the days following your death.

Those plans may include a separate Will for the corporation, key-man or business continuation insurance, powers of attorney and management or sale instructions.  This planning will ensure that the business that has taken so much of your time and energy becomes something of value to those you leave behind, instead of a burden.

Businesses that don’t have a succession plan in place tend to devalue quickly upon the death of a principal.  Instead of doing business during this critical time, companies stagnate, while friends, family and employees struggle to decide what happens next and try to figure out how to run things.  In the event that the business is to be sold, by this point it will have lost much of its value.  If the business is to continue to operate, it may have suffered a significant hiccup in operations that could jeopardize its continued existence.

Putting together a solid business succession plan will require a good partnership between you and your legal counsel.  It will require some frank discussion about your intentions, your appetite for risk and some detailed planning regarding the inner-workings of your corporation.  It will take some time and some money, but it is vitally important if your business is to have value after you pass away.

If you have any questions, please contact us.

Scott R. Young

In this blog entry, I will tell you one simple rule that is guaranteed to reduce all of your legal fees, increase your protection from liability and ensure that your affairs are in order.  Actually, I already have in the title of this entry – follow through.

If you have been reading this blog for the past few months (Hi Mom!), you will have garnered all sorts of tidbits about what lawyers do and how we do it.  You will understand many of the areas where we can help you do what you do better and you will have some idea of how bad things can get when they get bad.

But the one thing that we can’t do in a lot of cases is finalize the work that we have done.  That part is on you.  I suspect that many people feel that once they have gone to the effort of making that appointment with their lawyer and giving authorization to draft a document or to act on their behalf in some capacity, they can breathe a sign of relief.

In reality, the value of what we do often doesn’t materialize until the job is done.

For example, I usually give my estate clients my standard legal advice after they leave my office, having just delivered their Will instructions – don’t die until we get this signed!  While there is an attempt at levity there, there is also a very serious point – the work that you pay for isn’t doing anyone any good until it’s done.

Unfortunately life gets in the way.  Between that first visit with the lawyer and finalizing the work, things happen.  You may put off an e-mail asking for your instructions until later or you may leave a finished document in your desk drawer, to be signed at some convenient time that never seems to come.

Whatever the reason, if you have retained counsel to review your business processes and make recommendations, but don’t act on them, you have wasted your money.  If you have retained counsel to draft a business agreement or to address a compliance issue, and haven’t signed off on the agreement, you have wasted your money.

But most importantly, delays in finalizing legal work mean that you are not protected, or that the problem that you brought to us, remains unsolved.  This is the biggest issue and the one that can ultimately lead to the greatest cost.

If you have legal work in progress that is all but finished, please follow up on it and do what it takes to finalize it.  You’ll be lucky if you never know how much that might save you.

Scott R. Young

I have been working on some trade-mark opposition work lately; the kind of work that involves advocating against the registration of a trade-mark.  We do this sort of thing when a client has registered or unregistered trade-mark rights and where someone else is trying to register a trade-mark that is confusingly similar.

 

Opposition work is inherently frustrating.  The government fees associated with filing oppositions are almost three times as high as those involved with an application.  The evidentiary burdens are higher with opposition work.  The amount of time and effort spent in correspondence with CIPO and opposing counsel is significantly higher in opposition work.  Correspondingly, the legal bill associated with opposition work is much higher than with application work.  Put another way, the cost of making an application in the proper format, at the proper time, is substantially lower than the cost of maintaining trade-mark rights after the fact.

 

And the opposition process is only one form of dispute resolution.  Injunctive relief, passing-off litigation and motions at the Federal Court are a few of the choicer (and costlier) ways of dealing with trade-mark squabbles.  And all of them are exponentially more expensive when the trade-marks in question are not properly registered, maintained and protected.

 

I always try to drive this point home with clients.  It is of particular importance to smaller, newer businesses, or businesses with new product lines.  Branding is everything.  Commensurately, the proper legal foundation for that branding is of the utmost important.  And while there are few guarantees in law, I can assure you of this – if you have a successful brand, and that brand is not secured to the full extent available under trade-mark law, you will pay thousands or tens of thousands, or perhaps hundreds of thousands or maybe even one million dollars (*raises pinkie finger to pursed lips*) in trade-mark disputes throughout the life of the brand.

 

Call us and sort it all out before it comes to that.

 

Scott R. Young

If you work in the Greater Toronto area, then as I type this blog entry (Friday, G8/G20 day) you have likely realized this week that you needed to change how you work due to the summit meetings being held in our area.

Many have had to figure out how to work from home – and as of today, many are wondering if their home internet service provider will have enough band width to withstand everyone from Toronto working from home all at once.

Others have discovered the interesting back routes of Toronto in order to avoid closures due to motorcades and fences.

On Wednesday many of us also realized that we need to consider earthquake preparedness. Having grown up on the West Coast of Canada as soon as our office building started to sway, I reverted to the behaviour drilled into us in elementary school: I looked for overhead door jams to stand under. It was only at that time did I realize, there are no structural support door jams in our office – clearly, we need to address our earthquake preparedness.

Taking the lessons from this week a step further, all businesses, regardless of size, must be prepared in the event they are hit with a law suit. In particular, in this day of email and instant messaging, all businesses must have a Document Retention Policy, including an Electronic Document Retention Policy.

The document retention policy needs to set out the procedures for creation, storage, destruction and production of documents, including electronic documents. This involves addressing backup and storage needs, which thankfully due to advances in IT have come down significantly in cost and ease of accessibility for small businesses.

In addition to being law suit ready, a document retention policy ensures that you are complying with certain Government required retention periods, for e.g. Canada Business Corporations Act requires corporations to hold onto accounting records, meeting minutes and director’s resolutions for 6 years after the end of the financial year to which they relate and the Ontario Employment Standards Act requires businesses to hold onto employee name, address and dates of employment for 3 years after the employment ceases.

Failure to comply with legislated retention periods can lead to fines and the suggestion that businesses are hiding information in a law suit.

Be prepared – it’s not just for G8/G20 weekend – its for your entire business and this week is a good reminder of why you need to be prepared.

Inga B. Andriessen, Sr. Lawyer
iandriessen@andriessen.ca

Lately I’ve found that I don’t like the way I have traditionally answered the question: “What do you do?”    My answer for the past 17 years has generally been “I”m a corporate/commercial trial lawyer”.  

This response has generally lead to blank stares and for those brave enough, the follow up question “what is that?”

It has only taken me 17 years (I”m such a quick learner) to realize the simpler way to describe what I do is to say “I’m a trial lawyer who only handles business law.”  O.K. …. so that is wordier and therefore, likely a work in progress, but it is a start down the correct path.

Corporate/Commercial Law is a technical definition.  It is a Law School definition and one that we boring lawyer types understand – but it does not embrace the energy of what we really do: we’re business lawyers.

As a trial lawyer, I pursue and defend the rights of businesses in any situation they find themselves.  Paul Voorn & Ann Hatsios are also Business Trial Lawyers (look, I shortened it already … I’m becoming a quicker study!)

As a business transaction lawyer, Scott Young of our firm advises businesses on all aspects of their work – from start up to wind up and the fun parts in between, including the particularly active Trade Mark aspects of business.

In my legal writing I’ve always believed simple is better – and stating we’re Business Lawyers just makes sense …. now to look into Trademarking that …. Scott?

Inga B. Andriessen, Sr. Lawyer (Business Trial Lawyer to be specific)

iandriessen@andriessen.ca

It’s not as if this topic is something we’re looking forward to, but it will be a reality for Ontario at the end of next month – the HST is coming and it will make a change to the bottom line on your legal fees.

Currently only GST is charged on legal fees.  Certain disbursements, such as government fees, do not contain any tax at all and those disbursements will not be changing.

However, July 1, 2010 all legal fees will be subject to the HST effectively increasing your bill by 8%.

As businesses, we are all able to have the HST flow through, much as the GST has in the past and the expectation is that we will not notice the effect of the HST due to this.

 However, if your business is contemplating a transaction such as a shareholder agreement, contract or asset transfer, you may wish to consider incurring the bulk of the legal fees before June 30, 2010 in order to reduce the fees which may not be offset by purchases.

 Isn’t  this a happy thought, right before a holiday long weekend?  I suppose that is why Ontario calls it the May 2-4 weekend, you might need a 2-4 to feel better about the HST.

Inga B. Andriessen, Senior Lawyer

iandriessen@andriessen.ca

16 1/2 years ago I started this law firm and from day one it has earned a reputation for being different from the average law firm.  I’m feeling nostalgic, so I’m taking up blog time to wax poetic about our firm philosophy and why we are a great law firm to use for your corporate/commercial needs.

On the litigation side of things I believe our firm is better than most because we always ask the question before starting “how will you collect this judgment”?  From our point of view there is no good reason to have our firm be the only one who benefits from a law suit – you must be able to collect.

The theme of “collecting the final judgment” drives the pace of our litigation as well – we do not take a slow, laid back approach.  Deadlines are met and enforced promptly and with professional courtesay; however, we always ensure that we are getting to Court as quickly as possible given the nature of the litigation.

On the paperwork side of the practice, we never recommend creation of documents or organizations that are not required and frequently find ourselves explaining to clients why their money would be wasted taking a step that they are suggesting.

At the end of the day, our firm is here to help make your business profitable and we can’t do that if we don’t have our eye on the bottom line.

16 1/2 years of experience, hourly rates that are reasonable and a dedication to our clients bottom line – this is why you should use our firm.

Inga B. Andriessen, Senior Lawyer

iandriessen@andriessen.ca

I have trade-mark clients who range from the very small – startups who want to protect what little intellectual property they have, knowing it will one day be their greatest asset – to the very large – national and multinational corporations who protect all of their intellectual property as a matter of habit.  They both desire the same result – solid registration of a strong trade-mark – but they often have different ways of getting there.

Trade-mark registration is a long process, often lasting for two or three years, that begins with an idea about a proposed mark and ends with a certificate from the Canadian Intellectual Property Office, telling you that no one else is allowed to use your mark.  The decision as to when to bring your lawyer into that process is one that will determine how much you spend, when you spend it, and may ultimately determine your success or failure in the application.

With larger corporations, the mark usually comes from the marketing department; it’s a word or phrase that they’re going to use in the branding of one of their upcoming lines of products or services and they want to have the registration process started before the launch.  This is where the legal department or outside counsel steps in and advises them not to invest a significant sum of money into the campaign until they’ve had a chance to clear the mark.  The clearance they’re speaking of is the trade-mark opinion on registrability. 

In order to provide an opinion, a lawyer conducts extensive searches of government databases and a variety of public sources so that they may determine whether the desired mark (or something confusingly similar to the desired mark) is currently in use somewhere in the jurisdiction.  A lawyer reviews the search results and analyses them based on the statutory and common law criteria for confusion.  The lawyer will also generally make comments on registrability based on the sections of the Trade-marks Act that dictate what is and what is not allowed. 

As most searching is outsourced to expert agencies, a disbursement of between $400 and $700 is usually associated with the search.  Add to this your lawyer’s hourly rate multiplied by the two or three hours of their work involved and the opinion will cost somewhere between $1000 and $2000.  If your organization is considering spending significantly more than that on marketing, branding, packaging and other associated costs, then the cost of an opinion is an absolute necessity.  Although an opinion doesn’t guarantee registration, an opinion will give you a good idea of the likelihood of success.  Seeing clients spend tens of thousands of dollars to change out a failed brand name on a product line mid stream isn’t something I enjoy and I would caution any business to do the due diligence and get an opinion before such expenditure.

On the other hand, I often find that smaller businesses have already fallen in love with their proposed mark before they talk to me.  They often have the mark in mind before they have fully conceptualized the product or service that goes along with it.  They’ve done a Google search and a NUANS and they’re confident that the mark doesn’t infringe any existing mark.  Although I have to warn the client about the possibility of a failed registration, or worse yet, a passing off claim if they use a mark that someone else already claims, I have to admit that there is some economic sense in this approach. 

If your business is small, then the investment in the product or service line is bound to be (relatively) small as well.  If you can afford to find out a year or two down the road that your mark isn’t registrable, then it makes sense not to spend the money on the opinion and just to go ahead with the trade-mark application itself – especially when the application will likely run about $1500 to $2000 including fees and disbursements.  I would of course caution against letting the CIPO examiner be the first opinion you get on registrability, but the economics of the process do make that a reality sometimes.

So, as always, the answer depends on your resources and your business needs.  I’m always going to recommend the opinion, but I’m also going to understand that business people aren’t lawyers; business people are risk-takers – and sometimes an application without an opinion is a risk that makes sense.

Scott R. Young

syoung@andriessen.ca

Hello to all of our blog readers. I’m the firm’s corporate lawyer which makes me the go to guy on everything from basic incorporations to the finer points of intellectual property law. I’m also a CIPO (Canadian Intellectual Property Office) registered Trade-mark agent, which helps in that regard.

I’ll be blogging about things that might interest our corporate clients – from the basics to developments in case law. I hope you find something useful here…

Recently a lot of our clients have been asking me if they should be registering their trade-marks. While my answer depends on the nature of the business, I find more and more that if a business person is at the point of asking that question, the answer is likely going to be yes.

If you’re asking yourself that question, the first thing you need to know is what a trade-mark is. The Trade-marks Act says its “a mark that is used by a person for the purpose of distinguishing …wares or services manufactured, sold, leased, hired or performed by him from those manufactured, sold, leased, hired or performed by others.”

In more general terms, I would describe a trade-mark as the most concentrated essence of your entire brand. Any cachet that your business has, any reputation you may have earned and any recognition that exists for you and your product in the marketplace is completely tied up in your trade-marks. Your trade-marks are what identify you and they’re your customer’s guarantee that they’re dealing with a known quantity – you.

Rights in trade-marks are what are known as negative or restrictive rights. They restrict the right of others to use your mark, and in many cases to use marks that even ‘get close’ to your mark. They are there so the marketplace knows who made what and who does what. Having a registered trade-mark means people are less likely to come up with brands that are confusingly similar to yours – and when they do, having a registered trade-mark means there is something you can do about it.

So what does registering your trade-mark do? A number of things. It advertises your claim on the mark; it gives you excellent evidence of your use of the mark and it gives you a stronger claim for damages in the event of someone else’s infringing use.

In many cases we find that a business’ brand is their most important asset in terms of guaranteeing future cash flow. And as such, it’s the sort of asset that needs to be reviewed, protected and monitored against unauthorized use. And of course, those are all services that we offer. If you are thinking about registering your trade-mark, please contact us and we will be glad to have a frank discussion about how best to serve you.

If you have any questions about your trade-mark needs, please do not hesitate to contact me at syoung@andriessen.ca

Scott R. Young LL.B.
Barrister & Solicitor

Andriessen & Associates, Professional Corporation
Barristers & Solicitors
701 Evans Avenue, Suite 900
Toronto, ON
M9C 1A3

Tel: 416-620-7020 ext. 28
Fax: 416-620-1398