Name:

 

Student No.:

 

 

Instructions:

Please provide you answers in the spaces provided for each question.  All questions must be answered.

If you require more space to fully answer a question clearly identify:

(a)        your name and student no. on each additional page; and

(b)        the question number to which your answer relates on each additional page.

 

SHORT ANSWERS:

 

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1.   Paul works for Alpha Software Design Inc. (“Alpha”).  He was hired to design and code a particular software application (the “Software”).  He was not asked to sign an employment contract.  He completed his work in January 2002, and Alpha started selling the Software in April 2002.

(a)  Who is the first owner of copyright in the Software?

Alpha

(b)  How long does copyright in the Software last?

Life of the author (Paul) plus fifty years

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2.   Beta Software Group (“Beta”) is a competitor to Alpha.  In June 2002, Beta comes out with its own software that Alpha believes is nearly identical to the Software.  Alpha also believes that it would simply not have been possible for Beta to come up with its own version of the software independently in such a short time-frame.

(a)  What does Alpha need to prove to succeed in copyright infringement litigation against Beta?

(i)                 Ownership: that Alpha owns the copyright in the Software;

(ii)               Access: that Beta had access to the Software;

(iii)             Substantial copy: that Beta’s software is a substantial copy of the Software.

(b)  What steps, if any, should Alpha take before starting litigation against Beta?

            Register the copyright

            (Other creative answers, such as “send a demand letter” received ˝ point)

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3.   Suppose that Paul had left Alpha and was hired by Beta in March 2002.

(a)  What does Alpha need to prove if it wants to stop Paul from telling Beta what he knows about the Software?

      That Paul owes a duty of confidentiality to Alpha with respect to what he knows about the Software; specifically:

(i)                 that the information is confidential to Alpha;

(ii)               that the circumstances in which Paul learned the information implied an obligation of confidentiality)

(iii)             that Paul (and Beta) is about to make unauthorized use of the confidential information

(b)  What could Alpha have done differently to strengthen its rights?

      Have Paul sign a confidentiality (and/or non-competition agreement) in the first place.

      (Other creative answers, such as “register the copyright”, received ˝ point)

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4.   Name two advantages to registering your trade-mark.

(i)                 Exclusive right to use the trade-mark across Canada in association with the wares and services for which it is registered; and

(ii)               Presumption of validity / no onus of proving distinctiveness and reputation.

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5.   Are each of the following trade-marks inherently distinctive or “strong” marks?

(a)  ANT, for use in association with monitors; switches; sending, transmitting, receiving and processing equipment for sound and/or pictures;

      Yes

(b)  SUREPATH, for use in association with optical components, namely modules employing planar integrated circuits for use in optical fiber telecommunication systems;

      No (*but so many people felt that this was a strong mark that everyone received an extra mark at the end of the exam)

 

(c)  XINC, for use in association with computer hardware, namely semiconductor components.

      Yes

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6.   Name 3 types of remedies for trade-mark infringement.

(i)                 damages

(ii)               accounting of profits

(iii)             injunction (interlocutory and/or permanent)

(iv)             declaratory relief

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7.   What do you need to prove if a competitor starts using your trade-mark, but you haven’t registered it?

(i)                 that you were the first to use the trade-mark in your particular geographic region;

(ii)               that your trade-mark is distinctive / has developed a reputation in that geographic region;

(Other answers could include:

(iii)             that your competitor’s use of the trade-mark is confusing with your use of the trade-mark;

(iv)             that you have suffered damages)

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8.   Name two types of things that are not patentable in either Canada or the United States.

(i)                 mathematics

(ii)               information

(iii)             scientific principles

(iv)             abstract theorems

(Other valid answers included:

(v)               people;

(vi)             music;

(vii)           things that are obvious, not new or not useful)

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9.   Name one thing that is currently patentable subject matter in the United States, but not Canada.

(i)                 business methods

(ii)               software that is not integrated into a practical, physical system or does not otherwise achieve a tangible, physical result

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10. Techra Systems Inc. and its competitor, Alpha Innovations Ltd. independently come up with the same patentable invention.  Techra’s documentation indicates that its invention was made on October 1, 2002.  Alpha’s documentation indicates that its invention was made on September 1, 2002.

(a)    If Techra files its patent applications in Canada and the United States on January 1, 2003, and Alpha files its patent applications in Canada and the United States on February 1, 2003, to whom will the patent issue in each country?

United States: Alpha (first to invent)

Canada: Techra (first to file)

(b)   Would your answer be different if Alpha made and sold products, using the invention, in December 2002?  Why?

No, because in both Canada and the United States you may file a patent application within one year of public disclosure of the invention without losing your rights.

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11. Under what circumstances can you patent software in Canada?

      You can patent software in Canada where the information created or processed by the software is integrated into a practical, physical system.

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12. Name two ways that you could use to make money from a patent.

(i)                 Manufacture and sell the product protected by the patent;

(ii)               License the right to manufacture and sell the product protected by the patent;

(iii)             Sell / assign the patent.

 

LONG ANSWER:

 

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13. Suppose you manage a company, Neptune Electrical Ltd., which designs and builds CCD cameras for marine applications.  The cameras are sold as units consisting of a the CCD and lens apparatus mounted to a one-inch square circuit board, all encased in clear, waterproof plastic.  One of your employees came up with a process for building a line of such cameras that is cheaper yet more reliable than any similar cameras on the market.  You have hired a marketing agency to come up with a campaign, including a web site and brochure, to market the line of cameras under the “Persephone” brand name.

What intellectual property issues are you facing and how will you address them?

Major issues (˝ point was given for identifying each of the four major issues, and ˝ point was given for indicating anything about what to do about that issue.)

1.      Trade-mark protection for PERSEPHONE trade-mark:

(i)           consider whether this mark is being used or has been registered by anyone else in Canada, to ensure you are not infringing someone else’s trade-mark;

(ii)         consider whether it is worth it to your business to register this trade-mark;

2.      Patent protection for the process of building the CCD cameras:

(i)          consider whether it is worth it for your business to investigate whether anyone else has registered a patent for the process your employee came up with (to ensure you are not infringing anyone else’s patent); and

(ii)        consider whether to apply to register your own patent for the process.

3.      Copyright protection for the web site and brochure: ensure you obtain a written copyright assignment from the marketing company.

4.      Trade secret protection: ensure that you have written employment contracts with all your employees, and that these contracts contain appropriate confidentiality (and/or non-competition) clauses.

Minor issues (˝ point for any correct answer, up to a maximum of 1 point total for all minor issues)

5.      Trade-mark protection for the NEPTUNE trade-mark (same as for PERSEPHONE trade-mark).

6.      Trade-mark use: consider your instructions to the marketing company about the proper use of your trade-mark, including the use of ™ or ® as appropriate and indicating on all packaging and advertising (including the web site and brochure) that the PERSOPHONE and NEPTUNE trade-marks belong to Neptune Electrical Ltd., all to help preserve the distinctiveness of the trade-marks.

7.      Copyright protection for any software developed to run the camera and any technical documentation, such as user manuals: ensure that you have written assignments of copyright from your employees (even though you may automatically be the first owner of the copyright).

8.      Moral rights: obtain waivers of moral rights from your employees with respect to any software, technical manuals, etc., as well as waivers of moral rights from the employees of the marketing company with respect to the web site and brochure.