Deck 26: Intellectual Property, Patents, Trademarks, Copyright and Franchising

Question 1

Who is the beneficiary of a compulsory licence?

A) The patent holder.
B) The patent office.
C) The licensor.
D) The licensee.
E) The public.

Answer 1

E

Question 2

Kimberley developed a novel type of bottle opener that incorporated a new and different method of removing a bottle cap. She applied for a patent on her invention, and then began manufacture of the product. She stamped each unit with the words "patent pending." Another manufacturer copied her design and began marketing the same type of opener. The words "patent pending" have no legal significance.

Answer 2

True

Question 3

A business consulting service calling itself "Enterprise Canada" would likely fail in a bid to register such a name because "Enterprise Canada"

A) is probably a prohibited mark.
B) is not a service mark.
C) is a certification mark.
D) is an insufficiently distinctive guise.
E) does not meet the "coined" requirement to be a trade name.

Answer 3

A

Question 4

Janelle worked as an employee of MegaByte Industries, a computer conglomerate. As part of her job, she produced a unique program for routing emergency calls to the appropriate public emergency services departments. There is no written employee contract dealing with ownership of the program. If the program were copyrighted, under a written employer/employee contract, by MegaByte,

A) Janelle would have the right to have her name associated with it unless the contract said otherwise.
B) Janelle would have the right to have her name associated with it no matter what the contract said.
C) the length of copyright protection for the program would be 50 years.
D) only Janelle could licence the program to the public emergency services who wished to use it.
E) neither MegaByte nor Janelle would have any rights unless the copyright were registered.

Question 5

Kimberley developed a novel type of bottle opener that incorporated a new and different method of removing a bottle cap. She applied for a patent on her invention, and then began manufacture of the product. She stamped each unit with the words "patent pending." Another manufacturer copied her design and began marketing the same type of opener. Because Kimberley had marked her bottle openers with the words "patent pending," Kimberley is entitled to take action for infringement against the other manufacturer.

Question 6

Who can make application for a patent?

A) Assignee.
B) Inventor or the inventor's agent.
C) Universities.
D) Assignor.
E) Manufacturer.

Question 7

Farrah took a photograph of a parade that passed by the window of the office where she worked and submitted it to the local newspaper along with a short report on the celebrations. Once the newspaper publishes the picture and the written account, her copyright no longer exists, as the picture is then in the hands of the public.

Question 8

Farrah took a photograph of a parade that passed by the window of the office where she worked and submitted it to the local newspaper along with a short report on the celebrations. Farrah may claim copyright in the photograph and the writing.

Question 9

For her new invention, Stephanie applied for a patent on May 12, 2004 in Canada, on June 19, 2004 in England, and on September 28, 2004 in France. Her patent was duly granted under the Union Convention of Paris on October 17, 2004. Her patent protection in France will expire

A) May 12, 2024.
B) June 19, 2024.
C) September 28, 2024.
D) October 17, 2024.
E) May 12, 2034.

Question 10

The most important document in a patent application is

A) the patent search.
B) the fee receipt.
C) a short abstract of the disclosure.
D) the claims statement.
E) an affidavit of intention.

Question 11

Kimberley developed a novel type of bottle opener that incorporated a new and different method of removing a bottle cap. She applied for a patent on her invention, and then began manufacture of the product. She stamped each unit with the words "patent pending." Another manufacturer copied her design and began marketing the same type of opener. Kimberley may ask the Patent Office to speed up the issue of her patent, because the other manufacturer is copying her product, and she cannot take steps to stop the infringement until the patent is issued.

Question 12

A ________________ is a right in a new invention, a _______________________ is a right to manufacture an artistic design, a ________________ identifies a product or service and a ________________________ is ownership in an artistic or literary work.

A) patent; industrial design; trademark; copyright
B) industrial design; patent; trademark; copyright
C) patent; trade name; distinctive guise; certification mark
D) compulsory licence; licence; trademark; patent
E) trademark; compulsory licence; industrial design; copyright

Question 13

Kimberley developed a novel type of bottle opener that incorporated a new and different method of removing a bottle cap. She applied for a patent on her invention, and then began manufacture of the product. She stamped each unit with the words "patent pending." Another manufacturer copied her design and began marketing the same type of opener. Once the patent is issued to Kimberley, she may take action against the other manufacturer for infringement.

Question 14

If a video is produced by WK Productions Ltd. the term of the copyright is

A) 50 years.
B) life of the author + 15 years.
C) life of the author + 50 years.
D) 50 years, if registered.
E) 50 years, if unregistered.

Question 15

Bell Canada created an extremely attractive, totally new design for a touchtone telephone keypad for use in all its new telephones in public telephone booths. Bell wishes to protect the design. It should do so under

A) the Patent Act.
B) the Copyright Act.
C) the Industrial Design Act.
D) the Trademarks Act's distinctive guise provisions.
E) the Trademarks Act's service marks provisions.

Question 16

Farrah took a photograph of a parade that passed by the window of the office where she worked and submitted it to the local newspaper along with a short report on the celebrations. Because Farrah took the photograph while she was at work, her employer would be entitled to the copyright in the picture.

Question 17

Melissa applied for a patent in May, 2012 and it was granted in May, 2014. The patent will expire in

A) May, 2027.
B) May, 2030.
C) May, 2032.
D) May, 2035.
E) 50 years after her death.

Question 18

Small Brothers Ltd. patented an invention here in Canada in 2015 for which there is great public demand. i. If Small Brothers Ltd. is not able to come anywhere near supplying the demand, MegaCorp could apply for a compulsory licence so that it can manufacture the product
Ii) If MegaCorp. is granted a compulsory licence, it does not have to pay Small Brothers Ltd. royalties as a normal licensee must do.
Iii) If MegaCorp. is granted a compulsory licence, it must pay a reasonable royalty fee to Small Brothers Ltd.
Iv) Small Brothers Ltd. might lose its patent altogether if it cannot meet the demand.
V) If MegaCorp. had independently come up with the same invention but applied for a patent after Small Brothers Ltd. applied, it could also be granted a patent.

A) i and ii.
B) i and iii.
C) i, ii and iv.
D) i, iii and iv.
E) i, iii, iv and v.

Question 19

The following marks may be registered:

A) Service mark.
B) Certification mark.
C) Distinctive guise.
D) Service and certification marks.
E) Service and certification marks and distinctive guises and sound marks.

Question 20

Janelle worked as an employee of MegaByte Industries, a computer conglomerate. As part of her job,she produced a unique program for routing emergency calls to the appropriate public emergency services departments. There is no written employee contract dealing with ownership of the program. This program can only be

A) copyrighted by MegaByte.
B) copyrighted by Janelle.
C) patented by MegaByte.
D) patented by Janelle.
E) copyrighted by the public emergency services which use it.

Question 21

Farrah took a photograph of a parade that passed by the window of the office where she worked, and submitted it to the local newspaper along with a short report on the celebrations. If another newspaper copies the picture that was published by the newspaper to which Farrah gave the picture, the second newspaper would be liable for infringement.

Question 22

Ida has just invented a machine that diffuses radar but looks like a pair of fluffy dice. It causes police radar traps to greatly underestimate the speed at which a car is travelling. Ida can protect her new invention using the law of patent.

Question 23

Artistic Goods Ltd. has registered the design of a new wooden coat rack under the Industrial Design Act. Artistic Goods must have intended that the coat racks would not be made entirely by hand by craftsmen.

Question 24

Anne has created a computer program that will help conserve energy in the home. Since computer programs cannot be copyrighted, she must go through the long and difficult process of patenting the program.

Question 25

Artistic Goods Ltd. has registered the design of a new wooden coat rack under the Industrial Design Act. The design would not be protected if it was not registered.

Question 26

Artistic Goods Ltd. has registered the design of a new wooden coat rack under the Industrial Design Act. If Artistic Goods had intended to make only 20 of the coat racks as a limited edition, there would be no way the company could protect the design.

Question 27

Gianna first marketed her automatic backscratcher to the public 30 months ago and has been tinkering with its design ever since. Deciding that the original design was as good as it was going to get, she took it to a patent lawyer last week. He told her that, under the Patent Act, she will not be able to patent it because she has left it too late. He is right.

Question 28

The words "Patent Pending" on a product have no particular significance at law and serve as no protection at law for a manufacturer of goods that uses such a mark.

Question 29

Speedy Stationery Ltd. registered the design of its line of desk accessories in 2015. Its exclusive rights to reproduce these designs will expire, at the latest, in 2025.

Question 30

Gianna first marketed her automatic backscratcher to the public 30 months ago and has been tinkering with its design ever since. Deciding that the original design was as good as it was going to get, she took it to a patent lawyer last week. He told her that, under the Patent Act, she will not be able to patent it because she has left it too late. He would not have said that if Penny had approached him two months after she first started marketing it.

Question 31

Amanda and Cynthia wrote a calculus textbook, which was published in 1970. Amanda died in 1975 and Cynthia in 1990. The copyright will expire in 2025.

Question 32

When Lee, a patent agent, draws up the petition for a patent for a particular invention, she must submit detailed specifications of the invention, usually along with drawings of it, and a statement as to what is new in this invention and what uses it can be put to. Lee can leave out an essential feature of the invention until the patent is granted, so that no one browsing through the patents pending descriptions could steal the idea.

Question 33

If Kleenex had registered its trade name when it first started making paper handkerchiefs, it might well have lost its exclusive right to that name by now in North America.

Question 34

A registered design is normally a design that would be subject to copyright if it was not for the fact that it is reproduced by an industrial process.

Question 35

Charlie designed a piece of furniture that had a novel appearance. He registered the design, then later discovered that another manufacturer was producing exactly the same piece of furniture. The design of a piece of furniture would not be subject to registered design legislation.

Question 36

Artistic Goods Ltd. has registered the design of a new wooden coat rack under the Industrial Design Act. Artistic Goods must have intended to produce more than 50 of these coat racks.

Question 37

When Lee, a patent agent, draws up the petition for a patent for a particular invention, she must submit detailed specifications of the invention, usually along with drawings of it, and a statement as to what is new in this invention and what uses it can be put to.

Question 38

Charlie designed a piece of furniture that had a novel appearance. He registered the design, then later discovered that another manufacturer was producing exactly the same piece of furniture. The only defence available to the other manufacturer would be that he had developed the design before Charlie registered his own design.

Question 39

Charlie designed a piece of furniture that had a novel appearance. He registered the design, then later discovered that another manufacturer was producing exactly the same piece of furniture. Charlie may take action against the other manufacturer for infringement of his registered design.

Question 40

While preparing an essay for her MBA class on the increased need for employers to take steps to protect confidential information in the age of computers, Margaret photocopied several journal articles, parts of which she later quoted in her paper. She did not get the permission of the authors to do so. She has not breached the Copyright Act.

Question 41

Identify and discuss the advantages and challenges relating to intellectual property protection as the commercial world becomes more globally integrated.

Question 42

Entertainment Promotions International owns the Canadian merchandising rights to the registered identifying logos of numerous prominent rock groups, for use on such things as buttons, T shirts and posters. These rights are worth many millions of dollars. Illegal reproduction of merchandise with the logos and unauthorized sales of the merchandise have cost Entertainment Promotions International millions of dollars in lost sales and the devaluation of legitimate products because of the poor quality of the bootlegged products
a. What legislation would protect Entertainment Promotions International in this case?
b. What rights does Entertainment Promotions International have and what can it do to prevent this happening again?
c. Suppose an unauthorized seller made it clear that they were selling "Genuine Imitation Rock Group T shirts." Could Entertainment Promotions International do anything about that, and why or why not?
d. What other penalties do the illegal merchandisers face?

Question 43

In 2005, Nautical Enterprises Ltd. applied for and received a patent for its new invention of a specialized scuba-diving suit. The claims statement accompanying the patent application stated that the new diving suit was capable of performing five specialized functions not formerly available to purchasers of such suits. In the same year, Nautical also patented the suit in the United States and granted a license to ABC Co. to manufacture the suit at its facilities in Florida. ABC commenced manufacturing immediately to meet the demand for the suits in the U.S. and exported them to diving suppliers in Canada
At the time of ABC's export, there were six Canadian companies engaged in the manufacture of diving suits. One of them, having learned of the new specialized suit, began producing suits with highly similar characteristics and functions and sold the suits through Canadian distributors.
In early 2007, Nautical and ABC learned of the manufacturing activity in Canada and immediately sent a letter to the manufacturer informing it that they were the patentee and licensee respectively of the diving suit. Nautical invited the manufacturer to negotiate a licence to produce the suits as Canadian Nautical itself, did not wish to manufacture in Canada. Several years of negotiation, however, failed to achieve an acceptable agreement during which time the similar suits continued to be manufactured in Canada by this manufacturer. In 2009, another Canadian diving suit manufacturer, Deep Diving Suits Inc., recognized the demand for Nautical suits in Canada. Deep Diving had the facilities to manufacture the patented suit and wished to do so on a commercial scale. The company applied to the court for assistance
Discuss the nature of this application and its probable outcome. Include in your discussion all factors which may affect the court's decision.
C.P.R. (3d) 154, this case examines the obligations upon patentees to supply the Canadian market as well as the ability of an interested manufacturer to obtain a compulsory license if the patentee fails to meet its obligations. The issue of patent infringement is also dealt with.
In order for an interested Canadian manufacturer to obtain a compulsory licence, its application must be brought no earlier than three years after the patent has been in effect. In this case, the time period expired in 1988 so the applicant has properly brought the application. It must further show that the patentee is not working the patent on a commercial scale to meet public demand assuming that the invention is capable of being worked in Canada.
Here, the patent is being worked in Canada, however, by an infringing manufacturer without the express authorization of the patentee. Since the infringing activity is subject to legal action by the patentee, courts generally do not consider it to be legitimate commercial working to satisfy the patentee's obligation, as it may be properly suspended at any time. Similarly, the importation activity carried on by Canadian suppliers may also constitute infringement if it lacks the consent of or payment of royalties to the patentee. Therefore, there is no effective manufacture of the diving suit in Canada and the patentee does not appear willing to establish such manufacture itself.
It seems apparent that the patentee, then, cannot supply Canadian demand and has little reason other than unwillingness for that situation. The court would, in such circumstances, issue a compulsory licence to the applicant to manufacture the diving suits in Canada on a royalty basis to the patentee. The Commissioner of Patents in this case, in fact, issued a non-exclusive licence to the applicant.

Question 44

Tableware Distributing Co. had been the exclusive Canadian distributor for thirty years of all fine china produced by the Regal China Company of England. At the beginning of the commercial relationship, Tableware advised Regal that it believed from information obtained by its sales staff that there was a large potential market in Canada for a new china pattern with a delicate floral design. A number of estimates and projections were sent to Regal to support this suggestion
Regal decided, on the basis of this information, to request one of their designers, Reynolds, to attempt such a floral pattern. Reynolds, an artist employed by Regal, designed a pattern consisting of groupings of spring wildflowers. Regal then sent the pattern to Tableware for its impressions. Tableware made several suggestions to modify the design, which Reynolds accordingly did. Satisfied with the design, Tableware then placed a first order to a value of $50,000 for the new china which Regal had named "April Showers." Regal then geared up for production of several hundred place settings and ordered the preparation of the necessary lithograph sheets required to transfer Reynolds' design to the china pieces. Each piece was backstamped with the name of the pattern and the manufacturer. Sales of April Showers took off in Canada and represented a major portion of Tableware's sales.
After two years, Regal's sales volume in Canada grew to the extent that it became necessary for Regal to open its own subsidiary office in Canada. Shortly after the new office was established the Regal China Company of Canada gave notice to Tableware that it intended to take over the distributorship of April Showers in Canada. Tableware attempted to persuade Regal to reverse its position on this matter. When Regal refused to do so, Tableware informed Regal that it had registered "April Showers" as a trademark and the pattern as an industrial design. Tableware then sent a letter offering to license Regal Canada to use the mark and design, setting out the fees it would expect to be paid in return.
Discuss the legal position of the parties involved in this situation and the arguments which may be used to support those positions. What remedies are available?
C.P.R. (3d) 214.

Question 45

Confidentiality or non-disclosure agreements can be used to protect trade secrets such as recipes or processing techniques.

Question 46

The Eaton Centre in Toronto commissioned Michael Snow, an artist, to create a work of art for the Centre. Snow's sculpture of a great flight of Canada geese is now a tourist attraction. At one point, the Eaton Centre placed red bows on the neck of each goose as part of its Christmas promotion and added a bow to the neck of the goose in its trademark logo. Michael Snow sued to have them remove the bows from his sculpture
a. Under what provision of what Act could he do so, since he had been paid for his work and had assigned his rights in it to the Eaton Centre?
b. What do you think he could argue?

Question 47

A licence is simply the right to use an intellectual asset.

Question 48

A person walks into a restaurant and asks for a Coke. If the restaurant serves other colas, but not Coke, what should be said by the staff? Explain why this would be the case, with specific reference to intellectual property legislation.

Question 49

Telemarket Ltd. was engaged in the business of compiling and publishing telephone directories of industrial and commercial enterprises. Telemarket solicited these enterprises to include their telephone number and, if they wished, an advertisement in the directory for a fee and offered a range of graphic services to create the advertisements for the directory. Telemarket's directory was called INFOPAGES and a trade mark had been registered in that name with the associated book design and logo
Each year, new directories were prepared and sold to Telemarket's major customer, the telephone company, to include with its annual residential directory
Just before publication of the most recent directory, one of Telemarket's sales managers received a telephone call from a long-standing customer who inquired why Telemarket had approached him for a second time that year to insert an advertisement in the directory. The manager was surprised to learn this had occurred and suggested it must simply be a computer error, which would be immediately corrected. The customer persisted, however, and described a solicitation letter that he had received from a company called Telemart Ltd. The letter enclosed a clipping of the customer's own previous advertisement, which had been placed in the INFOPAGES directory. The clipping was stapled to an invoice for advertising similar to the invoice form used by Telemarket and bearing an almost identical logo. The customer assumed that Telemart was a division of Telemarket and had mistakenly solicited twice for the upcoming annual directory. The manager assured the customer that Telemart was in no way related to Telemarket and that the recent letter was not a Telemarket solicitation in any way. When the sales manager contacted several of its other large customers he learned that they, too, had received such letters, clippings of their own advertisements and invoices.
Discuss the rights, if any, of Telemarket in this situation and describe what steps it may take to alleviate this problem including any remedies which may be available.
C.P.R. (3d) 529.