Tech Law Summit Recap – Key Developments in IP Law

The recent McCarthy Tétrault Technology Law Summit included a panel on “Key Developments in IP Law,” featuring James Skippen, Chairman and Chief Executive Officer, WiLAN Inc. and McCarthy Tétrault partners Beth MacDonald, David Gray and Barry Sookman. Paul Armitage, another McCarthy Tétrault partner, moderated the panel.

Patents

James Skippen commented on the growing awareness of the value of intellectual property, and patents, in particular. He observed that, instead of being a neglected asset class, patents are playing a more prominent role, and may even, in some circumstances, exceed the value of a company’s other assets. 

After describing WiLAN Inc.’s  history and current business, James provided his view of recent patent decisions from the Supreme Court of the United States, including eBay Inc. v. MercExchange, L.L.C., KSR Int'l Co. v. Teleflex, Inc., Quanta Computer, Inc. v. LG Electronics, Inc. and Microsoft Corp. v. i4i Limited Partnership. He also briefly touched on the recent Leahy-Smith America Invents Act. These developments have resulted in important changes to the judicial remedies available to a successful patentee and have had implications for the substantive validity of issued U.S. patents. They have also brought about procedural changes in patent litigation that affect the balance of power between patentees and potential infringers.

Trade-marks/Domain Names

Beth Macdonald spoke next about the recent developments in the area of trade-marks and domain names. She provided an overview of the 2011 Supreme Court of Canada trade-marks case Masterpiece Inc. v. Alavida Lifestyles Inc. and provided two key takeaways arising out of the decision:

  1. keep track of your organization’s trade-mark applications and registrations; and
  2. monitor the Canadian Trade-marks Journal to identify allowed applications for registration that should be opposed.

The Masterpiece ruling also appeared to discourage the use of expensive survey and linguistic experts, at least in the context of consumer goods, in favour of a judge addressing the issue of confusion without the assistance of expert witnesses. Beth also spent some time discussing the current issues in the area of keyword advertising.

Beth concluded her presentation with a discussion on the new global top level domain (gTLD) registrations. She noted that the application period for the new gTLDs is now open and runs until April 2012. This will be followed by an initial evaluation and opposition period, with a deadline to file last objections expected around December 2012.

IP/IT Litigation

David Gray, the next speaker, focussed on efforts that organizations should take to avoid costly litigation, and also on measures they can take to minimize the costs, risks and disruptions associated with significant legal proceedings.

David spent the remainder of his talk providing the audience with tips on proper business document retention strategies. He noted the importance of maintaining proper and accurate corporate records, but also recording any elements that could shed a positive light on the current events should facts come under dispute in the future. Oftentimes, rather than saying that “history is written by the victors”, according to David, when it comes to factual disputes, “the victors are those who wrote the history.”

Copyright

Barry Sookman closed out the panel with a discussion on key developments in copyright law in 2011. He began with an overview on the federal government’s Bill C-11, the Copyright Modernization Act, going over the important amendments that the Bill would make to the Copyright Act. After a review of the process and timing leading up to the Bill’s expected passage, Barry reviewed which areas of the Bill are being considered for potential amendment at the committee stage.

The next part of his presentation provided an overview of key 2011 copyright law decisions both in Canada and around the world. These cases included Crookes v. Newton (while not strictly a copyright case, Barry noted that it could influence the way copyright law would look at Internet hyperlinks), Lucasfilm Ltd & Ors v. Ainsworth & Anor, Robertson v. ProQuest Information and Learning LLC, and Temple Island Collections Ltd v. New English Teas Ltd & Anor. A show of hands from the audience illustrated that the results from that last case on the issue of infringement were quite unexpected.

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