Who would have thought that the week before Christmas would be so fruitful on important decisions in the area of intellectual property.

First, the Supreme Court of Canada has delivered a landmark decision in Cinar Corporation v. Robinson. In it, the Supreme Court of Canada unanimously dealt with many crucial issues pertaining to how copyright cases will be resolved in the future:

– the scope of protection afforded by the Copyright Act;

– the meaning of the words “substantial part” that set out the threshold for copyright infringement;

– rules regarding disgorgement of profits;

– rules regarding non-pecuniary damages; and

– rules regarding punitive damages.

Despite Supreme Court’s unanimity, this decision in fact further blurs the line between unprotectable ideas and protectable expression of ideas by adding a significant degree of subjectivity in the analysis. The Court refused the approach whereby the court first determines the original elements in the plaintiff’s work, then filters out unprotectable elements from that list, and, finally, compares the remaining protectable original features with what was actually used by the defendant. Instead, the Supreme Court preferred the holistic approach where “The character of the works will be looked at, and the court will in all cases look, not at isolated passages, but at the two works as a whole to see whether the use by the defendant has unduly interfered with the plaintiff’s right.”

This case likely turned on the single issue that defendants had access to the plaintiff’s work and knew that plaintiff would object to their use of it. The court wanted to land a helping hand to an author who failed to carry out a project whereas a very similar project was later carried out by several parties some of whom were originally involved in the plaintiff’s project.

It is what some lawyers call “the degree of sneakiness” that decided the case. In other words, the entire copyright law analysis only happened after the judges internally decided that the plaintiff should be rewarded and the defendants should be punished.

While I typically always support those whose rights are infringed in copyright law suits, this may be the case when bad facts make bad law, because I’m not sure that I agree (from the description of the two works, and without having had a chance to compare the actual works) that what was used was more than unprotectable idea.

Time will tell what this case will mean in terms of development of Canadian copyright law.

The second case is the case decided by BC Court of Appeal that affirmed the landmark decision of BC Supreme Court in Woodpecker Hardwood Floors (2000) Inc. v. Wiston International Trade Co..

I already wrote about the facts of the case with a brief analysis before, but briefly here they are again: a BC flooring company that’s been around for over a decade realized that its competitor, another flooring company from the same city trademarked the word “Woodpecker” as its own.

The dilemma – do we spend a ton of money on rebranding or do we spend a ton of money on lawyers to fight this through – was entirely avoidable. All the first company had to do was register its trademark first.

They decided to fight for their trademark. BC Supreme Court granted an injunction recognizing the first company’s prior right in the trademark. Now, the BC Court of Appeal has agreed.

Happy ending? Not really, unless you mean a happy ending for all lawyers involved in this case.

Now that the case has been through the BC Supreme Court level and the Court of Appeal level, the first company has probably spent close to 100 times the amount that it would have cost them to register their trademark when they were starting out.

If anything, it would have been a good insurance policy.

Remember, registering trademarks is within the reach of any business that’s more than just a hobby. It’s a long-term investment that is crucial for any business that spends time, money and energy on branding and marketing.

Now, that there is a way to register your trademarks with a Triple Peace-of-Mind Guarantee™, you are committing a crime against your business if you are not protecting its trademarkable assets!

Speaking of how we help our clients register trademarks, here’s a testimonial from another happy customer:

P.S. Merry Christmas, Happy New Year and Happy Holidays!

Enjoy a little bit of Merry IP Christmas from Mincov Law Corporation!