Canadian law changes frequently. To the extent there are changes in the law, the information in this blog post may no longer be accurate. This blog post does not create a lawyer-client relationship. Content provided herein is for informational purposes only and should not be relied upon as legal advice.
Proactively Protecting Your Intellectual Property: Copyrights
You’ve probably heard that protecting your intellectual property is important. This is good advice. But just what is intellectual property? Why is it so important to protect? And how does one proactively protect it? If you have ever asked any of these questions, you’re reading the right blog post.
This is the first of a four part blog series that will discuss the proactive protection of copyrights, industrial designs, patents, and trademarks.
What Is Intellectual Property?
If you want to be technical, intellectual property is a type of personal intangible property. However, intellectual property is likely better understood as being a catch all term for copyrights, industrial designs, patents, trademarks, and, to a certain extent, trade secrets. Integrated circuit topographies and plant breeder rights also are considered to be intellectual property, but we’ll save that discussion for a later date.
Like with other types of property, intellectual property provides its owner with a bundle of rights. These rights vary based on the type of intellectual property, but they all essentially boil down to the right to prohibit. For example, copyright gives an author the right to prohibit others from reproducing their work and trademark rights give the trademark owner the right to prohibit others from distinguishing their wares or services with that particular mark. To be clear though, intellectual property does not give its owner rights in an idea; rather, it gives the owner rights in the results of ideas.
This right to prohibit is also what gives intellectual property its value. By being able to limit who can reproduce, perform, commercialize, or use your intellectual property, you create scarcity. And from scarcity comes value. If someone wants to reproduce, perform, commercialize, or use your intellectual property, they’ll need your permission (with exceptions) and that permission often comes at a price.
Suffice it to say, if you wish to monetize your intellectual property, you must protect it. Protection of intellectual property doesn’t necessarily arise automatically and, in some cases, can easily be lost. This is especially true for trademarks and patents which require particular care and maintenance. Today, though, we’ll begin our discussion with protection of your copyrighted works.
Copyright is simultaneously the simplest and most challenging intellectual property to protect. On the one hand, copyright protection is simple in that it arises automatically if certain requirements are met. But on the other hand, copyrighted works are easily misappropriated (i.e. pirated), especially over the internet, which poses significant challenges to the copyright owner. Since copyright protection arises automatically, you almost certainly own copyrights in works you have authored even if you don’t know it.
Copyright automatically subsists in every literary, dramatic, musical, and artistic work if the following requirements are met:
- The author of the work must ordinarily reside in a “Treaty Country.”
- Note that most countries are treaty countries, including Canada;
- The work must be original;
- The subject-matter must qualify as a work; and
- The work must be expressed or fixed in a permanent form.
If you are the author of a work, and the above requirements have been met, you most likely will have copyright protection in your work unless you authored the work in the course of your employment or otherwise assigned (i.e. transferred) ownership of the intellectual property rights in that work. Note that registration is not required to obtain copyright protection, which is one of many ways copyright is distinguished from industrial designs and patents, both of which require registration to obtain protection, and trademarks, which enjoy far greater protection if registered. That being said, there are certain advantages to registering copyrights which will be discussed further below.
Unlike employees, contractors and volunteers own copyright in the works they author. This is consistent with general copyright law but can create significant hardships for an unwary business. For example, if a company contracts with a freelance software programmer to develop software, the freelancer (i.e. contractor) will own the copyright in the software despite having been hired to design the software for the company. The company will own the deliverable of the project, but that may simply be a single copy of an executable file. In this circumstance, the company would be free to use that single file, but copying the software, publishing it, adapting it, selling copies of it, or licensing it would amount to infringement of the freelancer’s copyright. Such a company could be sued by the freelancer, which may result in a permanent injunction precluding the company from making further copies of the software or an accounting of the company’s profits earned from the software.
This situation can be avoided by having a written contract with the contractor or volunteer which assigns ownership of the copyright to the client of the contractor. An assignment of copyright ownership is not strictly necessary with employees, as copyright in works authored in the course of employment belong to the employer; however, it is still advisable to have employees assign their copyright to the employer in case the employee is later deemed to be a contractor. For more information on whether your worker is a contractor or employee, check out my blog post on contractors.
In addition to copyright, authors of works have “moral rights” in their works. Among other things, moral rights prevent the owner (as distinct from the author) of the work from mutilating the work or using the work in a way which harms the author’s reputation. Moral rights also give the author rights of attribution with respect to the work. Additionally, the rules regarding ownership of moral rights differ from copyrights in two important ways. First, moral rights cannot be assigned. Instead, they can only be waived. And second, employees own the moral rights in works they author even though they do not own the copyright in the work. Consequently, businesses (and other entities) should obtain moral rights waivers from their employees, contractors, and volunteers if they want to have the “cleanest” form of copyright ownership.
Once obtained, copyright gives its owner the exclusive right to copy, publish, distribute, perform or exhibit in public, modify, adapt, or translate the work and the right to permit others to do so. Such permission is granted through the use of licences. Any person who exercises any of a copyright owner’s exclusive rights in a substantial manner without permission has infringed the owner’s copyright, that is unless an exception applies… and exceptions there are many.
Discussing all of the exceptions to copyright infringement is beyond the scope of this blog post, but I would be remiss if I didn’t at least bring the fair dealing exception to your attention. The fair dealing exception allows a person to carry out activities that would otherwise be copyright infringement if done so for the purpose of research, private study, education, parody or satire, and such activity is fair. The fair dealing exception also allows for criticism, review, and new reporting of copyrighted works if certain requirements are met.
Finally, in Canada, most copyright protection lasts for the life of the author plus the remainder of the year of the author’s death plus an additional 50 years. However, there is an important caveat. Where the author is a human and has assigned the copyright to a new owner, the copyright will revert back to the author’s estate 25 years after the death of the author.
The following is a non-exhaustive list of best practices to proactively protect copyright:
- Obtain written and signed assignments of copyrights from your contractors, volunteers, and employees;
- Obtain waivers of moral rights from your contractors, volunteers, and employees;
- Register your copyrights. Registration of copyrights provides many advantages including:
- Presumption of ownership; and
- Expands potential remedies available in a copyright infringement lawsuit by rebutting the defence of innocent infringement;
- Register copyright assignments. This gives your ownership priority over a subsequent assignee.
- Place the © on your copyright protected works, followed by the date of publication and name of the copyright owner.
- The © notifies the public that the work is copyrighted which extinguishes the defence of innocent infringement.
- The © followed by the date of publication and name of copyright owner will afford the owner copyright protection in member countries of the Berne Convention and Universal Copyright Convention.
- Speak with a lawyer who practices copyright law. Copyright law is complex, containing many nuances, features, and exceptions that were not addressed in this blog post.