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Top 3 Copyright and Trademark Tips for Ontario Businesses and Not-for-Profits
Andreas Kalogiannides | October 29, 2015
It is critical for Ontario businesses and non-profits to put into place the steps to pro-actively create, manage and police their trademarks and copyrights. The following non-exhaustive list provides an overview of three common issues relating to an organization’s use and management of their intellectual property.
1. Register your Trademarks and Copyrights
Register the trademarks, service marks, certification marks and copyrights that are owned by or used in connection with your business or non-profit. Even though registration is not required at law (in Canada, your use of branding and trademarks in the normal course of business is protected by common law trademark rights; copyrights do not have to be registered in order to be validly exist at law), registration provides you with the ability to enforce your rights nationwide, and, in the case of trademarks, avails you of the right to pursue claims for trademark infringement, as opposed to a claim of passing off (which is more difficult to prove).
View your copyrights broadly – they include publications, website and all other original, creative works that are fixed in any print, electronic, visual, audio-visual or tangible medium.
Registration of your trademarks and copyrights is also beneficial when enforcing your rights against internet service providers and especially in non-Canadian jurisdictions.
2. Ensure that you have Permission to Use all Intellectual Property
Make sure that your business or non-profit either owns or has the necessary rights to use all intellectual property (e.g. texts, graphics, photos, trademarks, etc.) that it uses in the course of its advertising, social media and publications. Issues often arise when using images, graphics or texts created by an independent contractor or even an organization’s board members; it is not the case that the business or non-profit owns the work solely because its creator is somehow affiliated with the organization. In most cases, the business or non-profit will at most have a narrow, limited implied licence to use these copyright works or trademarks.
Similarly, when engaging independent contractors – photographers, graphic designers, consultants – ensure that you have a written agreement which assigns ownership of any copyrights and trademarks to the business or non-profit. Without such an agreement, it is not clear at law whether the business or non-profit owns the IP; generally, the author of copyright is the deemed owner (although copyright works created by employees in the scope of employment will, generally, be owned by the business).
3. Protect your Databases through Contract Law
As a business, and especially as a non-profit, your client lists and membership databases are critical to your sustainability. Generally, mere lists comprised of name and contact information are not protected under copyright law as such works do not possess the threshold amount of originality required for copyright protection (although some databases may be protected as ‘compilation’ works depending on how its data is selected and arranged).
Instead, protect client lists & membership databases through contract law. For example, if your business or non-profit publishes client or membership lists online or otherwise permits their use by third parties, it is imperative to have a valid contract or licence (in the online world, this is often called a “shrink-wrap” licence) which establishes a clear contractual arrangement with limits and conditions on the use of that information. With a contract in place, an organization may have a claim for breach of contract or intentional interference with economic relations in the event that the information is used without authorization. Absent a contract, however, it may be difficult for an organization to prevent unauthorized use by third-parties.