Client Wants To Do Business in US, What To Do from an IP Perspective

The Amazon Marketplace, an online sales platform for third-party sellers, has seen a significant increase in popularity. It is not, however, the only third-party sales platform,, e-Bay, and Etsy are other popular marketplaces in the U.S., and all offer great ways for international sellers to enter the U.S. market. There are, however, some IP considerations international sellers should consider before selling on these marketplaces. Continue Reading


June 17, 2019 is the big day – a day anticipated since 2014. The major changes to the Canadian Trademarks Act will be implemented on this day. What does this mean for trademark owners?

These changes will affect the types of trademarks which are protectable, the basis for registration, the procedures for filing trademarks, the opposition procedures and the manner of enforcement. In addition, as of June 17, 2019, Canada will accede to the Madrid Protocol and the Nice Agreement.  This Part I will deal with some of these changes. Continue Reading

Copyright law update – proposed amendments to website blocking laws


The Copyright Amendment (Online Infringement) Act 2018 (Act) which passed both Houses of Parliament on 28 November 2018, and is due to commence the day after it receives Royal Assent, amends section 115A of the Copyright Act 1968 (Cth).

Section 115A of the Copyright Act was introduced in 2015 and enables a copyright owner to apply to the Federal Court of Australia for an injunction requiring a carriage service provider (CSP) to take reasonable steps to block access to an online location located outside Australia that infringes, or facilitates an infringement, of copyright and has the primary purpose of infringing copyright or facilitating the infringement of copyright (whether or not in Australia) (Online Infringement Provisions). Continue Reading

“…this is my life”: Corporate Biography, Moral Rights & Being Slow To Berne

I don’t care what you say anymore this is my life
Go ahead with your own life leave me alone.
—Billy Joel, My Life

People often do quite well financially selling their life story.  But stop and think for a minute what that statement means — “selling their life story.”  The complex personal investment each writer makes in his/her craft and the further psychological dynamic of autobiography have each seen repeated comment and exploration. See Calvin D. Peeler, From The Providence Of Kings To Copyrighted Things (And French Moral Rights), 9 Ind. Int’l & Comp. L. Rev. 423, 426 (1999)(authors’ moral rights “evolved from a societal concern about individual author’s and artist’s personality and reputation investments as they are exhibited through their creative work”);  C. R. Romiţan, The Right Of Authorship On A Work, 1 AGORA International Journal of Juridical Sciences 155, 158 (2014) (“The authorship of a work belongs only to individuals, because only they have the specific qualities of the creator, namely: intelligence, personality, sensibility, faculty to create, to think, to formulate ideas and also to expose them in an original and personally form. In order to recognize the authorship of a work, the law does not require any condition because it arises from the mere fact of creating the work”); see also Livingston, P. (2016). “Authorship.” In N. Carroll & J. Gibson (Eds.), The Routledge companion to philosophy of literature (pp.173-183). New York: Routledge, at 14 (autobiographies convey perspectives beyond what is “manifested in the texts alone”); Burke, P., “Representations of the Self from Petrarch to Descartes,” pp. 17-28 in Porter, R., (1997) Rewriting the self: histories from the Renaissance to the present, London: Routledge, at 17 (“‘man became a spiritual individual and recognized him- self as such’. The rise of self-awareness or subjectivity was reflected by the rise of autobiographies”).    Does a life story sold cease to be one’s own life?  Is it no longer an individual’s personal history?  Does it become someone else’s life? When I remember and describe my own history in my own language and way, has not my history somehow merged with my expression of it?  While one might ask if I can get it back, is it not just as natural for me to say why should I have to do that, as my story has never left me?  I mean, it is mine, isn’t it? Continue Reading

Can Trademarks Be Primarily Geographically Descriptive?

Suppose that you want to register a trademark that identifies a source of goods or services for your business.  What if the trademark describes a geographical area such as eastern?  Should you register your trademark with the U.S. Patent and Trademark Office?  Can you obtain a registration from the U.S. Patent and Trademark Office?  The answer is YES! if the mark is not primarily geographically descriptive.

Section 2(e)(2) of the Trademark Act, 15 U.S.C. §1052(e)(2), prohibits registration on the Principal Register of a mark that is primarily geographically descriptive of the goods or services named in the application. See T.M.E.P. §1210.01(a). The test for determining whether a term is primarily geographically descriptive is whether:

  1. the mark sought to be registered (or a portion thereof) is the name of a place generally known to the public;
  2. the public would make an association between the goods or services and the place named in the mark, that is, believe that the goods or services for which the mark is sought to be registered originate in the place; and
  3. the source of the goods or services is the geographic region named in the mark.

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When Does “Copying” a Photograph of a Building Constitute Copyright Infringement?

A recent decision from a Pennsylvania federal court underscores that there is generally no copyright protection in an actual building or a skyline of buildings; instead, the protection is in the particular photograph or rendering of the building.

Creating an original depiction of a building or skyline that is not substantially similar to the photograph or rendering may provide protection from liability for copyright infringement. Other federal courts, however, have held that actual use of a pre-existing photograph of a skyline of buildings, or a portion of such a photograph, without the copyright owner’s authorization, may constitute copyright infringement.

Although this alert will discuss copyright issues implicated by use of a photograph of a building or skyline, please note that building owners have also argued that the façade or other distinctive aspect of their building may qualify for trademark protection such that the unauthorized depiction of the building in advertising materials may constitute trademark infringement. This Alert focuses not on potential trademark protection for buildings but, rather, the potential for photographers or artists to seek copyright protection for their photographs or other renderings of a building or buildings together in a skyline. Continue Reading

IP Court restrained to sell and market a generic drug until the patent expiry

On 24 April 2018 the Intellectual Property Court published its Decision in case A41 85807/2016 between Swiss-based Novartis AG and local generic Nativa LLC.

The IP Court’s position in this case may result in an extra defense granted for patent holders against unfair practice of registration of generics drugs until patent expiry.

Under the auspices of the case, in 2008 Novartis obtained the MA for its blockbuster drug Tasigna (INN Nilotinib). In a few years, Nativa obtained the MA for its generic drug Nilotinib-Nativ (same INN) and has put efforts for the launch of the generic drug (in particular, registered the price before the MoH and applied for the reimbursement), regardless of Novartis’ effective patent for Nilotinib.

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ARGOS aggro: UK infringement issues arising from US advertising site

The Court of Appeal for England and Wales was asked to consider a case where 2 companies were using the same name in different territories, both legitimately, but one decided to exploit traffic mistakenly hitting its website by using targeted ads[1]

The dispute involved two businesses who shared the “Argos” name, but on different sides of the Atlantic. Argos Limited (AUK) operates a very well-known catalogue and online UK consumer goods retailer under the “Argos” brand.   Argos Systems Inc. (AUSA) is a US business which provides computer aided manufacturing services for the construction of buildings to customers in North and South America. Each are long-standing businesses who had traded under the same brand in their respective territories without problem.

In 1992 AUSA registered the domain name and it set up a website to promote its American business. Continue Reading


Recreational cannabis became legal in Canada under the Canadian Cannabis Act on October 17, 2018 and sales have begun. Prior thereto, only medical marijuana was available in Canada.

The Canadian Trademarks Act has not been amended in any way in respect of the sale and promotion of recreational cannabis in Canada. The law regarding registration remains the same for marks for such cannabis products and services, as for other products and services. Many companies have filed trademark applications for trademarks for use in association with recreational cannabis products and services.  They are moving through the usual application process. Continue Reading

Federal Circuit Establishes New Test for Trade-Dress Secondary Meaning

The United States Federal Circuit recently issued a precedential opinion addressing trade dress secondary meaning.  The decision establishes a six-factor test to determine whether trade-dress acquired secondary meaning and clarifies a variety of other, related matters.

Converse appealed a final determination of the International Trade Commission (“ITC”) that Converse’s U.S. trademark number 4,398,753 (“the ‘753 mark”) was invalid.  The ITC also determined that Converse could not establish the existence of common law trademark rights. Continue Reading