Category Archives: Intellectual Property

A Good Little Example of the Importance of Respecting the Moral Rights of Creators, in Canada, Yes Even After Securing a License as to a Work

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A Québec lower court recently provided us with a good (albeit modest) example of the problem that moral rights can be for Canadian businesses, when handling third-party creations such a photographs, without first obtaining an adequate waiver from creators. The case at issue was: Lavigne (Valmedia) v. 9061-6632 Québec inc. (2021 QCCQ 13322).

This case stemmed from a relationship between a Québec publication called “Journal Accès” and a free-lance photographer who provided certain of his pictures for reuse in the publication at issue. This case was not concerned with whether the publication could publish the 3 photographs at issue, as the creator had consented to the publishing. The issue rather involved how the photographs were presented, upon actual publication, namely after making certain changes to the photos at issues and, worse yet, without acknowledging who the author was.

For the author, the problems in this case included the removal of his logo from the photos, Access’ failure to credit him for taking the 3 pictures at issue, in addition to the publication making unauthorized changes to the photographs, included adjusting colors and cropping them.

Moral rights are a idiosyncrasy of Canadian copyright law, though technically distinct from “copyrights” per se. In effect, “moral rights” generally allow authors to insist that third parties which handle their creations not modify them to any degree one might consider would affect their integrity in a manner that may be prejudicial to the author. Moral rights also allow creators to insist on being acknowledged as the author, whenever a work is used, unless the parties agreed otherwise.

In the case at issue, the photograph had agreed to the publication of his photos but had NOT agreed to the modification of these photos, nor that they could be published without acknowledging he was the author. This justified the photographer taking Accès to court (in small claims court, but still), to obtain redress further to the alleged violation of his moral rights.

At the end of the day, the judgement does confirm that there really was an issue with moral rights in this case, albeit only as to the issue of identifying the photographer as the creator of the photos at issue, and nothing else. Indeed, thought Accès did modify the photographs to a certain extent, including correcting colors and cropping the images, the judge essentially came to the conclusion that such changes were minor enough to be unlikely to have a real effect on the photographer’s reputation, notwithstanding whatever else he may be claiming.

That said, for the judge, the omission of the photographer’s logo, as originally included on the 3 photographs at issue, coupled with the omission of his name next to the photographs pretty clearly constituted a violation of this moral rights. That being the case, one could apply the rules relating to statutory damages, to come up with a “damages” figure, with or without actual evidence of prejudice from the plaintiff.

In practice, this lead the court to award very modest damages ($400.00). The decision is nevertheless worth mentioning, if only as a example of the continued importance of keeping moral rights in mind, whenever dealing with the use of Canadian works. Even when an organization has first obtained a license (or even an assignment), the issue of moral rights may rear its ugly head later on, unless a full waiver was obtained. Failing that, the full recourses contained in the Copyright Act may be brought to bear for things like modifications or even the simple failure to acknowledge who the original author was.

Christian Varin of the Fédération des inventeurs du Québec Found Guilty of Fraud

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After years of hearing and reading about complaints against the (supposed) Fédération des inventeurs du Québec, a Québec court recently found the principal behind the entity at issue, Christian Varin, guilty of fraud. Finally.

The La Presse newspaper published an article about the judgement at issue this morning. The judge was not kind in his judgment, using expressions and words like charlatan, fraudster, lies, flagrant incompetence, scam, etc. In short, Varin and the entity he created (and alone controls) defrauded hundred of small time inventors who were often attracted to Varin by advertising on Google and who believed Varin when he told them he could protect their inventions for a fraction of what regular patent agents (something is not) charged. Lo and behold, this was all a lie, Varin charging for supposed international searches and filing legally insignificant provisional applications that inventors were given the impressions would actually protect their inventions.

At the risk of repeating myself, the protection of inventions by patent registration implies a long process that is both complex and costly, for a reason. Given how strong patent protection is, the government does not grant it lightly, nor to anyone who simply asks. A (valid) patent applicable is something that requires great care, including to determine exactly what the invention is, and then to describe it adequately. Anyone interested in attempting to patent an invention should also be aware that protection must be sought in each country where one hopes to obtain rights, something that will require substantial means to achieve.

Believe it or not, there really is a reason why patent agents are so few and why they can charge fees that are this high: dealing with inventions and patents really is quite complex. This is NOT something Joe Average can do willy-nilly on the corner of your kitchen table.

If anyone who is neither an attorney or a patent agent tells you they can protect your invention for a fraction of what others charge, walk away, or better yet, run.

Updating Your Branding is Fine but Watch Out for Excessive Variations of Your Trademarks

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When it comes to trademarks, the reality is that businesses like to keep up with the times, including to remain desirable and relevant in customers’ eyes. As a result, though the concept of a trademark implies a fair measure of permanence, they do often evolve over time. This can lead to problems.

One such problems stems from the rule that a trademark that has been registered must, in principle, be used as is, as it was originally filed for and registered. Any change to what a trademark looks (or sounds) like may lead to an eventual court holding that the trademark now being used is no longer the original one but rather a “variation“. Such variations may jeopardize protection afforded by registrations, as such changes may break the requisite link between the original registration and the trademark itself. This may happen, for example, when two marks are shown in close proximity to one-another, when something is added or subtracted from a mark, or upon doing a redesign of a logo, etc. If it’s not done properly, the business making such a change may end-up in hot water.

The issue traces back to the fact that, in Canada, a registered must be used as shown in the registration certificate. After all, it stands to reason that you may not register X and then use Y, and expect to benefit from your registration, as a registrant normally would. Rather, when a discrepancy crops up, courts may find that the registration at issue no longer applies to use of the trademark actually being used by the business (and vice-versa), because the link between the mark and the corresponding registration has been severed, so to speak.

Though our courts do allow some changes to their marks by trademark owners, we now impose limits on how far businesses can take these “variations”. For example, the new mark should not mislead or become prejudicial to members of the public, nor should it result in what the average person would consider a new mark altogether, as opposed to making changes that are sufficiently limited so that the original mark is still recognizable. If the changes are seen as too substantial, then courts may conclude that what is now being used is actually a new mark that sufficiently differs from the original one to justify holding the two are (legally) distinct.

If and when this happens, trademark owners may lose the benefit of the shield that affords a trademark registration, in addition to risking having the original trademark registration stricken because the mark it relates to is no longer in use.

To avoid problems such as these, trademark owners should periodically reassess whether their trademark registrations are adequate or sufficient, and determine whether new trademark applications should be filed, including to cover recent variations of their trademarks.

Sure, to your marketing department this may be a simple redesign of your logo, but to an eventual judge, it may actually result in a brand-new trademark (no pun intended).