Posts tagged intellectual property
Names, especially really, really old ones with very positive associations, have incredible value in the marketplace. Some companies are made or broken on their trademarks (Wikipedia), and some organizations spend years in court relying on the law to protect their brand. Universities, to a certain extent, are no exception and recognize the need at times to give a lesson on the ownership of names by curtailing how its brand is used in the public domain.
Karen Seidman at the Montreal Gazette reported last week that McGill University and the Students’ Society of McGill University (SSMU) concluded a Memorandum of Agreement regarding the use of the McGill name, which left many students unhappy, including the SSMU leadership, and has forced many student clubs to change their official names. Maggie Knight, SSMU President, admitted that SSMU, including its umbrella of clubs, had no legal rights to the McGill name, and now many clubs will have to adapt their materials to deal with the naming restrictions.
In response to discontent from students, McGill has emphasized that it is simply insisting that student organizations have names that specify they are students and not an arm of the university itself. Here are some examples:
- Elections Mc-Gill will now be Elections SSMU;
- TVMcGill will now be TVM: Student Television at McGill;
- McGill Walksafe will now be SSMU Walksafe;
- McGill Nightline will now be McGill Students Nightline;
- McGill First Aid Service will now be Student Emergency Response Team; and
- McGill Outdoors Club will now be McGill Students Outdoors Club.
It makes sense that the university would want to clarify what activities or services are being offered by students, who are vital to but independent of the administration of the university, and what activities or services are being offered by the university itself. The beef from students comes from the fact that they now have to scramble to adjust their promotional materials to different names imposed on them by the administration, and the fact that the process involved an imbalance in negotiating power.
Students also say that the administration wanting to reserve the sole word “McGill” for non-student affairs downgrades students as peripheral to the university’s mission and identity. Here is an editorial on this issue from the McGill Daily, which expresses concerns about a whitling away at what or who is included in the “McGill Community”. The editorial harps on the justification for the administration’s push being liability for damage caused by student groups (though that appears to be unconvincing from a legal perspective, so I doubt it was the main reason).
McGill has offered $25,000 to help cover the costs of any changes to banners, crests, T-shirts and so on featuring names that are no long permissible. Here is a list of new club name options for students approaching SSMU to create a new club.
SSMU seems to have gotten good legal advice: the university, not the student society, owns the name McGill whenever it is used in connection with the university. Canada’s Trade-marks Act (Department of Justice) includes special rules that favour universities, among other public bodies, when it comes to their names and emblems:
9. (1) No person shall adopt in connection with a business, as a trade-mark or otherwise, any mark consisting of, or so nearly resembling as to be likely to be mistaken for…
(n) any badge, crest, emblem or mark…
(ii) of any university…
in respect of which the Registrar has, at the request of Her Majesty or of the university or public authority, as the case may be, given public notice of its adoption and use…
In other words, if a university has asked the Registrar of Trade-marks to give notice of its use of a particular trademark (and the Registrar has done just that), then no one can adopt that trademark or any trademark that could be confused for the university’s trademark. Here is an example of one of McGill’s trademarks registered with the Canadian Intellectual Property Office (CIPO), and this is how CIPO defines a trademark:
A trade-mark is a word (or words), a design, or a combination of these, used to identify the goods or services of one person or organization and to distinguish these goods or services from those of others in the marketplace.
Have other universities gone the same route?
The University of British Columbia (UBC) does not seem to have the same restrictions in place; here is a list of student clubs from the Alma Mater Society (AMS) website, many of which appear to violate McGill’s rules. (The sample constitution provided to students to establish a club within the AMS envisions a name like “The ____ of UBC”.) The same seems to apply at the University of Toronto: here is a list of student clubs from the University of Toronto Students’ Union, many of which appear to violate McGill’s rules too.
If you are interested in learning more about how UBC approaches this issue, here is a list of UBC trademarks, which includes regular trademarks and those under Section 9(1)(n)(ii) of the Trade-marks Act (discussed above). Here is a pamphlet put out by UBC’s Office of the University Counsel about its trademarks, and here is a related university policy.
According to the Montreal Gazette article cited above, two other major universities in Montreal may have policies similar to McGill.
The Supreme Court of Canada earlier this month granted leave for an appeal of the Alberta Minister of Education from the decision of the Federal Court of Appeal in Alberta (Education) v. Access Copyright (CanLII).
In a nutshell, the dispute pits ministries of education and school boards against Access Copyright, a copyright collective. Access Copyright successfully argued before the Copyright Board of Canada that unauthorized reproduction of certain materials by schools was a violation of its copyright, which did not fall within the fair use provisions of the Copyright Act (Department of Justice). The Board also ordered that certain copying entitled Access Copyright to royalties.
The Copyright Board of Canada last week approved an interim tariff applicable to the educational licence granted by Access Copyright, a not-for-profit organization that represents authors and publishers, to post-secondary educational institutions. According to the Copyright Board, more consultation is necessary before it will approve Access Copyright’s new proposed fee structure (Macleans Oncampus), which will significantly increase the cost for educational institutions to use the licence.
The new fee structure has prompted considerable criticism from universities and provincial governments and marked another chapter in the long-standing fued between the collective and educational institutions. The additional costs to educators of the new structure are so great that some licencees, like the University of Alberta, have announced that they will let their contract with Access Copyright expire and make other arrangements to obtain copies of course materials (see this article at Macleans Oncampus).
Michael Geist, perhaps one of the leading intellectual property law experts in Canada, wrote a fascinating article on the implications of Access Copyright’s conduct, which is available on his blog here (scroll down for more links to get a better sense of the background, and you can find a previous post on mine of the subject here). The basic idea behind Access Copyright and the photocopying licence for post-secondary educational institutions is that the creators of intellectual, intangible works should be compensated by the users or consumers of those works, which in this case are students and more generally members of the education community. The Copyright Act (Canada) (Department of Justice) requires collectives like Access Copyright to submit their tariffs (i.e. the fees charged to users) to the Copyright Board for approval. In his article, Geist argues that the new fee structure is excessive, and he highlights alternatives for universities and writers to get their needs met.
This current dispute follows a series of legal proceedings related to these tariffs, most recently involving a decision (CanLII) of the Federal Court of Appeal several months ago, which explains many of the issues at stake.
Inventions are a big business for universities, full of potential benefits and potential pitfalls. I discussed in a previous post the issues related to ownership of inventions by university employees and the importance of having the rights of each party set our in writing.
Université de Sherbrooke c. Beaudoin, a recent decision of the Quebec Court of Appeal, shows how a university’s failure to ensure its rights and obligations were clearly indicated in an agreement with researchers led to a costly court case that nearly ended in an unfavourable judgment.
The story revolves around several different contracts related to research being conducted by Beaudoin and an assistant, the goal of which was a particular invention. The inventors had a contract with the university that contained the following important terms:
- the university would own the invention and had the exclusive right to manage it, which included the right to assign rights to others to commercialize it; and
- in exchange, the university owed the inventors half of the revenues generated, and were obliged (a) to consult with the inventors about the management of the invention, and (b) to make reasonable efforts to maximize the value of the invention.
The research was also subject to a series of contracts between the university and Groupe Conseil Harland, a financial engineering company, which, in part, gave Harland an option to acquire the invention. The purchase price payable by Harland was to be determined by complex calculations. Eventually, the university agreed to an amendment, which involved the transfer of that option to Technologies & Bioressources Inc., an affiliate of Harland’s, at a modified price.
This is what prompted the inventors to start a lawsuit against the university, Harland and Neptune. They claimed the university, by signing the amendment, failed in its obligations, first, to consult them about the management of the inventions, and, second, to maximize the value of the invention.
The Quebec Court of Appeal found that the university had not failed to live up to these two obligations and consequently rejected the inventors claims. The court held that the university had adequately consulted with the inventors – they had mentioned certain proposals in the past, which were opposed by the inventors. Based on the language of the agreement, no further consultation was required. Similarly, the court maintained that the university had made reasonable efforts to maximize the value of the inventions.
What lessons can be drawn from this decision?
Many commentators think that the university got off lucky on this one – it was relying on poorly defined obligations. Universities that enter into revenue-sharing agreements with inventors should clearly define what it means to consult and maximize the value of an invention. This decision shows that courts are happy to scrutinize these sorts of agreements, which are fraught with risks for universities.
Following up on my post from last week, the dangers and pitfalls embedded in the use of social media, like Facebook, are growing increasingly clear. But an equally important issue, which I did not touch on below, is how these tools can be used to maximize their benefits (of which there are plenty!).
Teacher Newsmagazine, a publication of BCTF, recently carried an interesting article by prominent Vancouver lawyer Tony Wilson, who practised intellectual property law at Boughton. He speaks directly to students and educators and advises them on how to use social media to protect, instead of diminish, their online reputation, while reminding us fully of the precautions we should take. Wilson refers to a new area of law emerging on this subject:
The online world has created a new area of law in this age of Web 2.0. Its called Online Reputation Management Law, and it straddles the law of defamation, freedom of speech, privacy law, copyright law, and trademark law. It also involves the non-legal (but equally as important) fields of public relations and crisis management. Many of the legal issues in this area involve Facebook, which has over 350,000,000 users, (including about 90% of all the middle school and secondary school students you and your colleagues teach every day. You might be a Facebook user as well.)
Digital information presents fundamentally different material for publication from any content we have seen before because it is so easily reproduced, and, in part for that reason, once it is created and released it is almost impossible to retract. For better or worse, you do not need a printing press to spread words or images in front of the minds of the many. Copy and paste, linking and other web functions have lowered (or liberated – depending who you ask) the bar for self-styled commentators and editors.
I remember when I was a pre-teen the worst thing someone could do was ask you whether you had a crush on someone while secretly recording your conversation. The possibilities are now endless of how someone can damage your reputation or otherwise ruin your relationships using any number of devices that sell for relatively affordable prices and are operational with relatively unsophisticated levels of training.
But now, like back then, the greater risk posed to your own reputation is yourself. Reproducibility and irretractability of digital information are two basic elements of our web-based society. We deny them, or minimize their significance, at our own peril. Students have broad ambitions; based on their age and the common use of social media, it is relatively easy for a momentary lapse in judgment to damage their career prospects. Similarly, educators, because of their unique role with respect to youth and the advancement of knowledge, have concerns of equal importance. It is essential for both these groups to adopt clear standards, both personal and professional, when using social media.
See here for a pamphlet by BLG on Education Law that contains an interesting article on a user’s guide to social networking that is tailored to school staff.
There is usually a considerable lag time between the law and new, popular technologies. It takes most of us a while to figure out what each new item is all about. Then, once one becomes a real money-maker, there are those who claim it was stolen from them. Others still who manage to use it in a way that invites some risk of liability upon themselves. Social media, such as Facebook, is a perfect example.
It is that last part that fascinates me and should hold much interest for students and educators. There have been a couple of news-bytes over the past week that show some of the ways social media interacts with law.
- The New York Times reported last week that a student in Florida who was suspended for criticizing a teacher on Facebook can proceed with a law suit against the school. The student had created a Facebook group entitled “Ms. Phelps is the worst teacher I’ve ever had”. The school said it amounted to “cyber-bullying”.
- The Globe and Mail reported yesterday that the conversation of a 14 year-old Port Alberni girl on Facebook resulted in a possible averted school shooting in Washington state. The girl was chatting with a 17 year-old student who mentioned that he had weapons and was planning to go on a murderous shooting spree at his school. Her parents noticed the comments and called the authorities. The boy was arrested.
- Tanya Roth at the blog “Law and Daily Life” discussed yesterday the story of a sociology professor in the US who was put on administrative leave for comments on Facebook that jokingly suggest she wanted to kill her students.
Right or wrong, these events show the potential legal consequences of using Facebook. Social media is designed to replace much of our traditional communications, particularly among friends and family, which used to be carried on in a more private setting and with a different context. But the way we engage each other has shifted, and a whisper on Facebook may be heard like a megaphone.
The law might stay out of our bedrooms, but it can enter any room with a modem.
Paul Brent at the Law Times reported earlier this week that the Canadian Association of University Teachers has been granted leave to intervene in the upcoming judicial review (i.e. appeal) by provincial Ministers of Education of the decision by the Copyright Board of Canada last June, which raised the fees to be paid by schools on copied material to $5.16 per student. Access Copyright, the victor in the case, claimed “governments were not paying a fair price for the hundreds of millions of photocopies used in schools as substitutes for buying the books.”
The decision raised many interesting issues related to education and the protection of intellectual property, particularly the debate about the “fair dealing” exception in the Copyright Act (Canada). The Canadian copyright legal regime, in ultra-brief form, basically works like this:
- Copyright refers to the exclusive right of the owner to reproduce certain creative expressions, such as songs, plays, novels and so on. The purpose of this rule is to protect the rights of artists, writer and others, including their publishers and producers, to certain intangible creations that are otherwise easily reproducible. People have to make a living, and few people will pay you for something they can just get a good copy of for free.
- The other side of the coin is that in certain circumstances free reproduction should be permitted and even encouraged. The largest exception of this sort is called “fair dealing”, which allows copying without the consent of the copyright owner for particular purposes.
These are some of the relevant provisions of the Copyright Act:
29. Fair dealing for the purpose of research or private study does not infringe copyright.
29.1 Fair dealing for the purpose of criticism or review does not infringe copyright if the following are mentioned:
(a) the source; and
(b) if given in the source, the name of the
(i) author, in the case of a work,
(ii) performer, in the case of a performer’s performance,
(iii) maker, in the case of a sound recording, or
(iv) broadcaster, in the case of a communication signal [...]
(a) to make a manual reproduction of a work onto a dry-erase board, flip chart or other similar surface intended for displaying handwritten material, or
(b) to make a copy of a work to be used to project an image of that copy using an overhead projector or similar device
for the purposes of education or training on the premises of an educational institution.
(2) It is not an infringement of copyright for an educational institution or a person acting under its authority to
(a) reproduce, translate or perform in public on the premises of the educational institution, or
(b) communicate by telecommunication to the public situated on the premises of the educational institution
a work or other subject-matter as required for a test or examination.
(3) Except in the case of manual reproduction, the exemption from copyright infringement provided by paragraph (1)(b) and subsection (2) does not apply if the work or other subject-matter is commercially available in a medium that is appropriate for the purpose referred to in that paragraph or subsection, as the case may be.
You get the idea. The debate in the tariff decision focused largely on what types of copying generally done by schools falls within the exception of fair dealing. The Copyright Board sided mostly with Access Copyright and saw much of the copying done by schools to fall outside of the fair dealing umbrella. This generated a considerable amount of commentary from prominent intellectual property lawyers, including this from Michael Giest, this from Howard Knopf, and this from Sam Trosow. Here is how is the Copyright Board explained its decision.
Where an academic staff member at a university has a eureka moment and produces a fascinating and helpful invention, who holds the rights to that invention – the staff member or the university?
Contrary to my post below regarding copyright, an employee-employer relationship does not result in a presumption that the employer holds rights to the invention. The applicable rules in Canada were summarized in Techform Products v. Wolda:
- the federal statute on patents says that an inventor is the first owner of their inventions, but it says nothing about what happens when the inventor is an employee being paid to do research related to those inventions;
- the mere existence of an employment relationship does not disqualify employees from patenting inventions made during the course of their employment, even where (1) the invention relates to an aspect of the employer’s business, (2) the employee used the employer’s time and materials to bring his or her invention to completion, and (3) the employee has allowed the employer to use the invention while he or she was employed;
- the two exceptions to the presumption favouring employees are (1) a contract that says the opposite, and (2) where the inventor was employed for the purpose of inventing; and
- to define the true nature of an employee-employer relationship, the court will usually look at a series of factors, including whether the employee at the time of hiring had previously made inventions, whether the employer had incentive plans encouraging product development, whether the conduct of the employee once the invention was created suggested ownership was held by the employer, and so on.
A recent decision in Australia, which has rules on this issue that are similar to those in Canada, shows how these principles are applied in the university context. In University of Western Australia v. Gray, the university claimed that it owned the inventions of the head of the Department of Surgery, Gray, who disagreed. Gray had never explicitly assigned the rights to his inventions. The university maintained that Gray had implicitly assigned his rights by virtue of the nature of his position. The Federal Court of Australia sided with Gray and found he had no “duty to invent”.
The key for universities to avoid this mess: have each staff member explicitly assign his or her rights as inventors. Put it in writing.
When I started my undergraduate degree in 1998, seeing a laptop in class was an anomoly. By the time I finished law school eight years later, I heard professors complain about never seeing their students’ faces and identifying the active students by the brand of their computer.
No more pencils. No more papers. Years of education contained in a single hard-drive. I have all the notes from every class I took in law school on a USB key. The one thing that always struck me as redundant was the textbooks – awkward, clumsy and expensive. My policy each semester was to buy a textbook (preferrably a used one) and then resell it at the beginning of the next semester. But that could all change.
Digital textbooks – better known as “e-texbooks” - have made their mark south of the border and there is a growing trend among Canadian campuses to consider making them available as a lighter and less expensive alternative to traditional textbooks. A recent article in University Affairs highlights how this is playing out.
Two years ago, Concordia University became the first Canadian university to offer e-textbooks to its students (see this article from the Concordia Journal explaining the process). The arrangement is similar to iTunes: a student will pay to get a limited use digital version of a textbook, and the licence to use it expires after six months. The university itself becomes the supplier.
This introduces a new intellectual property relationship for universities. There have been no reports of brewing legal battles between publishers, authors, educational institutions or students regarding the process of sale. But it is important to ensure educational institutions are not accepting an increased risk of liability by agreeing to act, effectively, as a retailer for e-textbooks. New technologies often introduce some element of legal uncertainty, and particularly in a difficult economy legal problems are better prevented than treated.