Okay, so maybe it's neither as romantic as Gershwin's
"An American in
Paris", nor as historical as Mark
Twain's "A Connecticut Yankee in King
Arthur's Court," but many US lawyers do
find themselves facing legal issues in Canada. US practitioners who
deal with Canadian legal matters must take note of a few
common pitfalls. In this series, we review some of the most common
misconceptions and flag a number of important tips in the area of
cross-border intellectual property law:
Copyright Law - both countries are party to the
Berne Convention for the Protection of Literary and Artistic
Works and both copyright regimes cover the same basic
categories of protection. In Canada, the Copyright Act
protects original literary works, dramatic works (including
choreographic works), musical and artistic works, computer
programs, performances, sound recordings and communication signals.
The scope of protection the USA is roughly the same.
A few tips on copyright:
The term of protection in Canada the life of the author plus 50
years. In the US, the term of copyright is based on the
author's life plus 70 years. There are variations that will
impact the duration of protection, but that important distinction
is worth noting.
If a work is protected by copyright in Canada, it can benefit
from protection in the US under the Berne Convention, and vice
Under the American DMCA, a notice-and-takedown system
was implemented for the treatment of copyright infringement claims
online. In recent amendments to the Canadian Copyright
Act, a so-called notice-and-notice
regime has been created. However, these provisions are not yet in
force. Once implemented, a notice of online infringement
would trigger an obligation to pass along notice of infringement,
but not necessarily an obligation to takedown the allegedly
The concept of "works made for hire" does
not appear in the Canadian Copyright
Act. Employers in Canada, or US employers of Canadian
employees, can rely on a provision (Section 13(3)) which stipulates
ownership of works that are created in the course of employment are
owned by the employer.
Joint ownership of copyright is handled differently in Canada
and the US - let's use software as an example. In Canada,
generally speaking, a co-owner of copyright cannot license the
rights to the software without the consent of the other
co-owner, whereas in the US, a co-owner can license without
For advice on cross-border intellectual property issues, contact
Canadian counsel at Field Law.
The content of this article is intended to provide a general
guide to the subject matter. Specialist advice should be sought
about your specific circumstances.
To print this article, all you need is to be registered on Mondaq.com.
Click to Login as an existing user or Register so you can print this article.
A recent Saskatchewan Court of Queen's Bench decision allowed a court-appointed receiver to sell and transfer intellectual property rights free and clear of encumbrances, finding that a license to use improvements of an invention was a contractual interest and not a property interest.
Register for Access and our Free Biweekly Alert for
This service is completely free. Access 250,000 archived articles from 100+ countries and get a personalised email twice a week covering developments (and yes, our lawyers like to think you’ve read our Disclaimer).