Below is an excerpt from
John McKeown'sFebruary 2015 Mailer where he
discusses protecting brand advertising.
In order to ensure that brand advertising can be protected the
brand owner should own the copyright in the advertising material
that is prepared at its request. Where the author of the work was
in the employment of the brand owner under a contract of service or
apprenticeship and the work was made in the course of employment by
that person, the brand owner will be the copyright owner in the
absence of the agreement to the contrary. In addition, since the
author of the work will be entitled to moral rights a waiver of
moral rights should be obtained by the brand owner.
Individuals who are the authors of advertising copy but who are
not employed by the brand owner will be the author and first owner
of the copyright unless they were acting in the course of their
employment with an advertising agency or the like, in which case
the agency will own the copyright. In light of this a written
assignment of copyright in the relevant work should be obtained
from any advertising agencies, photographers or other individuals
involved in the preparation of advertising materials. In addition,
waivers of moral rights should be obtained from the individual
Frequently agreements with advertising agencies provide that the
agency will assign copyright to the client, provided that the
client has complied with its obligations under the agreement
concerning the material, typically payment. If there are third
party licensing agreements relating to photography, music or talent
used in the advertising material, the agency may not be in a
position to provide assignments but should represent that it has
obtained appropriate usage rights.
Finally, an agency agreement should contain representations to
the effect that the agency has obtained waivers of moral rights
from all individual authors.
The 30th ABA Annual Intellectual Property Law Conference
I have put a group of speakers together, in addition to myself,
for this meeting which will take place on March 25 in Bethesda,
Maryland. The program is entitled A Trademark Overhaul:
Canadian Trademark Amendments and Their Effect on U.S. Trademark
Owners. There will be a host of other speakers on other topics
of interest at the conference which takes place from March 25-27,
2015. Click here for information relating to the
The World Trademark Review
In January, 2015 I was recognized by The World Trademark Review,
a third party trademark professional rating organization as among
the world's leading trademark professionals for both
enforcement & litigation and prosecution & strategy.
The Federal Court dismissed a motion by Apotex seeking particulars from Allergan's pleading relating to the prior art, inventive concept, promised utility and sound prediction of utility of the patents at issue.
Last year we saw the Canadian Courts release trademark decisions that granted a rare interlocutory injunction, issued jailed sentences for failure to comply with injunctive relief, grappled with trademark and internet issues...
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