Copyright owners can now direct a notice to alleged infringers
via the ISP or host of a website containing the allegedly
infringing material. Plus, are you ready to take advantage of
amendments to Canada's trademark regime?
On January 2, 2015, the
"notice and notice" provisions of the 2012 Copyright
Modernization Act came into force. This is good news to copyright
holders, who can now contact alleged infringers by way of the
Internet service provider (ISP) that is hosting the allegedly
Under the new law, rights holders
can send a notice to the ISP or web host of a website that contains
material that infringes their copyright. Once the ISP receives this
notice from the party claiming copyright, it then must forward the
notice to the party that is allegedly infringing copyright. The
copyright holder would then get a notice from the ISP confirming
that the message was sent to the infringer - hence, the
"notice and notice" moniker.
While copyright holders may be
happy to have this additional method of protecting their rights,
some are critical of this "made in Canada" approach. In
the US, the "notice and takedown" approach takes things a
step further - once an ISP or web host receives a notice of alleged
infringement, it must take down or block access to the material
"expeditiously." Copyright holders in the US are
therefore arguably better able to protect their rights, since the
material is typically removed from the website immediately after
the notice. Others, however, have critiqued the US "notice and
takedown" approach for going too far, and claim it results in
the over-blocking or removals of non-infringing content.
Additionally, there are significant
changes on the trademark registration horizon in Canada. Of
particular note, it will soon be possible for Canadian brand owners
to access an international system of trademark registration,
extending to any of the 92 member countries under the Madrid
Protocol. Further, applicants will no longer be required to show
use in Canada in order to secure a trademark registration.
Previously, a declaration of use in Canada was required in order to
register a mark. It was possible for an applicant to register on
the basis of proposed use, but applicants would still need to file
a declaration confirming that it had actually started using the
trademark. When these changes come into force, proof of use will no
longer be required for registration. It remains to be seen whether
dropping the use requirement will open the door for abusive
registrations of marks, for example where the applicant has no
intentions to actually use the mark in Canada. These changes, and
others, are expected to come into force later in 2015 or early
2016. For more about these pending changes, click
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.
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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.
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