For the London Free Press – March 30, 2009

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Virtual reality was taken to a new level recently when famous guitar manufacturer, Gibson, sued Activision Publishing, Inc., creators of Guitar Hero, alleging that the video game system infringed upon one of its patents.

Specifically, Gibson Guitar Corp. registered U.S. Patent No. 5,990,405 in 1999. This patent covered,”a system and method for generating and controlling a simulated musical concert experience.”

In 2006, Gibson licensed to Activision certain Gibson trademarks for use within the Guitar Hero game.

In January 2008, Activision received a letter from Gibson stating that though the game maker had permission to use Gibson’s trademark, it did not have permission to use Gibson’s patent for simulated musical performances. The letter requested that “Activision obtain a licence under Gibson’s 405 patent or halt sales of any version of the Guitar Hero game software . . . and . . . instrument controllers.”

Activision instead filed a pre-emptive request with the court for a declaration that its top-selling video game did not infringe on Gibson’s patent. Gibson responded to Activision by filing a suit of its own.

In Activision Publishing Inc. vs Gibson Guitar Corp., decided Feb. 26, 2009, the California District Court dismissed the lawsuit and held that Activision had not infringed upon Gibson’s patent. The court made its opinion of the case clear when it held that the allegations brought forth by Gibson, “border on the frivolous.”

Throughout the case, Gibson tried to argue that their patent was infringed and even went as far as to say that, “the ’405 Patent covers any system where a user controls something ‘musical’ with any device.”

The court rejected the argument stating that, “by arguing that any sound made by any controller can potentially be musical, Gibson would have everything in the world — from the buttons of a DVD remote, to a pencil tapping a table — be an ‘actual musical instrument’ within the ’405 Patent.”

Ultimately, the court refused to give the term “musical instrument” such a broad interpretation and instead held that, “no reasonable person of ordinary skill in the relevant arts would interpret the ’405 Patent as covering interactive video games.”

The motivation for the lawsuit may be found in the pre-existing relationship between Gibson and Activision. Industry insiders have suggested that Activision’s decision not to renew the Gibson trademark licence was the motivating factor behind the lawsuit.

In fact, Activision itself, in a letter dated Match 10, 2008, suggested that, “Gibson knew about the Guitar Hero games for nearly three years, but did not raise its patent until it became clear that Activision was not interested in renewing the Licenses and Marketing Support Agreement.”

Whatever the motivation, the California District Court made it clear that the lawsuit was without merit. This decision has now put into question several other outstanding lawsuits Gibson had also commenced against various companies involved in the creation and distribution of Guitar Hero, such as MTV, Harmonix, Electronic Arts, Wal-Mart, Target and K-mart.

For the London Free Press – March 23, 2009

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People often think of adopting trade-marks that describe their product or service. But that results in a weak trade-mark and is not allowed under the Trade-marks Act.

A trade-mark is used to distinguish one company’s products or services from those of another. To achieve that, the Act doesn’t allow registration of a trade-mark that describes the character or quality of the product or service or its place of origin. For example, McDonald’s can register a trade-mark such as “Big Mac”, but can’t register “double cheeseburger.”

Trade-marks that pass the threshold in the Act, but are still somewhat descriptive, are considered weak marks as they don’t do a good job of distinguishing the products of one business from another.

The rule against descriptive trade-marks is illustrated in the recent Federal Court of Appeal decision of Shell Canada Ltd. vs. P.T. Sari Incofood Corp. In this case, Shell challenged the registration of the proposed trade-mark, “JAVACAFE.”

The Indonesian company P.T. Sari wanted to use JAVACAFE in connection with its coffee-related wares, including coffee powder, cooked coffee beans, instant coffee, freeze-dried coffee and granular coffee.

In analyzing JAVACAFE, the Court of Appeal separated the proposed trade-mark into “java” and “cafe”.

It agreed with Shell that “cafe” means “coffee” in French, or that the average French-speaking Canadian would immediately assign that meaning when the word appeared in a trade-mark associated with coffee products.

In considering “java” the court found the word to be defined in the French language as a popular dance, but that it was also understood to be an island known for its coffee production.

To determine whether a proposed trade-mark is too descriptive or whether consumers would be confused by the mark, a court will consider the dictionary meaning of the words. Courts will also consider other evidence such as consumer surveys or even the number of other trade-marks that contain the same word or words.

In conclusion, the Court of Appeal stated that “the trade-mark JAVACAFE is not distinctive of P.T. Sari’s coffee products from the coffee products of others given that it is clearly descriptive of the character, quality or place of origin of the wares with which its association is opposed.”

Since JAVACAFE did not meet the criteria in French, it was not necessary to consider whether the proposed mark was clearly descriptive in the English language.

The ruling on JAVACAFE also highlights the importance of considering a proposed trade-mark’s meaning in different languages.

In Canada, this consideration is limited to English and French. However, for people who wish to use a trade-mark internationally — either now or in the future — it is prudent to consider the mark’s meaning in other languages because many nations have similar trademark law.

This consideration is especially important given today’s global economy and the prevalence of international sales via the Internet.

So when considering what trade-mark to adopt for your products, avoid weak, descriptive marks. Strong, distinctive trade-marks must be memorable, not descriptive.

There is an ongoing debate as to how important various kinds of intellectual property protection (eg copyright, patents, trade-marks) actually are to foster innovation. Some argue that in many instances IP protection can prevent, rather than encourage, innovation. Also that in many circumstances IP protection is not needed (either absolutely, or to a degree) to protect the interests of the creators/inventors.

Boing Boing has a good post entitled Why knockoffs are good for fashion that points to a New Yorker article. They make a good argument that the lack of protection for fashion has worked well for the entire industry, and for consumers.

Read the Boing boing post

The big news in IP law is the Supreme Court of Canada’s decision on parallel importing. Kraft had the exclusive right to sell Toblerone bars in Canada. They sued to stop another party from importing them from Europe. The basis was copyright in the packaging.

The court decided against Kraft. The IP bar is buzzing about the decision mainly because the reasons behind it are not totally clear. It was a 7 to 2 decision – nothing odd about that. But the majority rendered 3 separate reasons, all deciding on different priciples. That makes it hard to determine what the law really is on the subject.

I’ll avoid the obvious bad comments like – it was a dark day for Kraft – or – mountains of evidence against Kraft – or – Kraft not crafty enough for SCC – or – SCC serves tasty treat for importers – or – SCC expresses different tastes for Toblerone ….

For more detail take a look at Howard Knopf’s comment in his Excess Copyright blog. He was involved in the case.

I have been asked to contribute an occasional post to the Canadian IT Manager blog. It is run by Microsoft, and includes content by independent professionals.

My first post yesterday was 1 of 2 parts on Legal Matters IT Managers Need to Be Aware Of - the 2nd part will be posted today.

Read part 1 of Legal Matters IT Managers Need to Be Aware Of

Read Part 2

Go to the main page of the IT Manager blog

Read the entry announcing my presence as a guest blogger (among other things)

Micro Persuasion has a post entitled How to Monitor Your Brand Online that has a link to a site with a list of tools that allow you to do that. Micro Persuasion is a blog by PR guru Steve Rubel – I saw him give an interesting presentation on web 2.0 marketing at the recent Mesh conference.

Its a good idea to keep on top of where your brand or trade-mark is found. You can see what others say about you, where your material is referred to, and locate others that may try to use your brand for their own advantage (aka passing off).

You can also use these tools to keep an eye on your competition.

Its a long list – pick a couple to start with and try them.

Read the Micro Persuasion post

The SCC released 2 decisions today that those of us who practice trade-mark law have been waiting for. The both dealt with owners of famous marks who tried to stop others from using those marks for othr things. In one case, the owners of the Barbie trade-mark for dolls tried to stop a restaurant owner from using “Barbies” for his restaurant.

Both decisions were against the famous marks owner.

I have not had a chance to read the entire decisions yet, and may have more about them later.

Michael Geist comments that The Supreme Court of Canada continues to distinguish itself as the leading high court in the world for recognizing the need for balance in intellectual property law matters.

Read Michael’s post

Read the Barbie decision

Read the Cliquot decision

David Canton – For the London Free Press – March 18, 2006

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Jaguar Cars Ltd.’s rights to the Jaguar trademark were recently debated in the Canadian Federal Court.

Jaguar is recognized worldwide for luxury cars, but it also has a line of personal items – such as luggage and wallets. The high-end products are available at Jaguar dealerships and marketed directly to Jaguar car buyers.

You could also find tote bags, backpacks and luggage bearing the name Jaguar at lower-end stores in Canada. Remo Imports Ltd. registered Jaguar as a trademark for use on these products in the early ’80s.

The 14-year court battle began in 1991 when Remo sued Jaguar Cars to stop it from using the name on luggage.

Remo is no longer allowed to use the name Jaguar for its products. The fact that it was natural for a car company to expand into travel accessories was a strong factor in the decision. Luxury car manufacturers often use this approach to market their products, including branding everything from suitcases to sunglasses.

Significant in the decision was the possibility of consumers confusing the Jaguar Cars brand name with Remo Imports products.

Traditionally, Canadian law has not offered significant protection for famous marks beyond the actual wares and services listed on their trademark registrations.

But the court recognized a famous brand such as Jaguar could suffer from the mere use of its name. Companies spend many years and significant amounts of money developing the goodwill attached to their trademarks.

Goodwill is the reputation connected to a business or product that is communicated by a trademark. Jaguar tries to develop and maintain a corporate image of luxury, affluence and status. Jaguar sells cars, but it also sells a lifestyle.

The court decision affords broader protection to the goodwill of particularly well-known trademarks such as Jaguar. Any use of a recognizable name or mark by a new, or “junior,” user can damage the original, or “senior,” user, even if it isn’t competing in the same field of business.

The use of a famous mark by a junior user can unintentionally deceive consumers. The junior user will have the benefit of the goodwill of the mark without having to work for it.

The court recognized that the use of a famous trademark decreases the distinctiveness of the brand. The loss of exclusion over the mark dilutes the impact of having a unique and recognizable selling tool.

Where consumers believe there is a relationship between the senior user and junior user, there is a risk of harm to the reputation that the senior has carefully crafted. The potential exists that inferior products would damage the senior user’s reputation, even though it doesn’t have anything to do with their manufacture.

The fact that Jaguar had been around internationally for 60 years helped its case. The more famous and historic the brand, the more protection the company will be afforded. A study cited in the decision listed Jaguar Cars as the 17th most well-known brand in the world – and that is an investment well worth protecting.

This case is not the last word on this subject. The Supreme Court of Canada will rule soon in the Barbie’s case, where a restaurant owner tried to register Barbie’s as a trademark for his restaurant. Mattel, the owners of the Barbie’s trademark for dolls, launched an action claiming its rights to the name prevents the restaurant use. The restaurant says it’s simply slang for barbecue.

The Supreme Court may or may not agree with the rationale behind the Jaguar decision, so its use as a precedent remains to be seen.