By Christopher Heer and Annette Latoszewska
Gone are the days when “cloud” brought to mind only the weather. While the rapid growth of cloud computing has brought with it considerable benefits, it also encompasses a number of intellectual property protection challenges. The reason is quite simple.
As a general rule, intellectual property protection is territorial. A Canadian patent, for instance, gives the owner the right to exclude others from making, using, and selling the subject invention in Canada, and a Canadian trademark registration gives the owner the exclusive right to the use of the trademark in respect of select goods and services in Canada. The problem is, where is “the cloud”?
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The Inability to Precisely Answer this Question Results in a Number of Challenges:
When a business is considering adopting a trademark in a particular jurisdiction, it will often consult a lawyer to obtain a trademark availability search and opinion. As the name suggests, this opinion assesses whether a proposed trademark is available for use in that jurisdiction – meaning whether there are identical or confusingly similar registered or unregistered trademarks that may present obstacles.
If these marks exist, use of the proposed mark may attract liability for trademark infringement, and registration of the mark may also not be available. In the case of cloud computing, the big question is where is the trademark being used if it is used via “the cloud”? Should a company that relies on cloud computing have to consider the availability of its trademark in every jurisdiction worldwide before using it at all? This hardly seems practical but highlights the trouble that clouds computing presents in this respect.
A similar challenge arises in the case of patents, particularly where these patents relate to computers. As cloud computing may involve multiple parties and multiple servers located in several jurisdictions, the questions of whether a territorial right has been infringed, and who can be said to have infringed that right become rather complex.
For an article or method to infringe a patent, it must contain all of the essential elements of the patented invention. If only half of these elements can be said to be located in the country in which the invention has patent protection, the inventor may struggle to find recourse. Even if a claim for infringement could be made out, issues of jurisdiction remain. What country’s laws should apply and what court should have authority over the dispute?
Copyright differs from patent and trademark protection somewhat in that the Berne Convention for the Protection of Literary and Artistic Works provides for the protection of copyrighted works in all of its member countries where the work is protected in any one of these countries.
However, the protection available to copyrighted works in each country varies, and thus the questions of where infringement can be said to have occurred and what country’s laws apply to remain relevant. For example, the term of copyright protection in Canada is the life of the author, the remainder of the calendar year in which the author dies, and a period of fifty years following the end of that calendar year.
In contrast, protection in the U.S. often lasts much longer – works are generally protected for the life of the author plus an additional 70 years. A further question arises as to the liability of the service provider. In Canada, internet service providers have been insulated from liability by section 31.1 of the Canadian Copyright Act where their only involvement is providing the means for the telecommunication or reproduction of work through the Internet. As of today, it is unclear whether cloud storage service providers might be considered to qualify for similar protection under the Act.
Despite the challenges described above, there are meaningful steps you can take to protect your intellectual property in this digital age. To ensure your intellectual property protection is effectively and maximally protected, consider consulting an intellectual property lawyer.
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Christopher Heer is the owner and founder of Heer Law. He is an intellectual property lawyer, registered patent agent, registered trademark agent, and is also certified as a specialist in intellectual property law (patent) by the Law Society of Ontario. He believes that intellectual property rights add tremendous value to businesses by enabling them to raise capital, build asset value, and grow faster under the protection that these exclusive rights give them.
Annette Latoszewska understands the value of intellectual property assets in today’s economy and made the move to intellectual property law to utilize her experience and education in the sciences to help innovators and creative professionals secure protection for their inventions, trademarks, and copyright-eligible works.