An American court has ruled that the non-commercial purpose requirement in the BY-NC-SA 4.0 Creative Commons (“CC”) license does not preclude the licensee from hiring a for-profit contractor to reproduce the CC licensed work.

The case started with nonprofit Great Minds suing FedEx for infringing their copyright by unauthorized reproduction of their CC licensed material. FedEx had been hired by school representatives to reproduce Great Minds’ works for non-commercial educational purposes. Great Minds argued that by reproducing the materials for a profit, FedEx was engaging in commercial activity, and unable to rely on the CC license. Creative Commons requested leave to submit arguments in support of FedEx that the CC license allows the licensee broad discretion to exercise their rights under the license, for example by hiring another party to reproduce the work. Before considering Creative Commons’ motion, the court dismissed the case on a summary motion, finding that FedEx’s copying was permitted by the unambiguous terms of the CC license.

Over 700 prohibited marks were filed in Canada in 2016 under section 9 of the Trade-marks Act.  Section 9 prohibits the adoption “in connection with a business, as a trade-mark or otherwise, any mark consisting of, or so nearly resembling as to be likely to be mistaken for” the fairly broad subject matter enumerated in section 9.  One category of prohibited marks is “official marks” under paragraph 9(1)(n).  Under this paragraph, a badge, crest, emblem, or mark is not prohibited unless the Trademarks Registrar has “at the request of Her Majesty or of the university or public authority, as the case may be, given public notice of its adoption and use.”

Official marks are a unique construct of Canadian trademark law.  The official mark application process is a simplified version of the regular trademark application process. Applicants seeking public notice under paragraph 9(1)(n) must quality as any of “Her Majesty’s Forces as defined in the National Defence Act”, a “university”, or a “public authority” and provide evidence of adoption and  use of the official mark.  Marks that have been adopted and used in Canada as official marks cannot be adopted by any other person once public notice is given by the Registrar of Trademarks.  Official marks are granted extraordinary protection, often described as broader than the rights afforded to regular trademarks, in that the owner of an official mark obtains exclusivity for all goods and services.  In contrast, the rights afforded to the owner of a regular trademark are tied to specific goods and services.  An official mark need not serve to distinguish goods or services, it may be merely descriptive, and it may be confusing with another’s mark.  Once public notice has been given an official mark is virtually inexpungable.  However, the prohibition only applies to uses adopted after notice was given of the adoption of the official mark.

A complete listing of the 724 prohibited mark applications can be obtained via the Canadian Intellectual Property Office’s trademark database.  The top five official mark filers in 2016 include: Translink (49 filings); European Union Intellectual Property Office (30 filings); Western Canada Lottery Corporation (28 filings); European Council (26 filings); and Council of the European Union (24 filings

The Patent Trial and Appeal Board (the “PTAB”) of the United States Patent and Trademark Office (“USPTO”) halted a challenge to patents of the Broad Institute of Harvard and MIT directed to CRISPR genome-editing technology by terminating an interference proceeding initiated by the University of California. The CRISPR technology relates to an ancient bacterial immune system that has been repurposed to edit DNA. In its decision, the PTAB found that even though the earlier patent application of the University  of California disclosed the CRISPR technology for use generally, it would not subsequently have been obvious to arrive at the Broad Institute’s technique for using CRISPR to edit the genomes of mouse and human cells. The PTAB accordingly terminated the interference proceedings.  A full copy of the decision can be found here.

The Canadian Intellectual Property Office (“CIPO”) and the Business Development Bank of Canada (“BDC”)have launched an online intellectual property simulation game. The game is designed to provide useful and general information about intellectual property (“IP”). Players choose between the different scenarios of two entrepreneurs and explore paths to protect intangible assets. Play the IP game here.

The BC Court of Appeal has allowed an appeal in Vancouver Community College v. Vancouver Career College (Burnaby) Inc., 2017 BCCA 41.  The trial judge had dismissed Vancouver Community College’s claim that Vancouver Career College’s use of the domain name VCCollege.ca and bidding on Google keywords including “VCC” and “Vancouver Community College” amounted to passing off.  The BC Court of Appeal unanimously reversed that decision, holding that the evidence supported that Vancouver Community College had made out a case for passing off of its VCC trademark.  With respect to the relevant time for assessing confusion created by keyword advertising, the Court held that confusion should be assessed when the search results appear on a user’s screen, and not at a later time such as when a user actually arrives at the relevant website.

The case also raises issues of whether the plaintiff’s “VCC” and “Vancouver Community College” official marks had been wrongfully used by the defendant.  The Court of Appeal remitted this claim back to the BC Supreme Court for fresh consideration, as it found there were insufficient factual findings by the trial court for the Court of Appeal to make a determination on this issue.

The data compiled by IFI CLAIMS Patent Services show that 304,126 US utility patents were granted in 2016, which is the most on record in a single year. IBM retains its record for the most patents in a year for the 24th time in a row.

IBM secured 8,088 US patents in 2016, which is an average of 22 patents a day. Many of those patents relate to artificial intelligence, cognitive computing, and cloud computing. Samsung ranked second with 3,665 patents. Other top patent recipients include: Qualcomm (2,897), Google (2,835), Intel (2,784), LG (2,428), Microsoft (2,398), Taiwan Semiconductor Manufacturing Co (2,288) and Sony (2,181).