Law Times

Law Times • December 7, 2009 BRIEF: INTELLECTUAL PROPERTY PAGE 13 and easy downloads can pose a serious threat to their intellectual property. But an even greater challenge may be deciding when to push back and when to ignore the violations. It becomes a balancing act when clients call, says Jenna Wilson of the Toronto-based in- tellectual property law fi rm Di- mock Stratton LLP. On the one hand, you have a company's logo and intellectual property being used without its permission. On the other hand, cracking down on the would-be violator may seem heavy-handed and could end up having a negative eff ect on the company. "An interesting feature is you have customers who might be fans of your product, they start adopting your trademarks, your logos or what have you as their avatars," Wilson says. "Th ey cre- ate fan pages [and] that kind of thing, and at some point some other member of the public isn't going to be able to tell the dif- ference between a fan site or fan page and the offi cial page." Wilson points out that while all this is happening, you have to keep in mind you're dealing with a customer and that crack- ing down on them could have a negative impact. Lawyers, then, are left counselling clients that what's best for the company might not always be forcing ev- eryone to follow the strictest let- ter of the law. As Wilson says, Internet's Wild West poses challenges for IP lawyers F BY KELLY HARRIS Law Times or copyright holders, the virtual world of social me- dia, weekend journalists, "How do you manage your own customers who are putting your brand forward but potentially infringing your rights?" Th e answer may not be as simple as in other areas of intel- lectual property law. Setting up a proactive approach to deal with online infringements can some- times seem futile. While there are web site terms of use, Wilson says that if something, such as a logo, is available electronically, it's very hard to stop someone from using it. "Usually, when [clients] come to you, it is at a point that they say, 'All right, I really want to stop this. What do I do now?' It is hard to physically protect them against it before it actually happens. . . . Your client needs advice, but you can't do it [in] the traditional way of a cease-and-desist letter on be- half of your client telling the user to stop doing what they are doing because a lot of this is tied to their reputation and their relationship with the customer or their user. So having a lawyer interpose themselves, it ruins that relation- ship that they have." Wilson says one strategy is to work with the client in order to open up a dialogue with the user. Th is allows the client to act one- on-one with the user to stop the infringement. "If the problem escalates, if it turns into an adversarial situ- ation, then yes, the lawyers will insert themselves into a lot of the dialogue," she says. Peter Giddens, an intellectual property lawyer with Lang Mi- chener LLP, says that as more and more people become Inter- net users, there needs to be bet- ter education on copyright laws and terms of use. He notes that social networking sites like Twit- ter, YouTube, Facebook, and MySpace follow the rules and have strict terms-of-use policies. "Th e ones that have caught on in popular culture tend to be the ones that are quite re- sponsive to brand owners, the concerns of brand owners and have fairly good terms of ser- vice," Giddens says. However, everyday Internet users simply downloading and uploading at will present the greatest challenges to those who seek to protect copyright. "Th at is one of the troubling aspects of the Internet and the digital age as far as intellectual property is concerned because, with the touch of a button or not much more than a touch of a button, you can produce or reproduce images like you certainly couldn't in previous ages," Giddens says. As downloading content be- comes easier, people tend to think much less about the implications of using it incorrectly. As a result, Giddens favours better educa- tion at a young age on copyright and intellectual property laws. Until then, he says that as we get used to the Internet age, clients are also adjusting to con- cerning themselves with the most egregious violations. "We're getting less calls which would require us to go through that analysis with them to see whether it is in their best inter- est for us to become involved," Giddens says. "Whereas earlier we were getting those calls, by and large now it is something that they feel strongly enough about that they want us to take action on." LT Balancing concerns over copy- right infringements with cus- tomer relationships is a tricky issue for companies, says Jenna Wilson. Good enough is never good enough That's the attitude we bring to every matter – because the difference between winning and losing is often as simple as which side went the extra mile. Our winning track record and reputation as one of Canada's ip litigation "go-to" firms is based on this dedication to detail. That's why in our experience, when you want results, "good enough" is never good enough. Dimock Stratton llp experience. results. 20 Queen W. 32nd fl, Toronto | 416.971.7202 | dimock.com Untitled-3 1 December Specials Visit our web site and save 20% Canadian Film & Television Business & Legal Practice Tony Duarte The Corporate Counsel Guide to Intellectual Property Law Sheldon Burshtein Law of Confidential Business Information The Honourable Julie A. Thorburn and Keith G. Fairbairn Personal Information Protection and Electronic Documents Act, The: A Comprehensive Guide William A. Charnetski, Patrick D. Flaherty and Jeremy P. Robinson 12/1/09 11:11:41 AM www.lawtimesnews.com Web Discount (LT 1-4x5).indd 1 12/2/09 10:12:46 AM

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