On May 13, 2021, the Quebec government introduced Bill 96 to amend the Charter of the French language (the “Charter”) to strengthen the provisions regarding the use of French, particularly with respect to the language of commerce and business. This bill has been thoroughly reviewed in parliamentary committee and the committee tabled its report on April 26. In the current political context, it is expected that Bill 96 will be adopted in the coming months. The final form of the bill and its coming into force have yet to be determined. However, we can already anticipate that the timeframe for compliance with these new rules will be three years following assent of the Bill.1 The bill provides for a number of changes to the Charter, including amendments with respect to trademarks, which currently benefit from an exception. Under this exception, businesses may currently use a trademark in a language other than French in Quebec, provided that the French version of the trademark has not been registered. Since 2019, sufficient French must be present in public signage outside a building when a trademark is used in a language other than French.2 Under Bill 96, it will still be possible to use a trademark in a language other than French on products, in commercial publications and on public signage and commercial advertising in Quebec. However, the conditions for benefiting from this exception under the Charter will be modified and deserve not only attention, but also action! Start by reading the following. If you use a trademark in a language other than French in Quebec or if you plan to do so, you must first make sure that this trademark is registered.3 You will also need to review the public signage outside your premises, to comply with the new requirement of a markedly predominance presence of French.4 Finally, you will need to revise your product labels and packaging if your registered trademarks contain descriptive or generic terms in a language other than French.5 In such a case, you may have to modify your packaging and labels to add a French translation of these terms. It should be noted that the Charter applies to businesses with an establishment in Quebec, but also possibly to businesses based outside Quebec, insofar as their website is intended to perform a commercial act on Quebec territory. With respect to websites, the current practice of the Office québécois de la langue française (“OQLF”) is to intervene only in cases where the business has an establishment in the province of Quebec. If the enterprise communicating with Quebec customers does not have an establishment there, the OQLF favours an incentive approach.6 The future will tell whether this practice will be maintained once the Charter is amended.There is no doubt that foreign companies that are the subject of a complaint in this regard will be given time to translate their website into French in order to avoid the sanctions that will be more severe under the new rules. Let’s take a closer look at what each of the proposed changes means, should the bill be passed in its current form. Change #1: French to be markedly predominant on public signage outside the premises Bill 96 replaces the requirement of the sufficient presence of French with a requirement of markedly predominance of French visible from the exterior of the premises.7 Currently, the markedly predominance of French is assessed within the parameters set out in the Regulation defining the scope of the expression “markedly predominant” for the purposes of the Charter of the French Language. According to this regulation, the presence of French is considered markedly predominant if the French text has a much greater visual impact than the text in the other language (i.e. twice as large). It will be interesting to see if these rules will be maintained or if new criteria will be established for the application of Bill 96. The first element to keep in mind with respect to the requirement of the markedly predominance of French under the current law is to disregard the visual impact of the trademark. Indeed, section 1 of the Regulation provides as follows: In assessing the visual impact, a family name, a place name, a trade mark or other terms in a language other than French are not considered where their presence is specifically allowed under an exception provided for in the Charter of the French language (chapter C-11) or its regulations. Thus, as long as the trademark is registered in accordance with the new applicable rules, the visual field occupied by the trademark must be disregarded in assessing whether French is otherwise markedly predominant in the public signage outside the premises. In other words, no modification of your public signage will be required as long as your sign consists of the following: (1) a trademark (registered) in a language other than French and (2) generic or descriptive terms in French. Indeed, the only elements displayed in such a case (apart from the trademark) would be in French. However, if your public signage includes elements in a language other than French, the French should be markedly predominant (i.e. twice as large) in the visual field (excluding the space occupied by the trademark. The regulations set out various presumptions to determine whether the criterion of the much greater visual impact of French is met. In the case of a single poster: the French text will be deemed to have a much greater visual impact if the following conditions are met:8 the space devoted to the French text is at least twice as large as that devoted to the text in another language; the characters used in the French text are at least twice as large as those used in the text written in another language; and the other features of the posters do not reduce the visual impact of the French text. In the case of separate posters of different dimensions: the French text will be deemed to have a much greater visual impact if the following conditions are met:9 the posters bearing the French text are at least as numerous as those bearing the text in the other language; the characters used in the French text are at least twice as large as those used in the text in the other language; and the other features of posters do not reduce the visual impact of the French text. In the case of texts both in French and in another language: the text in French is deemed to have a much greater visual impact if the following conditions are met:10 the posters bearing the French text are at least as numerous as those bearing the text in the other language; the posters bearing the French text are at least twice as large as those with the other language text; the characters used in the French text are at least twice as large as those in the text in the other language; and the other features of the posters do not reduce the visual impact of the French text Finally, it should be noted that the criterion of the markedly predominance of French will also be applied to the trade name of the business, if it is visible from outside the premises and includes an expression from a language other than French.11 Change #2: In order to avoid translation into French, registration of the trademark used in public signage and commercial advertising is mandatory In order to use a trademark in a language other than French, without translation, with regard to public signage and commercial advertising, it will now be required to demonstrate that: the trademark is already registered in Canada; and no corresponding French version appears on the Trademarks Register.12 If these conditions are not met, the trademark will have to be accompanied by a markedly predominant French translation. If you are currently using a brand in a language other than French that is not registered, be quick because the registration process in Canada can easily take three years! Otherwise, you may be required to modify your public signage and commercial advertising to include a markedly predominant French version of the trademark. While it is possible to request an accelerated examination of an application for registration in certain special circumstances (including the fact that a court proceeding is pending), it is far from certain that the Canadian Intellectual Property Office will agree to expedite examination of applications for reasons of compliance with the Charter. It is therefore better not to delay filing your trademarks in order not to expose yourself to the consequences provided under the law. In practical terms, public signage includes any message posted in a place accessible to the public, whether inside or outside the premises, whereas commercial advertising is the expression of a commercial message, regardless of the form. The following examples are considered public display or commercial advertising: signs, posters, billboards, displays, bulletin boards; delivery vehicles, promotional bags, carts, employee uniforms; catalogues, brochures, leaflets, directories and other similar publications; and websites and social media. Change #3 : A trademark used in connection with the products must be registered to avoid French translation In its original form, the bill was silent on the issue of the use of a trademark on a product, suggesting that the status quo would continue to apply, namely that it would still be possible to use a trademark in a language other than French on a product (including its packaging or label), without the need for registration. However, the government has added a provision during the course of the parliamentary work by providing for the obligation to register trademarks in a language other than French, to avoid the addition of a French translation.13 So, no exception for product labels and packaging: make sure you register your trademarks if you have not already done so. Otherwise, you could be forced to withdraw your products from the market and pay fines under the new law, as discussed below. Change #4: Requirement to translate generic and descriptive terms for product trademarks The amendment proposed in parliamentary committee discussed above goes much further than the need to register the trademark and could have a major impact on some businesses by requiring them to modify their packaging and labels forproducts sold in Quebec. The new section 51.1 of the Charter proposed in parliamentary committee, provides that if the registered trademark (in a language other than French) contains generic or descriptive terms, these will have to be translated into French. 51.1 notwithstanding section 51, on a product, a registered trademark within the meaning of the Trademarks Act (Revised Statutes of Canada, 1985, chapter T-13) may be, even in part, solely in a language other than French where there is no corresponding version in French on the register kept under that Act.However, if generic or descriptive terms of the product are included in such trademark, they must appear in French on such product or on a medium permanently attached to it. (emphasis added) A reading of the Committee’s work provides a better understanding of the purpose of this product-specific rule: the government seems to want to limit the practice of some businesses which register, as a trademark, the label affixed to a product consisting of the main trademark, but also of several descriptive or generic terms, which would otherwise have to be translated to comply with the Charter. The example of the SOFTSOAP trademark was discussed in parliamentary committee. To illustrate this, we reproduce here two examples of registered trademarks for SOFTSOAP products: As the law currently stands, these trademarks may be registered under the Trademarks Act and they comply with the Charter. The owner of these trademarks can therefore rely on the “recognized trademarks” exception and sell its products in Quebec without translating into French the descriptive or generic terms such as “soothing clean,” “aloe vera fresh,” “refill” and “good for 800 dispenses.” Based on discussions in the parliamentary committee, the government’s concern does not seem to be directed towards the main trademarks, in this instance, SOFTSOAP, but rather towards the registration of purely descriptive terms, which do not, in themselves, have the vocation of a trademark and which nevertheless benefit from the exception of recognized trademarks under the current law. The regulations will, we hope, clarify the scope of this section 51.1 of the Charter, if it is adopted, by providing that this new requirement does not apply to the main trademarks of products. We also hope that a reasonable period of time will be given to businesses to allow them to change their labels and packaging. Change #5: Complaints, powers and penalties in the event of violation The OQLF is responsible for ensuring compliance with the Charter and its regulations. While it has the authority to identify violations, it mainly acts on complaints from the public. After reviewing a complaint, the OQLF sends an official letter if it judges that there has been a violation and it gives the business a deadline to respond. The OQLF can refer the matter to the Director of Criminal and Penal Prosecutions if the matter is not resolved to its satisfaction, who can in turn bring an action before the Court of Québec. In the event of a conviction, the court determines the amount of the fine to be paid. The OQLF mainly intervenes in cases of violations regarding public signage and websites for businesses with an establishment in Quebec. The bill brings some changes to the handling of complaints. The OQLF will have to inform the complainant of the handling of the complaint and the measures that the OQLF intends to take against the company targeted by the complaint.14 The OQLF will also benefit from new powers as of the assent of Bill 96,15 including: the power to issue orders in case of a breach (removal of products from shelves);16 the power to ask to the Superior Court to issue an injunction for the removal of non-compliant products or the removal or destruction of posters, advertisements, billboards or illuminated signs that contravene the Charter.17 Finally, the amount of fines to be paid in the case of a violation is increased as follows:18 individuals: $700 to $7,000; legal persons: $3,000 to $30,000. The bill provides that the amount of the fines doubles for a first recidivism offence and triple for any subsequent offence.19 The amount increases with each day the violation continues, with each day counted as a separate violation.20 Conclusions: What to do to prepare yourself for the entry into force of Bill 96? In practice, the requirement of having a registered trademark will be problematic for businesses who want to use a non-French trademark in Quebec, without a French translation. To comply with the new rules, businesses will indeed have to delay their launch in the province of Quebec until their mark is registered. As indicated above, registration process may easily take up to three years if not more. Let’s hope that the government will amend Bill 96 to require filing of an application as opposed to trademark registration. Businesses that use trademarks in a language other than French have every reason to take the following measures right now: List all trademarks used in a language other than French (including slogans) as well as those to be used in upcoming projects; Consult a trademark expert to determine the best strategy, including clearance searches to ensure that these trademarks are registrable; File trademark applications quickly, given the lengthy registration process in Canada (i.e. a minimum of three years),. A review of product labels and packaging should also be initiated to ensure compliance with the new rules, once the bill is passed. Finally, public signage outside the premises will also have to be reviewed insofar as a language other than French is used, apart from the trademark. A proactive approach will allow you to avoid costs related to the addition of a French translation in public signage, advertising and labelling of your products and services and, moreover, to avoid fines in the event of non-compliance with the new rules. Ready, Set, Register! Bill 96, article 201 paragraph 5 Regulation respecting the language of commerce and business, section 25.1 Bill 96, article 47 Bill 96, article 47 Bill 96, article 42.1 10 legal questions about the Charter of the French Language, websites and social media accounts, Question 3 and Question 6; Les médias sociaux et la Charte de la langue française – Guide pratique à l’intention des entreprises, https://www.oqlf.gouv.qc.ca/francisation/entreprises/guide-medias-sociaux.pdf, pages 7 and 8 Bill 96, article 47 Regulation defining the scope of the expression “markedly predominant” for the purposes of the Charter of the French language, section 2 Regulation defining the scope of the expression “markedly predominant” for the purposes of the Charter of the French language, section 3 Regulations defining the scope of the expression “markedly predominant” for the purposes of the Charter of the French language, section 4 Bill 96, article 48 Bill 96, article 47 Bill 96, article 42.1 Bill 96, article 107 Bill 96, article 201 Bill 96, article 113 (177) Bill 96, article 113 (184) Bill 96, article 114 (205) Bill 96, article 114 (206) Bill 96, article 114 (208)
- Québec, 1992
Partner - Lawyer - Trade-mark Agent - Co-leader of the Intellectual Property Group
Isabelle Jomphe is a partner, lawyer and trade-mark agent in Lavery’s intellectual property group. Ms. Jomphe’s expertise includes trade-mark, industrial design, copyright, domain names, trade secrets, technology transfers, as well as advertising law, labelling and Charter for the French Language regulations.
Ms. Jomphe is known for providing strategic and practical advice in all aspects of IP law, with an emphasis in the field of trade-marks. She advises clients in trade-mark clearance searches, filing strategies, opposition proceedings and litigation in Canada and abroad.
Ms. Jomphe aims to ensure that her clients reach their business objectives efficiently as far as their IP rights are concerned. Apart from being actively involved in the management and protection of trade-mark portfolios, she has been involved in a number of corporate transactions, due diligence, licensing, and litigation matters involving IP assets.
Ms. Jomphe is a member of numerous IP associations including Intellectual Property Institute of Canada and International Trademark Association, and has served on various committees throughout her career.
- “Trademarks and Charter of the French language: What can you expect from Bill 96?”, Lavery Newsletter, May 2022
- “Studios and designers: How to protect the intellectual property of your video games?”, Lavery Newsletter, March 2021
- “Studios and designers: Are you sure that you own the intellectual property rights to your video games?”, Lavery Newsletter, January 2021
- “Further COVID-19 Update on Canadian IP”, Lavery Newsletter, July 2020
- “COVID-19: Update on Canadian IP”, Lavery Newsletter, March 2020
- “The 2020-2021 Quebec Budget: New Measures to Promote Innovation!”, Lavery Newsletter, March 2020
- “New notification process at the Trademarks Office”, Lavery Newsletter, July 2019
- “The countdown is on to protect your trademarks in Canada”, Lavery Newsletter, May 2019
- “The United States–Mexico–Canada Agreement (USMCA): What this means for Canadian IP law”, Lavery Newsletter, November 2018
- "Why register your brands with the Amazon Brand Registry", GGData, July 2018
- “Un nouveau paysage à l’horizon : les indications géographiques”, Les Cahiers de la Propriété Intellectuelle, January 2017
- “New regulations for the owners of non-French trade-marks”, GGData, December 2016
- “Trade-marks in Quebec and the Charter of the French Language: the end of a debate, and the start of another?”, GGData, May 2016
- “The Charter of the French language reviewed by the Court of Québec”, Newsletter GGData, March 2015
- “Future changes to Canada’s Trade-Marks Act”, Newsletter GGData, October 2014
- “Your Mark.XXX”, Newsletter GGData, vol. 11, no. 2, October 2011
- “The scope of protection for famous marks according to the Supreme Court of Canada”, Newsletter GGData, Vol. 6, No. 2, July 2006
- “A New Trade-mark Practice: First Come, First Served? Close, But Not Quite!”, Newsletter GGData, Vol. 5, No. 3, July 2005
- "Suite de l’affaire Best Western : doit-on permettre l’enregistrement des marques descriptives figuratives?”, Développements récents en droit de la propriété intellectuelle, Vol. 234, 2005
- “L’article 5 de la Loi sur les Marques de Commerce : une espèce en voie de disparition?”, Les Cahiers de Propriété Intellectuelle, Vol. 14, No. 1, 2001
- “Droit de la mode : Inspiration ou contrefaçon : où se situe la frontière?”, RPM, Montréal, February 2017
- “Nouvelles indications géographiques : vos marques, emballages et publicités doivent-ils être modifiés?”, RPM, Montréal, March 2016
- “La PI : quels avantages peut-elle vous offrir”, Marie-Victorin College, March 2015
- “L’article 9(1)(n)(iii) autorité publique: portée et limites de leurs droits”, RPM, Montréal, March 2014
- “Marques sous haute surveillance”, Barreau du Québec, Montréal, November 2008
- “Tout ce que vous avez toujours voulu savoir sur la propriété intellectuelle sans jamais oser le demander”, Intellectual Property Symposium organized by the Intellectual Property Institute of Canada and the Canadian Bar Association, 2003 and 2005
- “Stratégies de gestion d’un portefeuille de propriété intellectuelle”, Musée du Québec, Quebec City, 2000
- “Canadian Trade-mark Practice”, presented before the Wisconsin Intellectual Property Law Association, October 1999
- “Les couleurs à titre de marques”, presented before the Intellectual Property Institute of Canada program, January 1999
- Workshop in Trade-marks presented as part of the “Trade-mark I” course organized in association with the Intellectual Property Institute of Canada and McGill University from 1997 to 2010
- “Introduction to Trade-marks and Copyrights” presented at various conferences and seminars since 1994
Professional and community activities
- Canadian Centre for Architecture
- Board member (since 2015)
- Art Souterrain
- Chair of the Board since 2018
- Board member and secretary – 2015-2018
- Ms. Jomphe has been selected as one of the Leading Trademark Professionals by the World Trademark Review 1000 (2012, 2013 and 2014 Edition) amongst the best trade-mark experts in Canada
- The Best Lawyers in Canada in the field of Intellectual Property since 2020
- The Canadian Legal LEXPERT® Directory in the field of Intellectual Property, since 2021
- LL.L., Civil Law, Université de Montréal, 1991
Boards and Professional Affiliations
- Member of the Executive Committee of the firm (Lavery Lawyers)
- Canadian Bar Association
- President of the Executive Committee – Telecommunications, Information and Intellectual Property section, 1999-2002
- Intellectual Property Institute of Canada (IPIC)
- Member of the Trade-mark Practices Committee, 1997
- Member of the Public Awareness Committee, 2002-2003
- Member of the Trade-mark Agents Examining Board, 1999-2000
- Member of the Education Committee, 1998-2000
- Member of the McGill Courses Liaison Committee, 1998-2000
- Director of “Trade-mark Course I”, offered by the Intellectual Property Institute of Canada and McGill University, 1999-2000
- Assistant Director of “Trade-mark Course I”, offered by the Intellectual Property Institute of Canada and McGill University, 1998-1999
- International Trade-mark Association (INTA)
- Member of the Membership Committee, 2002-2005
- Member of the Canadian Legislative Analysis Committee and Subcommittee, 1996-2001
- Association Littéraire et Artistique Internationale (ALAI)
- Regroupement des praticiens en marques de commerce (RPM)
- Association des praticiens du droit des marques et modèles (APRAM)
- College of Patent Agents and Trademark Agents (CPATA)
Behind every video game, there is intellectual property (IP) which is worth protecting to optimize monetisation of the game. As discussed in Studios and designers: Are you sure that you own the intellectual property rights to your video games, the first step for studios and designers is to make sure that they own all IP rights on the video game. The next step is to identify what type of IP protection is available between trademarks, copyrights and patents and then put in place an IP strategy to protect these assets in Canada and abroad. Below is a summary of the types of protection to consider to fully protect a video game. Trademarks The name of a video game is a valuable asset, with a potential to become internationally famous. Just think about Call of Duty, Fortnite, Minecraft and Assassin’s Creed or, for the more nostalgic, classic games such as Super Mario. Pokémon and Pacman. Trademarks have this power to evoke unique and captivating experience in the gaming world. In this industry, experience shows that a video game may become an instant international success, since it is an online market with powerful gaming influencers. For this reason, being proactive with trademark protection is key. What does it mean? First, clearance searches should be made as soon as you decide on the name of your game, in the most important markets where you anticipate sales. The idea here is to make sure that your brand is not conflicting with other marks so that you may use it and register it in your main market. Once the mark is cleared, you may then proceed with filing. Here again, the earlier the better as trademark protection is, in most countries, granted to the first-to-file. Filing before your project becomes public is therefore strongly recommend. As for the scope of the application, it should of course cover the game itself but also potential merchandising goods, either because it is part of the business plan to monetize the brand, or as a defensive strategy. Apart from the main brand, other aspects of the game may qualify as trademarks and be protectable. For instance, a sound or sequence of sounds associated with starting a console or a game could potentially be registered as trademarks. The names and image of characters in a game may also be protected, especially for merchandising goods. In short, for studios and designers involved in the video game industry, trademark registration is key to getting the most value out of a video game. This begins with a well-orchestrated protection strategy to minimize risk of conflicts and to build a solid and valuable brand. Copyrights A video game is a mix of literary, artistic and musical works which are protected by copyright, including computer program behind a game’s architecture is also explicitly protected by law.1 The protection offered by the Copyright Act (“CA”) applies as soon as a work is created, without the need for registration. This protection extends to the 176 member countries of the Berne Convention. Although the protection of a work by copyright is automatic, copyright owners may register their right with the Canadian Intellectual Property Office (“CIPO”) at any time. In particular, registration makes it easier to prove ownership of the right in the event of a dispute in that it creates the presumption that the person named in the registration owns the copyright. Copyright protection applies to the entirety of the game, as well as to its various components. Any infringement of these rights by a third party may give rise to a copyright infringement claim if the work or a substantial part of it is copied, unless a defense such as fair dealing is applicable. In this respect, the following activities may qualify as fair dealing: research and private study, education, parody as well as criticism or review and news reporting. Is video game live streaming copyright infringement? In recent years, the phenomenon of video game live streaming has really taken off. Video gamers film or record their computer screens and broadcast them on platforms such as YouTube and Twitch to show their characters, strategies and tactics for completing certain levels of a game. Some live streaming video gamers, who make this their living, have achieved celebrity status and have thousands of followers. Is live streaming a video game without express permission copyright infringement? The courts have yet to rule on whether live streaming games online constitutes a copyright infringement to communicate the work to the public by telecommunication under section 3(1)(f) of the Act. Faced with this widely popular trend, some studios accept this practice because positive reviews from such gamers can boost game sales. Others criticize the fact that they profit from video games without copyright owners receiving any compensation. Chances are that live streaming is not the highest priority of the video industry who is more concerned by the illegal downloads and counterfeits, which may explain why the courts have not yet had the opportunity to rule on video game live streaming. Patents Patents protect the functional aspects of an invention. The owner of a patent may prevent anyone from making, using or commercializing the patented innovation from the date the patent is obtained. Three aspects are taken into consideration before granting a patent:2 Novelty – The invention must be different or be innovative compared to anything that has been done before, anywhere in the world. Utility – The invention must have a useful function and economic value. Inventiveness – The invention must not be obvious to a person skilled in the field. In Canada, it is not possible to patent an abstract idea, but it is possible to patent the physical embodiment of that idea, provided that it meets the criteria of novelty, utility and inventiveness. Canadian patents in the video game industry Patents obtained in the video game industry mainly relate to consoles, controllers, headsets and other gaming accessories. The video game industry has proved to be innovative with the development of inventions that are both fun and useful. In 2012, Nike patented an invention to encourage physical activity among video game players.3 The patent describes a device placed in a gamer’s shoe when the gamer is physically active and connected to a video game. The energy spent by the gamer gives energy to the virtual character. Once the character’s energy is depleted, the gamer must engage in physical activity again. Are game play mechanics patentable? Certain aspects of a video game are less easy to patent, in particular the game play mechanics, which are a distinctive aspect from the standpoint of gamers when choosing a video game. The game play mechanics consists in the virtual experience of a video game: character movement, the interaction of the player with the game, the way the player moves through the levels of the game, etc. Unique and well-developed game play mechanics can be a great asset for a developer wanting to market new versions of a game. Gamers will go back to a familiar game to get immersed in a new experience. This makes patenting such an experience appealing for a studio. Given that game play mechanics are developed using computer code, it might seem that even if the criteria of novelty, utility and inventiveness were met, this type of invention could not be physically embodied and thus could not be patented. To be patented, game play mechanics must have a physical component in addition to the code itself. Consider a patent describing a video game in which a gamer’s heartbeat is integrated into the game,4 which is a good illustration of physical embodiment. Such transposition of a gamer’s vital signs is done physically through a heart monitor worn by the gamer and connected to the game. As all these aspects were described in the invention, this type of inventive game play mechanics was considered patentable. In the United States, the criteria for patents are similar to those in Canada, meaning that abstract game play mechanics would have to be linked to a physical aspect in order to be patentable. Conclusion Implementing an IP protection strategy prior to launching a video game can prevent conflicts, increase the value of assets and strongly position a company in the market to maximize profits. Copyright Act, section 2. “A guide to patents,” Canadian Intellectual Property Office, Government of Canada, 2020-02-24. Patent No. 2,596,041, issued February 9, 2006. Patent No. 2,208,932, issued June 26, 1997.
The year 2020 will have been difficult for the vast majority of industries, and in particular for the arts, entertainment and recreation industry. The video game industry, however, is growing in leaps and bounds. For example, Nintendo and PlayStation have each set record sales for their games released in 2020, including Animal Crossing:New Horizons and The Last of UsPart II. Over the past few decades, the number of video game players has never stopped increasing. The year 2020 will surely be no exception, especially considering the COVID-19 pandemic. Playing a video game is not only a way to have fun: it is also a way to stay connected with a community that shares the same interests. The world of video games is so popular that the Government of Canada teamed up with the Entertainment Software Association of Canada (“ESAC”) to launch the #CrushCOVID campaign, using ESAC’s and its members’ social media platforms to share mobilization and awareness messages about public health measures. The video game industry is an economic powerhouse in Canada. According to the latest ESAC report, the industry contributed an estimated $4.5 billion to Canada’s GDP in 2019 — up 20% from 20171 — and these figures will likely continue to rise. This video game boom has a decisive impact on the value of companies innovating in this field. A number of recent transactions illustrate this. For instance, last September, Microsoft acquired Bethesda Softworks, one of the largest video game publishers, for US$7.5 billion. Microsoft also bought the Swedish company Mojang Studios, which designed the legendary game Minecraft, for US$2.5 billion in 2014. Closer to home in Montreal, Beat Games was bought by Facebook following the launch of its virtual reality game, Beat Saber, while Typhoon Studios was bought by Google. A successful video game may be lucrative in various ways, between the sale of video games themselves and merchandising goods, such as clothing and accessories, figurines, as well as game-inspired TV series with giants such as Netflix, Amazon Prime, HBO and Hulu, which are always on the lookout for hit TV series. Protecting its intellectual property (“IP”) on a video game is key to monetize all investment put into the development of a game. Doing so is even more crucial in the context where video game commercialization knows no borders, and a game can become an international success overnight. In short, any company should ask itself the following questions before launching its video game, to better position itself in relation to potential investors, licensees or partners, as well as competitors and counterfeiters: Does my company own all of the IP rights on the video game? What kind of IP protection applies and where should IP be protected? Let’s look at the first question. Does my company own all of the IP rights on the video game? Designing a video game usually involves a team of creators, including ideators, programmers, writers, visual and sound effects designers. All these people contribute to the creation of the work that is the video game and the underlying IP. For instance, Ubisoft worked with muralists and graphic designers for its recent game, Watch Dogs: Legion. They designed nearly 300 works to create a post-Brexit urban London. The initiative earned Ubisoft praise even before the game’s release last October.2 Depending on their contribution to the game’s design and their status as employees or consultants, these creators may qualify as authors. As such, they may be considered co-owners of the copyright on the video game. Generally, the copyrights developed by employees in the course of their employment belong to the employer,3 while a consultant remains the owner of the copyrights, unless otherwise agreed upon in writing. Thus, a company behind a video game must make sure that its consultants assigns their IP rights to ensure that it retains full ownership of the copyright. What happens if a consultant has not assigned the copyrights to the company? Can the consultant claim co-ownership of the entire game, or are the consultant’s rights limited to the part he created, such as specific drawings, or music for a particular scene? This is an important question which may have an impact on profit sharing. In Seggie c. Roofdog Games Inc.,4the Superior Court held that a person (non-employee) whose contribution to a game is minimal cannot be considered as a co-author of the entire video game, insofar as: The contribution is limited to a few images; These images are distinguishable from the rest of the work; and The parties had no common intention of creating a collaborative work. Seggie was therefore denied the compensation of 25% of the profits generated by the game that he had claimed. However, the court recognized that Seggie held a copyright on the works he specifically created and which were incorporated into the game, and granted him a compensation of $10,000. Incidentally, this compensation is in our opinion arguable, given that Seggie had agreed to work pro bono for his friend. This decision shows how important it is to have a copyright assignment signed by any person contributing to the conception of a work, regardless of the extent of their involvement. Waiver of moral rights In addition to the assignment of copyrights, the company owning a video game should also ensure that the authors sign a waiver of their moral rights, so as not to limit the potential to modify the game or to associate it with another product or a cause. Indeed, the authors of a work have moral rights that enable them to oppose the use of their work in connection with another product or a cause, service or institution to the prejudice of their honour or reputation. An example would be the use of music or a character from a video game to promote a cause or product, or a television series derived from the game whose script could potentially harm the author’s reputation. To make sure you have plenty of leeway to exploit the commercial potential of the game, a waiver of moral rights should be signed by any employee and consultant involved in the creation of the video game. Conclusion Launching a video game requires a huge investment in terms of resources, time and creativity. In order to develop an effective protection strategy, the first step is to make sure that you own all rights. Then, you are in a position to fully protect and enjoy your IP rights. The next article in this series will discuss the significance and application of these IP rights—i.e., trademarks, copyrights and patents—to the video game industry. “The Canadian Video Game Industry 2019,” Entertainment Software Association of Canada, November 2019, [online]. CLÉMENT, Éric, “Le talent montréalais en vedette dans un nouveau jeu d’Ubisoft,” published in La Presse+, October 21, 2020, edition. Copyright Act, subsection 13(3). Seggie c. Roofdog Games Inc., 2015 QCCS 6462.
The Canadian Intellectual Property Office (CIPO) has now made a further announcement concerning the extension of deadlines, to the effect that deadlines falling within March 16 to August 7, 2020, are extended to August 10, 2020. CIPO is otherwise still open for business and our IP team members have been continuing operations and transacting with CIPO on a regular basis, in a remote and secure manner. Please do not hesitate to contact a member of our IP group should you have any questions. In addition, the Canadian government has enacted the COVID-19 Emergency Response Act, which, inter alia, has amended the Canadian Patent Act to add new section 19.4. This amendment provides a type of temporary compulsory licensing regime for patented technologies necessary to respond to a public health emergency. This is a temporary measure, since (1) if such authorization is granted, it will not last longer than 1 year (or may end sooner if the Minister of Health determines that such authorization is no longer necessary), and (2) no such authorization will be granted after Sept. 30, 2020. Under this provision, the authorized party may make, construct, use and sell the patented invention to the extent necessary to respond to public the health emergency. In return, the authorized party must pay the patentee what the Commissioner of Patents considers to be adequate remuneration under the circumstances. Rest assured that we remain at your service for all your legal needs, including those required to manage this pandemic, and that we will keep you informed as the situation evolves. We would like to offer our thoughts and support during these challenging times.
Lavery is pleased to announce that 67 of its lawyers have been recognized as leaders in their respective fields of expertise by The Best Lawyers in Canada 2023. The following lawyers also received the Lawyer of the Year award in the 2023 edition of The Best Lawyers in Canada: René Branchaud : Natural Resources Law Chantal Desjardins : Intellectual Property Law Bernard Larocque : Legal Malpractice Law Patrick A. Molinari : Health Care Law Consult the complete list of Lavery's lawyers and their fields of expertise: Josianne Beaudry : Mergers and Acquisitions Law / Mining Law Laurence Bich-Carrière : Class Action Litigation / Corporate and Commercial Litigation / Product Liability Law Dominic Boivert : Insurance Law (Ones To Watch) Luc R. Borduas : Corporate Law / Mergers and Acquisitions Law Daniel Bouchard : Environmental Law Laurence Bourgeois-Hatto : Workers' Compensation Law René Branchaud : Mining Law / Natural Resources Law / Securities Law Étienne Brassard : Equipment Finance Law / Mergers and Acquisitions Law / Real Estate Law Jules Brière : Aboriginal Law / Indigenous Practice / Administrative and Public Law / Health Care Law Myriam Brixi : Class Action Litigation Benoit Brouillette : Labour and Employment Law Richard Burgos : Mergers and Acquisitions Law / Corporate Law Marie-Claude Cantin : Insurance Law / Construction Law Brittany Carson : Labour and Employment Law Eugene Czolij : Corporate and Commercial Litigation France Camille De Mers : Mergers and Acquisitions Law (Ones To Watch) Chantal Desjardins : Intellectual Property Law Jean-Sébastien Desroches : Corporate Law / Mergers and Acquisitions Law Raymond Doray : Privacy and Data Security Law / Administrative and Public Law / Defamation and Media Law Christian Dumoulin : Mergers and Acquisitions Law Alain Y. Dussault : Intellectual Property Law Isabelle Duval : Family Law Chloé Fauchon : Municipal Law (Ones To Watch) Philippe Frère : Administrative and Public Law Simon Gagné : Labour and Employment Law Nicolas Gagnon : Construction Law Richard Gaudreault : Labour and Employment Law Danielle Gauthier : Labour and Employment Law Julie Gauvreau : Intellectual Property Law Michel Gélinas : Labour and Employment Law Caroline Harnois : Family Law / Family Law Mediation / Trusts and Estates Marie-Josée Hétu : Labour and Employment Law Alain Heyne : Banking and Finance Law Édith Jacques : Energy Law / Corporate Law Pierre Marc Johnson, Ad. E. : International Arbitration Marie-Hélène Jolicoeur : Labour and Employment Law Isabelle Jomphe : Intellectual Property Law Guillaume Laberge : Administrative and Public Law Jonathan Lacoste-Jobin : Insurance Law Awatif Lakhdar : Family Law Bernard Larocque : Professional Malpractice Law / Class Action Litigation / Insurance Law / Legal Malpractice Law Myriam Lavallée : Labour and Employment Law Guy Lavoie : Labour and Employment Law / Workers' Compensation Law Jean Legault : Banking and Finance Law / Insolvency and Financial Restructuring Law Carl Lessard : Workers' Compensation Law / Labour and Employment Law Josiane L'Heureux : Labour and Employment Law Despina Mandilaras : Construction Law / Corporate and Commercial Litigation (Ones To Watch) Hugh Mansfield : Intellectual Property Law Zeïneb Mellouli : Labour and Employment Law Patrick A. Molinari : Health Care Law André Paquette : Mergers and Acquisitions Law Luc Pariseau : Tax Law Ariane Pasquier : Labour and Employment Law Jacques Paul-Hus : Mergers and Acquisitions Law Hubert Pepin : Labour and Employment Law Martin Pichette : Insurance Law / Professional Malpractice Law Élisabeth Pinard : Family Law François Renaud : Banking and Finance Law / Structured Finance Law Judith Rochette : Insurance Law / Professional Malpractice Law Ian Rose FCIArb : Director and Officer Liability Practice / Insurance Law Chantal Saint-Onge : Corporate and Commercial Litigation (Ones To Watch) Éric Thibaudeau : Workers' Compensation Law André Vautour : Corporate Governance Practice / Corporate Law / Information Technology Law / Intellectual Property Law / Technology Law Bruno Verdon : Corporate and Commercial Litigation Sébastien Vézina : Mergers and Acquisitions Law Yanick Vlasak : Corporate and Commercial Litigation Jonathan Warin : Insolvency and Financial Restructuring Law These recognitions are further demonstration of the expertise and quality of legal services that characterize Lavery’s professionals.
On June 20, 2022, the Government of Québec and Plateforme Agora (now doing business as Le Panier Bleu) announced that Le Panier Bleu is transitioning to a private enterprise with the support of Quebec industry leaders. During the announcement, it was also confirmed that Le Panier Bleu will soon develop a transactional e-commerce platform making it possible to buy products from local merchants online. Lavery had the privilege of assisting Plateforme Agora in this round of financing and in Le Panier Bleu’s transition by providing advice on corporate financing, mergers and acquisitions, corporate law, intellectual property, commercial law in the field of technology and labour law. The Lavery team led by Étienne Brassard was composed of Jean-François Maurice, Isabelle Jomphe, Guillaume Laberge, Jessica Parent, Béatrice Bull, Isabelle Normand and Pamela Cifola.
Lavery is pleased to announce that 68 of its lawyers have been recognized as leaders in their respective fields of expertise by The Best Lawyers in Canada 2022. Lawyer of the Year The following lawyers also received the Lawyer of the Year award in the 2022 edition of The Best Lawyers in Canada: Caroline Harnois: Family Law Mediation Bernard Larocque: Professional Malpractice Law Consult the complete list of Lavery's lawyers and their fields of expertise: Josianne Beaudry : Mining Law / Mergers and Acquisitions Law Dominique Bélisle : Energy Law Laurence Bich-Carrière : Class Action Litigation René Branchaud : Mining Law / Natural Resources Law / Securities Law Étienne Brassard : Mergers and Acquisitions Law / Real Estate Law / Equipment Finance Law Dominic Boisvert: Insurance Law (Ones To Watch) Luc R. Borduas : Corporate Law Daniel Bouchard : Environmental Law Jules Brière : Administrative and Public Law / Health Care Law Myriam Brixi : Class Action Litigation Benoit Brouillette : Labour and Employment Law Richard Burgos : Corporate Law / Mergers and Acquisitions Law Marie-Claude Cantin : Construction Law / Insurance Law Charles Ceelen-Brasseur : Corporate Law (Ones To Watch) Eugène Czolij : Corporate and Commercial Litigation / Insolvency and Financial Restructuring Law Chantal Desjardins : Intellectual Property Law Jean-Sébastien Desroches : Corporate Law / Mergers and Acquisitions Law Michel Desrosiers : Labour and Employment Law Raymond Doray, Ad. E : Administrative and Public Law / Defamation and Media Law / Privacy and Data Security Law Christian Dumoulin : Mergers and Acquisitions Law Alain Y. Dussault : Intellectual Property Law Isabelle Duval : Family Law Chloé Fauchon: Municipal Law (Ones To Watch) Philippe Frère : Administrative and Public Law Simon Gagné : Labour and Employment Law Nicolas Gagnon : Construction Law Richard Gaudreault : Labour and Employment Law Danielle Gauthier : Labour and Employment Law Julie Gauvreau : Intellectual Property Law Michel Gélinas : Labour and Employment Law Caroline Harnois : Family Law / Family Law Mediation / Trusts and Estates Marie-Josée Hétu : Labour and Employment Law Alain Heyne : Banking and Finance Law Édith Jacques : Corporate Law / Energy Law Pierre Marc Johnson, Ad. E., G.O.Q., MSRC : International Arbitration Marie-Hélène Jolicoeur : Labour and Employment Law Isabelle Jomphe : Intellectual Property Law Guillaume Laberge: Administrative and Public Law Jonathan Lacoste-Jobin: Insurance Law Awatif Lakhdar: Family Law Bernard Larocque: Class Action Litigation / Insurance Law / Professional Malpractice Law Myriam Lavallée: Labour and Employment Law Guy Lavoie: Labour and Employment Law / Workers’ Compensation Law Jean Legault: Banking and Finance Law / Insolvency and Financial Restructuring Law Carl Lessard: Labour and Employment Law / Workers' Compensation Law Josiane L'Heureux: Labour and Employment Law Hugh Mansfield : Intellectual Property Law Zeïneb Mellouli : Labour and Employment Law Patrick A. Molinari, Ad.E., MSRC : Health Care Law André Paquette: Mergers and Acquisitions Law Luc Pariseau : Tax Law Jacques Paul-Hus : Mergers & Acquisitions Law Ariane Pasquier : Labour and Employment Law Hubert Pepin : Labour and Employment Law Martin Pichette : Insurance Law / Professional Malpractice Law Élisabeth Pinard : Family Law François Renaud : Banking and Finance Law Marc Rochefort : Securities Law Judith Rochette : Professional Malpractice Law Ian Rose : Director and Officer Liability Practice / Insurance Law Éric Thibaudeau: Workers' Compensation Law Philippe Tremblay : Construction Law / Corporate and Commercial Litigation Jean-Philippe Turgeon : Franchise Law André Vautour : Corporate Law / Energy Law / Information Technology Law / Intellectual Property Law / Private Funds Law / Technology Law Bruno Verdon : Corporate and Commercial Litigation Sébastien Vézina : Mergers and Acquisitions Law Yanick Vlasak : Corporate and Commercial Litigation Jonathan Warin : Insolvency and Financial Restructuring Law