IMIx BIGDataAIHUB Seminar Series: Technology and the Law
Laura Crimi and Jeremiah Jesin-Neuberger, both from LaBarge Weinstein, cover how the law can protect your intellectual property, associated limitations, and offer their legal advice during the seminar.
On March 1, 2023, the University of Toronto Mississauga’s Institute of Management and Innovation held their seventh seminar in their BIGDataAIHUB Seminar Series. This seminar was titled “Technology and the Law: Corporate Strategy and Intellectual Property Basics.” The event, led by Laura Crimi, an associate lawyer, and Jeremiah Jesin-Neuberger, a lawyer, both from LaBarge Weinstein, provided a comprehensive guide for students who are considering, or who have, a technology start-up or side project.
Methods of protecting intellectual property
The guest speakers began by defining the various types of protection one can use to protect one’s intellectual property (IP), that is, one’s intangible inventions created using one’s mind: patents, trademarks, copyright, and trade secrets. A patent, as defined by Crimi, is an “exclusive right to an invention for 20 years in Canada from the date of filing.” Patents are likely an appealing option for those who want protection. However, since they are extremely costly, Crimi advises looking into other options or consulting a patent counsellor before taking steps to file a patent. Discussing your needs with a counsellor will help determine if it’s worth your time and money.
Trademarks cover the branding of your IP. Unlike patents, it is possible to have a trademark indefinitely. Trademarks last 10 years from the date they are filed. However, you can have them renewed.
Copyright, as defined by Crimi, is the “exclusive right to produce, publish, or perform original literary, artistic, dramatic, or musical work.” Copyrights automatically protect your IP and registration is not required, unlike trademarks and patents. Within copyrights, there are economic and moral rights. Economic rights, which deal with profits, can be given to another individual, allowing that individual to exploit the content however they like, but moral rights cannot be assigned. Moral rights are concerned with the integrity of the project. So, an individual or firm with economic rights to a project may not alter it.
An important message from Crimi to those who plan on using open-source software: “When developing software, it is critical to read the open-source software licence.” Crimi highlights that this is a crucial step that should be dealt with carefully and meticulously. Neglecting this step can result in painful consequences. For example, some investors in your search for financial support may find that, due to negligence and improper use of open-source software, your project may not be fully protected.
There is also a possibility that in the licence, the open-source software is “copyleft,” which means that what you produce with that software must be published publicly. Students will want to be careful about using software that is “copyleft” as “an investor would look at that and deem your actual product […] is not as valuable because you need to share it freely with the public,” Crimi explains. For example, the original alterations made to the open-source software and any following modifications made will have to be shared publicly for free.
The final way in which you can protect your IP is through the use of trade secrets. Trade secrets, like copyrights, are not registered. Instead, they require that you be cautious of whom you share your IP with and use proper techniques to protect it, such as non-disclosure agreements. There are multiple drawbacks to using trade secrets. For example, this method requires that you be careful and discreet. There is also a chance that someone will come up with it and register it, in which case you lose all property rights.
Crimi explains that at this moment, computer codes are not patentable under Canadian law, but computer programs are if they offer “a new and inventive solution to a problem.” However, computer codes can be protected under copyright. To protect your code under copyright, you must include the copyright symbol, “©,” on your work.
Crimi has also put together a tailored list for students who have tech start-ups or side projects in mind. This can be found in the seminar recording.
Protecting the IP of artificial intelligence (AI)
Currently, work created by AI is not protected under Canadian Law, even if AI is listed as a co-author. Crimi shares that the government is in the process of adjusting the framework to accommodate work created by AI.
Be wary of jurisdictions
An important concept covered in the entirety of the seminar is to be careful of the jurisdictions you work and advertise in. “Just because you have rights in Canada, does not mean that you have rights in other jurisdictions,” Crimi argues. So, if your IP is protected in Canada, it doesn’t mean it is protected in other jurisdictions such as the United States or the European Union. If you want to advertise or work within other jurisdictions outside of Canada, you will have to learn that jurisdiction’s laws and corresponding methods used to protect your IP.
Investments and relationships with investors
Once investors are brought onto the project, it gets a little more complicated. Jesin-Neuberger details how investors will take an executive position, and you will not have as much power over your work anymore. “One thing to keep in mind when you’re going through various financing rounds and bringing on funding is the interplay between new money into the corporation” explains Jesin-Neuberger. “And the investors who are investing it will go for power and will generally want to take over those board positions and take as many shares as they can,” he continues. Once investors and shareholders come onto the project, it is much more than what you are producing—the focus shifts to how shareholders can make money from your product and exploit it in a way that benefits them the most.
Students looking for investors are told to be careful about who they bring in, as you’ll want to ensure that you are protecting yourself as much as you are protecting your IP.
A piece of advice that Jesin-Neuberger gives is to make sure that everything is “papered properly so that there can be no disputes down the line.” Some shareholders will come back and argue that they were not provided with all the options that they were promised. He stresses that if you don’t have the proper documentation to prove that they were fairly paid on everything promised, it’s time to lawyer-up and pray that you win.
Students who are interested in protecting their IP and learning how investor relationships affect their project or start-up are advised to watch the recording of the seminar that is available online.