It is important to protect a charity’s intellectual property rights for the purposes of brand amplification, marketing initiatives, donor engagement and legal protections to prevent infringement. A charity’s most valuable assets are its intellectual property including:
- its identity, brand, reputation, logos, slogans, goodwill and track record for fulfilling its mandate, mission statement and purpose (which can be protected under trademark law);and,
- a charity’s original creations such as its website, marketing materials, campaigns, photos, videos, interviews, artwork, logos, music, publications, presentations, software programs and other copyright protected materials (which can be protected under copyright law).
In simple terms, the law of trademarks protects a charity’s brand and copyright law protects a charity’s original creations.
Donors often decide to donate and support a charity based on these considerations. They want to donate to a charity that they can trust to ensure their donation is being used for the purpose spelled out by a charity’s mandate and mission statement. Protecting a charity’s brands are a critical and essential component to acquiring donor trust, support and retention. While a donor can always confirm the validity of the charitable status of a charity through Revenue Canada, a strong protected brand name can help the donor determine that the charity is reputable.
Another important reason for charities to protect their trademarks, logos and copyright is that often donors, sponsors, volunteers and fundraisers use a charity’s intellectual property assets for various reasons by way of licence. For instance, a donor may want to throw their own fundraiser for a charity and will need to use a charity’s trademarks and logos on marketing and advertising materials.
It is important for a charity to not only register these rights, but control how the trademarks and logos are being used in a contract with users so that it is consistent with the charity’s branding and helps the charity maintain intellectual property ownership of these assets. A third party using the charity’s assets may end up acquiring those rights by using them in commerce in a particular territory instead of the charity unless it’s set out in an agreement that the charity will own the intellectual property.
Similarly, without copyright protection, a third party could copy the charity’s content, creations, assets such as website, artwork, photos and marketing materials to run similar fundraising initiatives. It’s important for a charity to protect both its trademarks and copyrights and for a charity to be familiar with what copyright and trademarks are and how to maintain and protect them .
What is Copyright?
Copyright is a right embodied in legislation in the Copyright Act that protects an author’s creative expressions such as books, films, music and artworks.
Copyright provides an exclusive right to an author to produce, reproduce, perform, or publish an original work or a substantial part of a work in any material form. In Canada, copyright law also protects foreign creators because of the international copyright treaties Canada has signed.
Copyright protection is automatic upon creation of a work. However, a copyright registration certificate with the Canadian Intellectual Property Office (CIPO) provides evidence and presumption of ownership that copyright exists and the person whose name is on the registration is the owner should there ever be a dispute and it is evidence of ownership recognized by Canadian courts. Once registered, the onus is then on the defendant to disprove the registered ownership.
For a charity, copyright can be claimed in original creative works created by the charity such as:
- written works
- domain names
- information technology
- website content and copy
- marketing materials
- photos at events
- computer and software programs
- mobile app
- custom typography and fonts
- donations from donors that may be in the form of copyright such as the right to license and use an image on a t-shirt for copyright purposes
It’s important to note that there is no copyright protection in ideas. Ideas may be protected through a patent or through a written agreement.
What is a Trademark?
A trademark is the business name or mark that a legal entity (which can be an individual, partnership or corporation) uses for the purpose of distinguishing its goods and services from the goods and services of others.
A trademark can be a combination of letters, words, sounds or designs. A charity’s trademarks may consist of the following:
- corporate name used in commerce
- slogans and taglines (eg. Unicef’s “Unite for Children”)
- names of fundraising campaigns (eg. “The Booby Ball” to support Rethink Breast Cancer)
- emblems or crests (eg. The Cross for the Canadian Red Cross)
In the case of a charity, a trademark used in association with certain goods or services, will set it apart from others thereby protecting its brand, goodwill and reputation. If a charity has acquired a reputation of being reliable, ethical and honest and operates consistently with its mission and mandate, then supporters will rely on the charity’s branding to know that that is the entity they wish to support. A trademark represents the goodwill of a charity. All these elements increase recognition of the charity’s brand with their audiences.
A trademark registration is not required as common law rights protect trademarks but these are limited to the geographical area in which the trademark is being used. Registration of a trademark will provide protection all across Canada regardless of the particular city, province or territory where it is being used. Furthermore, a registration provides a court with the presumption that the owner is the trademark rights owner requiring anyone challenging it to provide otherwise.
A trademark registration provides the owner with the exclusive right to use that mark across Canada for a period of fifteen years. After fifteen years, the trademark must be renewed.
According to the Trademarks Act you cannot register the following marks:
- names and surnames
- clearly descriptive marks
- clearly misdescriptive marks
- words that represent a geographical location commonly known to be a place of origin for those goods or services
- words in other languages
- marks that are considered confusing with a registered trademark or pending trademark
- marks that look similar to a prohibited mark
You need to file a separate trademark for each mark. An application includes the application for registration along with the filing fee. In some cases, you can include a formal drawing if you intend to register a logo.
An understanding of copyright and trademarks and registering, protecting and maintaining those rights are important for charities to protect their brand and assets. A charity’s trademarks and logo helps donors distinguish it from other charities (or non charities) claiming to do the same or similar thing. They establish trust and brand recognition. A strong trademark and logo also communicates to donor’s a charity’s branding and personality. A trademark helps a donor determine that the entity they are donating to are who they say they are. Without proper trademarks in place, another entity could leverage off the reputation of the charity and pretend they are that charity or related to that charity by using a charity’s business name and brand to inadvertently or even fraudulently divert and accept donations.
Proper copyright protection protects a charity’s creative assets preventing others from trying to copy those assets. It’s important for charities to have strong branding and trademark and copyright and to protect and enforce its intellectual property through registration, maintenance and continued monitoring.
© Vandana Taxali, 2016. All Rights Reserved.
About the Author
Vandana Taxali (B.A.Sc., J.D., LL.B) is a lawyer licensed in the Province of Ontario with over a decade of experience in intellectual property, entertainment, business and digital marketing and social media law practising through her firm Entcounsel. She is a graduate of the Faculty of Law University of Windsor and University of Detroit Mercy Law School. She has a B.A.Sc. from McMaster University. She has worked in private practise and in-house corporate legal counsel for creatives and entrepreneurs. She is a mentor for various incubators including OCAD University incubator, George Brown’s digiFest and The Community Innovation Lab in Oshawa.
Guest contributions represent the personal opinions and insights of the authors and may not reflect the views or opinions of Imagine Canada.