Frank Papadrovic knows art.
In his former country he was a successful high-end art dealer. When he came to Canada, though, he had to start all over again.
Because there were few opportunities to sell high-end art in Canada, Frank turned to "mass market" art. He sold mass-produced works to offices and hotels that often ordered thousands of paintings at a time.
The paintings were produced by automated systems, or assembly-line hand-painting techniques. The quality was never as high as Frank was used to or as he wanted it to be.
Then, on a business trip to Chicago, Frank met Charlie Wong and his AutoPaint machine. AutoPaint automatically painted high-quality oil canvasses. (Frank has an idea.)
Despite the high cost of two hundred thousand dollars, Frank placed an order for the machine; he was the only one at the trade show to do so. (Money transfer) Other buyers might have been put off by the terms of the contract, which stated that the machine was covered worldwide by patents and could not be used to produce paintings for resale.
Frank was so excited by the machine that he overlooked the fine print. (Morbid music announcing bad news.)
(Frank signs the contract with negligence.)
Two years before the trade show, Charlie Wong began the process for obtaining patents through the Patent Cooperation Treaty (PCT). He filed the PCT application in the United States and designated most countries around the world, including Canada. But Charlie told Frank that patenting was expensive and if he didn't sell a lot of machines in Canada and the US, he would probably not pursue the patent process in these countries. (Frank is pleased with the idea.)
Using the machine, Frank produced and sold tens of thousands of paintings. His customers were pleased and started asking for AutoPaint work by name. (Two clients leaving with a painting.) Because the AutoPaint name was generating business, Frank registered the domain name www.autopaint.ca.
(The Doorbell rings.)
Then, Frank received a letter. (Morbid music announcing bad news.)
A law firm in Chicago hired by Charlie Wong told Frank that his use of the machine for producing paintings for resale infringed on their client's patent rights and that the name AutoPaint was trademarked. (Frank is surprised.) Frank was to cease and desist using the machine and the domain name.
Frank was quite upset. He didn't know a lot about patents or trademarks. His business in Canada had been doing quite well. Although he hadn't sold any paintings in the US yet, there was a lot of interest. (Frank is discouraged.)
On the advice of his accountant, Frank consulted a lawyer who specialized in intellectual property. Although the lawyer couldn't meet with Frank right away, he gave him some homework. He suggested that Frank go to the Canadian Intellectual Property Office website (CIPO - OPIC), and a similar site in the United States (uspto), to see if there were any trademark or patent documents for the AutoPaint machine.
There were no patent or trademark records for the AutoPaint machine or Charlie Wong in Canada. But the US website showed a patent application pending (uspto.gov: PAINTING MACHINE) for the AutoPaint machine. Charlie's company also had a trademark registration for AutoPaint for "automated art creation services."
Frank kept digging and investigating. (On other websites) He had a lot of research to do before his meeting with the lawyer.
- What could Frank have done differently when he bought the machine?
- Was Charlie over-reaching the rights of his patent application?
- Why did Charlie protect his product with both a trademark and a patent?
- Does a Canadian ".ca" domain name infringe on a United States trademark?
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A production of the Canadian Intellectual Property Office, an agency of Industry Canada. Government of Canada.