Intellectual Property (IP) Enforcement Guideline
(Infringing and Inappropriate Use)

  1. 1.  Effective date
    1. This Guideline takes effect on October 7, 2016.
  2. 2.  Application and Definitions
    1. This Guideline applies to all employees of Employment and Social Development Canada (ESDC), including the Labour Program and Service Canada. Key definitions are in the Intellectual Property (IP) Management Policy (section 7) and additional definitions are available from the Canadian Intellectual Property Office.
    2. Third parties only: This Guideline applies to situations involving the inappropriate use or infringement, by a third party, of ESDC IP. (If an ESDC employee, during the course of work, infringes on IP rights, ESDC will respond per sections 8.2 and 12 of the IP Management Policy.)
    3. Infringement: The term infringement (or infringe) in this Guideline means actions by third parties without permission from ESDC that may violate ESDC copyright, official mark or other ESDC IP rights.
  3. 3.  Context
    1. ESDC must protect its IP, as per the IP Management Policy. By protecting ESDC IP, we can mitigate risks to program integrity and to ESDC’s reputation.
    2. Main IP types: The two main categories of ESDC IP relevant to this Guideline are:
      1. Documents, images, videos and other ESDC materials protected under the Copyright Act; and,
      2. ESDC official marks and other ESDC marks protected under the Trademarks Act.
    3. At times, ESDC employees may suspect that a third party is using ESDC IP without permission and therefore infringing on ESDC IP rights. In other situations, third parties could merely be using ESDC IP in an inappropriate manner without actually infringing on IP rights. (For examples of inappropriate use, see the seven reasons listed in the ESDC IP Management Policy at 8.3.3.)
    4. Infringing or inappropriate use of ESDC IP by a third party may cause risk to ESDC. Such use may give the public the erroneous impression that a service or company is endorsed by or affiliated with ESDC. Infringement is contrary to the Copyright Act and the Trademarks Act.
    5. ESDC can respond to these situations using various methods, which have corresponding financial, program, legal and other impacts. Based on the details contained below in sections 4 to 6 of this Guideline, the IP Centre of Excellence (IPCOE) will assist with choosing a response for any real case.
    6. The ESDC IP Management Policy (8.6) assigns lead responsibility to the DG of the affected program to resolve infringement-related situations, with support and advice from IPCOE and Legal Services.
  4. 4.  Purpose
    1. This Guideline:
      1. guides ESDC employees on the steps to take and what documents to obtain when they encounter infringing or inappropriate uses of ESDC IP;
      2. provides general guidance (for more detailed information and assistance, employees must contact the IPCOE); and,
      3. is to be considered alongside of any program-specific policy instruments and procedures on intellectual property.
  5. 5.  Principles
    1. Whether a particular act actually infringes on ESDC IP is ultimately a legal question. Per the ESDC IP Management Policy, answering this question always requires consultation with IPCOE. When necessary, IPCOE will engage Legal Services and Public Affairs.
    2. Any response by ESDC and its partners must reflect the fact that infringement is unlawful. We must also account for such factors as the details of the infringement and the risks it creates.
    3. Inappropriate but non-infringing uses of ESDC IP may also contravene various laws or policies. (For examples of inappropriate use, see the seven reasons listed in the IP Management Policy at 8.3.3.)
  6. 6.  What to Do (Enforcement Process)
    1. When ESDC employees (referred to as “you” in this section) first become aware of potential infringing or inappropriate use of ESDC IP, the following process applies.

      1. Notify the IPCOE and your management: You must promptly notify your manager. As per the ESDC IP Management Policy, you or your manager must promptly notify, via e-mail, your Director General and the IPCOE.

        What to include: Your initial message to IPCOE, or follow-up correspondence, should describe the infringing or inappropriate use and provide relevant documents. See the Annex for more details. This description should include, as applicable, the following:

        •  Screen shots or images of the use;

        •  Web addresses;

        •  Any other relevant information.

      2. Identify the relevant program area: If you are not part of the program that is ultimately responsible for the ESDC IP at issue, you must still promptly contact IPCOE (as per step 6.a.i above). As needed, IPCOE will determine which organizations within ESDC or externally are responsible for the IP. IPCOE will then contact the group so identified, at the DG level.
      3. Confirm whether infringing or inappropriate use of ESDC IP is taking place: Working with IPCOE, the program managers identified at step 6.a.ii above must decide whether the use is inappropriate; infringing; both; or, in fact appropriate. The IPCOE will guide program managers based on a review of all available documentation. The IPCOE will involve Legal Services at this stage only if necessary.
      4. Select a response: IPCOE and program management will work with Legal Services, Public Affairs and other organizations, as necessary, to identify specific actions ESDC will take to respond to the infringing or inappropriate use, if needed (see 6.1 below).
  7. 6.1  Selecting a Response
    1. When identifying a response (step 6.a.iv), the IPCOE will discuss various factors with clients.
    2. Factors to consider at this stage may include:
      1. Type of use, such as commercial use (for profit) vs. non-commercial use (not for profit);
      2. The identity of the third party;
      3. What risks the use creates for ESDC (including their nature, severity and likelihood);
      4. The severity of any potential impact on ESDC’s ability to meet its mandate;
      5. Whether there is an effect, real or potential, on program integrity (e.g. risks linked to personal information);
      6. At a practical level, what response options are available to ESDC;
      7. Any risks ESDC may face due to taking a response (compared to taking no action), such as:

        •  Whether ESDC has sufficient evidence to support a lawsuit

        •  Whether the third party could successfully defend its use of the IP

      8. Any other case-specific factors.
    3. Referring to the IP Management Policy and the above factors, the group (led by the responsible DG or their delegate) will determine whether ESDC would have approved a request for IP permission, had the third party properly approached ESDC with such a request.
    4. Based on the above analysis and any advice from other stakeholders, such as Legal Services, the program management (at the DG level or higher, as per the IP Management Policy) is ultimately responsible for selecting a course of action, including taking no action.
  8. 7.  Reporting infringing or inappropriate use; learning more
    1. Send all reports of infringing or inappropriate use to IPCOE.  When required, IPCOE will help you obtain legal advice.
    2. Send questions and clarifications about this Guideline to IPCOE.

Annex: Document checklist

To enforce its IP rights successfully, ESDC must have sufficient documents. This Annex lists some suitable documents. Programs have the lead responsibility for obtaining such documents, but the IPCOE can give guidance. Contact IPCOE for guidance on any real case.

  1. Documents related to third party (“infringer” or “user”) activities

    ESDC needs documents that show the third party’s questionable actions. Suitable documents include:

    • Mandatory in every case: A general written description of the context or circumstances under which you became aware of the infringing activities or inappropriate use;
    • All available contact information for the infringer or user;
    • Web address(es) where the infringing or inappropriate use is taking place, if any;
    • Screen captures (use Print Screen key on keyboard) or photos of the website or application (capture as many relevant screens or pages as possible, in case the documents later disappear);
    • E-mails, letters or other documents that include, or refer to, the infringing or inappropriate use;
    • Photographs or PDF scans of relevant hard-copy documents or items, if easily obtainable. (Alternatively, actual hard copy documents may be forwarded to the IPCOE.)
  2. Documents related to the relevant ESDC IP rights

    ESDC needs documents that show it has IP rights in the relevant materials. Suitable documents include:

    • Documents or correspondence that show when and how ESDC acquired the IP rights (for documents created by ESDC employees, start by providing the author’s name and the date that the document was published, created or last updated);
    • Any official mark or trademark registrations (see the List of ESDC Official Marks, and for marks outside ESDC see the CIPO database);
    • Web address(es) where ESDC has posted legitimate version(s) of the documents, if any (for example, web addresses where ESDC posted the official version of an ESDC publication);
    • Related procurement contracts and other written agreements (such as licenses, funding agreements, agreements that produced the documents in question, or other relevant written agreements), especially if these documents involved the infringer or user;
    • Any correspondence ESDC may have sent to the infringer or user, including any IP permissions (licenses) ESDC may have already issued to the infringer or user.
  3. Mandatory Considerations

    3.1  Infringement must be specific: ESDC must have documents showing an actual particular case (such as a website) where a third party is currently using, or recently used, ESDC IP.  General suspicion is not adequate.  Nonetheless, employees are to report all such matters to the IPCOE.

    3.2  IP licenses: An IP ¬license gives permission to use IP (see the IPManagement Policy, section 7, for a definition). Therefore, ESDC must determine whether it has already granted the third party any IP license. If so, IPCOE must review the relevant documents to see whether the third party has violated any terms and conditions.  ESDC needs to avoid claiming infringement against authorized third parties.