Ep. 73 with Cory Furman from Furman IP

Barb McGrath 0:00
Today’s guest knows all the lawyer jokes. And in fact, he’s been known to tell more than a few of them himself. Corey Furman is the owner of Furman IP here in Regina. And they focus on intellectual property law. So if you’ve ever wondered whether what you’re thinking or building would be covered, he’s the guy you need to talk to. Cory. Welcome. Thank you for being here.

Cory Furman 0:28
Oh, thanks for Well, thanks for having me. I didn’t bring you a good lawyer job today. But, but I love a good one light as much as the next. So just if you’re going to tell me a lawyer joke, just make it really hurt.

Barb McGrath 0:41
Excellent. And you know, as a profession, you guys certainly get beat up. So I think that helps to build that thick skin somewhere along the way, right? Yeah. So like, what what drew you to a lot you’ve been practicing for how many years now?

Cory Furman 0:56
I finished Law School in 1994. So I feel old saying that? Because I guess that means about 25 years, something like that. 26 years?

Barb McGrath 1:07
And have you always focused on intellectual property?

Cory Furman 1:11
Since I started my firm, so when you’re when you finish, law school is kind of like accounting, you got to do articles first. So I did my articles with the Saskatchewan Justice Department in 94/95. And then an economy back then being one it was for lots of people that are watching who were here that knows there weren’t a whole pile of jobs around. So I created my own job. decided I’d started an IP firm, because it was always something that had, it’s always something that had interested me and, and with, with nothing better to do and wanting to stick around Saskatchewan because I had met my well my wife at the time not wanting to leave, I thought I’d give it a try. So board a couple 1000 bucks in an old computer from my dad and away I went.

Barb McGrath 2:01
You know, and you hear that story so many times right board a few dollars from mom and dad back in 94, how you could borrow a couple $1,000 nowadays, it’s a little bit more expensive to get set up. Um, so talk a little bit about the types of businesses that you work with them.

Cory Furman 2:19
So my practice is in the area of intellectual property law and strategy. So the I do patent a patent and trademark and copyright work here are sort of what people would more typically kind of equate that to their little simpler words, the but wide, so I help lots of everyone from individuals through to large companies, protecting patents, trademarks, copyright.

Cory Furman 2:43
I do a little bit of litigation work, although, in general, especially with domestic and local clients in Saskatchewan, we’re not a litigious bunch, we all seem to get along. So that’s not so bad. So a lot of the clients that I work, like I have a very, it’s pretty cool, because I get to work with lots of different companies of different sizes in different industries. And I mean, another interesting thing about another piece to that is not only helping people to sort of figure out and file and protect their patents and things like that. But also, I mean, the most interesting part of it, to me is sort of just helping clients to figure out the rest of their IP strategy, including their export strategy, like I love doing international work. So I help people who are exporting to kind of match up their IP footprint in other markets, whether those are other markets elsewhere in Canada or outside Canada that sort of help them to match up the timing and the footprint of their IP portfolio in the US or Europe or wherever, as they as they go along. So I got to meet a ton of interesting people in those 25 years or whatever, both from clients, to lawyers and other countries and stuff like that. It’s, it’s, it’s, it’s pretty cool.

Barb McGrath 4:02
So is it primarily product work? Or even from a tech perspective? I want to develop a piece of technology and let’s say an app, but I want people around the world to use it. Is that considered exploiting or how does that work?

Cory Furman 4:19
So when I started in the 90s, and through for the first 10 or 15 years, and it could have been part been just the nature of the people I had in my team at the time. We did a lot of work on agricultural implements, oil and gas invention stuff like more more mechanical type inventions. I always have had a bit of an interest in software kind of stuff through its I, I found it I found that my old Commodore 64 in the garage the other day, which I will, which I will let my wife throw out, because it’s because I’m a nerd. And

Barb McGrath 4:55
I try and turn it on like what can you do with it.

Cory Furman 4:57
I haven’t tried to turn it on but But so I always have been of interest in software, literally probably in the last six or eight years, over half of my patent practice would probably be with software companies. So helping people to, to protect different whether it’s a you know, sort of online things or offline, it’s a lot of a lot of the innovation in the province these days is being done in those areas, I still, I still get to do lots of interesting work with some of the same old, older sort of client relationship, like ag manufacturers, oil and gas companies, those kinds of things, but lots more software now. So like I say, which has probably just kind of been, I kind of fell into a niche that I enjoy. And one of the things I love about my business, I kind of kind of work on my own and get to do what I want and work with work with people and companies I like so.

Barb McGrath 5:50
And you know, that’s one of the benefits that people don’t often talk about being a small business owner, you get to direct essentially, every day, if you get too picky, and merchants get a little slim. And if you, you know get a little too generous, well, then you’re dealing with clients that you don’t want to work with. And so yeah, there’s a lot of freedom that comes with picking your clients knowing the work you want to do, right, it’s something that I’ve really come to value. So I just want to touch on this. Because we know that there’s a booming market here, app developers, things like that. So it’s tough to copyright, because whether it’s a website, or it’s an app, it’s not hard to get to the code anymore. So how do how do developers protect themselves?

Cory Furman 6:38
Well there’s a few interesting issues in the in the, in the in the context of software protection. So you first I mean enemy, one of the background issues even have to deal with is doesn’t necessarily it does impact how you protect it is even whether you’re using open source or proprietary development tools. So because if you are as lots of people are now developing in whole, or at least in part on some open source platform, then if you’re if your eventual plan is to monopolize your idea, or your technology by patterning it or something that factors in, you can still do it most of the time, but you got to cut up. It’s just something you got to be careful though.

Cory Furman 7:21
With software, I mean, there’s really you can patent you, it software is patentable in certain circumstances, where it’s actually achieving a novel result. So if it’s if it’s basically capturing and transforming data to yield a new commercial function sounds kind of wishy washy in terms of an answer. But the, it’s gotten a little more difficult in the last three or four years, at least, to actually patent software in the US, because the definition that’s being applied in the USPTO is a little different than it was before it’s being applied. They haven’t changed the rules, really. But they’re applying them a little differently.

Cory Furman 8:03
But so patents are patents are there as a tool to kind of try to protect the actual functionality. And then there’s copyright in the code in the code in the interface. So on the copyright is oftentimes how you would protect the code itself, lots of times clients would contemplate doing both. There’s, I mean, lots of times, even whether it’s software or even some other industry, lots of clients who are being maybe a little more aggressive or serious about protecting themselves from an IP perspective, might try that multi pronged approach of I mean, you’d also be able to protect the brand that you use on it on it. So you know, you have a trademark there or something. But the primary way that you would protect the core of a software development would be would be with patents and copyrights. And then the other piece the other way you can protect yourself against certain parties. And one of the questions oftentimes clients have to ask themselves in terms of IP protection strategies, what are you trying to protect yourself against or who are you trying to protect yourself from?

Cory Furman 9:18
So whether that’s I’m trying to protect myself from my customer, not paying their license fees anymore, I’m trying to protect myself from my competitor ripping me off. I’m trying to protect myself in the developer going across the street and and taking the crown jewels with him. They’re all different approaches. And and so one of the one of the other pieces with software is that in addition to patents and copyright, we still try to rely pretty heavily on on contract to so you can actually even where there’s an there’s not otherwise an IP right that exists.

Cory Furman 9:55
You can kind of create some inter party’s rights by agreeing to Hey, welcome to whatever. So lots of times what clients will want to do in the software space is, particularly in the gig economy now where there’s lots of people working on contract, like if they’re not employed, because if you’re an employee coder, there’s a statutory presumption that your employer owns your work. But if you’re, and those vary a little bit from country to country, but there is generally speaking and understanding that if you’re being paid by your employer to develop, then the fruits of your labor will be owned by the employer, the but contractors, for example, or even small businesses, procuring development services from like, if you go out and just get some guy to gig it up and develop something for you that one of the things you probably want to contract with somebody on is you want to contract in respect of ownership of the copyright ownership of the IP and the software.

Cory Furman 11:00
And you frankly, ideally, want the developer to agree that what’s created is yours. Now honestly, honestly, one of the issues you’re going to run into as a developer is not going to want to agree to that. Now, there’s lots of times there’s fair ways to deal with that. Because you can actually, you can actually say, look, I mean, because lots of lots of times what developers want to do, they’re just like lawyers with are looking up in our computer system are precedents and reusing them.

Cory Furman 11:29
The developers want to reuse, they’re there, they want to reuse, you know, libraries, code snippets, whatever, for some different purpose. I mean, they’re not even barely going to go and, you know, either not even necessarily going to go and you know, copy and resell your, you know, dog haircutting scheduling app to someone else, who’s going to compete with you in dog haircuts, great, but there might be some little bit of the programming that they did, that could be useful in another project someday, where they’re, you know, developing a scheduling app for use by a massage therapist or something like that.

Cory Furman 12:05
You probably don’t care. And that’s probably the thing that primarily the developer would be concerned about. So I think that lots of times the way we address that is to say, look, the customer, I am purchasing the development service and the software from you, and I want to own it. But I’m prepared to agree in a way that you can feel free to in a non competitive way, reuse whatever you want. It’s nuts, lots of times, there’s a middle ground there that usually works.

Barb McGrath 12:41
So one of the conversations that I’m seeing primarily coming to the US, I primarily work in that creative industry, and many small business or local businesses trade, their brand. And so the focus of today’s show are their friends and family and what have you and I or small business owners. So what is typically what you’re seeing, like, I don’t want to say advice. But, you know, the small business owner, trademarking their brand trademarking? How do you put something like that?

Cory Furman 13:23
I mean, the short answer to whether it’s an advisable thing to do is I think it is I mean, effectively to register a trademark and whether that’s your sort of key house brand, product names, you’re using whatever something if it’s a brand, even a logo different through, you know, different kinds of non conventional trademarks, identifier, source identifiers that you use to kind of to your benefit to identify your product or service to the public. I frankly, I think registering your trademarks is effectively cheap insurance. I mean, it’s up. Because the person who is the first user is really the person who’s entitled to the registration.

Cory Furman 14:04
So lots of times, we will like I mean, I typically tell people, if it’s up, if it’s a reasonably straightforward Canadian trademark registration, you know, cost wise, you might spend 1500, or $2,000, something like that, start to finish to get a registration done. And at the end of the day, if that sort of crystallizes your place in line, I would say it’s cheap insurance to somebody else coming along and creating a headache behind you somewhere. It’s not a particularly arduous process from a client perspective. And particularly, I mean, for example, like in in in my firm I like I consider it my job to make it as easy and painless for my clients as possible to you tell me what to do pay my bill and I’ll leave you alone. And I’ll I’ll come and tell you when it’s done. I’ll come and tell you before it’s done, because The current one of the current problems in the Canadian context is the Canadian trademark office. It’s embarrassing. It’s it’s taking three plus years to register a trademark in Canada right now.

Barb McGrath 15:10
Yeah, out. Three. Okay. So there’s a process though, you would never even know that that trademark processes. Know, what the heck does that work?

Cory Furman 15:22
Well, so what happens typically, the way you keep on top of that is to when you would be, actually, I would argue that it’s maybe even too late when you’ve gotten to the point of, Okay, you’ve already started using it, and you want to just file it. But at some point, when you’re picking a brand or picking a trademark, it’s a good idea to do a search. Because if we do a search, we can search for business names, previously filed applications, which would come up, I mean, they’ll come up within a couple weeks of being filed in a search.

Cory Furman 15:56
And but it’s, there were some changes made to the Canadian trademarks act a couple years ago, that effectively we know, in a very simple way, have a pretty much a first to file system. So filing date is very important. So we kind of set it and forget it. I mean, we’ll stay on top of it every six, eight months and see what’s happening with it. But I mean, it’s literally taking currently, it’s taking pretty much two and a half years from the time we file for the trademark office to get to the point they look at the file. Frankly, once it gets onto somebody’s desk, it moves pretty quick. It’s maybe another six, eight months, and it’s done. But it’s it’s they’re way behind. In fact, we can go and file. I had a client here not so long ago, where we filed in, you know, six other countries and six other countries, we were done the registrations in all of the other countries, before we had even heard anything from the Canadian trademark. It’s awful, to be honest, because trying to explain it is a big a big part of my practice is also doing Canadian work for foreign companies. So I help foreign companies who are protecting their marks or their patents or whatever, in Canada. And it’s embarrassing to have to explain this on behalf of the Canadian trademarks office that well look, we can do our best, but it’s going to take this long. So suffice it to say it takes a long time. It’s it’s I think it’s a good idea to get your stick in the ground. And then if once you file and or even regardless of if you file if somebody copies YOU AND and OR is infringing your rights, you can still basically seek to enforce on a common law unregistered basis, it’s that it’s better to do it with a registration just because the evidentiary burden flips and it’s a lot easier for the trademark owner than it is for the potential infringer but so that’s probably me rambling on there.

Cory Furman 17:56
But certainly, I think it’s a good idea to do it. In part because of how long it’s going to take to come out the other end. And when you do want to get to the point that you can it. And that’s another reason why actually, when you’re picking brands or trademarks, it’s also a good idea to do a search because, honestly, it’s gonna take two, three years to come out the other end of the sausage maker, the what you probably want, or pretty much in need is like when we do a search, we’ll write an opinion that says, I mean, we’re responsible for the accuracy of our opinion that says, look, we think that you can or can’t get this registered based on what the current state of the register is. And so because you can’t sit and wait for three years to launch your business, and you should and you shouldn’t have to, but particularly if you’re even if you’re a client who’s looking at doing licensing or franchising, if you’re looking to franchise, things like that, your potential franchisee one of the things they, when they get to the point of due diligence with the franchise lawyers, one of the things they’re going to say is, you know, basically under the franchise agreement, the value we’re getting from this arrangement is by and large access to the brand, what can you tell us about that is the brand protected or protectable.

Cory Furman 19:19
So, at that point, if you can flip it out on the desk and say, Look, according to the lawyers, it is okay, hopefully, you’re not gonna flip it under the desk and say, Oh, we asked for an opinion. And they said no way, but I still want your money. Well, yeah, so there’s, I think that searching and clearance work like that becomes even more important, given the timing and the delay and just the frankly before whether you’re a small business or a large business, you don’t want to pile in and spend a bunch of time and resources on developing any equity in a brand that’s walking on somebody else’s rights and that you’re sooner or later going to have to step back from.

Barb McGrath 19:58
So what’s interesting People thought is I remember when I registered my business, I remember searching the Canadian database for business. And I, in fact, have my first choice, because there was a Canadian registration. So in the end, I registered a second alternative, and you know, sort of picked from, you know, whatever the choices were. And then here in Saskatchewan, as long as you meet ISC, you know, benchmark, and you actually scribe the business, then they could care less. But then you watch what happens, businesses go and promote themselves under whatever public brand they want. So you know, that whole area of branding and trademark and what belongs to who? And that would be very interesting, I imagine from a search perspective as you start to get into some of that.

Cory Furman 20:54
Well, certainly, I mean, there’s different sort of degrees of searching, we would do I mean, everything from a quick and dirty search of the trademark database, just to tell you look, this looks like a good idea or a bad idea to even search anymore. It’s so we can give an opinion on registrability based on what’s in the trademark register. So whenever somebody filed a trademark before, in the Canadian context, the Canadian trademark office at least right now, they don’t search for business names, and those kinds of things. All these searches trademarks, cool, it’s a, it’s a narrower data set. But if we do a more comprehensive search, which is the other kind of a search that we most often do, trademark registered to give an opinion on registrability. And then we do an adoption opinion effectively, like, Can we see, is there anything latent that we think you’re going to infringe somebody in the marketplace, even if they don’t have a registration and what that searches is, business names, publications, websites, domain names, all that kind of crap that’s out there, because they’re getting into my real legal terminology now all that kind of crap that’s out there.

Cory Furman 22:04
But, but all that all those added sources of unregistered uses, because prior users still have some rights, which you can find, in a worst case scenario, you could have something that’s registerable. But there could still be some, you know, mom and pop shop in some corner of the country somewhere that has been using something confusingly similar in the same kind of a business. And you roll into town and want to set up three franchise outlets and, and all of a sudden, there’s a problem. Because you’re somebody else’s effectively in front of you in terms of a of an unregistered common law, you’ve sought different different set of data. That’s, that’s typically the level of assurance, like clients that are looking to franchise for example, or expand. That’s typically the level of assurance, I would suggest to them that they probably want. particularly given the time that it’s taking right now. You need as much certainty as possible before you’re going to jump in and spend the money, right. Oh,

Barb McGrath 23:10
Exactly. Yeah, exactly. You know, Cory, it’s funny, one of the things that I really enjoy about doing this podcast is when I get business owners talking about what they love, and what they do and who they are. It makes the time of that party. And in some cases, like literally, I will ask man, two, maybe three questions. And the entire time period disappeared. Right? Yeah, I watching you talking to person watching the clock, which we have, like one minute left.

Cory Furman 23:41
I’ve never been accused of not being able to talk.

Barb McGrath 23:44
Yes, exactly. So on that note, inquiry, wrap us up, like, tell tell us, when should we be calling you? And you know, where do we find you online? Give us your little spiel?

Cory Furman 23:57
Yeah, one? Certainly if companies are either looking to proactively just sort of even do an audit to see what they have for IP assets, or kind of figure out what if anything might apply to their business? Or if they find they have questions specifically about trademarks, patents? Honestly, even if you just have a sense, you have some IP that’s worth protecting, and you don’t know what it is.

Cory Furman 24:20
I mean, I’m happy to try to try to give you a hand and help you out with that. I mean, you’re able to certainly reach out to our firm by phone and Regina here, we have clients all over Saskatchewan, in Canada and around the world. Easiest, frankly, probably the easiest way to start is just to punch up our website, which is just furmenip.com. We’re in the process of getting a little even, we’re in the process of getting a little chat bot finished on there that will kind of maybe help you to figure out if you have some real basic questions maybe might try to help you figure out well, I think I have a trade secret question versus a patent question or something like that.

Cory Furman 24:59
But you were happy to hear from you and sort of answer, answer any questions that way. That’s probably the and then social media wise, you can look me up on LinkedIn and connect there or whatever. But probably the easiest way to start is to just to kind of jump on our website and have a look there and then reach out to reach out to my office from there and somebody in the team will be happy to help I, I love I love just getting to talk to people about their about their businesses and their ideas. And, and my dad used to tease me about this. And I was the only lawyer that he knew of that, that liked a good field trip, but I still make house calls.

Cory Furman 25:39
So there’s nothing I wrote, well, there’s nothing I love more than getting out on the factory floor. So. So I’m happy to talk to people about about about things anytime, and just sort of help them try to get to get pointed in the right direction. So have a look at our website. Like I say there’s a reasonable amount of information in there. We’re just a new site. So it’s just we’re just kind of trying to get even, it’s interesting, because if people have questions, we’re trying to get some more information on there to kind of address what people’s usual questions would be. And then from there, I’m happy to have a chat anytime.

Barb McGrath 26:12
Okay, that sounds awesome. Well, thank you very much for joining me today. Corey, I really appreciate just even a little bit of insight around you know, trademark and that local business or, you know, any kind of intellectual property that someone’s working on. So, hopefully the phone a few times for you after today. And if anyone else would like to be a guest, they can email me at Barb at Google girl.ca or on Facebook and Instagram at Above the Fold. ca. Just a reminder, you can even submit questions in advance of our show on our Facebook page. I’m your host, Barb McGrath, local business owner and Google girl. Remember, you worked hard for your success. Don’t keep it a secret. Bye for now.