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Prof. Pina D’Agostino is the Founder and Director of IP Osgoode, the IP Intensive Program, and the IP Innovation Clinic, the Founder and Editor-in-Chief of the IPilogue, the Deputy Editor of the Intellectual Property Journal, and an Associate Professor at Osgoode Hall Law School. This article features contributions from Ryan Wong (IP Osgoode & IP Innovation Clinic Alumnus), Sabrina Macklai (IPilogue Senior Editor), Tianchu Gao (IPilogue Writer), and Ashley Moniz (IPilogue Managing Editor).

2021 was an exciting year for the IPilogue. Our hard-working students and community members published more than twice as many articles than in 2020 and the most articles in a calendar year since 2011. This sharp increase helped us stay up to date with some of the biggest topics shaking up intellectual property: from , to ; and from growing investments in and , to IP registrars around the world grappling with whether to acknowledge  as an inventor or artist. This article summarizes the top developments reported on our blog and in patents, trademarks, and copyright law in 2021. For a review of Privacy legislation in Canada, check out .

Top 10 Most Read IPilogue Articles Published in 2021

1. by Sabrina Macklai & Emily Chow
2. by Prof. David Vaver
3. by Claire Wortsman
4. By Claire Wortsman
5. by Natalie Bravo
6. by Prof. Giuseppina D’Agostino
7. by Bonnie Hassanzadeh
8. By Meena Alnajar
9. by Prof. David Vaver
10. by Bonnie Hassanzadeh

Introducing the College of Patent Agents & Trademark Agents

On , the came into force. The Act established the (‘’), an independent public interest regulator of patent and trademark agents in Canada. The purpose of the College is “to enhance the public’s ability to secure the rights provided under the and the .” The College’s responsibilities include maintaining professional competencies and ethics, issuing licences, collecting fees, and administering certification exams. This development marks a key milestone for the profession and for Canada’s . Though still in its infancy, the College has been criticized for and its , which may impose an additional fee on lawyer agents. It remains to be seen how influential the College is on the profession as it is expected to be fully operational within the next two years.

Patents

Overbreadth as an Independent Ground of Invalidity

On July 28, 2021, the Federal Court of Appeal confirmed overbreadth as a standalone attack on patent validity: . In this case, the appellants argued that there is no statutory basis for overbreadth as a ground for invalidity. The Federal Court of Appeal disagreed and found that overbreadth can be supported by a combination of sections 27(3) and 27(4) of the Patent Act. Case law has often overlapped overbreadth with other grounds of invalidity such as obviousness, anticipation, and inutility.Ìę

First Time Interpreting Patent Agent Privilege

Similar to solicitor-client privilege, patent agent privilege was introduced by section 16.1 of the Patent Act on June 24, 2016. The first case on patent agent privilege was decided this year: In this decision, the Federal Court provided some helpful commentary and analysis on the application and limitations of patent agent privilege.Ìę

Patent Prosecution History Now Admissible as Evidence

In 2018, section 53.1 of the Patent Act was added to make patent prosecution history admissible as evidence in patent proceedings. This was a significant development as the Supreme Court of Canada had expressly rejected the idea and stated that admitting patent prosecution history “would undermine the public notice function of the claims, and increase uncertainty as well as fuelling the already overheated engines of patent litigation” (Free World Trust v Électro SantĂ© Inc., 2000 SCC 66 at para. 66). Three subsequent Federal Court of Appeal decisions developed this provision further: ; ; and .Ìę

Continued Debates over AI as an Inventor

Around the world, patent registrars grappled with patent applications that credit artificial intelligence software as the inventor. Dr. Stephen Thaler’s “DABUS” (Device for Autonomous Bootstrapping of Unified Sentience) applied for patents around the world for its interlocking food containers. DABUS was granted patents in Australia and South Africa, with . In line with the and the , the disagreed, stating that absent express intention from Congress, the term “individual” in their statutory definition of “inventor” . The Supreme Court of Canada last considered the definition of "inventor" in 2002, but has yet to consider whether it would include non-human entities.

Trademark Law

Parody in Trademarks is No Joke

In , the Federal Court reaffirmed that parody is not a defence against trademark violation. Unlike the 2020 decision ), where the Federal Court failed to find the marks confusing, Justice McHaffie held there was a likelihood of confusion and passing off. This was based partly on the similarity of the trademarks and the overlap of the goods (both offering baked goods). However, even if the nature of the parties’ trades differ, trademark owners may still find recourse against spoofed versions of their marks through claiming depreciation of goodwill under section 22 of the . Here, the Court found goodwill in Subway’s trademarks, which was damaged by the nature of Budway’s products, as contrary to Subway’s “healthy and active” lifestyle promotion. With damages amounting to $40,000, it is clear the courts are unamused by parody in trademarks.

The Road Less Travelled Cannot be Trademarked

Like most countries, Canada bars the registration of “clearly descriptive” trademarks to prevent applicants from monopolizing words that merely describe the goods or services at hand. For this reason, marks consisting of are typically unregistrable. In , the Federal Court clarified when such marks might be protected. Hidden Bench and Locust Lane are two wineries operating on the same little road, “Locust Lane”. Although the Federal Court agreed that Hidden Bench met the threshold for a valid common law trademark over “Locust Lane”, they ultimately held that the mark, as clearly describing the goods and services’ place of origin, lacked both inherent and acquired distinctiveness. Therefore, Hidden Bench could not establish the necessary goodwill for a passing off claim. Only descriptive marks that have acquired a “secondary meaning” through use may warrant protection.

CIPO Addresses the Application Backlog

While filing trademarks is important for brand protection, the examination stage can take . In May, the Canadian Intellectual Property Office (CIPO) new measures to address the application backlog. Trademark owners may now file requests to expedite their examination where the registration of their mark is necessary for special circumstances such as if a Canadian court action involving the mark is expected or underway or if the goods or services are aimed at preventing, diagnosing, treating, or curing COVID-19. If accepted, the examination will take place within two weeks. The examination is also automatically expedited by approximately 6-10 months when the goods and services in the application are listed in CIPO’s . Though it is too early to assess the effect of these changes on mitigating the “”, the backlog of CIPO’s unexamined trademark applications appears to have as of December 13, 2021.

Push to Register Non-French Trademarks for Use in Quebec

Among the controversies associated with Quebec’s proposed Bill 96, , the bill stipulates new requirements for trademark owners operating in Quebec. Currently, under Quebec’s French-language laws, both registered and unregistered (i.e., common law) trademarks recognized under the may appear on public signs, posters, and commercial advertising in Quebec, in languages exclusively other than French. If enacted, Bill 96 would permit only registered non-French trademarks to appear on public signage, provided there is no corresponding registered French version of the mark. The Coalition Avenir Quebec government tabled Bill 96 on May 13, 2021, and Quebec’s National Assembly last examined it on December 10. Some iteration of the bill will likely become law by the end of this year. But even if it fails to pass, businesses relying on common law trademarks would be wise to try to register them, given the many that registration provides.Ìę

Copyright Law

In 2021, the Federal Court and Federal Court of Appeal heard 57 copyright infringement proceedings, approximately of all IP-related litigations at these levels.

Developments in Fair Dealing

The Copyright Act’s section 29 fair dealing provision, which allows for certain uses of copyright-protected materials, remained a central issue. affirmed that fair dealing for the purpose of news reporting (section 29.2 of the Act) must provide attribution, mentioning both the source and the name of the author. An indirect reference to the author accessible through “minimum research” is insufficient. As such, the Federal Court of Appeal rejected Trend Hunter’s argument that hyperlinking to the source article where Stross was credited was sufficient to meet the second requirement. The Court also declined to find fair dealing under s. 29 more broadly, considering that Trend Hunter’s dealing was commercial in nature, reproduced Stross’ work in its entirety, and that alternatives were available.

Fair dealing was once again at issue in , where the Federal Court held that the Conservative Party’s use of the CBC’s news footage of Liberal Party Leader and Prime Minister Justin Trudeau during their 2019 election campaign did not infringe CBC’s copyright. The court undertook a large and liberal interpretation of fair dealing, finding that the Conservative Party’s use of CBC footage was for the purpose of criticism under s. 29.1.

żìČ„ÊÓÆ” achieved a in the copyright tariff dispute with the Canadian Copyright Licensing Agency (“Access Copyright”) in In a unanimous decision, the Supreme Court ruled that the interim tariff approved by the Copyright Board is not mandatory. Users can choose whether to accept licences or pursue alternative methods to lawfully copy works. Notably, this marked Justice Rosalie Abella’s final decision before her retirement from the Supreme Court of Canada. Throughout her tenure, and her judgement here provided helpful obiter regarding fair dealing as integral to users’ rights.

Even Fake Facts are Not Copyrightable

involves the alleged copyright infringement of the famous true-crime story The Black Donnellys. The book had always been presented and accepted as “.” The Federal Court ruled that “an author who publishes what is said to be a nonfiction historical account cannot later claim the account is actually fictional to avoid the principle that there is no copyright in facts.” Given today’s popularity of the phrase “based on a true story”, this ruling is a that there is no copyright in facts, even if they are later found to be untrue.

Copyright in Evolving Content Transmission

In , the Federal Court found the defendant liable for copyright infringement in its provision of pre-loaded set-top boxes and internet protocol television (IPTV) services and awarded the plaintiff nearly $30 million in damages. These services made copyrighted works owned by the plaintiff available to the public without the plaintiff’s permission. This decision marks the first time The court dealt with a similar issue in ). As IPTV is growing increasingly popular across the globe, its poses a challenge in Canada.

Availability of Reverse Class Actions for Copyright Infringement Claims

The first of its kind in Canada, the Federal Court of Appeal in affirmed that reverse class actions may be pursued in connection with copyright infringement claims. Though the matter was sent back to the Federal Court for further consideration, this judgement may encourage and enable mass copyright enforcement in the future, especially in our digital age where copyright infringement is more commonplace.

Public Consultations Ahead of 2022’s Copyright Reform

As part of the (CUSMA), which came into force on July 1, 2020, Canada has until the end of 2022 to implement numerous changes to their domestic copyright laws; most notably, extending the general term of copyright protection from . In light of the upcoming legislative amendments, the Government of Canada hosted three public copyright consultations in 2021:

• ;
• ; and

With the consultations now closed, it will be interesting to see how Canadian copyright laws will change in 2022 to accord not only with international obligations but our ever evolving digital world and public attitudes surrounding copyright laws.

The post 2021 IP Year in Review appeared first on IPOsgoode.

Quoting musician Greg Gillis (a.k.a. “”), Lessig illuminates the concept as “[t]his appropriation time where any grade-school kid [who] has a copy of Photoshop [
.] can download a picture of George Bush and manipulate his face how they [sic] want.” This redefinition of authorship in the digital age is echoed in the Ecce Homo v. Ecce Mono controversy too, because it questions whether copyright should be used to protect something that “defaces” or reduces the value of the original work, even if it falls within the four traditional areas of copyrightable works.

In early October, Vladimir Umanets, co-founder of the so-called art movement “,” at the Tate Modern gallery in London. In his own eyes, this was not an act of vandalism, but a redefinition of a piece of art as not-art, and therefore, as a piece of Yellowism. Whether or not I actually understand the nuances of Umanets’ manifesto, I do wonder about the implications his actions might have on the perception of what remix culture constitutes. To me, this art-(and now, not-art)-is-in-the-eye-of-the-beholder perspective is being used as a justification for vandalism here. Of course, I might only be saying this because the underlying work in question is a famous painting in its own right, and the Yellowist’s (Umanets refuses the labels “artist” or “vandal”) contribution to it is detrimental to its innate value, at least for me. Umanets would disagree, believing that he has through its inclusion in the folds of Yellowism. His act asks whether the value of a derivative work is inherently linked to the effect of increasing or decreasing the original’s worth, or if it can have a separate and stand-alone value as a new work of art.

The parallel Ecce Homo v. Ecce Mono debate considers whether the value of a derivative work rests on public reaction, if its economic and artistic values are confused with each other, and if something can be “valuable vandalism.” For instance, , perhaps the most famous guerilla artist of our time, has often probed the murky philosophy behind the legal definition of “art,” by producing enduring stencilled works on state-owned property, which have had a lasting and positive effect on the public’s view of art, while creating .

What then, is the difference between Banksy, Cecilia Gimenez (the Ecce Mono creator) and Umanets? Is it the perceived value attached to the purpose that the work serves, perhaps making it worthy of being categorized as art? Or is it the real (monetary) value that the work is given, so that it is only considered art because it commands a price, which sends the (inaccurate) message that a work of art is only so if it is considered economically valuable? Or is it that the very act of vandalism is a blunt manifestation of the abstract concept of the “remix” in remix culture, where all derivative works are vandalised versions of the originals to some degree?

Copyright law does not take it upon itself to determine the quality of a literary, dramatic, musical or artistic work but only decides if it is copyrightable, . Derivative works , arguably falling into both categories at times (thanks to the oft-contradictory perceptions of the originality requirement in copyright). For cases of vandalism, it may well be that the process of defacement creates a new work that is itself worthy of protection, independent of its perceived quality. For Banksy, this may be the recognition of his works as distinctive expressions of thought, but for Gimenez, it may be the distinctiveness attributed to the Ecce Mono by its circumstances, resulting fame, and the money it generates for the Sancti Spiritus foundation.

Umanets’ act is arguably neither of the above, even as it incorporates elements of both. The defaced painting could well be copyrightable; the issue with it, as it is may be with all “vandal works,” is whether it is ethically worthy of copyright protection, even if legally found to be so. This contemplation may be debatable in the application of copyright law, but is, I believe, one of the fundamental questions that remix culture-at-work raises.

Mekhala Chaubal is a JD Candidate at Osgoode Hall Law School and is currently enrolled in Osgoode’s Intellectual Property Law and Technology Intensive Program.Ìę As part of the program requirements, students are asked to write a blog on a topic of their choice.

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An interesting debate has arisen in regards to copyright which subsists in reality TV shows. Recently, broadcasting companies and game show producers have alleged copyright infringement in regards to other reality shows bearing resemblances to their own. In 2008, Japan’s , alleging that ABC’s Wipeout infringed the copyright of six TBS shows, including Takeshi’s Castle, MXC and Ninja Warrior. More recently, over allegations that ABC’s Glass House infringes the copyright of CBS’ Big Brother. While the TBS suit against ABC , the CBS suit against ABC is , and has been on IPOsgoode by Tracy Ayodele.ÌęNevertheless, the current questions regarding the copyright protection available to reality shows, as well as the permissible similarities between shows, remain unsettled.

Lawyer-by-day, punk-rock-bassist-by-night , “copyright is the protection of a creative expression of an idea. Not the idea itself, the creative expression of that idea.” This is due to the “fixation” requirement of the American §102(a), and the Canadian common law’s approach since .

Under Canada’s copyright regime, any infringement debate commences with an inquiry into whether the expressed idea fits within the categories of works or other subject matter protected under the and whether it meets the originality requirements: “the exercise of skill and judgment” which is not merely a copy of another’s original work or a “purely mechanical exercise.”

Television shows enjoy copyright protection under Canadian law in many facets: the underlying written script and recognizable characters as literary work (see ); the original written descriptions of episodes or scenes (see at para 83) as well as the discourse of the television show as dramatic works; and the character designs as artistic works. The common threads between these elements of the show are their expression in a material form as well as their originality. Reality TV shows are presented with an issue distinguishing between parts of the show which fit within these characteristics, and are therefore copyright protected, and those which are considered unprotected by copyright as the idea can only be expressed in a single manner, or an extremely limited number of forms – known as the .

While discussing the copyright protection for concepts of television shows, Bob Tarantino’s “” illustrates Canadian cases which have discussed the copyright of television show formats. In one of the illustrated cases, , it was held that CBC’s Good Rockin Tonite (GRT) did not infringe upon the plaintiff’s show Star Chart. While GRT utilized the format and concept of Star Chart, MacCallum J held “the similarities [were] relatively unimportant in the context of copying,” implying, as Tarantino states, there is “unprotected expression necessarily resulting from the manifestation of [an] idea.” In affirming the lower court’s decision and discussing copyright infringement of television shows’ concepts and formats, the stated, “the requirement of substantial similarity must be apparent when viewing the works as a whole.”

More recently, the Quebec Court of Appeal in held an erotic film, which parodied a popular Quebec television show La Petite Vite, copied substantial amounts of the television show’s original and important elements including “the principal characters, their costumes and appearances [including mannerisms and quirks], and the dĂ©cor.”

Tarantino summarizes the Canadian copyright regime’s stance as “recogniz[ing] that copyright can subsist in concepts or formats for television and feature film productions, provided that the elements otherwise required for copyright protection are present.” For reality TV shows, which can be said to be unscripted narrative programming, certain expressed elements will be copyright protected, while others will be unprotected as they are, in the words of MacCallum J, “common constituent elements of any television program of the genre.”

Disputes surrounding reality TV concepts will hinge on which elements of the show have been appropriated from previous programs. As the TBS/ABC settlement illustrates, the expressed concept of certain obstacle-course competitions, such as Wipeout’s “Cookie Cutter” which is nearly identical to MXC’s “Rotating Surfboard of Death,” are likely to be original, and thus arguably protected by Canadian copyright law. Although a host, an elimination format, and other elements may be unprotected by copyright as they are “common constituent elements” of a obstacle-course reality TV show, copyright likely subsists in the costumes and appearances, including the mannerisms and quirks, of TBS show hosts, as well as the shows’ obstacle-courses. Conversely, disputes involving overarching reality show formats are unlikely to succeed, as the concepts are undoubtedly common to any reality TV show. Thus, perhaps ABC is not out of line in stating that “.” However, keeping Favreau in mind, ABC’s Glass House should be sure to hire a different interior decorator from CBS to avoid any issues involving copying Big Brother’s dĂ©cor.

Adam Jacobs is a JD candidate at Western University, Faculty of Law.

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Citing the relevant international legislation, namely, of the , of the Agreement and of the WIPO , the ECJ attempted to tread the fine line between the protection of the rights of users versus those the copyright owners. It clarified that computer programs were indeed protectable under EU and international copyright law, so long as they qualified as original literary works of expression, going so far as to include the preparatory steps leading to the development of the source or object codes under the umbrella of copyrightability. As a trade-off however, the Court also stressed that the laws for authorial protection only extend to prevent unauthorized reproduction, and hence, a contract could not be employed to prevent lawful third-party use. Like Adv-Gen. Bot’s opinion, the ECJ also referenced the Computer Programs () and Copyright () Directives of the European Commission, stating that the authorization of the rightsholder is not required when decompilation is necessary to achieve interoperability. And turning to national UK law, the ECJ pointed out that while of the treats copyright as an exclusionary property right in literary, dramatic, musical or artistic works, of the same act deems copying for research, study or testing of the function of the program as acceptable fair dealing uses of a computer program.

Analytically, the ECJ harkened back to questions asked in the preliminary ruling, grouping them into three categories. In the first part, it dealt with whether the functionality, programming language and data files used to exploit the functionality can be considered within the realm of copyrightable expression under of Directive 91/250. As per this aspect, the source and object codes of a program were found to be copyright-protected, since they led to the “reproduction or subsequent creation of the program.” However, the graphic user interface, which constituted the functionality of the program, and therefore only enabled users to utilize the program and not to reproduce was not copyrightable expression under the Directive. The WCJ thus determined that neither the functionality of a computer program, nor its programming language were worthy of copyright protection.

In the second stage of the analysis, the ECJ considered whether of Directive 91/250 allows a party that has legally obtained a copy of a program to use, study and test the program with a view to discovering the underlying principles in order to perform a function that would go beyond the usual purposes contained within the license of the product (e.g. the development of a parallel program using the same programming language). By framing these underlying principles as the ideas at the core of the expression (the copyrighted source program), the ECJ then determined that Article 5(3) of Directive 91/250 does not extend protection over these, and as such, allows the discovery of these through decompilation or reverse engineering. The ECJ clarified that this allowance was naturally based on circumstances where the defendant party did not have access to the plaintiff’s source code, and hence, could only discover the underlying principles through original research, study and testing.

In the final category, the ECJ considered whether of Directive 2001/29/EC can be interpreted as meaning that the reproduction of certain elements used to describe one program in the manual, or the contents of a second program can be deemed as infringement. While agreeing that the plaintiff’s user manual was indeed a protected literary work, the ECJ also said that the individualized components of a computing language (keywords, syntax, commas, commands, defaults, figures etc.) could only be considered as creating an infringable work if a reproduction of these was also a copy of the “intellectual creation of the author of the user manual.” The question however, as left open for national courts to consider.

The ECJ’s attempts to balance the competing rights of users and the copyright owners of computer programs clearly come to the fore in this ruling. While this case’s most obvious implications mean that the ECJ heeded Adv.-Gen Bot’s warning and prevented the unprecedented monopoly of functionality, it remains to be seen whether both copyright owners and users can rest easy, especially given the vast sums of capital that are at stake in the often-precarious computer software industry.

Mekhala Chaubal is a JD candidate at Osgoode Hall Law School.

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