IP year in review Archives - IPOsgoode

2021 IP Year in Review

ccraig — Fri, 14 Jan 2022 17:00:36 +0000

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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 .

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.��

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.��

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 Santé Inc., 2000 SCC 66 at para. 66). Three subsequent Federal Court of Appeal decisions developed this provision further: ; ; and .��

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.��

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.

�첥��Ƶ 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.

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A Look Back at Canada's Privacy Legislation in 2021

ccraig — Thu, 13 Jan 2022 17:00:00 +0000

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Emily Prieur is an IPilogue Writer and a 3L JD Candidate at Queen’s University Faculty of Law. This article was originally written as part of the IPilogue’s annual Year in Review but has instead been published as a standalone article.

2021 was a transformational year for Canadian privacy legislation. Following the changes made to the , several provinces amended their privacy legislation to protect their constituents’ interests. The private sector may be less welcoming to changes in many provinces which expose companies to . On the flip side, these proposed legislative changes will strengthen the privacy of Canadians in their everyday lives.

Provincial Legislative Changes

Quebec’s Bill 64 Passes Royal Assent��

The most significant development in privacy legislation is Quebec’s , An Act to modernize legislative provisions as regards the protection of personal information, which received royal assent on September 22, 2021. This legislation is significant because of its effects on the private sector. Starting September 2022, private sector organizations must inform the privacy regulator following any breach to compromised personal information that presents a “serious risk of injury” to affected individuals. To determine if there was a serious risk of injury to affected individuals, the province turns to the factors outlined in the “real risk of serious harm” section of the Federal Personal Information Protection and Electronic Documents Act (“PIPEDA”). As , the gradual implementation of Bill 64 allows organizations the opportunity to update their processes and procedures to ensure compliance before September 2022. The Quebec legislation also takes inspiration from the European Union's General Data Protection Regulation (“G�ٱʸ�”), which has been touted as the “” privacy regime because of its strict privacy standards and its partiality towards consumers.

The omnibus bill included such as changes to company websites, assignment of a Privacy Officer, completion of Privacy Impact Assessments, and requirements for consent, individual rights, and automated decision making. To date, the analysis of the legislation compares the provisions to the European GDPR.

Companies operating in Quebec are now required to publish their company privacy policies on their websites. Such privacy policies must describe how companies plan to use personal information.

In the event of privacy infringements that violate individuals’ private information, individuals will now have recourse through administrative monetary penalties, penal offenses, and private rights of action.

Finally, similarly to the GDPR, Quebec introduced consent requirements for collecting personal information, including express consent before using sensitive information and parental consent for minors under the age of 14.��

Ontario Welcomes Consultations and Proposes Changes

Under the leadership of Patricia Kosseim, the Office of the Privacy Commissioner pursued their goal of passing an equivalent piece of legislation in 2021. In response to an op-ed piece that argued against provincial legislation in fear of redundancy and duplication, Kosseim recently regarding the potential for new provincial legislation to “fill in the gaps” of what Federal privacy legislation cannot accomplish.

In keeping with Kosseim’s motivation to strengthen privacy laws in Ontario, the Government of Ontario released a along with calls for consultation in June 2021. The White Paper, titled “Modernizing Privacy in Ontario,” set out several proposals the Ministry is considering to strengthen privacy protection for Ontarians. To strengthen such protections, the Ministry has proposed making privacy a fundamental right in Ontario. Ontario has also included suggestions to protect youth privacy online, regulate automated decision-making, and require more informed consent and data transparency from private corporations.

The Ministry allowed the public to provide comments and feedback until August 2021. The Office of the Privacy Commissioner applauded the provincial government for taking a “” with its proposal.

BC’s PIPA Committee Releases their Final Report

The British Columbia Legislative Assembly also created a special committee to review the British Columbia (“PIPA BC”) in February 2020. The objective of this committee was to publish a report proposing amendments to PIPA BC, which the committee completed in December of 2021. In the , the committee suggested aligning PIPA BC with PIPEDA and Europe’s GDPR. Like the recently passed Quebec legislation, the committee also suggested mandatory breach notifications if a breach surpasses the “real risk of significant harm” threshold as established in PIPEDA. The committee also recommended broadening the definition of personal information to address the potential issue of de-identification. Finally, the committee proposed that the Office of the Information Privacy Commissioner have greater enforcement powers.

Federal Legislative Changes

The Federal Office of the Privacy Commissioner (“��ʰ�”) did not introduce any new legislation in 2021. The Office was engaged in issues surrounding as well privacy issues resulting from the COVID-19 pandemic, including privacy with respect to and the rise in reliance on video teleconferencing platforms like Zoom and Microsoft Teams. The Canadian OPC, along with privacy authorities in Australia, Gibraltar, Hong Kong SAR, China, Switzerland, and the United Kingdom, to the videoconferencing companies regarding their rapid expansion during the pandemic to query and confirm that these technology companies were using appropriate privacy safeguards. The letter led to a series of video calls between the signatories and representatives from the companies. Finally, the signatories and suggestions to improve privacy going forward. Among the suggestions were the implementation of end-to-end encryption, the identification of secondary use data (as well as an opt-out system), and the option for users to choose where their data is stored.

Conclusion

New and amended privacy legislation continues to develop in Canada and worldwide.��Follow the IPilogue and subscribe to our newsletter, the IPIGRAM, for any important legislative changes that emerge in 2022.

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2020 IP Year In Review

ccraig — Fri, 29 Jan 2021 00:09:19 +0000

As we settle into 2021, it is important to remember and reflect on everything that 2020 brought about in copyright, patent, and trademark law. 2020 was an unprecedented year that shifted the way we interact online, and exposed many of the inequities within our society. We want to thank our readers for keeping up with these changes and continuing to support the IPilogue. Please take a look below at the Top 10 Most Read Blogs of 2020 and a digest of the most notable IP developments of 2020.

Top 10 Most Read Blogs of 2020

COPYRIGHT LAW

CUSMA Implementation

On July 1, 2020, the (CUSMA) officially came into force, replacing the North American Free Trade Agreement (NAFTA). Signed in 2018, the desired effect of CUSMA is to preserve existing trade relations between the three North American countries, and to introduce modernized provisions that address 21st-century trade issues. In particular, the builds upon the legal framework of standards in North America for the protection and enforcement of IP rights.��

Regarding copyright and related rights, Canada is increasing the duration of its term for general copyright protection from 50 to 70 years following the life of the author. Canada will have a two-and-a-half-year transition period to realize this new measure. Additionally, the term of protection for performances and sound recordings will also increase from 70 to 75 years plus life. CUSMA will also increase protection for Rights Management Information (RMI), also known as digital watermarks. While Canada already imposes criminal remedies for altering or removing Technological Protection Measures (TPMs, or digital locks), the Agreement creates new criminal remedies for circumventing RMI. Organizations will have to be mindful when implementing these new provisions to ensure that their practices align with CUSMA’s new obligations.

Canadian Copyright Case Law

�첥��Ƶ v The Canadian Copyright Licensing Agency, 2020 FCA 77

On April 22, 2020, the regarding a dispute between �첥��Ƶ (“York”) and The Canadian Copyright Licensing Agency (“Access Copyright”), holding that the tariffs set against York by the Copyright Board are not mandatory, but dismissed York’s counterclaim regarding the fair dealing guidelines. Access Copyright had sued York for non-payment of tariffs, arguing that they are mandatory and enforceable against anyone who infringes upon a copyright owner’s exclusive rights. Following this decision, both parties filed for leave to appeal the FCA decision to the Supreme Court of Canada.

Tariffs
The FCA held that the tariffs set by the Copyright Board are not mandatory. Because York opted out of the tariffs in 2010, they are not enforceable against York. On this issue, the FCA stated, “Acts of infringement do not turn infringers into licensees so as to make them liable for the payment of royalties. Infringers are subject to an action for infringement and liability for damages but only at the instance of the copyright owner, its assignee or exclusive licensee.”

Fair Dealing
York argued that it was not accountable for any tariffs associated with the reproduction of materials because they met their “” and therefore constituted fair dealing pursuant to section 29 of . On this issue, the FCA found that the Federal Court made no palpable error in its analysis, concluding that even though copying followed the guidelines, this did not necessarily make it a fair dealing.

Continuing into 2021
On October 15, 2020, the Supreme Court of Canada granted leave to appeal. This eagerly anticipated decision will affect many of Canada’s educational institutions who opted out of paying tariffs and have also followed the Fair Dealing Guidelines discussed in this decision. Further, a Supreme Court decision in York’s favour will surely cause businesses who rely on similar tariffs to rethink their business model.

Wiseau Studio, LLC et al. v. Harper et al., 2020 ONSC 2504

On April 23, 2020, Justice Paul Schabas’ released his decision in the case of . Filmmaker Tommy Wiseau brought a claim against the defendants, alleging that their documentary, Room Full of Spoons, about Wiseau’s film, The Room, breached his copyright. In his reasons, Justice Schabas provides artists in Canada with an authoritative statement defining documentaries an allowable purpose under the Copyright Act’s fair dealing provisions, “to the extent that a documentary uses copyrighted material for the purposes of criticism, review or news reporting.”

The decision affirms fair dealing as a user’s right, as opposed to a defense to the copyright infringement alleged by the plaintiff, solidifying the balancing of rights and freedoms as a core purpose of the Canadian Copyright Act. In addressing the Copyright Act’s fair dealing provisions, the Court offers useful guidance to documentary filmmakers wishing to stay on-side with section 29 through an analysis of the factors outlined in . A more in-depth discussion can be found . As well, Justice Schabas’ reasons address the Copyright Act’s moral rights provisions, fundamentally finding that criticism or negative tones alone will not trigger a breach of an author’s right to the integrity of a work.

Entertainment Software Association v. Society of Composers, Authors and Music Publishers of Canada 2020 FCA 100 & CMRRA-SODRAC Inc. v. Apple Canada Inc., 2020 FCA 101

On June 5, 2020, the Federal Court of Appeal released two decisions (2020 FCA 100 and 2020 FCA 101) which ruled on the applicability of the “making available right” (“MAR”) under s. s.2.4(1.1) of the Copyright Act. The FCA found that songwriters are not entitled to royalties when music is first posted online, but only after it has been downloaded. This decision overturns a 2017 ruling from the Copyright Board, which found that composers and songwriters are entitled to two royalties: first when it is made available under a streaming platform such as Apple Music or Spotify, and second when the song is downloaded or streamed.

By way of background, The Society of Composers, Authors and Music Publishers of Canada (“SOCAN”) administers the right to “communicate” musical works on behalf of copyright owners. It filed with the Copyright Board proposed tariffs for certain years for the communication to the public by telecommunication of works in its repertoire through online music services including Apple Music and Spotify. These tariffs are available when a musical work is “communicated.”

After SOCAN had filed its proposed tariffs, the Copyright Act was amended to include the MAR Provision, which reads as follows:

For the purposes of this Act, communication of a work or other subject-matter to the public by telecommunication includes making it available to the public by telecommunication in a way that allows a member of the public to have access to it from a place and at a time individually chosen by that member of the public.

This raised the question of whether the mere making available of a work on a server for the purpose of later streaming or download by the public was a “communication” for which a tariff was payable. In 2017, the Copyright Board concluded on the basis of expert witnesses that the double royalty scheme is available.

Stratas J, writing for the FCA, overturned this conclusion and stated that the Copyright Board "skewed its analysis in favour of one particular result" and relied on "leaps of reasoning" that are incompatible with the precedent set out in the Supreme Court of Canada’s (SCC) 2012 Entertainment Software Association v. Society of Composers, Authors and Music Publishers of Canada decision. In that decision, the SCC concluded that transmission over the Internet of a musical work that results in a download of that work is not a communication.

PATENT LAW��

The Impact of COVID-19 Legislation on the Patent Act and Patentee Rights

(“An Act respecting certain measures in response to COVID-19”) received Royal Assent on March 25, 2020.�� Included in this bill was the addition of section 19.4 to the which significantly changed the rights of patent owners this year. For instance, while section 19.4 allowed the to authorize the government’s use of previously patented inventions to respond to a public health emergency, the Commissioner’s new powers permitted authorization to be granted to other entities as well. In addition, there was no requirement for applicants (be they the government or otherwise) to inform the patentee in advance of applying for authorization to use its patent. This meant that patentees received no notice if an applicant applied to use its intellectual property. Instead, patentees only received notice if the Commissioner granted authorization to the applicant following their submission. Moreover, section 19.4 precluded patentees to an express right of appeal of the Commissioner’s authorization. Instead, patentees were left to rely on section 19.4(8) of the Act and had to apply to the Federal Court to prevent the government (or any applicant) from “making, constructing, using or selling the patented invention in a manner that [was] inconsistent with the authorization.”

While patentees seemingly received little benefit from the Patent Act's amendments mentioned above, the legislative changes offered some positive developments for patent owners. For example, pursuant to s.19.4(5), holders of the patent are compensated for government use, “taking into account the economic value of ‘the authorization and the extent to which they make, construct, use and sell the patented invention.’” Additionally, as of September 30, 2020, the Commissioner can no longer award the government with any authorizations, which effectively serves as an imposed limit on the Commissioner’s powers. While COVID-19 may arguably be captured by other provisions of the Patent Act (cf. s. 19 or s. 21), s. 19.4 clarifies the boundaries of government uses of patents for public health emergencies.��

CIPO Issues New Guidance Document After Federal Court Rejects Problem-Solution Approach to Claim Construction

Following the 2020 Federal Court decision in , CIPO released a new to clarify patentable subject matter under the Patent Act. The court, and CIPO, endorsed the purposive construction approach to constructing claims set out in 2000 by the SCC in and . The new guidelines cover the framework to be followed by patent examiners while identifying certain elements of patent claims as essential. CIPO’s earlier pointed at undertaking claim analysis, which involved identifying the “proposed problem to the disclosed solution.” The Federal Court in Choueifaty clarified this problem-solution test as incorrect for claim construction.

The Federal Court held that a correct approach looks at the entirety of the specification and presumes an element as essential unless demonstrated to the contrary. Purposive construction attempts to give effect to the intentions of the applicant in determining the scope of the claimed monopoly.

This is particularly important for computer-implemented inventions. CIPO, in the , clarified that an algorithm that improves the functioning of the computer would constitute a single invention and is patentable subject-matter. However, the mere use of a computer to execute an algorithm remains nonpatentable subject-matter under subsection 27(8) of the . This update has brought much needed clarity to the subject matter eligibility issues in computer-related patents.

TRADEMARK LAW

Claims to Official Marks not a Complete Defence to an Infringement Claim��

In February 2020, the Federal Court of Appeal upheld the Federal Court’s decision in , finding that public authorities cannot rely on relating to official marks as a complete defence against an infringement claim. At its most basic level, official marks allow public authorities to , even those that may not otherwise be registered as regular trademarks. Quality Program Services Inc. (QPS) brought a Federal Court claim against the Ministry of Energy (MOE) for infringing their “EMPOWER ME” trademark related to energy awareness, conservation, and efficiency services. The MOE had launched a website with the mark “emPOWERme” to educate Ontario residents about the province’s electricity system. In response to QPS’s claim, the MOE sought protection and public recognition of its mark as an official mark pursuant to which states that “no person shall adopt in connection with a business, as a trademark or otherwise, any mark consisting of, or so nearly resembling as to be likely to be mistaken for… any badge, crest, emblem or mark…adopted and used by any public authority, in Canada as an official mark for goods or services.”

However, the Federal Court was not persuaded that s. 9 provided the MOE complete immunity from an infringement claim. Instead, it was recognized that the infringement rights of a trademark holder, such as QPS under , could not be ignored simply because a public authority has been given public notice of its adoption and use of an official mark, especially when that mark follows a registered trademark which could cause confusion between the two marks, as was the case here. The Federal Court of Appeal further that “a public authority that chooses to use a mark that is confusing to a registered trademark does so at its peril.” As a result of this case, we get more clarity and limitations to the confusing and all-encompassing world of official marks. While it is clear that official marks following an existing trademark do not automatically strike down an infringement claim, the official mark and the preceding trademark must be similar in some way to set off a trademark confusion analysis.

Lack of Use is Insufficient for Opposing a Trademark Application

In , the Federal Court affirmed the Registrar’s decision to reject Pentastar Transport Ltd’s opposition to Fiat Chrysler Automobiles (FCA) US’s trademark application for Pentastar. Pentastar Transport Ltd owns a registered mark Pentastar for its oil and gas services, whereas FCA US applied to register Pentastar for its vehicle engines. Pentastar’s ground of opposition is that FCA US did not possess a genuine intention to use Pentastar for its engines, which contravened s. 30(e) of the old Trade-Marks Act. As summarized��, “opposition proceedings involve a two stage inquiry. First, the opponent bears an evidential burden to establish that the facts alleged to support the issue exist. If established, then the applicant bears a legal burden to show that its application does not contravene the provisions of the Act as alleged.” The Court upheld the Registrar’s factual finding that Pentastar did not adduce sufficient evidence as the factual ground of its opposition. The Court also agreed with the Registrar that “use” and “intended to use” were not synonymous. In this case, this ruling entails that even though FCA US had not started using Pentastar as a trademark on its engines, it did not follow that FCA US had no intention to use it in the future. In fact, there was circumstantial evidence (as summarized��) indicating that FCA US indeed harbored the intention to use Pentastar as a mark for its engines.

United States Supreme Court Developments

In April 2020, the United States Supreme Court decided the case . The Court determined that even an innocent trademark infringer could lose its profits and that wilful infringement is not a pre-condition to a profits award. The Court came to this determination by interpreting which does not mention the condition of wilful infringement. Fossil was liable for $6.7 million in profits to Romag, for using counterfeit Romag fasteners in its manufacturing of leather goods.

In June 2020, the Court in held that a term styled “generic.com” is a generic name for a class of goods or services only if the term has that meaning to consumers. Booking.com sought to register a mark with the USPTO but was denied because “Booking.com” was not a generic name to consumers. Therefore, the term was not held to be generic. The USPTO analyzed the terms “Booking” and “.com” separately. This decision suggests that domain names may need to be marketed to consumers as such to be trademarked.

Trademark Law and Sports in 2020

With all its troubles, 2020 has also been an eventful year for trademark lawyers in sports. In February, a Maryland-based nonprofit Game Plan��against Lebron James and his commercial associates, including Nike, ESPN, and Take-Two Interactive. Game Plan claims that Lebron and his associates had encroached upon its trademark rights by unauthorized use of the registered slogan “I am more than an athlete” to make profits. In April 2020, Michael Jordan��in China that had dragged on for eight years. China’s highest court ruled in favor of Jordan against a Chinese company which had been marketing its sports products under the brand name Qiaodan - a Chinese transliteration of Jordan - since the 1980s.

In September, soccer superstar Leo Messi’s legal team��Europe’s highest court that Messi should be granted the exclusive right to the brand name Messi. Other similar names, such as “Massi,” should be disallowed for commercial purposes to avoid confusing the consumers. Lastly, although the Washington Football Team (formerly, Washington Redskins) changed its name in 2020, it now runs into��. As it turns out, many alternative team names have already been registered by a trademark squatter Martin McCaulay. Washington fans may need to wish for the new year that their team will receive a new name that neither infracts trademark law nor carries racist connotations.

Fashion Trends Followed by Brand Owners throughout the Pandemic��

As it is said, every crisis brings new opportunities. While some members of the general public may have doctor-recommended masks in the early months of the pandemic, they have become a trend for upcoming years. As a result of this trend, big luxury brands tapped into this unchartered territory just after the�� in July. Luxury fashion companies are now monetizing their brand value through this��i.e., face masks and shields, which have become the new reality and necessity of everyday life. Fashion brands like��have already filed applications for their trademarks in classes 9 and 10 with the USPTO and other countries for “Protective” and “Respiratory Masks.” In September,��for its uniquely styled��Toile Monogram print for its��Face Shield, filed for��“protective face shields; protective masks; protective chin shields; [and] protective gloves” (class 9), and “face masks for medical use; Surgical masks; protective face shields for medical use; protective chin shields for medical use; [and] gloves for medical use” (class 10).��

On the other hand, , Nike, and��masks also lead the charts of most searched and purchased masks.��Small and high street brands are attempting to claim proprietary rights in these trademark classes because of the long-term monetary potential. The new fashion ornament brings in value, and the brand owners wish to benefit from damages in infringement and counterfeits cases. Counterfeits are also escalating on e-commerce portals, such as��. A Chinese company has filed a trademark infringement suit for its brand��in the Illinois state. Furthermore, on December 14, 2020 the��announced an initiative to accept expediated examination requests for trademark applications for COVID-19 related goods and services, which include sanitary masks and other things. In view of this, we can predict an��from such luxury and burgeoning fashion brands.��

Bricks and Mortar Presence No Longer Necessary to Establish Use of a Trademark

In the past, the Federal Court of Canada has been unclear as to the fate of travel-related services that do not have a physical presence in Canada, but seek to maintain their Canadian trademark registration through regular use. However, following the Federal Court of Appeal’s decision in , that fate has been clarified in favour of travel-related services. Since 2014, Miller Thompson has tried to expunge Hilton’s WALDORF ASTORIA trademark given that it did not offer physical WALDORF ASTORIA hotel-related services in Canada. As such, Miller Thomson commenced proceedings under s.45 of the Trademarks Act, which would require Hilton to show use of its WALDORF ASTORIA trademark during the three years prior to the proceedings, known as the Relevant Period.

But, on September 9, 2020, the Court of Appeal upheld the Federal Court’s decision that Hilton had demonstrated use of their WALDORF ASTORIA trademark during the Relevant Period. Among other evidence presented by Hilton, during the Relevant Period, Canadians could see the WALDORF ASTORIA trademark when visiting their website and could book reservations in several ways, including directly on the site. As well, Canadians generated $50 million in revenue for Hilton as a result of their stays at WALDORF ASTORIA hotels outside of Canada. Thus, the Court of Appeal summed up the as follows: “so long as consumers, purchasers, or members of the public in Canada receive a material benefit from the activity at issue, it is a service.” This means that online reservations and payment services for later stays outside of Canada are included under the meaning of “hotel services.” Furthermore, a brick and mortar hotel is no longer absolutely necessary to establish use. In fact, in the Court of Appeal’s conclusion, it stated that “the requirements for ‘use’ under section 45 of the Act must adapt to accord with 21st century commercial practices.” For other trademark owners facing the same issue as Hilton, the Federal Court of Appeal provided guidance on how to make a , including website metrics showing that Canadians access their services online and subsequently purchase services as a consequence of their mark being displayed.

Trademark Modernization Act of 2020 Passed

On December 21, 2020, Congress passed the . This bill was enacted to amend the 1946 Trademark Act and authorized third parties "." The bill also introduced a��that would allow any party to petition for the expungement of a registered trademark that is not commercially active. The goal of these amendments was to reduce the number of “” that were on the register despite not being in use, allowing a more productive, competitive commercial trademark market. These amendments are also speculated to affect the longevity of trademark registrations as trademarks become increasingly vulnerable to cancellation. The Trademark Modernization Act of 2020 will certainly continue to generate more discussion and result in changing practices in Canada.

Giuseppina (Pina) D’Agostino is��the Founder & Director of IP Osgoode, the IP Intensive Program, and the IP Innovation Clinic, the Editor-in-Chief for the IPilogue and the Intellectual Property Journal, and an Associate Professor at Osgoode Hall Law School.

With contributions from IPilogue Editors:

Copyright:��Meghan Carlin, Emily Xiang, Joaquin Arias, Sarah Raja,��Saumia Ganeshamoorthy

Patents:��Dan Choi, Gurbir Sidhu,��Khristoff Browning, Jin Xu,��Madelaine Lynch

Trademarks:��Adele Zhang, Aishwerya Kansal,��Jingcai Ying, Eloise Somera, Lauren Chan

Bonnie Hassanzadeh, Nikita Munjal, Sebastian Beck-Watt, and Alessia Monastero

The post 2020 IP Year In Review appeared first on IPOsgoode.

IP Year in Review 2018 – A Milestone Year for IP Osgoode and Ground-breaking Changes in the Canadian IP landscape

ccraig — Thu, 31 Jan 2019 13:00:09 +0000

As we settle into 2019, we look forward to topping the successes of the last year! Ten years ago IP Osgoode, Osgoode’s flagship Intellectual Property Law and Technology Program, was launched with the dream of creating a vibrant community to engage in balanced and objective research, and offer new and unexplored viewpoints to public policy discussions which are inclusive of the opinions and interests of a broad range of stakeholders. On the special occasion of IP Osgoode’s 10th anniversary we thank all those who had a hand in making our dream a reality and building IP Osgoode to be one of the top IP and technology programs in the world. A community is only as strong as its members. Thank you to all our members for supporting us, we could not have done it without you. Here’s to another 10 years for creativity and innovation!

2018 was also a celebratory year for Prof. David Vaver. To honour Prof. David’s Vaver’s double induction into the Order of Canada in 2017 and as a Fellow to the Royal Society of Canada in 2018, IP Osgoode released a . The video features many experts, colleagues and mentees and friends from around the world who participated in the symposium we organized in his honour to showcase his important contributions and leadership in intellectual property law. And to close the year, we edited a of the in his honour! Some must read gems include contributions from The Hon. Marshall Rothstein, The Hon. Roger T. Hughes and Justice Michael Manson.

On the wider IP front, 2018 also marked the year the Government of Canada finally recognized the importance of IP legal clinics in the country’s innovation ecosystem in its . The recognition of IP clinics that enable law students to learn more about IP, help businesses get a sense of their IP needs and facilitate access to the profession that can provide quality IP advice is very much in line with the objectives of the Innovation Clinic. Founded in 2010, the Innovation Clinic was the first IP legal clinic of its kind, operating in partnership with an established accelerator and an international law firm. Eight years later, the Innovation Clinic has become the largest IP legal clinic operating in Canada and provides important IP information, awareness, and assistance for our clients as well as crucial experiential learning experiences for Osgoode Hall Law School students.

To meet increasing demands for services, the Innovation Clinic has built on its successful partnership with , which began in 2016, and in 2018 also partnered with . Lawyers at both firms volunteer their valuable time to supervise our law student volunteers as they assist start-ups, entrepreneurs, and inventors across Southern Ontario.

At the end of 2018, I completed my research project on IP legal clinics in Canada, which was funded by the at the (CIGI) and will soon be released. The report underscores the importance of supporting IP legal clinics operated by Canadian law schools. Universities, law schools, and law professors can play a pivotal role in addressing the IP education and innovation gaps in Canada. Crucially, IP legal clinics work to fill gaps in the broader innovation ecosystem while offering students practical, hands-on experience in IP and related business law matters. Underscoring some of these issues, I published an article on the and the , entitled “How the IP Strategy Could Transform Canadian Innovation.” We look forward to publishing the report and continuing further dialogue among law schools, industry, law societies, the Canadian Intellectual Property Office (CIPO), levels of government, and other relevant stakeholders regarding the creation of a network of IP law clinics across Canada.

IP Year in Review 2017 - A Year of Promises Made, Kept, and Abandoned

ccraig — Thu, 25 Jan 2018 20:44:14 +0000

This past year marks a year where the Government of Canada engaged more than ever on the IP front. The Government of Canada’s announcement of a National IP Strategy was welcome news for those interested in leveraging Canada’s intangible capital. As on The Agenda with Steve Paikin, it was a “hallelujah” moment for me! As promised, the Government undertook for the IP strategy, which we expect will be released this year. The Government of Canada also to the patent and trademark regimes as part of the Comprehensive Economic and Trade Agreement (CETA) between Canada and the European Union. The Ministers of Innovation, Science and Economic Development, and Canadian Heritage also fulfilled the statutory review obligations of the Copyright Act, in December.

The Supreme Court of Canada dealt a strong blow to the so-called promise doctrine and made international precedent when it ordered Google to de-index infringing websites across the global Internet. These and the other developments noted below pave the way for an IP-busy 2018 as we await the release of the National IP Strategy, which will hopefully set the stage for Canadian advancements and benefits from emerging technologies and business practices. Here at IP Osgoode, we are set to examine the promise and challenges associated with one of these important technology areas: artificial intelligence (AI). On February 2, 2018, our AI conference, “Bracing for Impact: The Artificial Intelligence Challenge”, will feature internationally renowned AI experts from Canada and abroad. For more information and registration, visit .

We hope you can take part in our AI conference as well as our regular suite of exciting activities and initiatives as 2018 gets further underway!

PATENTS

The patent law landscape experienced incremental changes and some profound shifts that seemed to mimic the changes of the seasons here in Canada during 2017.

It’s All About the Money

The year kicked off with a chilling warning to Non-Practicing Entities (NPEs) seeking to protect patent rights through litigation. NPEs commencing patent infringement actions “without a clear theory of infringement” may be sanctioned with for disregarding the “serious cost consequences [following from] allegations shown to be unwarranted”. In , the Federal Court of Canada was satisfied that the defendant’s activities were non-infringing; and because the plaintiffs “should have known that Bell did not infringe”, they were ordered to pay solicitor-client costs.

The Federal Court of Appeal reminded us in February that in “an extremely complex patent case involving [...] 22 allegations of invalidity, 33 days of discovery, 32 days of trial, written submission exceeding 700 pages, and the closing argument lasting three days”.

The Federal Court of Appeal also decided on profit recovery for infringing activities. In , the Court highlighted that the differential profit approach of recovery is to “ensure that a patentee only receives that portion of the infringer’s profit that is causally attributable to the invention”. Accordingly, the Court asserted that it is as the actual value of the “patent lies in the ability of the patentee to exclude competitors and competition” .

The Season of New Life and Law

In the UK, the beginning of spring was marked with a UK Patent Court decision on the interplay between IP and Competition Law. In , the court tackled issues involving standard-essential patents (SEPs), as well as the (FRAND) principles applicable to licensing agreements between patentees and licensees. In particular, the UK Court explained that the requirement to commit to FRAND terms in a SEP licence serves the public interest insofar as it spurs “the best and most up-to-date technical” standards to be set and inventors to “obtain a fair reward for their invention”. While Canadian jurisprudence is yet to develop on what negotiations are FRAND and what are not, the guidelines forecast issues that industries might face on this matter.

Shortly after, the Federal Court of Canada released its , which aimed at developing efficient, expedient, and proportional use of court time. A rundown of the particularly noteworthy protocols to streamline trials and court’s resources is available .

The spring also ushered in a as the Comprehensive Economic and Trade Agreement (CETA) between Canada and the European Union received Royal Assent on the 16^th of May []. It is important to note that CETA listed the ICSID tribunal as the main recourse for disputes. on how this may affect the IP environment domestically suggests that the ICSID’s unappealable decisions could be a new problem for Canada, absent the requirement of certification in domestic courts. So, in addition to CETA’s implications toward patent term restoration, appeals under NOC regulations, and the potential end of dual litigation — see general outline and significance for pharmaceutical patent protection — further developments stemming from the tribunal jurisdiction are anticipated for the new year.

The last development of the season provided an important lesson from a business perspective regarding IP transfer agreements. In , poor management of IP rights and poorly conceived transfer agreements proved to be a hindrance to enforceability. The Federal Court also delivered an important lesson around patent infringement when it announced the Public Judgement and Reasons in , awarding Dow Chemical the largest patent infringement monetary award in Canadian history: $644,623,550 and pre-judgement interest.

Utility, Enforceability, and NOCs

Two hot-button issues from the Supreme Court of Canada heated up the start of the summer. One involved the decision that did away with the Promise Doctrine, and the other pertained to a global takedown order imposed on an online intermediary (Google) that may change the future of IP enforcement.

In the first, , the Court effectively abolished the Promise Doctrine on utility. , all explicit promises of utility made by a patentee had to be fulfilled for the patent to be valid. The Court nonetheless deemed this requirement “unsound” and “not good law”. For the Court, “depriv[ing] such an invention of patent protection if even one ‘promised’ use is not soundly predicted or demonstrated is punitive and has no basis in the Act”. So, in bringing the common-law more into accord with the requirements for patentability, the Court revamped , requiring that the patentees demonstrate, essentially, what the subject-matter of the invention is, and how it is useful in serving a practical purpose.

The second case, , played an important role in increasing IP enforcement outreach in the Internet era. It provides the courts with a more effective measure to protect IP rights. Specifically, the precedent allows an IP owner to obtain a court order against search engines — such as Google in this case — for the removal, on a global scale, of search results (websites) that facilitate infringement of IP rights. It will be interesting to observe whether or not this decision affecting online intermediaries such as Google will to address the problem of unreachable wrongdoers, or will conversely be deemed a to non-infringing actors that are a .

The end of summer featured the ’s proposed amendments to the Notice of Compliance (NOC) Regulations. The amendments seek to update the pharmaceutical patent litigation regime in Canada, enabling Canada to . A discussion of the most significant changes to Canada’s NOC Regulations can be found . The changes will apply to proceedings in which Notices of Allegation (NOAs) were served on or after September 21, 2017 — the date of the NOC Regulations.

Promptly after, the Federal Court released its for actions under the amended NOC Regulations to promote efficiency in light of the strict timelines — 24-month timeframe for a proceeding to be completed and a decision rendered — imposed by the . The guidelines set out procedural rules to be observed for proceedings under the amended NOC Regulations. Some key points worthwhile to look at were outlined .

A Not-So-Obvious Future

Lastly, the winter months saw an of the Canadian law of obviousness. In , the Federal Court of Appeal deemed the “inventive concept” set out in the case an “unnecessary satellite debate” in the analysis of obviousness. After being over the years — see , — the current test for obviousness seems to place emphasis on the as a , at least until a clearer definition of the “inventive concept” is developed by the Supreme Court.

TRADEMARKS

2017 saw a number of notable Canadian court decisions in the realm of trademark law. Outside of the courts, other developments will also shape the IP landscape going forward.

Consumer Criticism Gets a Bit Riskier

In a case dealing with consumer criticism of a brand - - the Federal Court returned a decision favourable to brand-owners. The plaintiff, United Airlines, sued the defendant, Jeremy Cooperstock, for trademark and copyright infringement, depreciation of goodwill, and passing off, over his “gripe site” . The court characterized the website as a “consumer criticism website where visitors can find information on the Plaintiff, submit complaints about the Plaintiff, and read complaints about the Plaintiff dating back to 1998 in the database of complaints.” The website included an .

Justice Phelan held that Cooperstock provided “services” through the website and that the marks were “being used or displayed in the advertising or performance of services pursuant to s 4(2) of the Trade-marks Act.” He also found that there was a likelihood of confusion. As a result, the defendant was found to have infringed s. 20(1)(a).

The defendant was also found liable for passing off: the court found significant goodwill attached to the United marks, that there was confusion and the likelihood of confusion, and that the plaintiff�� suffered damages or was likely to suffer potential damages.

The court held that Cooperstock “intentionally attempted to attract the Plaintiff’s online consumers to his own website for notoriety” and therefore depreciated the goodwill associated with the United marks, contrary to s. 22. Of note, the Defendant was also found to have infringed copyright in the marks and Justice Phelan dismissed the fair dealing defence of parody.

Whereas previous decisions such as Michelin v. Canadian Auto Workers and��BCAA et al. v. Office and Professional Employees’ Int. Union et al., had held that trademark owners’ rights to control the use of their mark in the context of criticism were limited, the United case demonstrates that brand critics must be careful in their use of brands’ logos and trademarks. While , “[i]n this case, the Defendant sailed too close to the wind – and he was put up on the rocks.”

Why Seek an Injunction Anywhere Else?

In , the plaintiff Sleep Country was successful in its motion for an interlocutory injunction. Sleep Country sought to restrain Sears from using the slogan “THERE IS NO REASON TO BUY A MATTRESS ANYWHERE ELSE”, which it argued was confusing with its own slogan “WHY BUY A MATTRESS ANYWHERE ELSE?” Sleep Country alleged that Sears’ use of the slogan was causing harm to Sleep Country as “a result of confusion between the two slogans, as well as depreciation of the goodwill and loss of distinctiveness of Sleep Country's registered trade-marks.”

The court considered the tripartite RJR-MacDonald test for issuing such an injunction: a serious issue has been raised, the party seeking the injunction will suffer irreparable harm if the injunction is not granted, and the balance of convenience favours the seeking party. The key issue on the motion was irreparable harm, which the court found was established by Sleep Country’s “concrete and non-speculative evidence.” Justice Kane held that lost sales, loss of distinctiveness, and depreciation of value of the slogan would lead to irreparable harm, and that the harm could not easily be quantified. The balance of convenience was also found to favour Sleep Country.

It has traditionally been quite difficult for trademark owners to obtain interlocutory injunctions. The Sleep Country case indicates that the courts may be relaxing the onus on trademark owners to prove irreparable harm, particularly in cases where confusion is quite apparent.

Notably, the Quebec Superior Court in denied the plaintiff a similar injunction because “the Court cannot come to the conclusion that it is clear that the use by Cascades new Fluff trademark will cause confusion with the Royale trademarks.” Irving dealt with the allegation that Cascades’ fluffy bunny was confusing with Irving’s furry Royale kittens. The court concluded that “the use of white furry animals is not unique to the packaging for living's products” and that any harm would be quantifiable. Contrasted with Sleep Country, in which it was held that any harm would be too difficult to quantify, Irving shows that it may still be difficult for trademark owners to obtain interlocutory injunctions.

Injunctions Go Global

In a case that dealt with trade secrets and passing off, , the Supreme Court affirmed the effectiveness of an extra-territorial injunction granted by the lower courts. The issue on appeal was “whether Google can be ordered, pending a trial, to globally de-index the websites of a company which, in breach of several court orders, is using those websites to unlawfully sell the intellectual property of another company.”

The court concluded that the injunction was the only way to mitigate the harm to Equustek pending the resolution of the underlying litigation. The case therefore stands for the availability of an extra-territorial injunction as an equitable remedy in Canadian courts: “Where it is necessary to ensure the injunction’s effectiveness, a court can grant an injunction enjoining conduct anywhere in the world.”

Among the other trademark cases decided by Canadian courts this year, and are of particular interest.�� In Travelway, the Federal Court of Appeal held that owning a registered mark is not a complete defence to infringement – the respondent’s registered mark was held to infringe that of the applicant’s. In Diageo, the Federal Court held that Heaven Hill’s Admiral Nelson rum products infringed Diageo’s registered Captain Morgan marks. The court considered the plaintiff and defendant’s trade dress and found the Captain Morgan trade dress to be a distinguishing guise and therefore enforceable under the Trade-marks Act. The court also found that the goodwill associated with the Captain Morgan mark had been depreciated.

Other Changes to Trademark Law

Canada’s updated Trademarks Act is set to come into force in early 2019. In June 2017, the the first draft of the new Trademark Regulations. Comments were accepted until July 21, 2017 and will be taken into consideration when revising the draft regulations. Among the notable changes coming in 2019 are Canada’s accession to the Madrid Protocol, the Singapore Treaty, and the Nice Agreement and its classification system. Also significant will be the removal of the use requirement at the time of registration.

COPYRIGHT

2017 continued many of the debates and cases started from the previous year. While some decisions received accolades, others received outright criticism. As was the case in 2016, fair dealing questions came to the fore and hit close to home at �첥��Ƶ.

Fear Dealing and Post-Secondary Education

In a much anticipated decision, the Federal Court ruled against �첥��Ƶ in and directed the university to pay an interim tariff to Access Copyright. In 2011, �첥��Ƶ opted out of the Access Copyright licence due to increasing tariffs and implemented its own copyright guidelines. Crucially, the �첥��Ƶ guidelines allowed students enrolled in a class or course to receive a single copy through a coursepack or via a posting on an online learning management system if the copying was done in accordance with “fair dealing”. However, the Federal Court held that �첥��Ƶ did not have any right to opt-out of tariffs and that the university’s guidelines were arbitrary and not compliant with section 29 of the . Among other things, the guidelines operated under the assumption that the use of 10% of a copyright-protected work was “fair dealing” but did not provide an explanation. Quantitatively, this threshold might seem to restrict copying of an entire text. But, as , qualitatively, the parts copied may constitute the “core” of the work, making such use “unfair,” and conceivably allow for the reproduction of the entirety of a work if multiple sections are used across courses and faculties. Further, the court emphasised the school’s failure to comply with the guidelines and therefore, enforced the interim tariff. the inclusion of “education” as a fair dealing purpose played little role in this decision. While much attention on the case framed the important issues with respect to fair dealing, note that the case was not about copyright infringement, but rather whether tariffs imposed by the Copyright Board of Canada are mandatory for post-secondary institutions that use copyright-protected material licensed by Access Copyright. �첥��Ƶ indicates it will the decision so these questions will continue in 2018 and beyond.

Anti-Circumvention and Technological Protection Measures

Setting precedent in 2017, in the Federal Court applied substantive rules on the anti-circumvention of technological protection measures (TPMs), which were introduced in the Copyright Act 2012. The Federal Court expressed its willingness to enforce the TPMs and protect against circumvention in the digital age. The case involved a corporation named Go Cyber shopping (2005) Ltd., which sold and installed circumventing devices enabling users to play potentially hundreds The Federal Court in the suit filed by Nintendo, awarded $12.7 Million as damages and held that Go Cyber “authorized” copying by providing instructions to download header data without the consent of Nintendo constituting infringement. suggests that by adopting “a broad interpretation of a technological protection measure”, the court confirmed Canadian copyright law’s tough stance on copyright piracy.

Obligations of Internet Service Providers

The ongoing conflict between reached the Supreme Court after the decision of the Federal Court of Appeal (FCA) in 2017. Rogers filed before the Supreme Court to consider the scope of the Internet service provider’s (ISP) obligations under the notice and notice system. The FCA ruled that ISPs can disclose the alleged offender’s identity for free. The decision surprised the industry because it would be easier for copyright holders to that they come to financial settlements.

Data protections

Affirming the trial court’s ruling on the copyright protection of seismic data, the appeal in the Alberta case of was dismissed and appeal by GSI to the Supreme Court was denied. On Appeal, GSI argued that Section 101 of should be interpreted properly. , “The correct interpretation of "disclose" also confers on these Boards the legal right to grant to others both access and opportunity to copy and re-copy all materials acquired from GSI and collected under the Regulatory Regime”.

This decision will ensure copyright protection of seismic data by simultaneously providing a framework to access it.

Canadian content and Copyright-related Reviews

In 2017, the Federal Government also adopted initiatives to protect Canadian creators and introduced a policy framework to extend Canadian content worldwide. On September 28, Mélanie Joly, Minister of Canadian Heritage, announced Later in the year, on December 13, the Government officially announced the Parliamentary Review of the Copyright Act, as mandated by the 2012 Copyright Modernization Act.�� The government also to reform Copyright Board of Canada in August.

U.S. Developments

In the U.S., perhaps the biggest copyright case of 2017 was The case dealt with the issue of whether copyright could subsist in the “pictorial, graphic, or sculptural features” of a “design of a useful article” – in this case, cheerleading uniforms. Ultimately, the U.S. Supreme Court held that such design features as the arrangement of lines and shapes on cheerleading uniforms were eligible for copyright protection, so long as they were separable from the useful article in question. In other words, if the impugned designs were imagined in abstraction – say for example if they appeared on a canvass – and thus eligible for copyright protection, then they would be equally eligible for copyright protection as part of a useful article. Therefore, while copyright cannot protect the shape, cut, or dimensions of cheerleading uniform, those design features that are separable from the functional object may be eligible for copyright protection. And while such a holding is not entirely novel, the Star Athletica decision likely sets a valuable precedent for lower courts that have struggled with the extent to which copyright protects the design features of a functional object.

Fair use was also a hot topic in U.S. courts in 2017, with a variety of interesting outcomes in cases across creative media. In , a raunchy parody of the Dr. Seuss classic “How the Grinch Stole Christmas” was held to be the kind of transformative work that qualifies as fair use. Meanwhile, in , a U.S. district court judge held that unauthorized children’s versions – or “KinderGuides” – of classic books by Hemmingway, Kerouac, and the like did not constitute fair use, but rather infringing use. In music, Drake’s use of a spoken word sample from jazz artist James Oscar Smith was held to be fair use in , and in film, a Star Trek fan-fiction movie was held to be a derivative work and not fair use in .

Copyright Around the World

Internationally, toymaker Lego was successful for the first time in a against manufacturers in China of some near-identical toys. 2017 also saw China clearly establish its growing importance on the international copyright stage, with deals in the book industry and increasing pressure on to meet international standards with respect to copyright licensing. Meanwhile in the E.U., courts held that if they perform an essential role in facilitating piracy of copyright-protected material, and that the may constitute copyright infringement.

IP OSGOODE

In 2017, IP Osgoode celebrated one of our very own, , who has been a guiding force in the Canadian intellectual property (IP) landscape for the past 40 years.�� IP Osgoode and Osgoode Hall Law School hosted a special symposium entitled, “” in celebration of Prof. Vaver’s in recognition of “his leadership in intellectual property law as a scholar and mentor”.

The symposium included a distinguished set of participants drawn from Prof. Vaver’s network of former students, colleagues and research collaborators, and highlighted four main themes of Prof. Vaver’s extensive scholarship: overlap and redundancy in the IP system, legislation and reform, users’ rights, and the importance of history. The luncheon keynote speaker, The , CC,QC (Supreme Court of Canada, 2006 to 2015),�� who was introduced by The , QC (Federal Court of Canada, 2001 to 2016), provided a heartwarming speech that gave the audience a glimpse into Prof. Vaver’s early life and career.

To mark the year��Prof. Vaver��received the��Order of Canada, IP Osgoode medal. The medal will be awarded yearly to an Osgoode student in the graduating class who merits special recognition for outstanding achievements in the area of intellectual property law. The student’s achievements extend beyond academic excellence, and can include significant contributions to research in intellectual property and related areas or exceptional commitment and enthusiasm through their participation in intellectual property-related extra-curricular activities.

Following the previous year’s successful partnership with Norton Rose Fulbright LLP, the IP Osgoode Innovation Clinic continued to grow in 2017. On behalf of IP Osgoode, Professor D’Agostino entered into an exciting with the International Law Research Program at the Centre for International Governance Innovation (CIGI) to support the Innovation Clinic. The IP Osgoode-CIGI partnership stems from a mutual desire to facilitate the discovery, dissemination and application of new knowledge concerning practical IP law training of law students and the desire the to facilitate the provision of basic IP legal services to early stage innovators and start-ups. IP Osgoode hired Dr. as the first full-time Innovation Clinic Coordinator. The addition of a full time coordinator has allowed for a substantial increase of the Clinic’s carriage of client files and expanded the Innovation Clinic’s outreach beyond the �첥��Ƶ and Osgoode Hall communities as well as the Toronto and York Regions into the Waterloo Region and throughout Ontario.

The partnership also supports Prof. D’Agostino’s research project, which consists of a critical evaluation of the Innovation Clinic model as well as clinic models elsewhere, and identifying potential opportunities for developing a sustainable network of clinics in Canada and beyond. The research and report will further dialogues between industry, law schools, law societies, the Canadian Intellectual Property Office (CIPO), levels of government, and other relevant stakeholders regarding the creation of a network of IP law clinics across Canada. This work will be published in 2018 and help inform and support CIPO and federal government initiatives to increase IP awareness, accessibility, and education in Canada.

Top 10 most read 2017 IPilogue articles

Giuseppina D’Agostino is the Founder & Director of IP Osgoode, the IP Intensive Program, and the Innovation Clinic, the Editor-in-Chief for the IPilogue and the Intellectual Property Journal, and an Associate Professor at Osgoode Hall Law School.

With contributions from Stephen Cooley (IPilogue Editor & Osgoode JD Candidate) and Haramrit Kaur (IPilogue Editor and Osgoode Professional Development LLM (Canadian Common Law) Candidate) on Copyright, Sebastian Beck-Watt (IPilogue Senior Editor & Osgoode Graduate) on Trademarks, and Bruna Kalinoski (IPilogue Editor & Osgoode LLM Graduate) on Patents.

The post IP Year in Review 2017 - A Year of Promises Made, Kept, and Abandoned appeared first on IPOsgoode.

IP Year in Review 2015: A Look Back on the IP Stories That Will Shape 2016

ccraig — Thu, 28 Jan 2016 15:51:08 +0000

2015 was an eventful year in intellectual property (IP) law worldwide. Canada in particular saw a lot of activity across all three major areas of IP in both legislation and jurisprudence. Topping the IP news charts was the proposed ratification of the Trans-Pacific Partnership (TPP): a wide-ranging international deal negotiated by twelve nations, including Canada.

TRANS-PACIFIC PARTNERSHIP

The TPP has various domestic and global for IP, including providing stronger criminal penalties in all three areas of protection. After more than five years of secretive negotiation, the TPP was published on November 5, 2015, and Canada it on February 4, 2016 in Auckland, N.Z.

Two major copyright obligations are included in the : First, Article 18.63 will extend copyright term protection to life of the author + 70 years (from life of the author + 50 years) or to 70 years after publication or creation, in the case of corporate owned works. Second, Article 18.69 compels signatories to escalate digital rights management protection provisions. Patent law may see reform in the shape of term extension, through Articles 18.46 (“Patent Term Adjustment for Patent Office Delays”), and 18.48 (“Patent Term Adjustment for Unreasonable Curtailment”). Possible legislative changes to trademark law include the allowance of scent marks, and provisions that strengthen protection for “well-known” marks.

For Canada, the TPP has not come without controversy. on the TPP and there seems to be little .

COPYRIGHT

2015 was marked by a few—but very important—developments in copyright law, particularly in the music industry.

The 2015 federal budget brought in one of the most significant developments in Canadian copyright law. Just before leaving office, the Conservative government amended the Copyright Act by extending copyright term protection for sound recordings and performances from 50 to 70 years. While the music industry welcomed this extension, legal experts were left unsatisfied, finding few benefits to the��amendment.

Conversely, the "Happy Birthday" surely left at least one music label unsatisfied. On September 4^th, U.S. Federal judge George King held that Warner/Chappell does not own copyright over the ubiquitous birthday��song,��as the copyright registration obtained in 1935 only covered the piano arrangements based on the melody (which entered the public domain in 1949), not the lyrics themselves. A between the parties was later reached on December 9^th. Though details have yet to be released, it appears the song will fall��into the public domain once the settlement is finalized.

Another��controversial development in music-related copyright law this year was the American “Blurred Lines” . The case, opposing the Marvin Gaye estate and Robin Thicke and Pharrell, ended with a federal jury ruling that the song “Blurred Lines” did indeed infringe Gaye’s family copyright in the song “Got to Give It Up” (see IPilogue coverage ). By establishing that a rhythmic feel can comprise��the “substantial similarity” criteria, this ruling sets a very important precedent for determining the line between inspiration and copyright infringement in music industry. Many the chilling effect it could have on potential creations in pop music and on musical creativity as a whole. Pharrell and Thicke’s legal team have filed an , so this saga is to be continued.

This year,��the Supreme Court of Canada (“SCC”) provided some guidance concerning��the principle of technological neutrality, applying it to incidental copies made and used to facilitate broadcasting.��In the landmark decision , the SCC determined that such��copies’ use was irrelevant, and that as long as CBC made copies, it had to pay royalties.��Technological neutrality is a topic that for better or for worse has been hotly debated over the last few years and it seems that the SCC’s ruling in SODRAC has set the course for continued controversy over its meaning and application.

On another technological note, the U.S. Second Circuit Court, in , ruled that Google Books was indeed legal, re-establishing the limits of fair use. Judge Pierre Leval, who had developed a back in 1990, determined that Google Books’ display of limited text was not infringing, stating that the“purpose of the copying is highly transformative.” Judge Leval also reiterated the importance of fair use as a tool designed “to stimulate activity and progress in the arts for the intellectual enrichment of the public.” It is yet unclear what effect this decision will have on fair use and the balance of interests between authors and the public interest. The Authors Guild has officially to the Supreme Court of the United States (“SCOTUS”)

PATENTS

Canada

In two separate cases involving Eli Lily and Mylan Pharmaceuticals, the Federal Court applied its reformulated test for finding promises in patents. The contrast in decisions provides guidance as to what constitutes a promise and how important this determination is to patent law. In the ,��the Federal Court emphasized that a promise must be “clear and unambiguous” if it is to be the standard to which the utility of the invention described is to be measured against. A promise will not be found in references to potential advantages and/or avoidance disadvantages resulting from use of the invention. Justice de Montigny determined that Eli Lilly’s patent for the new use of a drug to treat erectile dysfunction promised only a treatment for erectile dysfunction. There was no clear and unambiguous promise for the absence of side effects or benefits of oral treatment to the drug.

A month later in the��, the Federal Court invalidated the patent in question for non-utility, focusing on “ambitious and explicit statements throughout the Patent”. The patent included the statements which were considered clear promises such as “…the product can be administered with clinically insignificant side effects” and “…the contraindication once believed necessary for a product containing a PDE5 inhibitor is unnecessary…”.

The Federal Court of Appeal released a judgement in July upholding an award of more than C$180 million in damages and interest for Apotex’s infringement of Merck’s Canadian lovastatin patent. In the��, the Court held that availability of a non-infringing alternative (NIA) is relevant under Canadian law—however, Apotex could not and would not have used such an alternative. The Court determined that since Apotex would have had to move its manufacturing back to Canada from China in order to produce non-infringing lovastatin, a process likely to take several weeks, it would not have been able to replace any of the infringing sales at the time each sale was made. Ultimately, the Court concluded that Apotex did not meet its burden to show it could have and would have replaced the infringing sales with its NIA.

, which includes legislation aimed at improving Canada’s IP framework by protecting confidential communication between inventors and their IP agents, received Royal Assent in June 2015. C-59 includes amendments to the��Patent Act��which provide clients with a statutory privilege for confidential communications with their patent and trademark agents. The privilege protects against the forced disclosure of these communications during any form of litigation. C-59’s privilege ��take effect in June 2016. C-59 also includes changes to��Patent Act��which provide the Canadian Intellectual Property Office (“CIPO”) with the authority to grant extension of time limits in unforeseen circumstances and make regulations respecting the correction of obvious errors.

United States

Early in 2015, SCOTUS issued a significant decision about standard of review in��. The court held that when reviewing a district court’s findings of fact made in the construction of patent claims, the appellate court must apply “clear error”, not “de novo”. It will be interesting to see how this case affects Canadian appellate courts which have historically viewed claim construction as a question of law, giving no deference to factual findings of trial judges. This year, the Federal Court of Appeal released its�� for a prohibition application involving Bayer and Cobalt which confirmed that under current Canadian jurisprudence, correctness is the proper standard of review for claim construction. The court concluded there were no grounds to set aside the application judge's construction. The Federal Court of Appeal went further, offering SCOTUS��guidance on the proper standard of review for future claim construction cases. It suggested that, since courts typically read a patent through the "eyes of an expert", it should apply the more deferential standard of palpable and overriding error where claim construction is based on expert evidence.

In��, SCOTUS ruled that a defendant's belief that a patent is invalid is not a defence to an induced infringement claim. The court stated that infringement and validity are separate matters, and although precedent established that liability for induced infringement required knowledge, that knowledge requirement does not extend to patent validity. Justice Kennedy, writing for the majority, stated that permitting a defence of good-faith belief in invalidity “would conflate the issues of infringement and validity.” Since patents are presumed valid, such a defence would significantly weaken the force of that presumption.

In��, SCOTUS declared that a contract for post-patent royalties was unlawful because it continued the patent monopoly beyond the 20 year patent period. At the time of patent expiration, an unrestricted right to make and use the article passes to the public. In following theprecedent in��Brulotte v. Thys��(1964), the Court emphasized the care it has placed on declining to enforce laws and contracts that restrict free public access to expired patents as well as unpatentable inventions.

Australia

In October, the High Court of Australia in��, unanimously held that an isolated nucleic acid coding for a BRCA1 protein, having specific variations indicative of susceptibility to breast and ovarian cancer, was not a “patentable invention”. of Australia’s��Patent Act 1990��requires that an invention be “a manner of manufacture” in order to be patentable. The High Court stated that, although the invention was the result of human action, the essential element of the product was the existence of information stored within relevant gene sequences. Allowing this invention to be patentable would extend the concept of manner of manufacture, considered to be inappropriate for judicial determination. The High Court's ruling is consistent with the 2103 American ruling that isolated DNA was non-patentable subject matter.

TRADEMARKS

2015 saw a number of significant developments in trademark law, as the field was shaped by both legislative changes, and significant judicial decisions. ’s proposed IP changes add a to Canada’s Trade-marks Act similar to those proposed for the Patent Act. The proposal makes communications between clients and their trademark agents privileged if such communication is (1) between the client and the agent; (2) intended to be confidential; and (3) made for the purpose of seeking or giving advice.

In 2015 began accepting trademark applications using the system. Nice Classifications standardize how wares and services are described on trademark applications, streamlining trademark searches on an international level. The adoption of the system will hopefully help Canadian businesses select the appropriate classifications for their goods and services and more easily find potentially confusing marks owned by competitors in their industries in various jurisdictions. However, the system will not become obligatory until the are adopted. There is no known timetable for the ratification of these treaties.

2015 saw several important trademark cases decided in North America and Europe. Significant publicity surrounded the NFL’s Washington Redskins’ trademarks. Six of the Washington team’s trademarks by the United States Patent and Trademark Office (USPTO) in June, 2014 because they were deemed disparaging to Native Americans. In July 2015, in , a US District Court upheld the earlier USPTO decision, ruling that the trademarks are ineligible for federal trademark protection under the Lanham Act because they are disparaging. The case is not over however, as the football team filed an in October 2015.

A case in the United Kingdom, , came down to whether a trademark could be registered for a chocolate-covered wafer. Specifically, the case examined whether a KitKat’s shape could be said to have a distinctive character because, at the relevant date, a significant proportion of the relevant class of persons recognize the trademark and associate it with the applicant’s product. Nestle did not convince the European court that its product had a distinctive character. The case will now go back to a UK court for a final decision.

Closer to home, there were two significant cigarette-related decisions at the Canadian Federal Court level. First, the Federal Court of Appeal upheld the principle that a single colour on a product or its packaging is capable of being a trademark. In , Justice Gauthier affirmed the single colour registration of a trademark, and ruled that such a trademark is valid if its application properly depicts how the colour is to be applied to the object. Then, the Federal Court, in , ruled that Imperial Tobacco was entitled to elect an accounting of Philip Morris’ profits related to its infringement of Marlboro’s trademark in Canada. Justice de Montigny held that an accounting of profits is a remedy provided for by the Trade-Marks Act (as are damages).

In Québec, in , the Québec Court of Appeal upheld the lower court’s decision allowing non-French trademarks to be displayed in signs and advertising (provided no equivalent French trademark is registered). In short, non-French signage does not require an accompanying French descriptor of the business. The case arose initially due to the actions of the Office québécois de la langue française requiring businesses to add French descriptors to their English trademarks.

Other important developments in 2015 include the Federal Court of Appeal decision in The Court held that the Trade-Marks Act requires a judge to consider fresh evidence on appeals relating to trade-mark applications. As a result, the case was returned to the Federal Court for all of the issues raised on appeal. Finally, in , the Supreme Court of British Columbia ruled that a passing-off action can only succeed against a person who uses the trade-mark of a competitor as a keyword (in internet searches) where the owner can show that it causes or is likely to cause confusion, as the “first impression” does not arise from the initial keyword.

IP OSGOODE IN 2015

Events

2015 was also a busy year for IP Osgoode. As part of our IP Osgoode Speaks series, we were fortunate to have from Queensland University of Technology, Faculty of Law in Toronto around the time of the conclusion of negotiations on the Trans-Pacific Partnership Agreement (TPP). In a very timely manner, Prof. Matthew Rimmer accepted our invitation to speak at Osgoode just three days after the negotiations were concluded. Prof. Rimmer provided a and provocative overview of some of the chapters in the highly secretive agreement that he discussed will impact the creative industries and internet freedom.

We also welcomed , National Technology Officer at Microsoft Canada, who dazzled the audience with his on some of the technology megatrends reshaping our world and how these trends have created a new frame of reference for decision makers and the impacts of this transformation from a cybersecurity perspective. This event was a co-hosted by IP Osgoode and the Jack & Mae Nathanson Centre of Transnational Human Rights, Crime and Security, with funding from the Harry Arthurs Collaborative Research Grant.

In anticipation and celebration of the Pan AM/Parapan Am Games 2015 in Toronto, Canada, the IPilogue published a series of blogs focused on some of the IP issues related to big sporting events, such as ambush marketing, broadcasting rights, and disparaging trademarks.

We continued to provide students with first-rate and relevant experiential learning opportunities in IP law and technology through IP Osgoode’s blog, the IPilogue, the Innovation Clinic, and Osgoode’s IP Intensive Program.

Coming Soon

The end of 2015 was heralded by our announcement of some of the exciting events taking place at the beginning of 2016. On February 3-5, 2016, IP Osgoode and the Copyright and the International Trade Policy Branch of the will host a hackathon. The will be a multi-day event with teams composed of members from each of the different stakeholder groups such as creators, policy makers, law and computer science students, legal professionals, representatives from archival institutions, collective societies and libraries. The hackathon will use Design Thinking, a user-centric design process pioneered by Stanford's , to tackle the issues and inefficiencies with the current orphan works licensing regime and generate new solutions for an online orphan works licensing portal that addresses the needs of different stakeholders.

Hot off the heels of the SCC’s decision in CBC v. SODRAC, Osgoode Hall Law School and the University of Toronto, Faculty of Law will co-host a symposium on Februrary 25, 2016 at Osgoode. The symposium entitled “UNPACK SODRAC: Technological Change and Copyright Tariffs after CBC v SODRAC (SCC 2015)”, will feature a keynote speech from The Honourable Mr. Marshall Rothstein, who was newly appointed as a Distinguished Visiting Professor at Osgoode. Leading scholars and practitioners in the field will unpack the SODRAC ruling and its significance for the future of copyright law in Canada.

We will continue to provide up to date coverage of IP news and events, as well as announcement of all our events activities on the IPilogue so please check out our website iposgoode.ca, subscribe to our weekly e-newsletter, the IPIGRAM, follow us on Twitter (@IPilogue), and connect with us on Facebook and LinkedIn.

Top 10 most read IPilogue articles of 2015

With contributions from Quin Gilbert-Walters,��Sebastian Beck-Watt, and Elena Iosef on Trademarks, Aicha Tohry and Jordan Fine on Copyright, and��Justin Philpott and��Corey McClary on Patents.

Jordan Fine is the IPilogue Content/Publication Editor��and a JD Candidate at Osgoode Hall Law School.

Corey McClary is a Senior Editor for the IPilogue and a JD Candidate at Osgoode Hall Law School.

Elena Iosef is a Senior Editor for the IPilogue, an intellectual property lawyer and Osgoode Hall Law School graduate.

Sebastian Beck-Watt is an IPilogue Editor and a JD Candidate at Osgoode Hall Law School.

Quin Gilbert-Walters is an IPilogue Editor and a JD Candidate at Osgoode Hall Law School.

Justin Philpott is an IPilogue Editor and a JD Candidate at Osgoode Hall Law School.

Aicha Tohry is an IPilogue Editor and a JD Candidate at Université de Montréal.

The post IP Year in Review 2015: A Look Back on the IP Stories That Will Shape 2016 appeared first on IPOsgoode.

IP Year in Review 2014 - The Perpetual Motion of IP Law

ccraig — Fri, 23 Jan 2015 02:42:53 +0000

Giuseppina D’Agostino is the Founder and Director of IP Osgoode, the IP Intensive Program, and the IP Osgoode 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.

2014 was another exciting year in intellectual property (IP) law. The dominant theme was one of reaction, where legislators and courts were either responding to new industry challenges posed by technology or updating existing laws to reflect already established practices.

Canada in particular saw exciting developments across all three major areas of IP, with a significant legislative update to the Trademarks Act, attempts at judicial balancing of copyright interests between users and creators, and high profile patent litigation over pharmaceuticals.

Trademarks

Trademark law saw various legislative changes and newsworthy headlines shaking up an area of IP that is typically known for its stability.

The most significant developments in Canadian trademark law this past year were brought in by the 2014 federal budget. Bill C-31, an act to implement certain measures of the budget, received in July and altered the in ways big and small. One of the changes involved updating the ��’s terminology, with “trademark” no longer hyphenated and “wares” to be referred to as “goods”. The word “trademark” also got a wider definition, encompassing a sign or combination of signs, including: holograms, sound, scent, and 3-D shapes. The trademark registration process was also simplified, and the term of registration was reduced from fifteen to ten years.

Some of the budget’s additions to the Act were far more significant in their impact on the practice of trademark law in Canada. One of the bigger changes was the adoption of the system. Used in numerous countries, the system aims to fit goods or services into specific classes such as “clothing, footwear, headgear” (Class 25). While the system will not have a practical use in Canada, it will make the country’s trademark system more internationally consistent.

The most controversial development, was the move away from a use-based system of trademark registration. As a result of Bill C-31, there is no longer a requirement to demonstrate the “use” of a trademark in Canada prior to obtaining registration. The result is a significant questioning of a foundational doctrine in Canadian trademark law. For example, the element of use in the “confusion test” will likely need to be re-evaluated. Another concern is that the new law will encourage the registering and subsequent “sitting” on marks without use, a practice that might attract litigation. We will, however, have to give it time for the consequences of Bill C-31 to be felt. Assuaging some fears is the fact trademarks can still be expunged if they have not been used for three years, meaning that a trademark registrant must continue using the mark or risk losing it.

A second legislative change affecting trademark law in Canada this year occurred towards the end of 2014. On December 9, Bill C-8 received , the . This law was created with the intention of providing rights holders and the government, with new tools and remedies in the fight against the trafficking of counterfeit goods. Some of these new mechanisms for rights enforcement include the creation of civil and criminal offences for possessing, distributing, creating, or trafficking counterfeit items for commercial purposes, and enhanced powers for customs officials.

The major trademark news stories this past year took place south of our border. In early 2014 video game and app developer was granted a U.S. trademark for the common word “candy” in association with its extremely popular app Candy Crush Saga. Consequently, concerns were raised about the impact the registration would have on further attempts to extend trademark protections over individual, ordinary words. King experienced a significant wave of public backlash in regards to the registration, and, in a strange turn of events, voluntarily abandoned its claim to the trademark. Despite the value the registration would have had for King legally, the “Saga” demonstrated how important other elements, like public relations, are to IP law and business decisions.

Another headline-grabber was the brief but very public life of in California. Shut down by the Los Angeles Health Department, the establishment proved to be a stunt by comedian . Although no litigation commenced, the opening of “Dumb Starbucks” under the justification of “parody art” sparked many conversations in the legal community (probably over a cup of coffee too).

Finally, a very public discussion about racism and trademarks was incited by the June n of Blackhorse v Pro Football, Inc. The US Patent and Trademark Office in the case made a very clear statement against culturally insensitive trademarks with the cancellation of six registrations for the name “Washington Redskins” for being “disparaging to Native Americans.” Although the actual legal and financial implications for the Washington football team were not necessarily punishing, the case launched an important discussion about the importance of moral victories and the role of public opinion and negative publicity to the value of a brand or trademark.

The important trademark cases of 2014 demonstrated the very public nature of trademark law and its inability to be isolated within the legal sphere.

Copyright

As our world becomes more dependent on technology, new copyright law issues reveal themselves in ways that can be equal parts fascinating and frustrating. 2014 was no exception, as growth and innovation in Canadian creative industries created unique disputes between the various parties in the copyright system.

Copyright trolling was a popular topic of debate in early 2014, with the court in holding that ISPs may be ordered to provide subscriber information to assist in copyright infringement proceedings. Voltage has been described as transforming Canada into for copyright trolls, as liability caps and numerous safeguards may have the effect of dissuading litigation. Consequently, it will be interesting to see how this decision intersects with the newly enacted regime that requires ISPs and other internet intermediaries to send notices of alleged copyright infringement to their customers.

The Copyright Board rendered two tariff decisions that will have wide-ranging impact on the future right to collect money for downloaded works and webcasts. In May, the Copyright Board certified , a decision which royalty rates for webcasting services in Canada. In July, the Copyright Board certified from SOCAN: Tariff 22.D.1 - Audiovisual webcasts; and Tariff 22.D.2 – Audiovisual user-generated content for the years 2007 to 2013. These tariffs will allow royalties to be collected for the performance of musical works embedded in other audiovisual works distributed via the internet. Both certifications were met with .

In a similar vein, the US Supreme Court, in the landmark , decision, ruled that retransmission constituted infringement of the public performance right. By capturing broadcast signals on miniature antennas and delivering them to subscribers, Aereo was attempting to architect its television retransmission processes in order to elude copyright royalties or licences fees. to the decision describe the ruling as having limited scope and numerous shortcomings with regard to copyright's relationship with technology and innovation.

One of the most talked-about topics in copyright law this year was the principle of technological neutrality. One case that touched on this issue was , which concerned the requirement for broadcasters to pay to use incidental copies of musical works. In that case, the CBC argued that it should not have to pay for copies of a work that it creates out of technological necessity and that to rule otherwise would impede innovation and go against the principles of technological neutrality. The Federal Court of Appeal disagreed with the broadcaster, deciding that royalties would attach to the additional copies. The Supreme Court’s willingness to hear an appeal on this issue indicates that the CBC’s argument may have legs. In March, a Quebec Court ruled in that use of a Google image search to retrieve a photo can constitute copyright infringement. This case is one out of many over the past few years which aims to ensure that digital images are just as protected as physical ones. In , the Federal Court of Appeal ruled on the alleged infringement by CBC of five images taken during the September 11 terrorist attack on the World Trade Center by the plaintiff. The issue involved determining how many acts of infringement occurred, and how to appropriately measure damages. The court noted that a “reading of paragraph 2.4(1)(c) of the Act moves in the direction of technological neutrality in that the number of infringing acts does not vary according to the number of intermediaries in the transmission chain. This is consistent with the goal of technological neutrality which the Supreme Court articulated in .” These cases (and any subsequent appeals) showcase the struggle of the law to keep up with technological advancements, and interpret questions of infringement.

Patents

In the past year the unsettled area of patent subject matter eligibility moved into the spotlight both in Canada and other jurisdictions. In the US, 2014 saw the United States Patent and Trademark Office (“USPTO”) issue three sets of proposed guidelines for determining patentable subject matter eligibility of claims involving laws of nature, natural phenomena, and natural products. While the Guidelines were supposed to be a response to the US Supreme Court’s [2012] and [2013] decisions, the released in March was met with much for purported misinterpretation of these two landmark decisions.

In June 2014, the US Supreme Court was presented with another opportunity to address subject matter eligibility in . In Alice, the Court held that using a computer to implement abstract ideas “fails to transform” these ideas into a “patent-eligible invention”. The Court extended the two-part approach enumerated in Mayo to patentability of an abstract idea. As such, when patentable subject matter is at issue one must: (1) determine whether the claim is directed to a patent-ineligible concept, and if so, then (2) decide whether there is any element in the claim that is sufficient to transform the nature of the claim into a patent-eligible application. The most of the Guidelines, released on December 16, reflects the approach adopted in Alice and intends to provide consistency across technologies for determination of patent subject matter eligibility.

Just a few days after the December guidelines release, the US Court of Appeals for the Federal Circuit rendered another decision in the breast cancer gene patent saga. Following the Supreme Court’s 2013 Myriad decision which invalidated Myriad’s human BRCA gene patents, Ambry introduced a competing breast cancer diagnostic test. Myriad brought a motion for a preliminary injunction against Ambry on the basis of patent claims that were not captured by the 2013 decision. The Court of Appeals for the Federal Circuit the District Court’s decision to deny the injunction. Furthermore, it held that the compositions of matter claims were not patent-eligible and claims pertaining to methods of screening were also not patent-eligible as not passing the Alice test. Litigation concerning the BRCA gene patents was also prevalent in Australia. Most recently, the Federal Court of Australia that isolated nucleic acids are different from their natural counterparts, and thus patentable. The issue of patentable subject matter and gene patenting was also present in the Canadian courts in 2014. In November, Children’s Hospital of Eastern Ontario (“CHEO”) commenced a patent proceeding against the patent holders for genes involved in Long QT syndrome, a cardiac disorder. In their , CHEO sought a declaration of non-infringement and invalidity of patents which claim isolated nucleic acids and testing methods of diagnosing and assessing a risk of Long QT. Should this case go to trial, the decision could have strong implications not only in subject matter eligibility, but the biotech industry as a whole.

The past year also saw further developments in the contentious arena of the promise of the patent doctrine in Canada. Eli Lilly continued with its $500 million NAFTA challenge against the Government of Canada and filed its before an arbitration panel. In , the Federal Court held that sound prediction of utility in fulfilling the promise does not require heightened disclosure of underlying facts and sound line of reasoning for inventions, unless it is in the context of a new use for a known compound. Also, the Federal Court of Appeal heard Mylan Pharmaceuticals’ and Apotex Inc.’s with respect to Pfizer’s drug Celebrex. In its decision, the Court outlined that the promise doctrine holds the inventor to an elevated standard where a clear and unambiguous promise has been made. However, a single promise may not apply to each claim. Regrettably for many observers, the case that was set to bring clarity to the interpretation of the promise doctrine did not happen in 2014. The much anticipated appeal of to the Supreme Court of Canada with respect to Sanofi’s blood thinner Plavix, was on the eve of the trial.

Canada also sported a rare patent infringement case involving a biologic drug (pharmaceutical product derived from an organism) in 2014. At the beginning of the year, the Federal Court released its decision, holding that Janssen’s antibody drug Stelara infringed AbbVie’s patent. AbbVie was granted an injunction but later in the year the set aside both the infringement decision and the injunction. The matter was sent back to trial before another judge. If the case is to continue, its potential precedential value should not be underestimated since pharmaceutical innovation has been shifting towards biological agents in recent years.

On the legislative front, the Government of Canada released the of the Comprehensive Economic and Trade Agreement between Canada and Europe (“CETA”). The Canadian government also passed , an omnibus budget bill, amending the Patent Act to be consistent with the Patent Law Treaty.

IP Osgoode in 2014

2014 was another busy year for IP Osgoode on all fronts.

We featured a star cast of guest speakers for the IP Osgoode Speaks Series. First up was Prof. Graeme Dinwoodie, who discussed the territoriality of trademarks in a post-national era. This event was followed by Dr. Emily Hudson who spoke on her empirical and qualitative research of user experiences with copyright law and user-rights exceptions. We also heard from Prof. Jane Ginsburg, who analyzed the US Supreme Court’s Aereo decision and the US’s international obligation to implement the ‘making available right’. The series ended in a most privileged fashion with the Honourable Justice Marshall Rothstein of the Supreme Court of Canada who spoke on the impacts of recent IP related cases. We recorded all of our events and if you missed any of them be sure to catch them on the site (, , ).

On October 23 to 24, 2014 IP Osgoode, along with its partners and collaborators, Lassonde School of Engineering, Stanford University’s d.school, and the Canadian Intellectual Property Office, hosted the first ever legal hackathon of its kind at Osgoode Hall Law School. The focus of the hackathon was to deconstruct the unnecessarily complex status quo patent system and discuss ways to make the patenting process more navigable and user friendly. At the end of the two day IP hackathon, the four teams of hackers developed four sets of different user-friendly prototypes with high potential for real life applications. The IP Hackathon was also the result of my research funded by the Social Sciences and Humanities Research Council of Canada (SSHRC).

Osgoode’s flagship IP Intensive program offered two new placements for the fall 2014 term, AstraZeneca Canada Inc. and Cineplex Entertainment. We look forward to the fall of 2015, when we will welcome Adjunct Professors Bob Tarantino and Dan Ciraco as Acting Directors for the IP Intensive, and a new group of enthusiastic students.

Now in its fourth year of operation, IP Osgoode’s Innovation Clinic continues to expand its pro bono services and clientele base through more collaborations and partnerships within �첥��Ƶ, namely, the Lassonde School of Engineering’s BEST Program and Innovation York.

2015 already promises to be another exciting and busy year for IP Osgoode. Stay tuned for an announcement of another IP hackathon event as we plan to build upon the successes of our first IP Hackathon and host another one in the very near future to tackle other aspects of IP commercialization. Preliminary plans for the next line up of stellar guest speakers for the next IP Osgoode Speaks Series are already underway. We will continue to provide up to date coverage of IP news and events, as well as an announcement of all our events activities on the IPilogue so please check out our website iposgoode.ca, subscribe to our weekly enewsletter, the IPIGRAM, follow us on Twitter (@IPilogue), and connect with us on Facebook and LinkedIn.

Of course, should you have any ideas on any projects you would like us to tackle, posts you would like us to blog on or wish to work with any of us at IP Osgoode please do get in touch as we would be delighted to hear from you.

Top 10 most read IPilogue articles of 2014

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With contributions from Jaimie Franks on Trademarks, Jordan Fine on Copyright, and Anastassia Trifonova on Patents.

The post IP Year in Review 2014 - The Perpetual Motion of IP Law appeared first on IPOsgoode.

2012 IP Year in Review: Hollywood Couldn't Make an Action Movie this Good

ccraig — Wed, 16 Jan 2013 21:00:47 +0000

Giuseppina D’Agostino is the Founder and Director of IP Osgoode, the Founder and Director of the IP Intensive Program, and an Associate Professor at Osgoode Hall Law School.

2012 was an action-packed year in the world of intellectual property law. There were flurries of reports, decisions, and new legislation that confronted many core principles of IP law, priming 2013 as a year where the law will continue to move into new, uncharted territory.

2012 was an exciting year for IP Osgoode, where we celebrated our fourth birthday We welcomed Michelle Li as the IP Osgoode Coordinator and a vibrant mix of students to work on our many projects. It was another successful year for our IPilogue and growing our various . As part of our IP Osgoode Speaker Series we featured .�� The year appropriately ended with two distinguished lectures, by Justice Marshall Rothstein (), and ” by Justice Roger Hughes.

We look forward to 2013, a year for strengthening our existing partnerships and forging new ones, cultivating our current projects and fostering new initiatives, and most importantly, evolving and growing to better serve our membership.

Patents

In patent law, 2012 was a year of Viagra, cell phone wars, and a continuation of the American debate on the patent-eligibility of isolated human genes.

In Canada, the SCC’s ruling in the case of affirmed the quid pro quo basis of Canadian patent law, while in the United States, Apple and Samsung closed a lengthy chapter in their battle for American market share.�� In August, a jury in the District of Northern California found and awarded the American company $1.05B in damages.�� Two weeks before Christmas, both parties wherein presiding judge Justice Lucy Koh .�� One week later, Koh J issued two rulings that (1) Apple’s request for an injunction on the sale of Samsung’s infringing devices and (2) Samsung’s request for a new trial on the basis of jury misconduct.�� Koh J is expected to issue additional rulings on the post-trial hearing in early 2013.

2012 also saw the continuation of the over the patent eligibility of isolated genes in America.�� In the US Court of Appeals for the Federal Circuit held that isolated genes are eligible for patent protection even in light of the USSC’s ruling in .�� In November, the USSC granted AMP’s request for appeal but has indicated that it will confine its discussion on the question of the patent-eligibility of human genes. The USSC is expected to rule on this matter in the summer of 2013.

Across the pond, the European Council reached an agreement that has been described as the final step of and the High Court of Justice of England & Wales saw that ultimately ruled in favour of Samsung.

Trade-marks

2012 saw many important legal developments in the field of trade-marks.

In an important decision for foreign entities with registered but unused marks in Canada, the arbitrator in the found that “once a trade-mark is registered, its owner has rights in the mark from the date of the [trade-mark] application”.

2012 also saw CIPO beginning to accept applications for . This crucial CIPO decision paves the way for the modernization of the Canadian trade-mark regime while facilitating the adoption of international standards and trade opportunities.

2012 was a year of landmark decisions for the fashion and entertainment industry as well. , and Christian Louboutin had his , while YSL managed to keep his own entirely red shoe in the market. Also related to the fashion industry, attempt to use the mark “fruit”: the mark “fruit” is not merely a variation of the mark “fruit of the loom,” but a distinctive mark on its own. Global brands will find this decision relevant in their fights against similarly sounding competitors.

In the tobacco industry, , while in the , a single colour was found to make a difference. Meanwhile, in Florida, a business name was invalidated as a trade-mark .

Lastly, 2012 was an important year for internet too. In June, and in October, the organization held its .

Copyright

In many ways, 2012 was the year of copyright in Canada. The Supreme Court of Canada’s (SCC) and , the Copyright Modernization Act were the main protagonists Debates in related areas of privacy law were also present.

Bill C-11 was a constant source of discussion, and had been a long-time coming for the Copyright Act, which with challenges posed by the digital age. In May, we saw the in Parliament. In June, , bringing legislative changes to distribution rights, the doctrine of fair dealing, statutory damages, performer’s rights, and many other aspects of digital file sharing. Canada was not the only country dealing with modernizing copyright reform in 2012, as the .

In July, one of the Canadian legal news events of the year occurred, with the SCC releasing , dubbed as the copyright “pentalogy.” IP Osgoode delivered extensive analysis of each of the five judgments and their influence on Canadian copyright law, with summarizing and linking to each article. The five cases, predating the implementation of the Copyright Modernization Act, attempted to clarify the definitions of “communicate the work to the public by telecommunication,” “sound recording,” and fair dealing for the purposes of “private study” and “research.” These cases sought to provide clarity regarding digital streaming and further evolved the concept of fair dealing.

Internationally, 2012 saw privacy law thrust to the forefront, with ), the American anti-digital piracy bills, the suspension of a , and , a similar European bill. In Canada, our privacy legislation, the Personal Information Protection and Electronic Documents Act (PIPEDA) was criticized as being . Canadian privacy commissioner Vic Toews was also a frequent target of media criticism, as a social media campaign brought Toews’ personal life to the forefront as a form of protest against his , which culminated with Bill C-30, a proposed online surveillance bill. Later in the year, as support for increasing Internet surveillance in order to modernize the Criminal Code of Canada.

In addition to the digital privacy issues that arose in 2012, many developments occurred with respect to computer software internationally. in Canada and the States, in Europe, over operating systems, was clarified in Ontario, and in an Australian case concerning BitTorrent file sharing.

Later developments included European , debates about , public hearings about , and music icons facing copyright infringement suits ( and ).

Top 10 most read IPilogue articles of 2012

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With files from on patent law, on trade-mark law, and ��on copyright.

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