I have blogged on the Hargreaves report and the Government’s general agreement with Professor Hargreaves’ recommendations. In particular, the Government stressed the importance of IP law to economic development and encouraged the creation of a DCE to increase overall market efficiency. The Government acknowledged that

Studies regarding the DCE recommendation have now led to endorsement of the creation of a Copyright Hub, the details of which are contained in the IPO’s report. The Hub would be based in the UK but would be linked to the

The Hub will have . It will serve as a navigation system as well as an educational tool. Owners will be able to register their works and any associated rights and licenses. As a result, the Hub will function as a “marketplace for rights” as well as become an effective tool for due diligence searches of orphan works. In addition, the Hub will also likely benefit start-up companies and enable them to manage their intellectual property and discourage piracy of their works. This objective may be aided by connection of the Hub to other copyright databases and collective societies. Thus, the overarching goal of the suggested Hub is the broad exchange of information on intellectual property rights and ownership.

The report characterizes the Hub as a central, unified marketplace for copyrighted works, promoting the efficient, streamlined exchange of rights and data between many different sources. Through , I have expressed an opinion regarding the necessity of a creative approach to Copyright law in the digital age. As new technological mediums create new opportunities for creators, they also generate new avenues for infringement. Allowing a stagnant approach to Copyright law will not help to adequately address new developments. By nature, IP law has a somewhat abstract quality, and increasingly innovative efforts, such as the proposed Copyright Hub, help to simplify owners’ rights and the licensing process. Therefore, the Hub is an example of an approach that utilizes technology to create a more organized approach to rights management.

Nora Sleeth is a JD candidate at Osgoode Hall Law School.

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, Marlboro Canada and Imperial Tobacco have owned the rights to the trademark MARLBORO in Canada. Meanwhile, Philip Morris has marketed its famous cigarette brand Marlboro in the United States. Due to the popularity of the Philip Morris brand and Canadian awareness of American marketing, the Philip Morris brand became well known in Canada. As a result, Philip Morris created the Canada-only brands Maverik and Matador which were accompanied by Philip Morris’ famous packaging but did not infringe Imperial tobacco’s trademark rights in MARLBORO.

In 2006, Philip Morris introduced a new marketing tactic by creating cigarette packages that bore no brand name but . Evidently, Philip Morris was confident that consumers would recognize the brand based on the image alone. As a result, Imperial Tobacco sued Philip Morris for infringement of its trademark, stating that the rooftop packaging conveyed the idea of MARLBORO thus resulting in consumer confusion between the two brands. Imperial Tobacco provided the court with evidence that retailers, when asked for Marlboro cigarettes, would supply the Philip Morris brand. Nevertheless, at trial, Justice de Montigny ruled against Imperial Tobacco’s argument, holding that confusion was not created because the world Marlboro was not used and the rooftop design itself was actually more of a distinguishing feature. Further, there was no inherent meaning in the design, particularly since the focus should be exclusively the Canadian market.

The Federal Court of Appeal overturned Justice de Montigny’s judgment, finding that he had erred in his evaluation of the confusing nature of Philip Morris’ rooftop packaging. Specifically, the Court of Appeal dismissed the finding that there was no inherent meaning in the rooftop image. According to the judgment, consumers faced with an opportunity to “” were likely to experience confusion and associate the product with the well-known Philip Morris brand.

In deciding that product packaging alone could result in a trademark infringement, the Court of Appeal has set an important precedent. emphasize that this decision has expanded the possibilities for litigants attempting to prove the confusing use of a trademark and caution against increasingly more creative arguments. The Court of Appeal’s decision regarding the rooftop packaging, however, does seem to be consistent with traditional trademark principles. The driving function of trademark law is to prevent confusion at all levels of consumer interaction. The test is typically whether the ordinary consumer, with imperfect recollection, and without giving the matter detailed scrutiny or close examination, would be confused. The question in many circumstances may thus become one of mental association, as, in the minds of consumers, certain images or words may convey a particular message. This argument is not only clear in this decision, but has been demonstrated through past cases emphasizing the importance of the guise or get-up of a particular product. While, for some critics, the Court of Appeal’s decision may seem somewhat radical, in my opinion, the overall significance of this case does not deviate from the basic principles of trademark law.

Nora Sleeth is a JD candidate at Osgoode Hall Law School. 

The post Imperial Tobacco v Philip Morris: Product Packaging Alone Creates Consumer Confusion appeared first on IPOsgoode.

Section 68(4) of the certifies the tariffs paid by those playing recorded music to collective societies. A number of justifications for the existence of these tariffs are up for discussion, chief among them being the necessity of ensuring that those involved in music production be rewarded and compensated for their efforts. The new tariff will allow artists to benefit from the use of their recorded music at events. This tariff is in addition to one already paid to SOCAN, which collects a tariff on behalf of songwriters whose music is played at various venues. It is the responsibility of the venues to pay the tariff; however, the venues may choose to distribute this cost at will. For example, couples planning a wedding will experience an additional charge from the venue to cover the cost of the tariff.

The existence of more than one tariff covering the same use of music has led many to question the effectiveness of the collectives and the alleged benefit such tariffs have for the artists registered with Re:Sound or SOCAN. On the one hand, it cannot be denied that music has an inherent value and some importance should be placed on ensuring that people pay for the music they enjoy. Furthermore, the tariff is said to benefit lesser-known and independent artists more than famous names and record labels by helping these individuals earn a living making music. The cost to listeners should be minimal. For , venues that host events will pay $9.25 a day for gatherings with less than 100 attendees.

While the argument in favour of supporting musicians’ careers and acknowledging the value of music is an important one, critics articulate a number of opposing arguments. Skeptics point out that tariffs are constantly increasing without any solid evidence that it is indeed the artists who benefit the most. According to one , “[t]he ones who really and consistently benefit the most [from the tariffs] are those who run the collectives, those who are consultants to the collectives, and the lawyers who punctually pursue new and higher Copyright Board tariffs using money raised from the previous tariffs and paid for ultimately by the Canadian public.”

While the statistics on how much artists are actually benefitting from tariffs are beyond the scope of this blog post, I think the critics’ arguments deserve consideration. The new tariff doubles the cost of playing recorded music if guests at an event are going to be dancing. This additional cost .  If anything, it suggests that dancing is more valuable or more enjoyable than listening - a suggestions that probably depends on who you ask.  Or who you dance with.

Nora Sleeth is a JD candidate at Osgoode Hall Law School. 

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In 2010, the passing of the Digital Economy Act (DEA) mandated that communication regulator Ofcom publish a code of practice procedure for Internet service providers (ISPs) aiming to combat illegal file sharing. After numerous delays, the UK government has announced that the code is expected to be passed before the end of June. The code ISPs to send notifications to users engaging in copyright infringement. Further, ISPs would have to maintain a record of infringing users. Copyright holders will be able to access this list and pursue legal action against infringers. Individuals accused of infringement their notification letter to an independent appeal body.

The delay in the code’s publication is at least partially due to opposition by ISPs. ISPs claimed that the code would violate EU laws on privacy and data protection; however, the Court of Appeal ultimately rejected these claims.

The Ofcom code illustrates the need for a broad, multi-faceted approach to copyright infringement and online piracy. Just as new technologies have created new avenues for piracy, the law must respond in new ways. This inevitably means exploring new anti-piracy measures that would not have been considered and likely did not exist in the past. ISPs, as , would ordinarily not be subject to anti-piracy measures; however, the communal nature of the Internet has changed many aspects of the traditional copyright approach.

An approach that aims to address the involvement of ISPs is only one aspect of a successful anti-piracy strategy. There is no single method broad enough to target all elements of Internet piracy. While the Ofcom code’s involvement of ISPs is one way to target intermediaries, other factors contributing to or affecting piracy must also be considered. , online advertising has been targeted to prevent the appearance of advertisements promoting pirating sites. Furthermore, cooperation with payment facilitators such as Visa and Mastercard has been as a means of terminating payment to illegal websites.

A key issue for intermediaries that is highly relevant to ISPs is that of . It is essential that ISPs have in place measures to assist in the identification of Internet piracy when it occurs. This is reflected in the Ofcom code through the requirement that ISPs make note of the alleged infringements and the notifications that are sent. Awareness of the occurrence of piracy allows ISPs and other intermediaries to develop better strategies that can subsequently work in conjunction with various approaches to create a multifaceted piracy policy.

Nora Sleeth is a JD candidate at Osgoode Hall Law School. 

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Distinctiveness is the key principle underlying trade mark law and policy. Trade marks help customers distinguish particular wares and services as well as identify their source. Simultaneously, trade mark owners are encouraged to invest their efforts in maintaining a reputation through product quality. Trade mark cluttering works against this notion of distinctiveness as trademark registers become full of marks that are unused. As a result, it becomes more costly for owners to search through existing marks and successfully register a distinctive mark.

The IPO report characterizes trade mark cluttering as a systemic problem since “existing levels of cluttering lead later applicants to adopt application strategies that further contribute to the problem.” Firms submit numerous simultaneous applications for a mark to ensure that it will be registered despite the fact that only one or few of these marks will actually be used by the trade mark owner. To achieve this blanket registration, firms involve a number of different strategies. For example, firms may apply for marks which they do not necessarily have any intent to use either to prevent others from using the mark or any similar mark or as insurance in case they later decide to use any of the marks.

The result of these blanket registration strategies is the unavailability of distinctive names for future applicants. Applicants are then forced to employ the same strategies in order to identify a unique mark that can be registered. The report also highlights the fact that marks that are at least somewhat descriptive in nature create more problems when trademark cluttering occurs. An applicant who wishes to use a similarly descriptive mark may find that all potential options have already be registered through the previously mentioned strategies.

As is emphasized by the report, it is essential to weigh the cost of trade mark cluttering against the cost of directly addressing the problem and cleansing the register. While application fees are intended to discourage the filing of multiple clustered applications, a number of other methods of combating trademark cluttering are outlined. This includes renewal requirements, cancellation of cluttered marks and opposition by trade mark offices. Perhaps more effective is a use requirement that would allow subsequent applicants to challenge a mark that is not being used. Additionally, clustered marks could be licensed or transferred to future applicants.

While the costs of implementing any of these solutions should be weighed against the existing costs to applicants dealing with cluttering, it is also important to weigh all costs against the essential principals of trade mark policy. Trade mark cluttering results in the existence of a plethora of marks that do not distinguish source or identify any particular wares or services. Instead, these marks work against the requisite distinctiveness of trade mark law by impeding applicants in their search for a unique and registrable mark. While cost considerations are important, trade mark policy would benefit from an approach that is always mindful of the underlying principles of trade mark law.

Nora Sleeth is a JD candidate at Osgoode Hall Law School.

The post Trade Mark Cluttering, Messy Policy appeared first on IPOsgoode.

An can be described as a grilled cornbread sandwich and is considered to be a Venezuelan tradition. Even before the issue of trademark registration was brought to the attention for the Venezuelan community, Arepa Café’s rights over the use of “arepa” resulted in between Lee and the owner of Arepa Market, also located in Toronto. Lee sent a cease and desist letter to Arepa Market’s owner, Luis Vega. Vega originally filed a statement of claim against Arepa Market before voluntarily abandoning the mark.

Section 12(1)(c) of the states that a mark is not registrable if it is “the name in any language of any of the wares or services in connection with which it is used or proposed to be used”. Although the mark registered is for both “arepa” and the design of Arepa Café, it seems that CIPO’s lack of knowledge of arepas as a common food originating from a particular culture allowed the uncontested registration of “arepa”.

Members of the Toronto Venezuelan community remain with ownership of a word common to their culture and fear monopolization. Activists have contacted CIPO, seeking to educate about the meaning of “arepa” and its significance in Venezuelan culture. Similarly, an unrelated group has launched the website with the same goal of spreading knowledge. So far, CIPO has not responded to any of these attempts and a petition is currently circulating through Toronto’s Venezuelan community.

The efforts of the Venezuelan activists may be too little . Had their campaign targeted the mark before it was on the registrar, their attempt at raising awareness may have prevented the registration of “arepa” as contrary to 12(1)(c). Further, had Luis Vega not abandoned Arepa Market, the court would have had the opportunity to examine whether Arepa Market’s use of “arepa” was confusing to members of the public.

Lee that his desire to protect Arepa Café’s mark stems from his goal of preventing confusion as he moves towards franchising. Lee does not want to prevent others from selling arepas, he only wishes that they do so under a clearly distinguishable name and design. For example, a store called has commenced business on Dufferin Street and has not been challenged.

Nora Sleeth is a JD Candidate at Osgoode Hall Law School.

The post Cultural Education Campaign Too Late to Alter the Course of “Arepa” Trademark Debate? appeared first on IPOsgoode.

The patent application relies on the notion of a base swing being learned without the use of any golf equipment. An individual’s base swing is unique to him or her and once it is developed the applicant asserts that personalized golf equipment may be structured to fit the individual’s swing style.

The IPO’s decision was based on a revised version of the applicant’s claims filed November 21 2011. There were 21 claims in total and three independent claims that are outlined as follows:

71. A method of more efficiently establishing a golfer’s current base golf grip and swing through which the golfer’s performance can be more efficiently changed or improved[…]

84. A method of determining a performer’s base performance of a determined activity that utilizes equipment during performing, said base performance used as a basis for more efficiently changing or improving said base performance or fitting said equipment to said base performance[…]

91. A method of fitting a golf equipment or golf club specification measurement to a golfer’s base golf grip or swing[…]

The issues identified in the decision were “whether claims 71 and 91 satisfy section 1(2) of the Patents Act 1977 and whether claim 84 satisfies section 14(3) of the Act.”  Under section 1(2), “a scheme, rule or method for performing a mental act, playing a game or doing business or a program for a computer” is not an invention under the Act. Case law on the interpretation of section 1(2) provides a four-step test for assessing patentability. The steps are summarized as follows:

1. Properly construe the claim
2. Identify the actual contribution
3. Ask whether it falls solely within the excluded matter
4. Check whether the contribution is actually technical in nature

Firstly, the Hearing Officer found that claim 84 was “broad and speculative in scope” and therefore did not satisfy the section 14(3) requirement of disclosing the invention “in a manner which is clear enough and complete enough for the invention to be performed by a person skilled in the art.” The four-step test was then applied to determine patentability under section 1(2).

With regard to properly construing the claims, the Hearing Officer emphasized the difficultly in conceptualizing a base golf grip as this is something that is personally felt and experienced by the individual player. As such, it cannot be defined in an “objective, technical” sense. Secondly, the actual contribution was identified as:

“a method of producing a golf swing comprising, without the use of a golf club, forming a limb- only golf grip and performing a limb-only golf swing, using that as reference for further improvements, the limb-only established swing being used for the fitting or making of golfing equipment”.

Given this definition of the actual contribution, step three looks at whether it falls within the exclusions outlined in section 1(2)(c). The Hearing Officer found that the application falls within all three exclusions. That is, it is a mental act as well as a scheme for playing a game or doing business. The application discloses no technical element and the base swing learning process relies on the mental aspects of repetition. Finally, since the application also requires the involvement of a skilled individual to produce golf equipment, it is further found to be non-patentable as a business method.

Nora Sleeth is a JD candidate at Osgoode Hall Law School. 

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The problem of SFFCs has been by WHO as having a broad international impact. All varieties of medication are at risk of being counterfeited and this concern applies to both brand name and generic drugs. The results of fake packaging and improper ingredients include unsuccessful treatment as well as accidental consumption of toxic substances.

While it is difficult to paint an accurate statistical picture of the SFFC problem due to the constant evolution of illegal techniques and distribution methods, the WHO notes that the problem is most prevalent in developing nations in Africa, Asia, and Latin America and that less than 1% of the market value is from industrialized countries.  This dichotomy is evidenced by a number of the cited by WHO. First of all, the high costs of medication often drive consumers to seek cheaper illegal sources. Similarly, in many developing nations, supplies at regular health facilities are often limited and illegal suppliers may be the only alternative option. Further, many jurisdictions lack legislation to combat SFFCs and are unable to address the increasing issues arising from the growth of international trade.

The WHO resolution aims to promote the Thus, the goal of the resolution is effectively to target the contributory factors and recognize how these factors shape the situation in developing countries. The resolution advocates for a “global strategy” involving public health, innovation and intellectual property. Part of this strategy is intended to address the lack of sufficient financing which is presently hindering WHO’s progress in combating SFFCs.

The resolution also outlines a through which all member states may take part in combating SFFCs. This mechanism reflects the contribution of international trade to the increasing prevalence of counterfeit medicine by stressing the importance of international collaboration regarding sharing of information and best practices. The intended result is to strengthen both regional and national supply chains, particularly in developing nations. In order to achieve this, existing WHO structures will be incorporated, as well as regional and subsidiary groups. The overarching perspective is to be that of a public health initiative, however, as opposed to being one of trade or intellectual property.

The resolution will be submitted for approval to the 65th World Health Assembly scheduled to meet in Geneva next May.

Nora Sleeth is a JD candidate at Osgoode Hall Law School. 

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Professor David Vaver’s discussed the problematic nature of this statement. Essentially, this would place the burden of establishing consent on the defendants while, conversely, the Copyright Act does not give the plaintiff the benefit of this presumption. Thus, the reasoning in obiter would require a defendant to show that he had the plaintiff’s consent as opposed to requiring the plaintiff to prove that he did not give his consent. Previous cases have rejected such a reverse onus.

The Federal Court of Appeal recently Tajdin and Jiwa’s appeal. The judgment does little to address the contentious reverse onus issue despite the main issue on appeal being whether the Aga Khan gave his consent. Further, among other submissions, the appellants argued that the trial judge “erred in holding that the onus to prove consent was on Mr. Tajdin and Mr. Jiwa.” While the court examined the issue of consent, it did not correct the lower court’s interpretation and seemingly ignores the issue altogether.

The reverse onus in proving consent is problematic in that it forces the defendant to prove a fact that is chiefly belonging to the plaintiff. The plaintiff is the one who knows whether consent was given and it is therefore too onerous to shift the burden to a defendant who is not privy to the inner workings of the plaintiff’s mind. This is supported by the absence of a reverse onus provision in the Copyright Act and the court’s avoidance of this issue is dangerous as a precedent.

The Appeal judgment also contained the concerning statement that consent “can be either express or implied”. The notion of implied consent in copyright is problematic due to its subjectivity. For example, merely assuming consent because the copyright owner has not expressly protested can lead to infringement and subsequently require owners to police their own works.

It will be interesting to note how these issues are addressed through future court decisions.

Nora Sleeth is a JD candidate at Osgoode Hall Law School.

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Artist has developed his artistic career by appropriating imagery and adding his own elements, presumably as a form of social commentary. Prince images from plaintiff Patrick Cariou’s Rastafarian photography. The scanned pictures were printed directly onto canvas and were altered by Prince’s addition of new elements. An example of Prince’s work using Cariou’s photography may be seen .

Prince claims that the images used are merely while Cariou’s lawyer maintains that Prince  This distinction is important because it goes to the determination of Fair Use, which is the key issue in determining the legality of appropriation art.

The issue of whether Prince’s works are transformative is essential to the existence of ; however, this is a subjective determination. The of an artwork is analyzed through observations regarding how the artist’s contributions have varied the original. Further, to be transformative, the additions some form of criticism or commentary on the original work.

The United States District Court decided against Prince. His works were found not to be transformative and therefore do not quality as fair use. It that the court focused largely on Prince’s inability to explain effectively how his additional elements generated any further meaning or provided any commentary on Cariou’s originals. Furthermore, Prince did not adequately articulate any particular meaning for his appropriated works. This finding emphasizes the subjective element involved in fair use rulings and critics of this decision are quick to point to other that are able to find a transformative element without any direct commentary on the original work. In any event, Prince has appealed the District Court’s decision and a ruling will likely be heard early this year.

This appeal should be helpful in clarifying some of the surrounding art and copyright in light of modern technological developments. In addition to changing notions of what constitutes art, new are providing new mediums for creativity. The Internet provides users with countless images that they can easily download and save for various creative purposes.

This case also illustrates some of the that can arise when applying legal principles to the realm of art and creation. It has been argued that what is considered transformative to an artist cannot be reconciled with legal concepts.

Nora Sleeth is a JD candidate at Osgoode Hall Law School.

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