Serena Nath is an IPilogue Writer and a 2L JD candidate at Osgoode Hall Law School.

After a lengthy 22-year trademark battle with Chinese businessman Fang Yuzhou, London-born shoe company to use their name in China. Manolos have never been sold in mainland China because Yuzhou registered the trademark “Manolo & Blahnik” in 1999 in China. ��If Manolo Blahnik had attempted to sell their shoes in China, they would likely face legal consequences from Yuzhou and be unable to fight counterfeit products sold ��there. In the subsequent two decades, Manolo Blahnik repeatedly appealed the decision. However, these appeals were dismissed as the courts ruled that Manolo did not present sufficient evidence of adequate sales in mainland China prior to 2000. Resultantly, Manolo Blahnik has lost significant sales, as China is the fastest growing luxury market.

China’s Trademark System

Historically, China’s trademark system was based on a , meaning that the exclusive right of a trademark is awarded to the registrant who first applies. As such, no prior use, good faith, or intention for real use of the trademark is required to acquire the exclusive rights over a trademark. Here, although Yuzhou had no intention to use the registered trademark, because he had applied before Manolo Blahnik, and was hence awarded exclusive rights to use the trademark “Manolo & Blahnik.” This is in to other jurisdictions, such as Canada, where the exclusive right to a trademark is not necessarily awarded to the first registrant, and prior use or intention to use is considered. However, in 2019 amendments to China’s trademark legislation resulted in drastic changes for trademark disputes.��

The 2019 amendments focused on “bad-faith” trademark filings, specifically that “[a]pplications made in bad faith for trademark registrations that are not intended for use shall be rejected.” Additionally, trademark agencies are prohibited from representing clients if the agency is aware that it is a “bad-faith” filing, and the penalty for filing a “bad-faith” trademark is either warning or fine. Based on these amendments, then, the Supreme People’s Court of China finally ruled in Manolo Blahnik’s favour.

Future Implications of Trademark Legislation Amendments

The 2019 amendments will likely aid in fighting against “bad-faith” filings. However, as observed with the Manolo Blahnik case, the amendments are also likely to ensure increased brand protection for foreign entities who otherwise are not able to register trademarks due to the “first to file” rule. of the amendments resulting in victories for foreign companies include a lawsuit won by athletic apparel and footwear manufacturer New Balance, and another won by former NBA star Michael Jordan, where Chinese companies imitated and used these entities’ logos. Despite recent victories, some foreign companies still face an uphill battle. In 2021, Japanese retailer Muji against a “copycat” Chinese company. It is clear that further amendments are still necessary to overcome the “first to file” rule.

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There are multiple reasons for this growth. It is caused partly by China’s evolution from [iii], and partly by China’s role as a leader in many cutting-edge technologies, such as [iv] One of the largest drivers of Chinese patent filing, however, is the Chinese government’s subsidy program, the “”[v] initiative, which provides funding designed to encourage Chinese innovation. While China has experienced large increases in innovation overall, in practice these subsidies have primarily just increased the s[vi], while doing a much poorer job of stimulating research and development.

These subsidies have encouraged a large number of low-quality patent applications, particularly in the subsets of Chinese patents that are subject to a lower degree of scrutiny before grant. As stated by Wang Xiang, the head of Orrick’s China IP practice: “”[vii].

China’s “patent first, innovate later” culture is shown in [viii], both domestically and internationally. The patents obtained by Chinese industry are also maintained at a much lower rate than those from comparable nations, an indicator that they are not particularly valuable.��

In recent years, China has also made these subsidies available for [ix]. This has led to a large number of patent filings abroad and has made China the fifth largest international patent filer. Many of the applications that are filed internationally are the same low-quality applications that are filed within China, which presents a problem to patent examiners globally, as these applications must be examined with the full scrutiny of any other application.

The question becomes, what should the IP offices of the world, SIPO included, do about the volume of low-quality applications that are being produced? These applications are being submitted to patent offices that are generally facing [x] in unexamined patent applications. It will be difficult for patent offices to review the large number of Chinese applications, and these applications will add to the existent patent backlog. Backlog reduces the amount of time and effort that an examiner can spend on a given application and [xi].

In my opinion, the problems associated with this over-burdening volume of poor-quality patent applications can be resolved through worldwide[xii].[xiii] is software that learns how to complete tasks which have traditionally required the use of human thought. It can examine the data given to human decisions makers, observe the outcome of these decisions, and create “rules” with which to make its own decisions. Patent examination produces a large volume of decision-making data, .[xiv]

Given the high cost of an examiner’s time, the large number of subsidized applications being produced by Chinese industry should act as a motivator for further adoption of artificial intelligence by the world’s patent offices. Artificial intelligence could be [xv] that could help regulate the massive number of applications. It could be used to determine the field of technology that an application falls into, if an application describes patentable subject matter, if it overlaps with prior art, and even if it meets a country’s drafting requirements. And, because of scalability, artificial intelligence can process a large number of applications within a much shorter period of time than a human examiner, at a lower cost.

Adapting this new technology would better enable patent offices worldwide to reward Chinese innovators for legitimate contributions to technology, while also managing the worst of the mass filing conundrum.

Written by Keenan Fast, Osgoode JD Candidate, enrolled in Professors D’Agostino and Vaver 2019/2020 IP & Technology Law Intensive Program at Osgoode Hall Law School. As part of the course requirements, students were asked to write a blog on a topic of their choice.

��

[i]Jane Croft, “China plays catch-up with Europe and US in patents filing race”, Financial Times (9 July 2019), online: <https://www.ft.com/content/8ecf7464-8d05-11e9-b8cb-26a9caa9d67b>

[ii] “World Intellectual Property Organization”, WIPO Intellectual Property Statistics Data Center, online: <https://www3.wipo.int/ipstats/>

[iii] Michael C. Wenderoth, “China Is Innovating Faster Than You Imagine”, Forbes (11 April 2018), online: <https://www.forbes.com/sites/michaelcwenderoth/2018/04/11/china-is-innovating-faster-than-you-imagine/#3eb8f425273d>

[iv] Louis Columbus, “How China Is Dominating Artificial Intelligence”, Forbes (18 December 2018), online: <https://www.forbes.com/sites/louiscolumbus/2018/12/16/how-china-is-dominating-artificial-intelligence/#4949444d2b2f>

[v] “Premier Li on ‘Made in China 2025’”, The State Council of the People's Republic of China, online: <http://english.www.gov.cn/premier/news/2017/08/10/content_281475781726536.htm>

[vi] Lulu Yilun Chen, “China Claims More Patents Than Any Country—Most Are Worthless”, Bloomberg (26 September 2018), online: <https://www.bloomberg.com/news/articles/2018-09-26/china-claims-more-patents-than-any-country-most-are-worthless>

[vii] Ibid

[viii] Ibid

[ix] “Notice on Printing and Distributing the Measures for the Administration of Funding for Foreign Patent Special Funds”, The Central People's Government of the People's Republic of China (31 May 2012), online: <http://www.gov.cn/zwgk/2012-05/31/content_2149501.htm>

[x] Patent Backlogs and Mutual Recognition, London Economics (January 2010) at 59, online: <https://www.gov.uk/government/uploads/system/uploads/attachment_data/file/328678/p-backlog-report.Pdf>

[xi] Mark Schultz & Kevin Madigan, “The Long Wait for Innovation: The Global Patent Pendency Problem Center for the Protection of Intellectual Property”, Center for the Protection of Intellectual Property (2016) at 5, online: <https://sls.gmu.edu/cpip/wp-content/uploads/sites/31/2016/10/Schultz-Madigan-The-Long-Wait-for-Innovation-The-Global-Patent-Pendency-Problem.pdf>

[xii] “Index of AI initiatives in IP offices”, WIPO online: <https://www.wipo.int/about-ip/en/artificial_intelligence/search.jsp>

[xiii]BJ Copeland, “Artificial intelligence”, Encyclopædia Britannica online: <https://www.britannica.com/technology/artificial-intelligence>

[xiv] Steve Lohr, “The Age of Big Data”, The New 91��ɫ Times, (11 February 2012), online: <https://www.nytimes.com/2012/02/12/sunday-review/big-datas-impact-in-the-world.html>

[xv] Tabrez Y Ebrahim, “Automation & Predictive Analytics in Patent Prosecution: USPTO Implication & Policy” (2019) 35 Ga St U L Rev at 57 online <https://readingroom.law.gsu.edu/cgi/viewcontent.cgi?article=2978&context=gsulr>

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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 91��ɫ.

Fear Dealing and Post-Secondary Education

In a much anticipated decision, the Federal Court ruled against 91��ɫ in and directed the university to pay an interim tariff to Access Copyright. In 2011, 91��ɫ opted out of the Access Copyright licence due to increasing tariffs and implemented its own copyright guidelines. Crucially, the 91��ɫ 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 91��ɫ 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. 91��ɫ 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 91��ɫ and Osgoode Hall communities as well as the Toronto and 91��ɫ 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.

Air Jordan

December 8, 2016 began with newspaper headlines proclaiming: ; ; and .

Although the headlines exaggerate, the newspapers are correct about China’s top court’s decision that Michael Jordan can now claim the Chinese translation for JORDAN (written as 乔 丹 and pronounced as QIAO DAN) as his trademark and exclude others from such use. This decision is astounding for a number of reasons.

First, there is an internationally accepted standard Chinese translation for JORDAN as a country and as a name (written as 约 旦and pronounced as YUE DAN). So why would any court decide that Michael Jordan is identified specifically by the first translation? The decision is based on evidence that the Chinese media has referred specifically to Michael Jordan by the first translation since as early as the 1984 Olympics, . This evidence exposes a weakness in Michael Jordan’s case from a trademark perspective, and that is the fact that the Chinese translation was neither used by Michael Jordan nor used as a trademark. The evidence suggests that the Chinese translation was actually used by the public and used as information. Nevertheless, there is support for China’s top court’s decision that such use can enure to a specific owner in light of the American court decision of Coca-Cola v Busch.[1] The Coca-Cola Company advertised its products in association with the COCA-COLA trademark, which the public abbreviated as COKE. Since The Coca-Cola Company was not using the abbreviation, a competitor started using the abbreviation. The Coca-Cola Company stopped its competitor by persuading an American court that use of the COKE abbreviation by others should enure to it as the owner of the COCA-COLA trademark in order to avoid confusion.

Second, there is nothing distinctive about the name JORDAN. So why would any court decide that the first translation only identifies Michael Jordan and does not also identify anyone and everyone named Jordan? The decision is based on evidence that the Chinese company accused of taking the first translation from Michael Jordan : a NBA silhouette that was amended to reflect Michael Jordan’s physique, the number 23 that used to be on Michael Jordan’s basketball jersey, and the Chinese names of Michael Jordan’s children. This evidence could be dismissed on the basis that none of the registrations relate to trademarks or names actually belonging to Michael Jordan; the trademarks belong to the NBA and the names to his children. Nevertheless, there is support for China’s top court’s decision in light of academic criticism of passing off, the common law forefather of trademark infringement: “why should the court be astute to say that the defendant cannot succeed in doing that which he is straining every nerve to do?”

Third, there is at least a 10-year delay between the Chinese company registering the first Chinese translation in 2000 and Michael Jordan commencing lawsuits in 2012. So why would any court reward Michael Jordan for the inexcusable delay, especially when trademark registrations are supposed to be difficult to invalidate after passing the 5-year registration period? During that time, the Chinese company : registering almost 500 trademarks, investing over $10 million USD in annual advertising, establishing over 5,700 retail outlets, and attempting to become a publicly traded company. If it is wrong for one to benefit from Michael Jordan’s popularity, then is it not equally wrong for the other to benefit from the Chinese company’s decade of advertising? This evidence could be a reason behind China’s top court’s decision that Michael Jordan can only claim the Chinese translation for JORDAN with respect to the writing (乔 丹) but not with respect to the pronunciation (QIAO DAN). This means that although the Chinese company can no longer use the Chinese characters, it can continue to use the English Romanization by which it is also known. It can also use other Chinese characters with the same pronunciation, which will compete with and dilute the uniqueness of the Chinese translation that Michael Jordan just won.[3]

If Michael Jordan could have known that this would be the result, would he still commence the lawsuits in 2012 or would he choose to rebrand instead? His decision was probably pre-determined by the advice he sought. For example, an ad agency would know nothing of litigation but be quick to advise on rebranding. The marketing experts might realize that there is no mandatory Chinese translation for JORDAN. This means that Michael Jordan was free to ignore both the internationally accepted standard Chinese translation and the specific translation given to him by the Chinese media. He was free to create and register his own Chinese name, use it in all future communications, and publicize in future interviews that any other Chinese translations have nothing to do with him. Doing so could have neutralized the Chinese company and publicized its illegitimacy just as effectively, but without the years and fees spent on litigation. On the other hand, a law firm is not in the business of rebranding but would have ample advice on litigation. The legal experts might assume that Michael Jordan’s situation is the same as that of Jeremy Lin and Donald Trump.

Linsanity

Jeremy Lin now plays point guard for the Charlotte Hornets, the NBA team owned by Michael Jordan. When he filed applications in China for his trademarks, including JEREMY LIN and LINSANITY in English, he discovered that . His situation differs from that of Michael Jordan, however, because he does not have the option of rebranding. His Chinese name is independent, as it is neither a standard translation nor a media designation of his English name. His Chinese name is also much more personal, as it what his parents have called him since birth. Fortunately for Jeremy Lin, his boss already knows how to litigate and win a trademark case.

Trump Toilets

Donald Trump owns multiple trademark registrations in China for TRUMP, which he licensed on everything from steaks to universities. He failed to invalidate other trademark registrations in China such as and , and he was unsuccessful in invalidating a registration in 2006 for TRUMP construction services. That registration in 2006 blocked his repeated attempts for a decade to register TRUMP real estate services. His situation differs from that of Michael Jordan, however, . In light of the facts that China has a first-to-file trademark system, that the registration in 2006 is supposed to be difficult to invalidate after passing the 5-year registration period, and that TRUMP is a common word, it was nothing short of astounding . Although this happened shortly after the U.S. election, .

The two decisions illustrate that the Chinese courts struggle with foreign trademarks as much as Western courts. As countries continue to harmonize intellectual property laws and negotiate trade treaties, it is equally important for courts to make decisions that are in consistent with their own trademark practices and respectful each other’s trademark theory.

U. Shen Goh is a Ph.D. Candidate at Osgoode Hall Law School.

[1] Coca-Cola v Busch et al, 44 F Supp 405 (ED Pa 1942).

[2] NG-LOY Wee Loon, Law of Intellectual Property of Singapore (Singapore: Sweet & Maxwell Asia: 2008) at para [18.1.4].

[3] The problems and solutions associated with Chinese characters and their English Romanization are discussed in U. Shen Goh, “Branding Unfair Competition: What Foreign-Language Marks Mean for International Businesses” (2015) 15 Asper Rev Int’l Bus & Trade L.

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The post Transplanting the Canadian UGC Exception to Hong Kong: Part 3 appeared first on IPOsgoode.

Entitled "Can the Canadian UGC Exception Be Transplanted Abroad?", this article builds on the excellent����on the international law aspects of the Canadian UGC exception chaired by Prof. David Vaver. The panel also featured presentations by��Barry Sookman,��a partner of the law firm of��McCarthy Tétrault, and Prof. Joost Blom of the Faculty of Law of the University of British Columbia.

Although the panel presenters examined the international law aspects of section 29.21, including its compliance with the Berne Convention��and the WTO TRIPS Agreement, one issue that has not been covered much is whether this exception��would serve as an ideal model for other jurisdictions that are now undertaking digital copyright reform.��Using Hong Kong as an example, my forthcoming article will argue that the Canadian UGC exception, with appropriate modifications, can be—and should be—transplanted abroad.

This article begins by��discussing the efforts by the Hong Kong government to transplant copyright laws from abroad as part of its digital copyright reform. It further examines the benefits and drawbacks of legal transplants.��Using the US Digital Millennium Copyright Act of 1998 as a point of comparison, this article argues that the Canadian UGC exception provides a timely and attractive model for legal transplant.

The article then��discusses specifically the UGC exception proposal I submitted to the Hong Kong government. Focusing on two major aspects of legal transplant—modelling and adaptation—it discusses the policy choices the submission considered.��It also addresses the key objections raised by copyright holders and their industry groups, in particular their claim that the Canadian UGC exception may not��comply with the TRIPS Agreement.

This article concludes by recounting the Hong��Kong��government’s recently-released����on the parody consultation, which sadly echoed the concerns raised by copyright holders and their industry groups.��Although I strongly disagree with the government's preliminary analysis of the proposed UGC exception, this article takes the government's international compliance concerns seriously and offers additional modifications to further adapt the proposed transplant.

To begin with,��the government could easily build the relevant WTO standards into the proposed UGC exception, similar to the existing provisions in the Hong Kong Copyright Ordinance and the laws of other jurisdictions. The government could also introduce a fair dealing exception for UGC. If it takes the position that fair dealing exceptions meet international standards, a fair dealing exception for UGC will clearly meet those standards.

In addition, the government could introduce a quid pro quo arrangement that allows authors and copyright owners to use the internet users’ derivative creations for predominantly non-commercial purposes. If significant commercial interests are involved, the government could also introduce a profit-sharing arrangement that requires internet users and intermediaries to provide equitable remuneration to copyright owners. Levy systems, for example, have been widely practiced in Canada, Europe, the United States and other parts of the world.

Even if the government remains reluctant to legalize the creation of UGC, in light of the ongoing, unsettled international copyright policy debate, the government could introduce laws to prevent internet users from being criminally prosecuted or sued in civil actions. The government could also institute a five-year sunset period for the proposed exception��if it considers a permanent exception unsuitable for a rapidly changing licensing environment.

In sum, regardless of whether one agrees with the Hong Kong government's��highly restrictive interpretation of the��TRIPS Agreement, many ways still exist to address its international compliance concerns.��From the standpoint of examining the expediency and viability of transplanting the Canadian UGC exception abroad, it is also important to separate drafting problems from modelling problems.��A good model of legal transplant should not be abandoned when adaptations can be made to improve the transplanted law.

Peter K. Yu, an affiliated scholar of IP Osgoode, holds the Kern Family Chair in Intellectual Property Law at Drake University Law School in the United States. Born and raised in Hong Kong, he serves as the general editor of��The WIPO Journal��published by the World Intellectual Property Organization and chairs the Committee on International Intellectual Property of the American Branch of the International Law Association.

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