Sally Yoon is an IPilogue Writer, IP Innovation Clinic Fellow, and a 3L JD Candidate at Osgoode Hall Law School.

The Australian government recently raised the alarm after noticing an , particularly driven by traffic to websites offering Japanese manga. The issue of most notably made headlines back in 2021 — manga piracy had surged by over 26 times, resulting in a in the same year. In Australia, unlicensed television shows, films, and music have seen a general decline since 2017, causing some to wonder why manga could be an exception. According to intellectual property experts, consumer convenience is likely driving these trends.

The recent explosion of streaming services has enabled widespread access to shows, films and music, whereas there appears to be an ongoing lack of legal access to manga. Even though streaming services come with a cost, many offer a wide range of plans at reasonable rates, and some even offer free trials. Moreover, more individuals appear to be willing to pay the fee rather than potentially expose their devices to malware — consumers who engage in private downloads were found to be 28 times more with malware. Blocked piracy sites were also found to be an effective deterrent to some of the less persistent individuals trying to access unlicensed content. The Australian government is currently in response to the need for an effective copyright system that takes into account shifting technological landscapes.

However, declining piracy trends in Australia may be unique. According to , a data company that measures global piracy to drive content protection, . With 17.4 billion visits, the United States had the most visits to pirate sites per country, followed by Russia and India. While Canada was not listed in the top ten, it may be too soon to breathe a sigh of relief, as developments in the streaming market may create conditions that will predictably lead to an uptick in demand for unlicensed content. Streaming services implementing new , increasing costs, or tightening the grip on may seem like a huge inconvenience to many, which can result in some consumers feeling like the legal avenues for accessing content are no longer worth it.

Moreover, the fragmentation of streaming services has been frustrating consumers. With over 50 video streaming services in North America alone, consumers find themselves subscribing to multiples services in order to watch their desired content. , the average streamer uses approximately 4 subscription services and desire “managed and consolidated services” to streamline their streaming experiences.

Overall, it is beneficial to investigate piracy trends, especially as we see significant changes in how we consume content. The rising demand for unlicensed manga suggests that there is a need to assess consumer access to legal content in order to prevent a slew of other piracy issues in the future.

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Sally Yoon is an IPilogue Writer and a 3L JD Candidate at Osgoode Hall Law School.

Museums have long been a source of education and inspiration, but technological advancements have allowed for exhibitions that display a unique intersection of modern technology and history. Exhibitions incorporating the use of AR and VR technologies enable visitors to and absorb educational content through interactive games. Museums have become some of the world's most innovative content creators, capturing the attention of individuals of all ages.

Engaging, accessible and a springboard for creative projects

What exactly does it look like when a museum embraces technology? In 2021, Athena Art Foundation, Colnaghi Foundation, National Portrait Gallery and Megaverse collaborated to launch the “” series. The series features digital, interactive versions of the gallery’s portraits in place of their traditional, static counterparts. Brought to “life,” the portraits tell their stories in an engaging and authentic style. The first portrait in the series featured Jem Belcher, a 19th-century bare-knuckle boxer and butcher who speaks of his accomplishments as one of the best boxers of his time. Additionally, these digital portraits are more accessible to a wider audience, including those with visual impairments.

Augmented reality (AR) has also been utilized to explore various perspectives. Last year, LACMA collaborated with Snapchat in the Monumental Perspectives Collection to explore LA community histories through AR. As a part of the collection, Sandra de la Loza’s “” is an AR animation to portray what has been lost and “a vision of new ecologies in the future.” The piece revives native plants in South Los Angeles and illustrates how the land is linked to time and history with the transition of seasons.

(Caption: Sandra de la Loza, What the Willow Whispers, 2022, in collaboration with LACMA × Snapchat: Monumental Perspectives, © Sandra de la Loza, image courtesy of Snap Inc)

A new box of legal issues

Museums will need to consider new issues as they explore new technological media. For example, they will need to weigh the potential benefits and drawbacks of allowing visitors to use various AR apps and tools to customize works. While some argue that such acts would be a defilement of fine art and would prefer that works are preserved in more controlled environments, others see that these technologies offer opportunities to study works in greater depth. Loic Tallon, Digital Chief of the Metropolitan Museum of Art, : “[t]he museum’s mission is to collect, preserve, and study works of art … if someone is making an AR experience out of the collection, I see it as pure mission fulfillment.”

Furthermore, remains a key issue that can easily be complicated when it comes to these technologies. For AR works that may be the product of multiple copyright holders, the museum must make sure that proper steps are taken to locate and obtain all permissions or licenses for the use of the work. In this process, it will be important to discuss with artists the extent to which their work is original and what is sourced from third parties.

Annually held conferences such as the “” by MuseumNext, bring together members of the world’s leading institutions, to continue exploring the ways technology can be integrated in exhibitions in the future. If you love both history and technology, chances are your local museum has something for you.

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Katie Graham is an IPilogue Writer and a 2L JD Candidate at Osgoode Hall Law School.

On January 10, 2023, Justice Pratter of the United States District Court for the Eastern District of Pennsylvania that storing melted rink ice from championship hockey matches in a piece of memorabilia is not copyrightable. Justice Pratter confirmed that the scope of copyright law extends only to the expression of ideas, but not the ideas itself.

The , William Grondin, sued sports merchandise company Fanatics Inc. (“Fanatics”) for copyright infringement. Mr. Grondin alleged that he owns copyright for “Slice of the Ice”, a Stanley Cup-shaped piece of hockey memorabilia incorporating melted ice from championship hockey games. He also alleged that Fanatics unlawfully copied his work in its own ice-filled hockey puck-shaped memorabilia. To establish copyright infringement, the following criteria must be met:

1. Grondin owns valid copyright in “Slice of the Ice”; and
2. Fanatics unlawfully copied the original, protectable elements of Mr. Grondin’s work.

While the court found evidence that Mr. Grondin owned valid copyright in “Slice of the Ice”, Fanatics succeeded in its motion to dismiss on the basis that the elements allegedly copied from Mr. Grondin’s work were not copyrightable.

Justice Pratter relied on the longstanding notion in copyright law (as early as ) that copyright does not protect ideas, only the expression of ideas. The sole element which Mr. Grondin alleged Fanatics copied was the “hockey puck-shaped piece with a hollow cavity into which melted rink ice is placed.” The idea of storing melted rink ice in hockey memorabilia is not protected by copyright. The question became whether Mr. Grondin’s specific expression of this idea in “Slice of the Ice” is copyrightable and if Fanatics substantially copied this expression.

The court Fanatics’ argument that the use of a hockey puck to express the idea of storing melted ice in memorabilia is inevitable and simply inherent in the underlying idea. This argument was supported by the fact that Fanatics also stored melted ice in Stanley Cup- and snow globe-shaped memorabilia. However, Justice Pratter that hockey pucks are inseparable and indispensable from the sport of hockey. Allowing Mr. Grondin to establish substantial similarity merely on the shared use of this element would effectively provide him a monopoly on the underlying idea of hockey memorabilia. The court also held that the elements of the hockey pucks in both works, notably its clarity and hollow cavity to hold melted ice, are merely utilitarian features which permit the idea of a water-filled puck. These utilitarian features are not protected by copyright. Since the sole element by which Mr. Grondin alleged copying by Fanatics is an idea not within the scope of copyright protection, the court held that there was no basis for a copyright infringement claim.

Interestingly, the court granted the without prejudice. This ruling leaves open the possibility that the action could be amended. Alternatively, Mr. Grondin could allege copying of other aesthetic or non-utilitarian features from which substantial similarity might be established against Fanatics or other sports companies.

(Alt Text: Comparison of Mr. Grondon’s work with the allegedly infringing hockey memorabilia; Source: )

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Anita Gogia is a IPilogue Writer and a 2L JD Candidate at Osgoode Hall Law School.

In , the Federal Court of Canada invalided patents for interactive program guide (“IPG”) technology and clarified a reasonable royalty as the appropriate remedy had the patents been found valid and infringed.

Rovi supplies , and Videotron is a telecommunications corporation providing cable services and . IPGs are interactive menus that you may have used to select/search programming listings rather than viewing them on a paper guide.

Rovi’s revenue model is to license a portfolio for a rate without consideration for the number of patents. Videotron did not renew its license which expired in 2016. Videotron claimed they licensed to avoid litigation, and later realized that Rovi’s portfolio is obsolete. Notably, Rovi wanted to double the royalty rate and when Videotron asked Rovi to “.” Rovi did not provide an adequate answer.

Rovi that Videotron infringed four patents, which Videotron were invalid. Rovi’s patents were held due to obviousness and anticipated knowledge in consideration of prior art and knowledge of the skilled person. Rovi’s patents were secured in the 1990s, one of which claims a “”.  The Court held that it was obvious to the industry that IPGs would be prominent in the future and that 1990s were “.” Therefore, or obvious extensions.

The Court’s for denying the remedy of accounting of profits is significant, as not much caselaw has clarified this equitable remedy. Videotron’s products are classified as “complex products” since the patented technology is a small part of the overall value of the product —- not analogous to a pharmaceutical product. With standard patent cases, patentees can be granted ‘accounting for profits’ as a remedy. The availability of such a remedy is questionable with non-standard cases. The for awarding an ‘accounting for profits’  are as follows:

First, the Court did not find undue delay by Rovi in pursuing litigation against Videotron.

However, upon examining Rovi’s conduct, the Court found that Rovi operated in bad faith — that Rovi was using “” and not disclosing the list of infringed patents to Videotron to prevent them from designing around them. The recognition of “hard-ball” as a characteristic of bad faith conduct is a novel interpretation of a traditional equitable ground.

Second, the judge recognized Rovi’s “” into royalty deals and took note of Rovi’s delay in prosecuting patents which results in the problem of “holdup”. Granting an accounting remedy in this case would set an undesirable precedent contrary to the purposes of IPR as it gives patentees leverage in negotiations where the royalty would reflect the .

Third, Rovi that Videotron wilfully infringed their patents, however, the judge concluded that Videotron refusing to renew their agreement was actually based on a “reasonable assessment of the necessity of the patents”.

As the court considered the fourth factor neutral, it moved on to an interesting analysis of the complexity of calculating an accounting of profits — that inventors are entitled to that portion of which is causally attributable to the invention. However, patentees seeking an accounting remedy must provide a sound and reliable way to calculate profits. Here, the Courts found that Rovi’s proposal for calculating Videotron’s profits complex and unreliable, said to be based on “” evidence. The court noted caselaw describing that “.”

Instead, the Court accepted Videotron’s proposal of the appropriate remedy as a “.” It was a safer approach to argue a reasonable royalty cap of $150,000 per feature based on design-around rather than arguing that the royalty was zero, since the non-infringing alternative is to remove the IPGs all together.

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Emily Xiang is an IPilogue Writer, a Senior Fellow with the IP Innovation Clinic, and a 3L JD Candidate at Osgoode Hall Law School.

At last, the on the protectability of the subjects of ‘pop art’. In 1984, Vanity Fair magazine received a licence from photographer Lynn Goldsmith to use her 1981 portrait of Prince, which she had shot on assignment for Newsweek. Fast forward to 2017, when Vanity Fair published a special issue to pay homage to the recently deceased musician that featured ‘Orange Prince’ – Andy Warhol’s pop art depiction of Goldsmith’s photograph. The question of whether Warhol’s Prince silkscreens may be considered fair use has now made its way up to the US Supreme Court, and on October 12th of this year, . This is the outlining the arguments that were made in the matter of Andy Warhol Foundation for the Arts v Goldsmith.

In determining fair use according to the statute, one of the primary points of contention involved the meaning behind the of the alleged use. The Warhol Foundation contended that the purpose of ‘Orange Prince’ was to comment on modern society, thereby conveying unto the original an entirely different meaning and message. Lisa Blatt, representing Goldsmith, proposed that one may just as easily argue that the “purpose” of both uses was the commercial licensing of the works for publication. Blatt’s arguments were supported by Yaira Dubin, representing the Justice Department, who also highlighted the foundation’s commercial licensing of Warhol’s work, saying that “using another artist’s work as a starting point to turn around and compete directly with their original has never been considered fair.”

Of course, the magnitude of such a household name as Andy Warhol’s was not lost to the court. Justice Kagan questioned the influence such a name might have on the query: “Now we know who Andy Warhol was and what he was doing and what his works have been taken to mean. So it’s easy to say that there’s something importantly new in what he did with this image.” On the other hand, Justice Kagan also acknowledged that there must be a reason why Warhol’s art is hung up on the walls of museums: “[W]hy do museums show Andy Warhol? They show Andy Warhol because he was a transformative artist, because he took a bunch of photographs and he made them mean something completely different.” 

The Supreme Court judges addressed a statement made by the , which ruled in favour of Goldsmith. The Court of Appeals had warned that judges “should not assume the role of art critic and seek to ascertain the intent behind or meaning of the works at issue.” Justice Alito, in particular, seemed to disagree with the statement, pondering the kind of perspective that would be appropriate in determining such distinctions: “Well, suppose that [somebody]...made an almost exact copy [of the Mona Lisa]…If you showed [the two works] to most people today, they would say, well, all right, brown dress, blue dress, red dress, doesn’t make any difference, right?...But, if you called somebody who knows something about Renaissance art, the person would say that makes a big difference.”

The commentary strikes at the ambiguity often found in determining cases involving intellectual property, if only because there is an inherently subjective element to construing creations of the mind. However, though patent law has the “person of ordinary skill in the art” standard and trademark law has the “ordinary casual consumer somewhat in a hurry” standard, copyright law often relies on a judge’s evaluation of whether infringement has occurred.

There is much to be anticipated from the Supreme Court’s final decision, the kind of effect such a decision might have on the world of art and photography, as well as whether a ruling in favour of the foundation would indeed “decimate the art of photography by destroying the incentive to create the art in the first place,” as Blatt argues.

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Govind Kumar Chaturvedi is an IPilogue Writer and an LLM graduate from Osgoode Hall Law School.

On 30 September 2022, the much-awaited for Alexander v Take Two Interactive Software Inc. & Ors. was released. In the the jury stated that Defendants had not proven fair use, the Plaintiff (Alexander) should receive $3,750 USD for actual losses from the Defendant’s use of the tattoo designs, and did not answer as to profits can be attributed to the Plaintiff for use of the tattoos.

Alexander inked WWE professional wrestler Randy Orton with a total of including tribal tattoos designed by another tattoo artist which Alexander extended per Randy Orton’s request. Take-Two created the WWE 2k video game series, which use to realistically reproduce the featured wrestlers from a photograph. Take-Two Randy Orton’s likeness from WWE. WWE had a right to reject Take-Two’s game if it did not find it authentic. So, Take-Two reproduced Orton’s tattoos in the game to keep the depiction of Randy Orton authentic.

Arguments

Alexander filed a before the District Court of Southern District Of Illinois for copyright infringement under in and moved for partial summary judgement on the grounds that she never authorized WWE to recreate her tattoo. The Defendants also filed a motion for partial summary judgement on the basis of three : 1) de minimus, 2) fair use doctrine and 3) implied license.

The Court's Conclusions

The Court, by dated , rejected the Defendants’ motion and allowed the Plaintiff’s motion for Partial summary judgement. The court found that protection of a work required a minimal degree of creativity, or intellectual production. In this context, a work is protectable once it is affixed to a tangible medium, and the tattoo fulfilled this affixation. The court opined that the dispute to copying does not arise as the defendants had admitted to copying the tattoo. Citing it stated that the burden is on the Defendant to prove the copying was authorised. Since Alexander had proven her copyright in the tattoo designs and that it had been copied, she met her onus and now the Defendants needed to prove authorisation for their reproduction.

Rejecting the defendant’s arguments, the Court stated that an implied license does not apply to this case. An only authorises the licensee to use the work, not further license it out.,  Alexander impliedly licensed Orton to disseminate and display the tattoos as part of his likeness, but due to the vague licensing terms between parties, the issue was triable and could not be allowed in partial summary judgement.

On fair use, the Court  stated that it needed to consider in determining whether the doctrine applies: (1) the purpose and character of the use, including whether  such use is of a commercial nature or is for nonprofit educational purposes; (2) the nature of the copyrighted work; (3) the amount and substantiality of the portion used in relation to the copyrighted work as a whole; and (4) the effect of the use upon the potential market for or value of the copyrighted work. The Court found in favour of the Plaintiff in second and third issue and stated that the first and fourth issue were triable.

In assessing damages, the jury considered the value of the tattoo to the video game, what role it played in the Defendant’s profits from WWE 2K series, and the lost license fees for Alexander. The jury’s $3,750 USD award only accounted for the lost license fees, as the importance of the tattoos for the profit from the video game could not yet be inferred.

Would Alexander Have Won this Case in Canada?

In the US, the author only needs to show that that their work was original and was copied, and the defendant must prove consent. In Canada, the Plaintiff has the onus to prove consent. of the Canadian Copyright Act clearly requires the copyright owner to prove that (1) the defendant did something the owner alone had the right to do, and (2) the defendant did it without the copyright owner’s consent. However, the US law does not contain the word consent. Consent’s importance was recently affirmed in , where the Canadian Court upheld the Plaintiff’s onus to prove consent was not given.

Applying this consent principle to the present case, the stated that Catherine Alexander never consented as she  refused and advised WWE that she did not give them permission to copy, duplicate or reproduce her design. So, Catherine Alexander might have also successfully proven absence of consent and would likely have had a similar outcome under Canadian copyright law..��

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Alice Xie is an IPilogue Writer and a 1L JD Candidate at Western University’s Faculty of Law.

Do you remember contemplating whether you liked a trending pop song enough to spend $4.99? With the rise of online streaming services like Spotify and YouTube over the last two decades, listening to music has arguably changed for the better. However, with the convenience of streaming music through these digital platforms, the music industry has also had to deal with a wide range of copyright issues, including online copyright infringement. A look at streaming giant Spotify’s recent significant copyright battles provides some insight into the issue of on online streaming platforms.

Spotify’s Recent Significant Battles

Spotify has encountered its fair share of copyright infringement lawsuits filed by music artists, record labels, and publishers. In 2015, guitarist David Bowery filed a lawsuit against Spotify USA, a Spotify subsidiary, for streaming songs without first , which are the standard payment for reproducing or distributing a song. Spotify settled the lawsuit with . In 2017, music publishing company Wixen also filed a against Spotify USA, seeking $1.6 billion. Wixen claimed that Spotify from its represented artists, which resulted in the artists and publishers not receiving royalties when customers streamed their work. Spotify and Wixen mutually agreed to in 2018. In 2020, two entertainment companies filed against Spotify and other streaming services for not receiving royalties for their streams. The issue of inadequate artist compensation is not unique to Spotify, but applies to all streaming services.

New Copyright Law: A Solution for Spotify

The relevant US copyright law is , which states that a person or entity seeking to distribute a musical work must first obtain a compulsory license. One can obtain a compulsory license by filing a notice of intention (“NOI”).�� In 2018, the US Congress passed a law called the (“MMA”), which seeks to alter the licensing system for the better and take charge of the compensation process. Title 1 of the MMA is especially relevant, as it establishes a for digital music providers. The blanket licensing system covers all musical works available for compulsory licensing, which means that streaming services will no longer need to file an NOI for each song or work. The MMA also established the Mechanical Licensing Collective (“MLC”), which administers the blanket licenses and more notably, maintains a containing information on the musical works and their copyright owners, if known. The law was set to .

Inadequate artist compensation may be partly explained by the difficulty of accurately identifying the rightsholders of each work, given the volume of music works. Digital service providers cannot locate the recipients of royalties. Lesser-known music artists are even more vulnerable to copyright infringements in this way. The MMA ideally solves this difficulty through the public database, which centralizes all information relating to musical works into one place. This provides parties like streaming services seeking compulsory licenses with a recognized source of rightsholders from which to draw. Additionally, the database validates artists’ possession over their works that will not be easily taken. If correctly implemented, the MMA can advance the collective goal of creating a digital music ecosystem where streaming services grow their platforms by legally acquiring distribution rights and artists, publishers, and record labels are rightfully compensated for their work. We may look to future copyright infringement cases to inform the �ѲѴ�’s effectiveness.

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Emily Xiang is an IPilogue Writer, a Senior Fellow with the IP Innovation Clinic, and a 3L JD Candidate at Osgoode Hall Law School.

Over 3 years have passed since New 91��ɫ’s District Court a ruling in the matter of Andy Warhol’s “Orange Prince”, and the ripples of the case have finally made their way up to the Supreme Court. On Wednesday, October 12th, 2022, the judges of the US Supreme Court heard from both sides, and considered whether Warhol’s , which he had based on a 1981 photograph of Prince by photographer Lynn Goldsmith, may be considered a use that is “fair”.��

The doctrine of fair dealing in Canada has long played an important role in balancing the scales of copyright law from leaning too far in favour of copyright holders. The fair dealing exceptions recognize certain uses of protected works as benefitting society, and thereby safeguard those uses from findings of infringement. The parallel doctrine in the US tracks along similar reasoning and is known as the ‘fair use’ doctrine. In determining whether a use of a copyrighted work is “fair,” courts consider numerous factors, including whether the use in question is “transformative” of the original material.

In , the Supreme Court was invited to assess whether a work was “transformative” when it conveys a different meaning or message from its source material, or whether, in cases where the accused work “recognizably derives” from its source material, judges are forbidden from deriving or considering such meanings. It was an engaging proceeding with an abundance of references to pop culture icons and current affairs, and was punctuated at times by laughter in the courtroom at an amusing hypothetical posited by one of the judges.�� 

Roman Martinez appeared on behalf of the Andy Warhol Foundation, and clarified the issue at hand, as well as the Foundation’s position: “[b]oth courts below agreed, and Goldsmith doesn’t dispute, that Warhol’s Prince Series can reasonably be perceived to convey a fundamentally different meaning or message from Goldsmith’s photograph. The question in this case is whether that different meaning or message should play a role, any role, in the fair use analysis. Our answer is yes.” Martinez argued that while Goldsmith’s original photograph captured a “vulnerable-looking Prince,” Warhol’s depiction turned it into a commentary on celebrity and fame – an entirely different meaning and message.��

The judges somewhat pushed back against this argument. Justice Elena Kagan suggested that in Hollywood, while a movie adaptation of a book might introduce plenty of new elements that may make a derivative work “transformative” under Martinez’s proposed test (“...new dialogue, sometimes new plot points, new settings, new characters, new themes”), one would still expect some sort of licensing agreement to be required.

Chief Justice John Roberts and Justice Clarence Thomas also commented on Martinez’s arguments, albeit in more lighthearted terms. The Chief Justice wondered whether a claimant who depicted Prince with “a little smile on his face” may advance the argument that the “meaning or message” of the work was fundamentally changed to convey that “Prince can be happy” or that “Prince should be happy.” Justice Thomas in turn asked Martinez to imagine the Justice at a Syracuse football game as a Prince fan, “which [he] was in the ‘80s.” Justice Kagan interjected, “No longer?,” to which Justice Thomas replied, “Well…so only on Thursday night.” This elicited some laughter in the courtroom. Justice Thomas continued, “And I decide to make one of those big blowup posters of ‘Orange Prince’ and change the colours a little bit around the edges and put ‘Go Orange’ underneath. Would you sue me for infringement?,” insinuating that the changes and add-ons may be considered to convey a new “message” to Warhol’s work, under the Foundation’s proposed test. In response, Martinez emphasized that the verdict in both scenarios would largely depend on the degree of transformation in meaning or message, as well as the other factors in the ‘fair use’ analysis, such that a holistic assessment may be applied.

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Michelle Mao is an IPilogue Writer and a 2L JD Candidate at Osgoode Hall Law School.

Moderna and Pfizer battle’s over the inventive process of their respective mRNA COVID-19 vaccines revisit the negative associations of profit, monopolies, and optics in patent litigation. On August 26, 2022, Moderna released a that they will pursue a patent infringement lawsuit against Pfizer/BioNTech for their use of Moderna’s registered mRNA patents in creating the Pfizer COVID-19 mRNA vaccine. Moderna claimed that they had registered foundational mRNA patents between 2010 and 2016. , however, is that while Moderna is pursuing an infringement claim, they clarified that they will not prevent future sale of Pfizer vaccines, will not seek damages from sales of Pfizer’s vaccines in certain circumstances, will not seek a cut of Pfizer’s sales from the US government or from the 92 low and middle-income countries that had trouble accessing COVID-19 vaccines. While the specific remedy sought by Moderna is not defined in the press statement, Moderna wants a chunk of Pfizer’s profits, such as through .��

The strategic choice of Moderna’s press statement to detail remedies they will not pursue without revealing the precise  remedies they will pursue has led critics to call Moderna out for using “optics” and the quasi-sacrosanctity of intellectual property to further profits and strengthen their position in the mRNA pharmaceutical business. The balance that patent law seeks to achieve is well known, with , of the United States Constitution defining the purpose "to promote the progress of science and useful arts, by securing for limited times to authors and inventors the exclusive right to their respective writings and discoveries." Moderna sought to protect themselves from the feeling of “unfairness” that arises when another appropriates your labour (in this case, Moderna’s labour of researching mRNA-based vaccines). Appealing to deeply engrained values of ownership, investment of resources and labour, and protecting themselves against misappropriation of their invested resources Moderna can protect its brand image while seeking billions of dollars from Pfizer in royalties or other types of remedies by, for example, appealing to deeply engrained values of ownership, investment of resrources and labour, and protecting themselves against misappropriation of their invested resources.��

The values at issue in this lawsuit speak to the current flaws of patent laws around the world, and the lawsuit’s impacts will be especially prominent as it relates to the COVID-19 vaccine that has saved almost in just one year. Currently, the Moderna versus Pfizer patent litigation is only being restricted to high-income countries solely on Moderna’s not to seek money from sales in low-income countries. However, reliance on this promise may be flimsy as Moderna has already its promise to not enforce patents through litigation during the pandemic to enforcement in high-income countries (as seen now). This exposes some concerns about our patent laws. For example, this lawsuit may have a chilling effect on future mRNA vaccine development. Another concern is how low- and middle-income countries (LMICs) may suffer from future patent lawsuits where promises not to seek sales from LMICs are not made and in the context of . Balancing the need to encourage rapid responses to global emergencies that require new technologies and access to these technologies all while discouraging monopolies will need to be scrutinized as we head out of the COVID-19 pandemic.��

So what solutions are available to prevent slowdowns in innovation and concerns for access in LMICs? What solution could be to make amendments to a country’s patent act, such as Canada’s which included such amendments. However, the impacts to the patentee could be significant, especially in terms of profits in a national or global emergency. While the amended Patent Act ensures payment of remuneration which the Commissioner of Patents deems adequate in of the Patent Act, this provision may not be feasible in countries with weaker economic power. A statutory defense to patent enforcement could be another solution, as seen in the American approach in This section allows patent “infringement” if the manufacturers are manufacturing goods for the use of the government in difficult times. Interestingly, we are already seeing this defense being used by Moderna themselves claims made against them. While these are two approaches available, the countries implementing these adjustments to patent protections are high-income countries with economic power to guarantee patentees are adequately recompensated, leaving the issue for LMIC concerns unaddressed. Additionally, these solutions also may not adequately address the chilling effect on innovation as the statutory defense is limited and the consequences of patent litigation are expensive.

Currently, no court decisions have been rendered regarding Moderna’s patent infringement claim against Pfizer. However, given the novelty and scale of the COVID-19 pandemic, there is no doubt that whatever decision is made, it will become a new precedent for future patent infringement claims of this scale.

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Amin Hosseini is an IPilogue Writer and an LLM Candidate at Osgood Hall Law School.

In recent years, many technical mechanisms to protect intellectual property have given their helping hands to IP owners and technology developers to enhance IP management and protection. is a prominent example.

content recognition (ACR) refers to the ability of an application to identify content based on sampling a portion and comparing it with a source service. ACR technologies are potential tools that can increase rights through several specific use cases. The European Union Intellectual Office (EUIPO) published a discussion paper, the second stage of a project begun in 2019, titled "" on September 22, 2022, and thoroughly examined the use cases, which are as follows:

1. Solutions to detect IP-infringing listings on e-commerce marketplaces;
2. Smartphone solutions to detect genuine or counterfeit products;
3. Solutions to recognize 3D printing files and 3D-printed products;
4. Solutions to protect and manage copyright and neighbouring rights on content-sharing services; and
5. Solutions to identify live streams of IP-protected content.

The analysis for each use case includes a description of the problems that ACR solutions can solve, as well as the benefits and drawbacks, not only from a technical standpoint but also in dealing with complex legal issues.

Data is indispensable in training recognition solutions to identify infringement on online marketplaces. To ensure accuracy, content recognition technologies require high-quality data and computational resources. E-commerce marketplaces need many photos, descriptions, and other metadata to create, train, and use recognition technologies. In addition to being a costly process, it is challenging to determine what legally constitutes an infringement of IP. That is why human experts must evaluate the infringement in question.

For smartphones, where they perform to detect genuine or counterfeit products, the quality of the datasets is critical in the training and improvement of the detection models since it allows the ACR technologies to analyze and compare the data gathered and received. This is done by , which is conducted by recognizing an extract of a piece of content. Data collection, storage, and processing necessitate  numerous computer resources when feeding databases with captured photographs produced by smartphone users. Resources required to create, store, and compare fingerprints might vary significantly depending on the product and the fingerprint's complexity.

The scenario is different for 3D files and products. The use case employs to detect IP infringement. Since there is no requirement for a reference database, it is not necessary to use a lot of data or processing power to recognize previously watermarked files or printed products. However, it can take a lot of resources to add watermarks to each  copy of a file or printed product and then detect them once more. In addition, without standardized watermarking methods, a system employing one technology cannot read a watermark produced by a system employing a different technology.

Most content-sharing services rely on fingerprinting-based solutions offered by third-party vendors. Hence, it is exceedingly challenging to locate reference datasets for developing ACR systems because not all businesses use the same test environments. Furthermore, based on , for content-sharing service providers to take appropriate action and make sure that specific copyright-protected content is not accessible on their platform, IP owners must provide them with all relevant and necessary information. The effectiveness of this mechanism will depend on how this provision is put into practice and how well the relevant parties work together.

Cases where ACR systems incorrectly match the content supplied to a content-sharing service with content in the reference database and inappropriately restricted it is also a significant legal challenge, especially when they impair users' .

According to the EUIPO`s paper, another issue is the lack of standards and interoperability between various fingerprinting-based solutions, which forces IP owners to submit their materials or related fingerprints to various content-sharing services and solution providers without the benefit of specific procedures.

A further challenge for ACR technologies in content-sharing platforms is applying specific copyright limitations or exceptions to content.�� A human review procedure where IP owners and users can voice their opinions may be necessary. The removal of perfectly lawful content can also be a problem if someone makes erroneous or abusive claims of ownership over it.

Finally, feeding the content into the ACR reference databases to discover unauthorized streams is a problem in the context of securing live-streamed events, especially with fingerprinting solutions. There needs to be further agreements and technological arrangements between IP owners and ACR systems.

Further Reading

For more information on Artificial Intelligence & Intellectual Property see Daniel Kiat Boon, Detecting and Prosecuting IP Infringement with AI: Can the AI Genie Repulse the Forty Counterfeit Thieves of Alibaba? (November 29, 2019). Artificial Intelligence & Intellectual Property, 2019, Available at SSRN:

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