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

A dated August 5, 2022 from the United Kingdom’s High Court of Justice has the potential to expand the definition of “artistic works of craftmanship” under UK copyright law. Deputy High Court Judge Stone rejected a motion by the defendants, Liking Ltd. (“Liking”), to strike out Water Rower (UK) Ltd.’s (“WaterRower”) claim for copyright infringement in its WaterRower water resistance rowing machine on the basis that the machine is not a “work of artistic craftmanship” within the UK’s .

The Facts at Issue

As a member of the 1975 US National Rowing Team and having studied naval architecture, including wooden boat design, John Duke sought to design a wooden rowing machine in which the user has a “welcome emotional connection, as they would with a piece of furniture”. The first versions of this machine were developed between 1985 and 1987 and, since this time, there have been eight iterations of the WaterRower and it has grown to be an “iconic design” in the UK and US. Liking admitted to copying the eighth iteration of the WaterRower in creating its rival rowing machine, the TOPIOM Model 1. However, Liking argued that since the WaterRower could not be considered a “work of artistic craftmanship,” no copyright subsists in the WaterRower.

Court’s Decision

While the Court did not ultimately conclude whether the WaterRower is a “work of artistic craftmanship” under copyright law, Judge Stone ruled that the question of whether the WaterRower could be considered as such is one that requires a full trial and cannot be determined in summary judgment. This ruling was based on the leading House of Lords authority on works of artistic craftmanship, George Hensher Ltd v Restawile Upholstery (Lancs) Ltd.[1] Though Hensher provides a less than clear definition of what constitutes works of artistic craftmanship, Judge Stone considered that:

1. The artist’s intention is relevant to whether a work is artistic, and there is evidence about Mr. Duke’s intention as a craftsman; and
2. It is unclear that the WaterRower is less artistic than the examples of artistic works given by Lord Simon in Hensher, including hand-painted tiles and stained-glass windows.

As such, Judge Stone rejected Liking’s argument under Hensher that, on any view, WaterRower has no real prospect of proving their machine is artistic.

What could this mean for UK and Canadian copyright law?

If the WaterRower is found to be an artistic work of craftmanship at trial, this would indicate that the UK courts are adopting a more flexible definition of “artistic”, especially in relation to functional works that are generally considered more congruent with the patent framework.

In Canadian copyright law, works of artistic craftmanship are generally limited to those “intended to have an appeal to the aesthetic senses” (). Given the evidence of John Duke’s intention to create a wooden rowing machine that evokes emotion, the argument could be made that the aesthetic features of the WaterRower are protected under the Canadian copyright regime. However, since the WaterRower has been mass produced for the fitness industry in Canada, the Canadian would intervene and only permit the aesthetic features of the useful machine to be protected, so long as these features are distinctive. To date, neither WaterRower or Liking have applied for design protection in Canada, though other rowing machine designs�� have previously been registered in Canada.

[1] George Hensher Ltd v Restawile Upholstery (Lancs) Ltd��[1976] AC 64 (“Hensher”).

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Raenelle Manning is an IPilogue Writer and at 2L J.D Candidate at Osgoode Hall Law School.

The global fashion distributer, is currently engaged in a trademark dispute with Amber Kotrri, the owner of “House of Zana.” House of Zana is a fashion boutique in Darlington, England that specializes in handmade kimonos and other garments. In April 2022, ZARA submitted a notice of opposition to Kotrri’s trademark application, claiming that brand names were “conceptually identical” for customers. ZARA’s lawyers also urged Kotrri to change her business name and remove all existing branding. Kotrri has refused to comply expressing that it would cause “irreparable harm to her business”. The occurred on March 25 2022, where Kotrri defended her business arguing that there is no similarity between the two brands.

Under third party trademark owners have two months to file a formal opposition after a trademark application is submitted. Generally, an will assert that the similarity of the trademark will cause confusion or that the trademark application covers similar goods/services. At the tribunal hearing, ZARA that the brands’ oral and visual similarities will lead consumers to “misread, mishear, mispronounce and/or otherwise perceive House of Zana as ZARA.” Further, ZARA alleged that sales could be affected if the average consumer accessed the House of Zana website erroneously when trying to find ZARA. It seems unlikely that people would confuse the popular high-street fashion retailer with a small boutique. Despite the aural likeness of the brand names, the logos are quite dissimilar. The House of Zana logo is written in an italicized font; this is distinct from the bold ZARA logo. ZARA is a globally recognizable brand with , whereas House of Zana has one store location.��

Other small businesses have been victims of ZARA’s vigilant trademark enforcement. Last year, ZARA also filed trademark oppositions against 23-year-old , the owner of “Zara Ceramics.” She received a letter from ZARA’s attorneys demanding that she rebrand within a year because the business name undermined ZARA Home. She eventually changed the name to “Zara McLaughlin Studios.”. Tara Nguyen, the owner of a small online fashion retailer, “Tara Sartoria” is also currently fighting back against a trademark opposition from ZARA.

IPilogue Writer Sally Yoon recently discussed the concept of a trademark bully in one of her on Apple’s numerous trademark opposition filings. To reiterate, a is loosely defined as “a larger or well-known company that takes a hyper-aggressive approach to asserting their trademark rights, sometimes to the point of absurdity”. ZARA is an established multi-national business with the legal resources to target these smaller businesses with trademark oppositions and infringement. Small-owned business are not likely to have the means to fight back and may end up financially suffering . For example, admitted that responding to ZARA’s letter of opposition cost her business “almost all of their resources”. Fortunately, by publicizing the incident, Amber Kotrri was able to acquire free legal services and significant public support, including over 85,000 signatures on a demanding that ZARA withdraw their legal action.

While public empathy tends to lean towards the smaller business in these disputes, the encourages trademark owners to actively police potential trademark infringement. Trademarks are important for any sized business to protect their investments from potential exploitation. This raises questions about whether ZARA is a trademark bully or justifiably enforcing their trademark rights. ��The House of Zana trademark ruling decision is set to be delivered later this year.

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Prof. David Vaver presenting the 14th Annual Sir Hugh Laddie Lecture ()

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

On June 22, 2022, I had the pleasure of tuning into the 14th Annual Sir Hugh Laddie Lecture. Over the years, the lectures have been delivered by distinguished experts from across the globe. This year, the lecture was delivered by our own Professor David Vaver, Professor of Intellectual Property Law at Osgoode Hall Law School, the first Chair in Intellectual Property & Information Technology Law at the University of Oxford, Fellow of the Royal Society of Canada, member of the Order of Canada, and Member of IP Osgoode’s Advisory Board. The was delivered in person at the UCL Cruciform Lecture Theatre and live-streamed for viewers across the world.

Sir Hugh Laddie was born in 1946 and studied law at St Catherine’s College, Cambridge. He was a judge of the High Court of England and Wales, a professor, and a leader in the field of intellectual property. Since his passing in 2008, the Institute of Brand and Innovation Law (IBIL) at the University College London (UCL) Faculty of Laws has organized and delivered , in honour of Justice Laddie, the founder of IBIL.

Prof. Vaver began the lecture by summarizing strands of Justice Laddie’s thinking – he believed IP legislation, which is not different from other legislation, should be looked at as a whole, and that precedence he believed to be misguided should be challenged. He then mentioned three maxims that guided Justice Laddie’s career and offered a general view of his philosophy. A few examples, translated from Latin, being “if someone’s got a right, do something about it”, “in equity, good folk win, bad folk lose”, and “deep pockets shouldn’t always prevail”. As a result of the combination of these strands of thinking, Justice Laddie was able to firmly stand for what he believed intellectual property should and should not do, over the course of his career.

Additionally, Prof. Vaver recognized some of Justice Laddie's significant contributions to trademark, copyright, and patent law.��His contribution to trademarks included extending common law protection to unregistered geographical indications when he ordered , cautious of Cadbury’s marketing tactics potentially fooling customers.

In copyright, Justice Laddie warned us about the possibly of being misled by , that is, “chipping away and ignoring all the bits which are undoubtedly not copied may result in the creation of an illusion of copying in what is left”. Moreover, in an effort to determine what was actually copied in a work, he considered whether the work as a whole or its individual components should have their own copyrights. Eventually he rejected the concept of multiple copyrights, noting that legal millefeuilles with layers of different artistic copyrights would be “slicing too finely or indiscriminately”.

Lastly, Justice Laddie's approach to the Haberman Feeder case demonstrated his values regarding patentability.��, named after its inventor Mandy Haberman, is a specialty bottle which uses a slit valve and is especially useful for feeding babies with feeding difficulties. When the patent for the bottle was challenged for obviousness, Justice Laddie considered the long history of infant feeders (and the absence of anything like the Ms. Haberman’s bottle within it), utilizing unique perspectives to see the value in otherwise readily available solutions.

Overall, Prof. Vaver’s lecture was a wonderful way to remember his valuable contributions and to learn more about the diverse topics (as the title suggests) he dealt with in his career in intellectual property. Justice Laddie’s lasting mark on each of his cases makes it easy for us to remember annually why he remains a cherished figure in the field of intellectual property law.

You can watch UCL's full recording of the lecture here:

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Justice Carr’s passion for IP law pushed him to shape IP law in the UK in over 30 years at bar and bench. As a QC, Justice Carr led Zodiac to victory in 2013 against Virgin Atlantic before the UK Supreme Court, which overruled a century of case law to hold that damages were not payable for infringing a patent that had since been declared invalid in another lawsuit. Among the judgments he delivered in his four years on the bench was a landmark decision in a biosimilar dispute brought against AbbVie and a ruling just this year where he warned a trademark troll whom he held to be acting in bad faith that his activities would have consequences should he continue to pursue them.

IPosgoode was privileged to welcome Justice Carr to Osgoode Hall Law School many times. Last year, as part of IPOsgoode Speaks Series, Justice Carr delivered a memorable lecture titled: “” in which he argued that IP practitioners and judges should always consider the “big picture”: like no man is an island, no area of law can be viewed in isolation, IP included.

Professor David Vaver said, “In Henry Carr, IP law has lost far too early not only a leading exponent of the law but also a man of great kindness, joy, and vision.”

Professor Pina D’Agostino, IPOsgoode Founder and Director, added “He was brilliant and humble and generous with his time. I remember him fondly from my Oxford days when he would volunteer his time to so many activities to most recently when we were fortunate to welcome him to speak at IP Osgoode. Henry Carr was a luminary in the IP field and leaves behind an impressive legacy for the global IP community.”

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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 ���Ի���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.

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Due to the international and extra-jurisdictional aspects of enforcing and administrating patent law in general, and similarities between Canadian and European patent regimes, the concerns and issues raised in her are relevant in Canada and could trigger similar discussions regarding the Canadian patent system.

Patent law and Language

Is there anything inherent in patent law that makes it more susceptible to ambiguities than other fields of law? Dr. Thambisetty posits that patent law works as an intermediary between law and other fields of knowledge, such as science and commerce, which have their own dialects and languages. One can think of patent law as an interdisciplinary field, whose dialect is the common denominator of many mutually exclusive technical languages. This interaction leads to the creation of non-standard terms in patent law. Further, due to this unique position of patent law, the scale of non-standard terms that are used in this field is considerably larger than any other field of law.

Guidelines on Writing Patent Applications and Expectations��

The are written by one branch of the (“EPO”) to aid the EPO in its examining role. Guidelines are often used and quoted in the EPO’s . But they are not considered to be law and therefore are not binding. The EPO follows the guidelines in its decisions, however, it can also refrain from following them, on the basis that guidelines do not constitute law.

While the guidelines are not legally binding, patent applicants are expected to follow them in drafting their applications, and as a consequence, there is an expectation imposed on the applicant by the EPO.�� How does the EPO justify this inspirational role of its non-binding guidelines? According to Dr. Thambisetty, the EPO's institutional power over the��administration of patent law enables them to evade justifying their decisions.

Purpose of Ambiguity: Illusion of Legitimacy

One important role that ambiguity plays is that it adds to the legitimacy of the institution. Dr. Thambisetty argues that ambiguity is like an "endowment" to the office to give it legitimacy. The EPO, by exercising their power over rhetoric and language of the legislation, has kept the provisions ambiguous to give the appearance that special knowledge and expertise is required when dealing with the legislation.�� According to Dr. Thambisetty, this appearance serves two important and intertwined purposes which when combined, gives the institution the illusion of legitimacy.

First, it gives the EPO authority to exercise a relatively unlimited power over applicants and agents. This provides a possible answer as to why the EPO can impose expectations and not abide by them itself.

Second, it solidifies the EPO's position amongst other governmental institutions.��No other governmental institution can compete with the EPO, as they lack sufficient expertise and knowledge when dealing with patent legislation.��Therefore the EPO faces no competition in the regulatory sphere.

Dr. Thambisetty concluded her talk by emphasizing that an institution, which navigates ambiguity, can exercise a great deal of power over those who come within its jurisdiction. As long as this power can be enforced and harnessed, that institution��has an incentive to continue its ways. In her opinion the change has to come from inside the institution.�� So the question is, how much ambiguity are we willing to accept?

Nazli Jelveh is an IPilogue Editor and a JD candidate at Osgoode Hall Law School.

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TRANS-PACIFIC PARTNERSHIP

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

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

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

COPYRIGHT

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

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

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

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

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

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

PATENTS

Canada

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

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

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

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

United States

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

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

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

Australia

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

TRADEMARKS

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

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

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

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

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

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

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

IP OSGOODE IN 2015

Events

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

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

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

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

Coming Soon

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

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

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

Top 10 most read IPilogue articles of 2015

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

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To read the IPilogue's blog and commentary about the lecture, click .

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For those interested in domestic trade-mark practice, the decision demonstrates that the Federal Court is willing to take a broad approach to the term “interested person” in order to facilitate access to relief under the . For those focussed on wider concerns related to global brand management, the decision demonstrates the availability of defensive litigation tactics in the context of a global trade-mark dispute.

The Dispute: Formal Wear vs. Underwear

The action stems from a dispute in the UK between Thomas Pink Limited and a UK affiliate of Victoria’s Secret Stores Brand Management Inc, in which Thomas Pink sued the lingerie retailer for trade-mark infringement. Both stores use a stylized, block-letter version of the word “PINK” in association with their goods and services. However, whereas Thomas Pink largely focuses on formal shirts for men and women, Victoria’s Secret is best known for women’s clothing and undergarments (many with the word “PINK” festooned on the seat of said articles of clothing).

The two brands coexisted for several years until Thomas Pink filed a claim in 2013 with the UK in which it alleged that the use of the stylized PINK logo by the defendant was likely to cause consumer confusion. The statement of claim, according to the Federal Court of Canada, referred to the use of the word “Pink” by affiliates in the USA and Canada.

A previous Trade-Marks Office examiner in Canada had also expressed an opinion that confusion was likely between two of the parties’ marks, in particular Victoria’s Secret's application for a stylized PINK mark (App No ) and an existing registration held by Thomas Pink for its stylized PINK mark (Reg No: ).

Fearing liability in these jurisdictions, Victoria’s Secret sought declaratory judgments in both Canada and the USA (the Statement of Claim for the US action, filed in the Southern District of Ohio Eastern Division, can be found ).

“Interested Persons” and the Catch-all Provision of the Trade-marks Act

The Trade-marks Act does not provide for a specific procedure to be followed for an application for declaratory judgment of rights conferred through registration. The Act instead provides for a general power to grant relief under��:

Where a court is satisfied, on application of any interested person, that any act has been done contrary to this Act, the court may make any order that it considers appropriate in the circumstances, including an order providing for relief by way of injunction and the recovery of damages or profits and for the destruction, exportation or other disposition of any offending wares, packages, labels and advertising material and of any dies used in connection therewith.

It was through this catch-all provision that the defendant parties, Victoria’s Secret (Canada) Corp. and Victoria's Secret Stores Brand Management, were able to ground a proceeding on the basis that they qualified as “interested persons” under the Act. The term “person interested” is defined in s. 2 of the Act, and includes “any person who is affected or reasonably apprehends that he may be affected by any entry in the register, or by any act or omission…under or contrary to this Act”. Most jurisprudence on the term involves of the Act, which provides for an application to the Federal Court for an order that the register be struck or amended. Given that the term “interested persons” differs from the defined term in the Act and the term used in s. 57, it was an open question whether or not the different terminology should be afforded a different interpretation; the Court decided it should not.

The decision to interpret “interested person” broadly fell on two general principles. First, citing the Federal Court of Appeal’s decision in BBM Canada v Research in Motion Limited, () for the proposition that the Act, and in particular the “Legal Proceedings” provisions is “best met by an interpretation which promotes access to the courts that is as expeditious and proportionate as possible." Second, the Court held that what constitutes a “person interested” depends on the facts of each case. In particular, a “person interested” must demonstrate “a reasonable apprehension that a commercial interest that it has, or may have, may be affected”; and that the threshold for qualifying as an interested person is low.

The court concluded that the low threshold was met by Victoria’s Secret, given the litigation in the UK and a previous report by an examiner which expressed an opinion that confusion may likely exist between the two parties’ marks.

Practice Point: Interested Persons and International Protection

In my opinion, the decision shows that the Federal Court takes a liberal stance on who qualifies as an interested person under the Act. Given that for many large clothing retailers, international commerce is the norm rather than the exception, the decision also shows that certain defensive litigation tactics may successfully be pursued in Canadian courts in the context of trade-mark disputes triggered in foreign jurisdictions.

David Bowden is an IPilogue Editor and a JD Candidate at Osgoode Hall Law School.

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The McGarvie and Mosner paper takes advantage of new resources provided by��, a resource which allowed the authors to compile a systematic data set consisting of payments to authors for first edition print runs in the early part of the nineteenth century. The lion's share of data comes from Longman & Co, the London publisher of some of Sir Walter Scott's novels – one of the most popular authors in history.

Scott's career straddled a significant change to copyright law in Britain. The increased term limits to 28 years, or the rest of an author's life (if he or she were still living at the end of the term). One effect of this extension was that individual authors now had a more substantial right to sell to publishers. These authors could therefore demand higher rates of compensation in exchange for the exclusive licences often granted to publishers as a matter of course.

The results of this study are quite persuasive: following the increase in term limits, the average payment to authors nearly tripled. The authors note that some of this increase is driven by the inordinately large sums of money paid to Sir Walter Scott, as in the nineteenth century, famous authors received considerably more money for their work (a strong parallel with the situation today). Yet even excluding the payments to Scott, McGarvie and Mosner show that payments to the average author nearly doubled in the period following the 1814 increase.

Not everyone was able to benefit from the increase in copyright. As records on the British Fiction database suggest, Jane Austen was regularly disappointed in the terms offered for the sale of the copyright in her novels. In a , she notes with disappointment the deal offered by John Murray, her publisher for her novel Emma:

"Mr Murray's Letter is come; he is a Rogue of course, but a civil one. He offers £450 – but wants to have the copyright of MP [Mansfield Park] & S&S [Sense and Sensibility]. It will end in my publishing for myself, I dare say."

The authors urge caution, however, in using the study to make assumptions about current copyright term limits. The nineteenth century creative industry, after all, bears significant differences from our own:

It is important to keep in mind that the 1814 Act increased the length of copyright starting from a low base of pre-existing rights at 14 and 28 years. By comparison, modern changes increase the length of copyright starting from a high base of pre-existing rights, at 50 years or more beyond the death of authors. At extremely high levels of pre-existing rights, the incentive effects of an additional year are likely to be small. The costs of stronger copyrights in terms of limiting diffusion, however, may be substantial.

McGarvie and Mosner also emphasize that the study shows correlation and not causation. While the extension of copyright may be one factor that led to increased payments to authors, it is important to keep in mind the rapidly changing nature of industry and technology in early-nineteenth century England. The creation of modern finance allowed publishing houses to effectively borrow capital in order to increase their output; developments in paper-making technology probably helped reduce production costs; and the development of railways allowed all consumer goods to be sold in increasingly expansive geographical markets. Just like today, legal protections are meant to protect creative industries and incentivize production – but they do not provide a complete picture of the marketplace.

David Bowden is an IPilogue Editor and a JD Candidate at Osgoode Hall Law School.

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