A Brief History: Copyright Laws and Copycats

In Canada, the����protects all original creative works, regardless of their commercial value. The����of this act is, among other concerns, to safeguard an artist’s exclusive right to ownership over their work, which is essential for promoting creativity and ensuring that artists can safely and openly share their work without losing social or economic recognition.��

Historically, imitation has been common in the art community, even when accessing and replicating specific pieces of artwork was much more difficult. However, technology has drastically changed the circumstances. Now, it is easier than ever to find an image of an original art piece online and use digital programs to replicate it. Although some people use these methods for economic gain, fraud, or deception, it is important to understand that not all replication is done with malicious intent. A perfect example of this is fanart.

What is Fanart?

“Fanart” is artwork created by members of a fandom, typically featuring a replicated or altered version of the original artist’s creations. It can include various means of re-imaging the original creation including drawing a character in your own art style or taking creative liberty with the story line. Nearly all fandom communities have and support fanart. Some of the most notable communities include Harry Potter fans, anime fans, and Disney fans. Nowadays, if you search for any recognizable content creator or title in an app like Instagram, you will immediately see results from both the original artist and fan adaptations. While some artists may feel proud about inspiring fanart, others may not enjoy the replication, especially if they are not acknowledged as the original artist.

Is Fanart an Infringement of Copyright?

The short answer is yes.

Copyright laws ensure that original content creators have the to their works, including derivative pieces based on their original creations. According to����of the Copyright Act, copyright infringement includes selling, distributing, or publicly exhibiting a copy of a work without permission. Therefore, all fan art is an infringement of the original content creator’s copyrights.

The scope of social media makes it challenging for smaller artists to track down imitators, and therefore, legal remedies can be difficult to pursue. Additionally, fanart creators may be able to argue a defence of fair dealing.

The law states that “��for the purposes of… private study, education, parody or satire does not infringe copyright.” Many fan artists are amateurs, and therefore, can argue for study, education, or parody; however, there are limits to this argument. The����of fair dealing is to allow copyright protected works to be used in specific contexts for the benefit of society. Therefore, the court engages in a case-by-case assessment of whether particular pieces of fanart qualify under “fair dealing.”����such as “the amount you are copying, whether you are distributing the copy to others, and whether your copying might have a detrimental effect on potential sales of the original work” are evaluated. It is important to note that the Supreme Court of Canada has recently approached copyright law with the goal of finding a “��between the rights of users and of copyright owners.”

Artists in the Digitized World

Because of the difficulty of regulating online content and platforms, artists are now encouraged to . This includes using watermarks, a copyright notice on their website and social media platforms, and tools like “”, which search for unsolicited use of their content online. , such as checking their fandom’s community guidelines, making it clear that their work is unofficial, not using fanart for commercial purposes, and asking the original artist for permission.

Despite both creators’ and fans’ efforts, many online artists have moved their content to paid-subscription platforms like to better safeguard their IP rights and the commercial value of their artwork. These legal and economic consequences are detrimental to the original artist, and perhaps reaffirm that imitation is not always the sincerest form of flattery.

Written by Adele Zhang, a first-year JD student at Osgoode Hall Law School. Adele is interested in the intersections of IP, sports law, business law, and employment law.

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, the Deputy Minister for Innovation, Science and Economic Development Canada (ISED), kicked off the event with opening remarks. He emphasized the importance of bringing together IP members from academia, the private sector, and the public sector to foster an inclusive IP community, inspire innovative thinking, and work together to improve Canada’s intangible economy. Kennedy noted that events like this would help develop a more durable IP structure for Canada’s national and international interests.

Kennedy concluded by emphasizing the importance of developing IP knowledge and structures within the growing digitized economy. By expanding Canada’s IP infrastructure, our institutions would be better equipped to utilize data strategies for evidence-based decision-making in a variety of spheres, including economic policies, business initiatives, and national security programs.

Following Kennedy’s introductory remarks, , Founder of CIGI, gave a keynote speech. Balsillie offered a very critical analysis of the current state of Canada’s intangible economy. He argued that Canada is currently playing “catch up” after failing to invest in IP assets and structures. By missing the international shift from traditional to intangible markets, Canada is now economically and politically vulnerable, especially as a dependent importer of IP assets.

Canada is the only country that saw a decrease in patent applications relating to Artificial Intelligence between 2016 – 2018. Canada also saw a decline in research partnerships between Canadian institutions and foreign entities over the same period. Balsillie argues that these trends are not only detrimental to the Canada’s security and sovereignty, but also indicate clear shortcomings in the Canadian IP framework.

In his presentation, Balsillie emphasized Canada’s need to establishing a better framework and policy guidelines to protect IP and data in Canada. He argued that there is a clear lack of IP knowledge among businesses and the Government, which has led to the spread of misinformation and the development of ineffective IP frameworks. Balsillie bluntly states that real IP experts are needed in positions of power to update Canada’s policy infrastructure and institutions to better match the flexible, dynamic needs of the intangible economy.

IP and data are now the most valuable business, national, and international assets. They not only shape the economy, and public and private sphere, but are also the primary drivers in economic grown and national security. Furthermore, intangible stock assets in IP tie together policy considerations such as foreign investment, domestic economic development, and national security. In other words, intangible assets such as IP and data act as the new foundation of international political-economic status and stability. The world now lives in an era of intangibles, and this conference is one of many IP initiatives telling us that Canada’s digital transformation is overdue.

Adele Zhang is an IPilogue Contributing Editor interested in the intersection between IP law and sports, and technology.

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A History of Imitating Nintendo

Streetkart first ran into legal challenges back in 2017. From the similarity of the then company name “MariKar” and “Mario Kart” to renting Nintendo character costumes to wear while go-karting, Streetkart undoubtedly profited from its unofficial association with Nintendo’s infamous Mario Kart franchise. That year, the court ordered Streetkart to pay Nintendo ¥10 million ($97,000 USD) “.” Streetkart rebranded, changed its name, and described it’s experience as a “” in an attempt to distance itself from Nintendo. Nonetheless, the business continued to attract thousands of tourists from across the globe who were interested in the knock-off Mario Kart experience.

Copyright Infringement

Nintendo argued that Streekart violated . This protects businesses from unfair conduct including: causing confusion with another party's well-known goods and brand, misappropriation of another party's goods or business, selling counterfeit goods, and misuse of domain names. In consideration of these IP protection laws, Nintendo presented a strong argument against Streetkart and its profitable association with the Mario Kart franchise.

The gaming giant had claims against Streetkart before 2017. Nintendo continued to pursue Streetkart for explicitly using Mario Kart footage and audio clips in its promotional material, on its go-karts, and in its selection of costumes available for rental. More generally, the company marketed its services as an imitation Mario Kart experience.

Several other companies provide Mario-themed go-karting experiences, but Streetkart’s were the most popular, especially among internationals. Despite its rebranding efforts, Streetkart still lost the Supreme Court appeal, which upheld the trial ruling and resulted in an additional ($480,000 USD) fine. These heavy fines are likely to like Streetkart in the future.

Since Nintendo plans to build its own Mario Kart attraction at , formerly set to open last month, the multi-billion dollar corporation has unsurprisingly escalated its efforts to safeguard its franchise and intellectual property. By securing a win in the Supreme Court, Nintendo blue-shelled its competition, leaving Super Nintendo World as the sole destination for visitors looking for a real-life Mario-Kart experience.

Adele Zhang is an IPilogue Contributing Editor interested in the intersection between IP law and sports, and technology.

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Top 10 Most Read Blogs of 2020

COPYRIGHT LAW

CUSMA Implementation

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

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

Canadian Copyright Case Law

91��ɫ v The Canadian Copyright Licensing Agency, 2020 FCA 77

On April 22, 2020, the regarding a dispute between 91��ɫ (“91��ɫ”) and The Canadian Copyright Licensing Agency (“Access Copyright”), holding that the tariffs set against 91��ɫ by the Copyright Board are not mandatory, but dismissed 91��ɫ’s counterclaim regarding the fair dealing guidelines. Access Copyright had sued 91��ɫ for non-payment of tariffs, arguing that they are mandatory and enforceable against anyone who infringes upon a copyright owner’s exclusive rights. Following this decision, both parties filed for leave to appeal the FCA decision to the Supreme Court of Canada.

Tariffs
The FCA held that the tariffs set by the Copyright Board are not mandatory. Because 91��ɫ opted out of the tariffs in 2010, they are not enforceable against 91��ɫ. On this issue, the FCA stated, “Acts of infringement do not turn infringers into licensees so as to make them liable for the payment of royalties. Infringers are subject to an action for infringement and liability for damages but only at the instance of the copyright owner, its assignee or exclusive licensee.”

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

Continuing into 2021
On October 15, 2020, the Supreme Court of Canada granted leave to appeal. This eagerly anticipated decision will affect many of Canada’s educational institutions who opted out of paying tariffs and have also followed the Fair Dealing Guidelines discussed in this decision. Further, a Supreme Court decision in 91��ɫ’s favour will surely cause businesses who rely on similar tariffs to rethink their business model.

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

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

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

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

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

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

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

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

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

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

PATENT LAW��

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

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

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

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

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

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

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

TRADEMARK LAW

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

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

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

Lack of Use is Insufficient for Opposing a Trademark Application

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

United States Supreme Court Developments

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

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

Trademark Law and Sports in 2020

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

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

Fashion Trends Followed by Brand Owners throughout the Pandemic��

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

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

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

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

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

Trademark Modernization Act of 2020 Passed

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

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

With contributions from IPilogue Editors:

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

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

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

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

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On June 15, 2020, a was filed against the National Collegiate Athletic Association (NCAA) on the grounds of breaching federal antitrust laws. Regulations such as the NCAA’s amateurism rules prohibit college athletes from using and being compensated for the use of their name, image, and athletic reputation. In recent years, these regulations have been increasingly contested by college athletes, alleging that the NCAA, a billion-dollar corporation, is protecting its monopoly over college sporting in the United States.

An athlete’s reputation, name, and image are the foundation of the intersection between intellectual property and entertainment. The World Intellectual Property Organize notes that “.” Once a student-athlete has developed into a professional athlete, how they can protect their image grows exponentially.

In this class-action lawsuit, the NCAA attempted to justify its regulations by claiming that the status of “” was not categorically valid in the commercial setting. However, considering the modern context of college sports, especially college basketball, there is a strong argument to be made in favour of recognizing players as celebrities.

Recently, there has been a growing media frenzy surrounding the NCAA’s March Madness event. As the NCAA’s popularity skyrockets, issues regarding right to image and compensation surfaced as athletes found themselves increasingly restricted by the amateurism regulations.

O’Bannon’s Legacy for College Athletes

In 2008, Edward O’Bannon, a University of California, Los Angeles (UCLA) basketball player, was depicted in a video game by Electronic Arts (EA). In said game, there was an avatar O’Bannon never consented to having his image used in the video game, and EA, a multi-million dollar gaming software corporation, never offered to compensate him for their use of him as a character.

When O’Bannon’s case was brought before the district court in 2015, Judge Claudia Wilken that the NCAA’s amateurism rules violated federal antitrust law, and ordered colleges to pay male basketball and football athletes up to $5,000 per year for the use of their image. The cumulative sum was to be paid after they graduated.

During the , the majority of the Ninth Circuit Court upheld Wilken’s ruling on the illegality of the NCAA’s amateurism regulations, but struck down the injunction forcing schools to pay specific athletes up to $5,000 per year. This decision left the college community uncertain on where the courts stood in regards to allowing college athletes to use and profit from their image.

As Oregon’s star basketball player, Sedona Prince, said:

Prince is one of many college athletes who have joined the class action filed earlier this year. Her words resonated with the college athletics community, and acted as encouragement for others to step forward and join the suit. , the law firm spearheading this suit, has opened the case for all active athletes since 2016 and announced that there would be no fee to join the suit or benefit from the settlement or lawsuit.

What’s Next?

While this case has just begun, it presents an opportunity to revolutionize intellectual property law in amateur sports. We may see the NCAA push this case up to the Supreme Court for a final ruling on whether student-athletes should be entitled to compensation for the reputation they craft on the court. If the ruling favours the college athletes, there would be reforms across amateur sports. This includes renegotiating contracts between players, colleges, and the NCAA, the repeal of regulations limiting compensation for image and likeness, and an expansion of intellectual property law more generally. This is definitely a case to keep an eye on.

Written by Adele Zhang, a first-year JD student at Osgoode Hall Law School. Adele is interested in the intersection between IP, ��sports law, business law, and employment law.

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In 2009, Jake Parker, an online comic artist, began what is now known as “Inktober.” is a challenge for artists to draw and post one piece of art every day for the entire month of October. Its goal is to help online artists improve their artistic stamina, commitment, and skills. Inktober came about just as social media platforms like Deviant Art and Instagram began their surge in popularity among artistic content creators. Since then, this challenge has attracted thousands of participants across the globe, ranging from the most beginner artists to verified Instagram users.

However, in 2019, Parker trademarked the term “.” While he claims that the Inktober challenge itself is still free, Parker failed to inform the 2019 participants of his trademark, leaving many artists uncertain about whether their content is affected. The art community was outraged as numerous participants shared the notices they received a few months after participating in the 2019 Inktober. Parker has since that all other artists refrain from using the Inktober logo. Following a very quiet 2020 Inktober, it is safe to assume many artists are no longer participating in the annual challenge.

In addition to the trademarking of Inktober, recent updates in the terms of user agreement on platforms such as Instagram have pushed content creators to their limit.

Social media has always been a double-edged sword for original content creators. It offers artists a platform to reach hundreds of thousands of viewers at the click of button, meaning that artists are no longer geographically bound. In other words, these social media platforms have exponentially increased the opportunities for amateur artists to share their work with viewers from across the globe with little to no monetary costs. However, the terms of agreements may pose more serious consequences than originally perceived.

Let’s take Instagram as an example.

Under the general terms of use, the section “Permissions You Give to Us” explicit states:

This user agreement further states that you can end the license at any time by deleting your account; however, any content that has already been shared and replicated will not be removed. This is just one example of the challenges to IP security for digital artists posed by new technology.

While copyright is intended to protect an owner’s claim to original works, social media has made it increasingly difficult to do so. Many digital art creators have struggled to protect their work online, and due to the scale of the internet, it is nearly impossible to track down each fraudulent copy of your work to send cease and desist notices, which may or may not be effective. While we may see an increase in individual artists applying for trademarks through the legal framework offered by IP law, the alternative may be a shift away from online sharing.

Inktober is already set on a steady decline, is social media as a platform for sharing art next?

Written by Adele Zhang. Adele is a contributing IPilogue editor interested in the intersection between IP law and sports, and technology.

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