I was extremely excited when I found out that my placement, as part of the IP Intensive, was at the (CIPO). As the office that grants Intellectual Property (IP) rights to hopeful patent, trade-mark, copyright, and industrial design applicants, CIPO is at the heart of the IP system in Canada.

CIPO is truly the place for the student that wants to experience it all. I completed a variety of projects in all areas of IP. My whirlwind tour of the inner workings of the IP administration body of Canada took me through six departments; , , , , and Branch, and the Policy, Information and International Relations Office.

Each department provided its own unique assignments and opportunities. With the Trade-marks Opposition Board I primarily worked on drafting “section 45” decisions, relating to expungement of a trade-mark for non-use, and sat in on multiple trade-mark opposition hearings. At the Trade-mark Branch, Copyright and Industrial Design, and the Policy, Information and International Relations Office, my work usually consisted of writing memos and opinions on a variety of current legal issues. At the Patent Branch I had an intimate look at the job of a patent examiner including searching for prior art, assessing novelty and obviousness and writing office actions. I even had the opportunity to assess the novelty of patent claims based on prior art provided by the examiner. At the Patent Appeal Board, I worked on the re-examination of a divisional patent application, where the primary issue was double-patenting in relation to the parent patent application.

The range of experiences and assignments is really what makes the CIPO internship so unique. Where else could one draft a section 45 expungement decision, write a memo on university technology transfer, and assess the novelty of patent claims within a span of three weeks.

The placement was much more than the weekly assignments, however. Within each department I met with a variety of people who explained the complexities, duties and responsibilities of their department. I commonly attended meetings in each department from examiners’ meetings, where frequently encountered examination issues were collectively discussed and resolved, to CIPO’s litigation meetings, to meetings for the drafting of Regulations.  My Ottawa experience would not have been complete if I did not attend a Parliamentary hearing and I was lucky enough to attend a hearing held by the (INDU), which covered a variety of contemporary IP issues, including counterfeit merchandise, university technology transfer, and start-up businesses.

I found CIPO to be an extremely interesting place to work as the organization represents the public interest. This encompasses a diverse range of stakeholders including agents, applicants, industries, and the public at large. Accordingly, I was able to see a broad spectrum of perspectives on IP throughout my internship.

I valued the opportunity to engage in practical legal work. While I enjoy in-class learning, nothing brings a legal education full-circle like practical experience in an area of interest. The opportunity to draft decisions and memos each day shed light on the day-to-day responsibilities of a lawyer, and the chance to engage with others in IP discourse improved my communication skills and instilled, in me, a sense of professionalism.

I am extremely grateful for the time I spent at CIPO. I gained a tremendous amount of insight into the inner workings of the IP system, including an intimate look at patent, trade-mark, copyright, and industrial design examination. The benefit of a placement like CIPO is that I was exposed to all aspects of the IP system, which allowed me to formulate new personal interests. As a law student with an undergraduate degree in biology I was always attracted to patent law, but to my surprise, I really enjoyed working in the policy and trade-mark areas. I appreciate the broad learning experience I received and I will always look back fondly at my time at CIPO.

Andrew Wayne is a JD Candidate at Osgoode Hall Law School and was enrolled in Osgoode’s Intellectual Property Law Intensive Program.  As part of the program requirements, students were asked to write a reflective blog on their internship experience.

The post The Canadian Intellectual Property Office - The Best of ALL Worlds: A Semester in Osgoode’s IP Intensive Program appeared first on IPOsgoode.

The , located in San Jose, California, was built at the behest of Sarah Winchester after the death of her only child and her husband, the late gun mogul William Winchester. Apparently, a medium told Mrs. Winchester to move west from New England and appease the spirits of those who were killed by the Winchester Rifle during the Civil War by building a great house for them.

The Plaintiff owns the registered word mark “Winchester Mystery House” and the design mark based on the Winchester mansion. The Defendant, , produced a film entitled “”. The DVD jacket contained the movie title as well as an image of a Victorian-style building, albeit not the same one as the Winchester Mystery House.

The Plaintiff originally sued on the basis of seven causes of action, three of which were at issue on appeal, namely, 1) use of its trademark (), 2) unfair competition () and 3) interference with contract and economic advantage. The Superior Court granted the Defendant’s motion for summary judgment. The Court of Appeal dismissed the Plaintiff’s appeal on all grounds, however this blog will only touch on the issue of trade-mark infringement.

The Plaintiff claimed that the use of “Winchester House” and the image of the Victorian-style mansion would cause confusion in the minds of the public by leading them to believe that the Plaintiff approved, sponsored, or associated itself with the Defendant. The Defendant argued that its right to freedom of expression provided an absolute defence to trade-mark infringement.

In the United States, freedom of expression is protected by the First Amendment of the U.S. Constitution and plays a major role in limiting the scope of intellectual property rights. The test that is commonly used for balancing the interests of trade-mark owners against those who use the marks in titles for artistic works in the name of freedom of expression arose from . The court in Rogers held that the (the federal statute governing U.S. trade-mark law) would apply to allegedly misleading titles only if the title has no artistic relevance to the underlying work whatsoever or if the title is explicitly misleading as to the source, even if the title has some artistic relevance.

In the Winchester case, it was held that where marks have historical significance and similar marks are used in the title of an artistic work, the Rogers test properly protects both the public interest in avoiding consumer confusion and the public interest in freedom of expression. The Court of Appeal found that the Plaintiff’s marks identify not only a world famous tourist attraction, but also the property of its former eccentric owner. Ultimately, the Court held that the use of the “Haunting of Winchester House” title and the Victorian-style mansion passed the two pronged test from Rogers in that 1) they had some artistic relevance to the underlying work and 2) that the title and cover picture did not explicitly mislead as to the source or content of the work; the Defendants did not use the marks as registered, the DVD cover attributed production to other sources and the title related to the content of the movie, which was the story of Sarah Winchester.

You can find a discussion of another case using the Rogers test to balance freedom of expression and trade-mark protection and a general discussion of trade-marks and freedom of expression .

It is well established that freedom of expression is more vigorously protected in the U.S. than in Canada. Nonetheless, courts in Canada have seen the importance of balancing freedom of expression against trade-mark protection (see, for example, , ). Freedom of expression was also at play in a case where a trade-mark for a book title was expunged because it prohibited the public use of the title after the copyright had expired (). As in Winchester, a Canadian court should allow trade-marks to be incorporated into titles when they relate to historically significant works.

Andrew Wayne is a JD Candidate at Osgoode Hall Law School and is currently enrolled in Osgoode’s Intellectual Property Law and Technology Intensive Program.  As part of the program requirements, students are asked to write a blog on a topic of their choice.

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