Nikita Munjal is an IP Innovation Clinic Fellow and a third-year JD/MBA Candidate at Osgoode Hall Law School. This article was written as a requirement for Prof. Pina D’Agostino’s Directed Reading: IP Innovation Program course.

Artists in the digital space have always been vulnerable to the unauthorized distribution, copying, and sale of their work. Still, the for creating non-fungible tokens (NFT) has accelerated the . Listing someone else’s artwork on an NFT marketplace is as simple as saving a copy of the work from an artist’s website or social media platform and uploading it onto a marketplace where it is minted into an NFT. The rampant theft has forced some artists to , limiting the ability of artists to profit from the commercialization of their IP.

What Can Artists Do When Someone Else Mints their Work into an NFT?

Copyright law provides recourse to authors who feel their work has been minted into an NFT without permission, but as copyright attorney cautions, “IP considerations get very complex very quickly.” The author of a copyright-protected work can bring a claim for copyright infringement, but this is contingent on knowing the infringer’s identity. Many NFT marketplaces do not require the person listing the piece to provide proof of ownership or personal information. Alternatively, authors can inform marketplaces of copyright infringement and request the removal of infringing content. Some marketplaces, like OpenSea, provide artists with a when they suspect someone is infringing their IP. However, this mechanism places the burden on artists to monitor marketplaces for infringement and is given the number of requests OpenSea receives to take down listings.

What Can Be Done?

Various stakeholders that can implement changes to reduce the likelihood of thieves profiting from the commercialization of others’ IP. First, marketplaces should partner with companies like DeviantArt, which have created to scan public blockchains and third-party marketplaces and inform users of any potential infringement. This recommendation would still require artists to verify the results and report an infringement to marketplaces. However, artists would be aware of the infringement and could use their platforms to inform consumers of the scam. Second, marketplaces need to overhaul their process for verifying listings. For example, , it updated its requirements for listers to “provide their names, a photo of themselves, proof of them creating the work, and a digital portfolio.” Third, consumers should do their due diligence by reaching out to artists to verify the authenticity of the NFT before purchasing. Alternatively, consumers should purchase from auction houses like Christie’s or Sotheby’s to reduce the likelihood of buying a fake.

Incorporating these changes will require significant investment from stakeholders. However, since art is a cultural tool and an economic driver, those who create work should be protected by all invested stakeholders.

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Intellectual property (IP) can be used as a business tool by SMEs to grow. IP assets enable businesses to��,���� and access to IP assistance through law firms, universities, and schools have certainly�� of these benefits among SMEs; however, there is still a gap in the understanding of exploiting IP in Canada.��

It is crucial to recognize that registering IP is only a step towards fully realizing the commercial benefits of IP. It is unlikely that a business will be able to generate substantial financial returns unless the IP is successfully commercialized. IP commercialization means turning ideas or IP into with the view to profit and grow. Several obstacles impede the effectiveness through which IP is commercialized.

One significant issue is the lack of IP management strategies��. This limited knowledge leads to the underutilization of IP held by SMEs – for example, patents owned by smaller entities have than those owned by large entities. To optimally utilize IP, SMEs must assess how their IP fits within the overall business goal and plan;����helps bring value to the business through IP. There are several ways to commercialize IP (like��), but choosing the most appropriate method depends on various factors specific to each business. Every approach has its advantages and drawbacks; irrespective of the method, a business will likely have to conduct an IP audit, IP valuation, and market analysis (to assess target markets, competitors, the receptiveness of IP, etc.).

SMEs may not have the appropriate level of awareness or the wherewithal to navigate the IP commercialization process. After experiencing challenges in raising capital for their business and IP protection, further investing in building an IP strategy may seem unattractive in the early stages. However, in an increasingly innovation-driven economy (with IP and data as the most ), IP commercialization becomes even more vital for success. Government initiatives, like the recently launched , are a step in the right direction. Nevertheless, more efforts need to be made at the grassroots levels to spread awareness about such initiatives and the importance of commercializing IP within Canada to avoid draining Canada’s innovation economy. There is a need to increase access to resources for SMEs – both in terms of finances and human capital skilled in managing IP – to tap into the immense potential that lies in SMEs.

Written by Tanya Tawakley, JD Candidate 2022, enrolled in Professor D'Agostino's Directed Reading: IP Innovation Clinic course at Osgoode Hall Law School. As part of the course requirements, students were asked to write a blog on a topic of their choice.��

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Top Row: John Heburn (CEO, Mitacs), Androu Waheeb (IP Innovation Clinic Fellow), Naseem Bawa (General Counsel, InteraXon Inc. Bottom Row: The Honourable Doug Downey (Minister of the Attorney General of Ontario), Prof Pina D'Agostino (Founder & Director of IP Osgoode), The Honourable Ross Romano (Ontario Minister of Colleges and Universities)

Yesterday, the Government of Ontario formally announced their funding of thousands of student internships through Mitacs. The announcement was made during a press conference held by the Honourable Ross Romano, Minister of Colleges and Universities, and featured the Honourable Doug Downey, Attorney General of Ontario, and John Hepburn, CEO of Mitacs. As Principal Investigator of 3 projects in the inaugural year of Mitacs' Business Strategy Internship (BSI) Program, Prof Pina D’Agostino was also invited to be part of the festivities, along with Naseem Bawa, General Counsel for InteraXon Inc., and Androu Waheeb, 1L IP Innovation Clinic Fellow who will complete a BSI at InteraXon this summer.

Minister Romano announced that the Government has granted $39.5 million to Mitacs to fund internships that give students, post-doctoral researchers, and businesses more hands-on, real world experience in the field of their choice. Of the hundreds of internships offered across the country, roughly 100 are in their intellectual property stream.

Ministers Romano and Downey repeatedly stressed the importance of investing in Ontario IP rightsholders and empowering SMEs to take advantage of the intangible economy. In particular, Minister Romano pointed out that foreign entities take advantage of Ontario’s IP resources which remain inaccessible for local innovators. As such, this internship is not only an important investment for potential rightsholders, but also for students who will be business-owners commercializing IP and lawyers protecting their rights.

Mitacs CEO John Hepburn stressed the importance of this new collaboration in helping businesses to succeed at every stage of their journey. In the context of Mitacs’ goal of promoting growth and innovation in Canada, Mr. Hepburn introduced the goal of the BSI program: helping SMEs to address specific needs in order to pivot their businesses in response to the pandemic. In particular, because IP literacy is crucial in the early stages of a business, many student interns will offer valuable IP insight (with academic supervision) to help SMEs develop IP strategy in the initial stages of their business.

Prof D’Agostino spoke for the huge impact that this program will have on the students involved and the experience that it offers for them. After a quick but forceful plug for IP Innovation Clinic’s work in supporting IP strategy for SMEs to date, she highlighted our students’ growing need for employment opportunities like this. The combination of education with intention and work with grassroots organizations in turn empowers the Canadian economy.

Naseem Bawa briefly spoke about InteraXon Inc’s strategic IP investments protecting a wide range of their innovations, and the importance of protecting IP for small businesses. Businesses, according to Naseem, need a layered approach to IP that goes beyond registering it: they need support to enhance, protect, and strategically enforce their IP rights. This takes time and resources, but is critical for the future of both Canada and its companies, further stressing the impact of programs like this. Androu Waheeb rounded out the speakers, expressing his sincere gratitude for this opportunity and the ways in which it will prepare him to follow his dream of becoming an IP lawyer.

We would like to thank the Government of Ontario and Mitacs for supporting this program and our incredible students, whom we wish the best of luck in their internships!

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The value of the intellectual property (IP) rights behind the We The North slogan is hard to quantify, but it is evident that the phrase was a pivotal component of the team’s . WE THE NORTH is a trademark registered in 2014 and is owned by the Raptors’ parent company, Maple Leaf Sports & Entertainment Ltd., in both and the . The trademark protection covers merchandise and other services, and therefore for others to use it, a would be required. During their playoff run, the slogan seemed to gain the most traction on Twitter, with fans and supporters using the to show their support. In August of 2019, the #WeTheNorth tag was the most commonly used hashtag in Canada. Widespread use of the slogan as a hashtag on Twitter is , but the “hype” surrounding the franchise garnered as a result of this widespread use has led to a variety of opportunities for commercialization, such as a more cohesive marketing and product branding strategy. The hats, apparel and a variety of other merchandise brandishing the slogan have been highly sought after by fans, with many lining up or camping in order to have the opportunity to purchase some of the limited stock.

However, the Raptors were not the only successful Canadian athletes of 2019. made Canadian history, first when she won the Rogers Cup title and then again at the US Open when she managed to prevail over the legendary Serena Williams. Throughout her rise to fame, hashtags such as quickly gained momentum, and was used by fans across Canada, including . Interestingly, what began as a clever adaptation of the Raptor’s slogan quickly became a valuable IP asset for Andreescu herself. She filed for the trademark SHE THE NORTH in and the at the end of 2019, and as a result, she now has a titled She The North which was released at the end of last year.

It is interesting to see one athlete ultimately benefit from the hype generated by IP owned by another. Intuitively, one might assume this would lead to legal issues. When asked, Shannon Hosford, Maple Leaf Sports & Entertainment’s Vice President of Marketing and Communications, said that if others wanted to adapt the slogan for their own use, the company would not be “”. Other brands have also opted to use a different version of the slogan, including Bell Lightbox’s “” or the US basketball crowd using “”. The story of how one business’s IP strategy can give rise to many more dependent on its success is a lesson as to how one can commercialize hype using IP protection.

Written by Stephanie Cho, a second year JD Candidate at Osgoode Hall Law School. Stephanie is also a Clinic Fellow at the Osgoode Innovation Clinic.

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Patent protection is a crucial consideration for inventors with new innovations. It ensures that innovation persists in the marketplace, and also guarantees some form of monopoly and profit for inventors who invest in engineering new solutions. However, the recent tension between Google and Sonos forces us to consider: how useful are patents to start-up companies with limited resources?

in two federal court systems for the infringement of five patents. For a collaboration in 2013 between Google’s music services and Sonos’ home speakers, Sonos shared the blueprints to their speakers— a mistake in hindsight which led to the alleged infringement on Google’s part. Sonos is seeking financial damages and a ban on the sale of Google’s speakers, smartphones, and laptops in the United States.

Beyond patent infringement related to the company’s wireless speaker technology that allows speakers to connect and synchronize with one another, the company makes an anti-competition argument: allegedly, tech giants Amazon and Google created an environment in which Sonos would be dependent on them, only to then use their leverage to “squeeze” the smaller company. Despite attempting to enforce their intellectual property rights against Google for years, Sonos has had no luck in attaining a resolution.

This type of lawsuit between Sonos, , and Google, , is . Similar cases have occurred between in relation to anti-competitive practices and between regarding trademark infringement.

Sonos was to innovate in the wireless home speaker market in 2005. While there is a benefit to being first in the market and to attain a monopoly for a specified time period, “bigness” in the technology industry threatens the enforceability of patent rights. For example:

• When Sonos initially found that Google was infringing its patents, it approached the company with a licensing contract. Google responded with a deal that would require them to pay next to nothing for the use of the technology.
• Where tech giants infringe on patent-protected technology, they can out-compete smaller companies by offering new devices at lower prices. Google and Amazon did this by selling their speakers starting from $50, while Sonos speakers typically start at $200.
• Large companies have significant negotiation leverage when it comes to exclusivity. For example, Google has maintained that it will pull its virtual assistant from Sonos’ speakers if users can simultaneously use other assistants from services like Apple or Amazon.

These factors put Sonos in the impossible position of having the right to monopolize a technology they developed, but not having any practical way to enforce these rights, due to a lack of resources and influence in the market.

This lawsuit is a reminder to start-up companies of the importance of a sound IP strategy before entering collaborations in the marketplace. It is important to consider what information should remain private and what protections contracts can ensure, such as an ability to freely collaborate with others in the marketplace (thus avoiding the exclusivity issue).

Written by Summer Lewis, a second year JD Candidate at Osgoode Hall Law School. Summer is also the Content Editor of the IPilogue.

The post The Implications of Commercializing IP: How Patent Rights Get Compromised in Big Tech appeared first on IPOsgoode.

As the business world increasingly relies on an information-based economy, intellectual property (IP) will be more important than ever for entrepreneurs and lawyers alike. The Commercializing IP seminar course attempts to provide students with some insights��into the ramifications of IP in the��business world��by exploring the many ways in which a business can use their IP strategically to ensure successes and profitability.

Can you briefly give us some background on your current practices and how they relate to the commercialization of intellectual property?

EF: At my law firm , the intellectual property group is involved in practically all aspects of the IP field. My practice focuses on helping my clients accumulate, secure, and exploit their intellectual property rights. I also help my clients with other IP-related services, which can include technology transfer, patent maintenance, and portfolio management. I frequently work with clients to develop a strategy for commercializing their IP. These strategies involve different methods for leveraging IP in the marketplace, and can include licensing, selling IP or giving advice towards the acquisition of other IP portfolios. As an IP legal services provider, one of our fundamental tasks is to determine if the client has accumulated IP rights, and then make sure that they hold and maintain them in a way that they can have an advantageous use of it later on.

LG: At ,��we are commercializing a disruptive and game-changing remote pharmaceutical dispensing technology, initially in Europe and North America. As the General Counsel of a start-up company, I am heavily involved in the day-to-day business beyond the basic legal role. As a Business Lawyer in a “new economy” venture, IP issues abound, and are an important component of my practice. From the IP tasks associated with commercialization of our own technology, to the more strategic questions on offensive and defensive patenting strategies, IP issues figure heavily in our daily decision-making. IP issues become even more complex for a start-up business when multiple markets are considered – these include ensuring the business has freedom to operate in these new markets from a patent perspective, and deciding on what patent strategy works best in those markets (many of the issues are very different from one market to another). ��In the modern, digital world, IP commercialization is a critical component to many new ventures in the marketplace, and MedAvail is no exception.

How do you view the role of commercializing IP in both the business and legal world?

EF: My view is that, even in the sense of a legal practice, intellectual property really is a business asset. From a legal perspective, the work I do is to accumulate rights, whether that is patents, trade secrets etc., and then think; when the client gets to the marketplace with his product or service, how will they make money from it? Do you build the service yourself, or do you find partners though investments?

Whether it is better to secure good IP rights and then launch a product, or develop a good product and then build good IP around it, the legal rights are fundamentally intertwined with business affairs. If you think of commercializing IP in the business world, you might want to think about the fact that IP is a prime asset for some of the most valuable companies in the world. ��IP is important in these companies from both a balance sheet point of view and in being able to offer the best services and products to their customers.

LG: From a business perspective, most new ventures will involve some form of intellectual property.�� In the US marketplace in particular, patent issues associated with commercializing an IP-centric business are very complex – it is a very litigious environment and patent trolls abound.�� A business needs to be mindful of the many IP landmines that, if not careful, may derail a business on the eve of an important event such a financing, trade show or IPO. IP issues invariably involve a mix of business and legal decision-making, as IP strategies typically involve both a risk assessment, and a cost benefit analysis which, in a pre-revenue start-up with limited capital, are extremely important.�� As such, it is not uncommon to have a dedicated senior resource working inside these ventures, closely with management and the Board, to get in front of these issues and map out a plan that allows the business a chance to be successful commercially while avoiding a variety of IP traps.

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How do you see Canada as a player in the commercializing IP space, and what do you think will be the effect of emerging multinational free-trade agreements like on this area?

EF: Canada is an interesting example of the marketplace. When you think of the commercializing IP space you fundamentally think about market size, and Canada certainly couldn’t be considered a large market globally. Yet, despite this, there are some very interesting and unique Canadian programs in the commercializing IP space. For example, there is the very important tax credit program to IP-based businesses that choose to do business in Canada. So there is certainly a lot of Canadian policy that is friendly to the development of IP, which supports businesses that otherwise have a hard time being successful in Canada due to our size in the marketplace.

Regarding multinational free-trade agreements like CETA, IP is not necessarily a large part of these very complex and intricate agreements. But if you think of Canada as a net-exporter of goods rather than a consumer, anytime you add the opportunity for free trade, this is good for the economy. Certainly the CETA agreement is probably going to be beneficial from this view point, and is probably the most important treaty in this area since NAFTA. Being beneficial on the export market, these agreements can help in the commercialization of products that are often based around IP rights.

LG: Canada has a rich history of innovation and IP commercialization – look at Nortel, Blackberry, Desire to Learn, and many other Canadian success stories.�� In recent years, we are seeing a re-emergence of technology businesses and the “knowledge economy” in Canada, with a growing culture of innovation.�� This is the result of a combination of factors – the availability of investment and venture funding (both foreign and domestic); a fertile ground of talent coming out of Canadian universities, and various government initiatives.�� Look at cities such as Toronto, Vancouver, Waterloo – many “clusters” are emerging in a variety of exciting futuristic technologies…. It is truly an exciting time to be a Canadian technology entrepreneur!�� Our company is in contact with investors and funding organizations globally, and many of them have had high praise for many Canadian ventures that have come on line in recent months/years.�� This is something Canadians should be very proud of.

On treaties, my view is that anything the government can do to promote Canadian businesses and talent globally should be encouraged.�� Canadian ventures have shown the world that we can compete on a global stage, and this is one of the reasons that Canadian venture funds have had to compete with many foreign investment sources in funding Canadian ventures in recent years.�� We have a reputation of excellence in technology and innovation, and it is great to see programs in place that facilitate exposure of our innovations on a worldwide stage.

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What do you feel are the biggest misconceptions about the commercialization of IP?

EF: Although I probably wouldn’t consider this purely a misconception, I often see an undervaluing of what we can call the “sweat equity” IP. When we think of commercializing of IP, this is very far from IP rights in the abstract. The misconception is the sentiment that “I have a great idea, and I will get paid”. I am not sure that this is exactly true. There is a lot of sweat equity that goes into commercializing a product that may have some IP rights built around it. There is a tremendous amount of work that goes into securing and maintaining the IP rights themselves, and making a successful business from all of this is even more difficult. Thinking about the amount of work that is required is often lost in the early stages of brilliant ideas, and since commercializing IP is really about taking the idea into the marketplace, this consideration is something that should be at the forefront of any strategy.

LG: In Canada, while good progress has been made in promoting and cultivating innovation, the broader market place and related structures need to catch up with the rest of the world.�� A small yet important example is start-up funding.�� In the US, the JOBS Act was groundbreaking legislation that allowed up to a million dollars to be raised by start-ups from non-accredited investors.�� This enabled and fuelled the growth of such innovative funding programs like crowdfunding.�� By contrast, it took the Ontario regulators several additional years to bring forth something similar.�� In summary, the Canadian “business ecosystem” needs to do a better job of adapting to the new business realities, and the fact that much of the value and wealth to be created in the next 50 years will come from new technologies. We need to be more nimble in supporting these ventures and getting them off the ground.

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What do you think is the most valuable piece of knowledge that students of the commercializing IP seminar can get out of the course? And why do you think this course is important for students?

EF: We view this course as a practical course, not a legal theory course. It is really looking at how the law impacts business enterprises, and more specifically, business enterprises that have significant IP. I think that this type of course is important for law students, as there is no shortage of legal theory courses that go over what the law is. For students, to understand how these laws affect the business world and the marketplace is something that is beneficial. This knowledge and perspective is something that can assist them in being good lawyers, if a legal career is what they are pursuing. Even if they are not��pursuing a career in law, understanding business concepts and the business reality that the law impacts can be a very valuable tool.�� The value for the student is applicable if they are from Osgoode Law, Schulich Business, or Lassonde Engineering. The value in this course is being able to see and understand business operation from the inception-stage forward, especially for a technology-driven business.

LG: Osgoode does an excellent job teaching students how to be good practitioners, understanding the rules, thinking outside the box, and being good technical lawyers. This IP Commercialization Course builds on those critical skill sets, providing students with a “cradle to grave” point of view on how to use IP legal and business skills in the business world.�� The course is cross-listed among Osgoode, the Schulich School of Business, and the Lassonde School of Engineering.�� Fortunately, in our inaugural year, we had representation from all 3 disciplines – Legal, Business and Engineering.�� I believe our class would agree that this multi-disciplined dynamic was a key element to the success of the course, as our discussions on current IP topics included the points of view from all 3 areas.

The course combined both traditional lecturing on core IP topics, and a thread of discussion and exchange that brought topical and current issues into the classroom.�� For example, students were asked to bring in a news article on a topic relevant to the commercialization of IP – throughout the Term, we discussed everything from the Apple/Samsung patent disputes, to Tesla’s patents on solar paneled car roofs, to the Duolingo language learning App, and a whole host of other current IP topics.�� During these presentations, the students were given an opportunity to understand how the commercialization of IP affects real world businesses every day.�� We had a very bright group of students this year, which was reflected in the caliber of the discussions…

Adam Falconi is an IPilogue Editor and a J.D. Candidate at Osgoode Hall Law School.

The post Getting Profits From Patents: An Interview with Ed Fan and Loreto Grimaldi appeared first on IPOsgoode.

This new course has been a long time coming. Commercializing IP will provide a new learning opportunity for our student volunteers��and allow them to obtain credit for their work completed as a part of the team.�� This course is also open to students who are eager to learn more about intellectual property.

The is a needs-based innovation-to-market legal clinic staffed by law students and run in collaboration with the (OCE), who refers clients to the Clinic, and .���� Students who are selected to be IP Osgoode Clinical Fellows provide business strategy and IP advice to individuals or start-up companies and by working pro bono, serve to minimize the client’s legal costs.

Commercializing IP will focus on issues related to the creation, development, protection, and exploitation of intellectual property rights as a business asset for both high-growth start-ups and established businesses.���� It will examine the entire process of creating, capturing, protecting, leveraging, and transferring technology and ideas, including internal strategies designed to incentivize scientists and engineers engaged in innovation and idea generation; deciding whether, what, where, and how to obtain IP registrations and the related economics; developing commercialization strategies (selecting the target market and application for the idea) and business models; drafting and negotiation of technology transfer/licensing agreements; offensive and defensive IP strategies; assessing competitive IP; negotiating and interpreting IP-sensitive contracts including licenses, confidentiality agreements and non-competition agreements; transactional IP protection, with discussions on China, India and other emerging markets; and key technology specific legal issues relating to software, digital communications and data processing, mobile devices and social media, financial services and life sciences.

The course will also address the financing options available to the high-growth start-up, including crowd-sourcing and other modern financing techniques.

The course instructors are , Chief Operating Officer and General Counsel at , and , a partner at Torys LLP.���� Ed Fan and his associates at Torys LLP, and , are the legal supervisory team that oversee the work of our IP Osgoode Clinical Fellows.

For the past two years, Ed Fan and his team have been providing invaluable theoretical and practical legal training for the IP Osgoode Clinical Fellows.�� This rigorous training and orientation that all our Fellows undergo will now be formalized in this new Commercializing IP course.���� All students selected to be IP Osgoode Clinical Fellows for the upcoming 2013-2014 academic year will be required to enroll in this new course for the winter 2014 term.���� Since completion of the Commercializing IP course will become a pre-requisite for volunteering at the IP Osgoode Innovation Clinic next year, all students wishing to apply for an IP Osgoode Clinical Fellow position for the summer 2014 term and fall 2014 term should also enrol in this new course for the winter 2014 term.

Commercializing IP will leverage the experiences and challenges from leading experts in the fihttp://www.iposgoode.ca/wp-admin/post.php?post=21432&action=editeld and employ a variety of case-studies, including one of course instructor’s own companies, PharmaTrust (now MedAvail), a rapid-growth start-up in the pharmacy automation business and one of Ontario’s largest angel-funded start-up organizations.

While students with some background in substantive areas are welcome, no prior experience in these areas is required. Of course, as I often say in my own course syllabi, ��students’ keen enthusiasm to learn about IP issues and participation in the course is strongly encouraged.

If you have any questions about this new course or would like more information, please contact iposgoode@osgoode.yorku.ca.

Professor Giuseppina D’Agostino��is the��Founder and Director of IP Osgoode, the IP Intensive Program and the IP Osgoode Innovation Clinic, and an Associate Professor at Osgoode Hall Law School.

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