The is to update three aspects of the profession of trade-mark and patent agents that would help align the industry with ‘best practices’ adhered to in different professional fields. The three mandates to be fulfilled include:

1. The maintenance and oversight of the register/list of trade-mark and patent agents;
2. The qualification and development of patent and trade-mark agents; and
3. A values and ethics framework for trade-mark and patent agents.
   
   

This initiative for change was spurred by discussions between IPIC and CIPO over the past few years about existing deficiencies within the regulatory framework. On May 27^th, 2010 IPIC submitted a consultation paper entitled “” to its members with the intent of collaborating with CIPO to create new guidelines addressing these growing concerns. The main objectives summarized in the report included:

• The profession, through IPIC, would be responsible for the establishment of entrance requirements to become a patent or trade-mark agent, and determine whether the requirements are met.
• IPIC would maintain a code of ethics and a code of conduct for all agents.
• The profession, through IPIC, would manage the process for the discipline of agents.
• CIPO would continue to maintain the registers.
• CIPO would retain final say on disciplinary matters, including suspension or removal from the registers.
• CIPO and IPIC would establish requirements for insurance and for continuing professional development.
  
  

The members of IPIC approved this proposal at the 2010 AGM and gave the mandate to the IPIC Board of Directors to seek its implementation in collaboration with CIPO. However, because of changes in its leadership shortly afterwards, CIPO began the process in 2013 and invited IPIC, FICPI, and AIPPI to collaborate with them.

As per Michel Gérin, Executive Director of IPIC, the first step when CIPO launched the project was to outline and agree (i) to the general scope of the project, (ii) on the three working groups, and (iii) on their co-chairs (each of the associations has one). The plan is to conduct the actual study and discussions from September to March. CIPO will later invite patent and trade-mark agents ‘at large’ to comment on the recommendations made by the committees.

As Mr. Gérin, pointed out, it is likely that not all of the issues will be resolved in this short time, but it is moving forward in a positive and “transparent way”. Based on a generous interview granted by Mr. Gérin, on July 31^st, 2013, a summary of the objectives and changes are listed below.

MAINTENANCE AND OVERSIGHT OF THE REGISTER
By law, CIPO is required to maintain a “register of patent agents” and a “list of trade-mark agents” in order to facilitate access to clients. CIPO wants to ensure that these lists are always a true picture of the professionals available to serve Canadian innovators. Some small businesses owners have expressed to CIPO the desire to see more information about the agents on these lists. This will be a topic for discussion for the committee working on this project.

QUALIFYING EXAM/CONTINUING EDUCATION

Qualification
The licensing process for patent and trade-mark agents involves on-the-job training, self-study, and optional courses offered by IPIC. It culminates in an examination managed by CIPO in collaboration with IPIC (i.e. three of the four papers for the patent exam are prepared by IPIC members).

Trade-mark and patent agents are not required to be licensed lawyers, nor are they required to have a legal education. A patent agent applicant must be a trainee for one year (either in a law firm or an intellectual property firm) and must write the self-study examination. IPIC supports a CIPO proposal that the training period be changed to two years because a single year is not enough. After consultations, this change is now awaiting a cabinet decision. A trade-mark agent applicant is required to train at a firm for two years and then complete the exam, unless s/he is a lawyer who has already practiced in the area for two years. The changes to the regulations propose that lawyers will also have to write the examination.

CIPO has proposed the creation of this project group to determine whether the admission process outlined above needs to be modernized. Mr. Gérin hopes that the members of this project committee will consider IPIC’s proposal to manage the entire qualification process with CIPO continuing to administer the list and decide who may be added or removed from the list, based on IPIC’s recommendations. IPIC proposed to manage the process because it has done a lot of committee work and research over the years to identify possible improvements to the admission process.

Continuing Education
Once successful, those patent and trade-mark agents who are not lawyers are not obliged to take continuing education requirements the same way agents who are licensed lawyers do. CIPO would like this project committee to consider continuing education requirements for agents. Mr. Gérin stated that IPIC supports this view because “more and more, there is an expectation for continuing education requirements . . .” by the public. He also observes that although the continuing education classes are not required for agents, the agents themselves have already been quite active in taking the webinars and courses that are offered by IPIC and by other associations.

CODE OF ETHICS
Currently, CIPO does not regulate the conduct of registered agents via a code of ethics, even though it has the power to remove an agent from the practice. There are several deficiencies in this practice – first, there is no clear process; second, there are no intermediary measures; and finally, there are no clear mechanisms in place to facilitate communication between CIPO and the public for the purpose of complaints.

Trade-mark agents are mostly lawyers who would have to adhere to the set out by the Law Society of Upper Canada, while patent agents are individuals who are highly educated in science and engineering fields and whom do not have the same requirements. As Mr. Gérin stated, “We [IPIC] felt that . . . this profession should be held up to the same standards as other professions in Canada. You should have a mandatory code of ethics or code of conduct for the profession.”

Members of IPIC already agree on a voluntary basis to adhere to IPIC’s , which is now in the process of being updated (last adopted in 2001) to reflect recent changes in the codes for lawyers and case law regarding conflicts of interest. Mr. Gérin believes that the work done by IPIC  in this area will be useful for the project committee.

CIPO would also like the committee to look at intermediary disciplinary measures such as additional training. Finally, the working group will examine “best practices” to aid in making this process accessible and transparent for the public. Admittedly there are very little complaints against patent and trade-mark agents, which is why this initiative had not started years earlier.

OTHER CONSIDERATIONS
Finally, unlike many professions that are regulated provincially by self-regulated associations, IPIC’s proposal is modeled on a hybrid of self-regulation (via IPIC) and government involvement. This way CIPO can have the final say, which will guarantee public protection.

(Click for CIPO's August 12^th, 2013 response to our request for an interview.)

This modernization initiative by CIPO is a very welcome step forward for the community of patent and trade-mark agents. It seems like IPIC has much of the infrastructure already in place, and where it doesn’t it is willing to undertake much of the responsibility. We look forward to hearing the outcome of this initiative in March 2014.

The post A New Approach: Modernizing the "Regulatory Framework for Patent and Trade-mark Agents" in Canada appeared first on IPOsgoode.

The theme of the conference Law Culture Critique was organized into an array of extremely interesting panels that were categorized into various sub-themes including music, culture, gender, art and commerce. The call for papers explicitly encouraged the participation of graduate students, artists and community activists and attracted participants from both international and national institutions.

Distinguished Keynote Speakers included , Professor at the University of British Columbia, author and filmmaker, and Professor , international legal scholar and Chairperson of the Centre for International Legal Studies at Jawaharlal Nehru University in New Delhi, who attracted wide audiences and captivated them with their respective talks. presented a particularly inspiring and timely paper on the myth of corporate social responsibility, “Good Corp, Bad Corp: Corporate Social Responsibility and the Breaking of Society.” He argued that corporations are inherently created for the purpose of economic gain and therefore our reliance on them to fulfill selfless acts through their branding strategies of social responsibility is naïve. His presentation was extremely relevant in light of the devastation that claimed the life of over one thousand Bangladeshi people working in substandard conditions, producing clothing for Loblaw’s Joe Fresh line.

***

Fittingly, based on the theme of the conference, there were several papers concerning intellectual property law including that of panelist , a SSHRC Postdoctoral Fellow at McGill University, Department of Art History and Communications Studies who presented an intriguing paper on the use of copyright policy in the first panel, entitled Law, Symbols and Visual Cultures. Her presentation “Framing the Open: Photography and the Digital Circulation of Israeli Memory” commented on the practices of Israel’s due to the changes made to its licensing policy to create ‘open access’ for the digital images displayed on its website. These policies have the effect of allowing the free access to these digital images while simultaneously resulting in their control and prevention for political uses. The licensing policy was therefore not solely to ensure protection of the creator’s rights or for the purpose of monetization, but rather a tool to prevent political use. Although the content of the images were not at issue, it was the context in which the content would be used that was problematic. The :

“Altering the photograph or using it in any way that harms the name or the reputation of the State, the Government Press Office or the photographer.

Using the photograph for commercial advertising or political activity.”

***

Later that afternoon, , IP Osgoode member and Professor of Law at Osgoode Hall Law School, , Banting Post-Doctoral Fellow in Law and Culture at 91��ɫ, and Hip Hop artist and McGill Law School DCL Candidate, were featured in a thought-provoking roundtable discussion on Music, Law and Theory. Moderator Ali Hammoudi, PhD Candidate at Osgoode Hall Law School and Co-Chair of the GSLA, directed the debate towards hip-hop’s sampling culture.

Sampling is a technique that has, in several American cases, been held to infringe the rights of copyright owners by the courts. The panel confronted the practical, legal, and cultural norms concerning creation, reproduction, originality and attribution. Professor Craig laid the solid doctrinal foundation of these concepts in discussions on substantial taking, fair dealing, and the balanced originality approach enunciated in , while Martin challenged important contentions concerning originality and creative labour, the blurred lines between re-use and copying, and self regulating social norms. Salman presented information about the norms that govern the hip-hop community: hip-hop artists do not sue each other over the use of each others' work largely because sampling is an accepted practice. Quite frankly, as Salman put it – ‘they don’t care’ because it is considered to be an honour to be sampled rather than the appropriation of their work. For this reason, hip-hop artists do not expect to be remunerated for the use of these samples. It seems that in the context of sampling, the hip-hop community relies on social norms that do not always reconcile with the legal norms that corporate owners rely on.

***

A IP topic several years ago, graffiti returns to the forefront due to the cancellation of yet another in an Ontario art gallery because of the uncertainty surrounding graffiti artists’ rights in Canada. Dr. Laura Petican, an Art Historian, and I explored the medium of graffiti art historically, culturally and legally. Laura began with a discussion of Jean-Michel Basquiat and Banksy, whose works have not only transcended the ‘label’ of illegality, but have also become revered as fine art. The context of their street art (graffiti) however, continues to be defined as ‘vandalism’. Graffiti receives intellectual property protection when legal (i.e. when authorized) whereas the question remains “open” when it is not. As argued by , Professor at the University of Ottawa Faculty of Law, in her blog article entitled :

“There is no question that graffiti may constitute an “artistic work” within the meaning of the Copyright Act. It is an interesting and open question whether copyright can be enforced in illegal works . . . .”

Although the artist is vulnerable in the context of the illegal street art he or she produces, in the gallery (what is referred to as the ‘white cube’), their works are considered to be legal, artistic and protected. This issue has not yet been explicitly addressed in the Copyright Act.

Coincidentally on the day of our presentation, the that a mural created by Banksy in 2012, which was subsequently physically removed from the building earlier this year, will be put up for auction for a second time in June “alongside pieces by Damien Hirst [and] Andy Warhol . . . .” The piece entitled “Slave Labour” was a ‘gift’ to a community in London. When the piece was from the community and put up for auction in Miami in February 2013, it was expected to sell for up to $700,000 USD, but was pulled due to the public outcry. No legal action has been taken yet. Although the removal of the wall is a question of property rights (no reproduction was made), this example highlights the parameters that define legal and illegal art.

***

, LLM Candidate at Osgoode Hall Law School, Co-Chair of the GLSA, and panelist, presented a fascinating paper on the implementation of creator rights and the legal infrastructure of copyright in Trinidad and Tobago. In particular, she commented on the evolution of hybrid art forms and focused on works of mass. She interrogated the ways in a particular conception of Trinidadian culture could be ‘protected’ within the existing framework of international cultural protection. Rather than side with one particular approach, she stressed the need to further investigate the social issues that inform copyright law and practical implications that arise therefrom.

***

On the same day, , Professor at the at the Université du Québec à Montréal, and I illustrated the way in which fashion designers attempt to define their work as either artistic, industrial design or both. We compared the perspective of fashion designers to the boundaries of subjectivity and objectivity used by the courts in order to determine the qualification of artistic work based on the intent of the artist in light of the recent United Kingdom Supreme Court case of . What is commonly followed in Canada is the objective standard in DRG v Datafile (1987), 18 C.P.R. (3d) 538. , Professor at the University of Ottawa, Faculty of Law and , Director of the Intellectual Property Program at Vanderbilt Law School, co-authors of (2d ed), suggest that

“[t]he objective test in DRG, which defines “artistic work” as a “generic description of the type of works … which find expression in a visual medium” is preferable to tests based on more subjective criteria such as the author’s intent, the audience’s perception of the “artistic-ness,” or evaluations by art experts or judges of aesthetic merit or value.” (Gervais & Judge, p 105)

In Professor Beaudoin’s experience, whether a fashion designer decides to create ‘artistic work’ rather than ‘industrial design’ is a difficult question that only he or she can determine.

***

Unrelated to intellectual property law, some presenters used artistic mediums to investigate and interpret ‘law.’ In the panel entitled Theorizing Law and Art, , who recently completed his MFA in Documentary Media at Ryerson University presented a paper based on his entitled Defenders. Dan’s exhibition consists of interviewing and “paint[ing] a living ethnographic portrait of Canadian and American criminal defence lawyers in  . . . Detroit, New 91��ɫ, and Toronto.” He used images and videos in his presentation to portray the intricacies of the criminal justice system by allowing viewers to observe “criminal defense attorneys” from a different perspective. The Defenders exhibition remains at the until May 25, 2013.

***

The conference embodied an exceptional fusion of carefully curated panels, topics that were diverse yet intertwined and a wide representation of scholars and artists. The Osgoode Hall Law School GLSA organized a very professional, accessible and personable event. I look forward to attending next year!

Courtney Doagoo is a doctoral student at the University of Ottawa, Faculty of Law.

The post Law, Culture, Critique appeared first on IPOsgoode.

In the initially filed by Mr. Choudhury, it was alleged that the sequence of the asana poses and accompanying instructions as offered by YTTP to its students was infringing his intellectual property.

is a sequence of 26 asana poses that were “selected and developed” by Mr. Choudhury.  The sequence of poses is taught in rooms heated to a of 105F or 40.55C with a humidity level of 40%. Mr. Choudhury has given numerous interviews, published books and continues to give seminars across the globe. He in 1973 and now franchises .

Intuitively, one would think that yoga poses, like any other therapeutic exercise, should not be subject to intellectual property law, especially since Mr. Choudhury himself was trained by , "India's most-renowned physical culturist at that time." However, in 2003, Mr. Choudhury that “his asana sequence of 26 postures and 2 breathing exercises” had been registered for copyright protection.

In a press release concerning the successful assertion of his intellectual property rights stemming from a 2003 lawsuit settlement, Bikram’s Yoga College of India :

The simple facts are these:

• No one may teach Bikram Yoga classes unless he/she is a certified and licensed Bikram Yoga teacher.
• No one may teach or certify others to become Bikram Yoga teachers other than Bikram Choudhury.
• No one may offer obvious, thinly disguised copies of Bikram Yoga and represent to the public that it is "their" yoga.

Yoga students should be particularly cautious of those persons who claim to offer teacher training and/or teacher "certification" in Bikram Yoga, or represent or suggest that their yoga teacher training program "is just as good as Bikram Yoga." Nobody may teach others to become Bikram Yoga teachers other than Bikram Choudhury himself.

This lawsuit is proof that the legal system will vindicate Bikram against those persons who exploit and adulterate Bikram Yoga for their own purposes. These persons are not yoga gurus. These persons are not interested in "sharing" yoga with everyone, as they may self-servingly claim. These persons are only interested in personally profiting from teaching Bikram Yoga. It is for the protection of Bikram Yoga, Bikram Yoga practitioners everywhere and the true spirit of yoga that these imposters must and will be stopped.

In July 2011, Bikram’s Yoga College of India concerning a complaint they had filed against Mark Drost and Zefea Samson (both certified Bikram yoga teachers) who had been offering the sequence at their yoga studio . The complaint alleged eight causes of action including copyright infringement for the Bikram yoga sequence.

On December 14, 2012, the United States District Court of the Central District of California granted a in favor of the Defendants. (Summary Judgment, 8 ) Specifically, the Court noted that although Mr. Choudhury had copyrighted various literary and audiovisual works depicting the yoga sequence, he was only entitled to the expression of the works and not the underlying ideas. (Summary Judgment, 4) Further, the Court confirmed that, “…Choudhury’s compilation of exercises and yoga poses (and not the book or videos depicting the compilation) – is merely a procedure or system of exercises” and that regardless of the categories eligible for copyright protection based on of the US Copyright Act, that copyright protection would not extend to ideas, procedures or systems based on of the Act. (Summary Judgment, 5).

Rewinding to September 2011, YTTP was  by Bikram’s Yoga College of India and Bikram Choudhury for allegations including copyright and trade-mark infringement, false designation of origin, dilution, unfair competition and unfair business practices. (Complaint, para 4) , owner of YTTP and former student of Mr. Choudhury (certified teacher) had been offering classes using the Bikram sequence of poses in their heated New 91��ɫ studios. YTTP was charging $8 per class as opposed to the $25 dollars typically charged by . The competition in pricing  drove a New 91��ɫ Bikram Yoga studio out of business, which is what prompted Mr. Choudhury to react.

Interestingly, in the midst of the legal battle, on June 22, 2012, Robert Kasunic, Deputy General Counsel of the US Copyright Office to clarify its position regarding the legitimacy of copyright claims for compilations, particularly the “arrangement of exercises or of other uncopyrightable matter.” (Office, 77 FR 37605) Basing their decision on the interpretation in , the Office that not all “organization of preexisting material may be copyrightable”, (Office, 77 FR 37605) thereby that in order for the compilation to be registrable, it must “fall within one or more categories of authorship listed in section 102”. (Office, 77 FR 37606)

In clarifying their position, the Copyright Office maintained that any previous registrations were made in error and that going forward, such registrations would be refused. (Office, 77 FR 37607-08)

Similarly in Canada, exercise movements are not categorized as copyright protectable subject matter. The Canadian Intellectual Property Office’s (CIPO) states that "[a] compilation is a work resulting from the selection or arrangement of literary, dramatic, musical or artistic works or parts thereof, or a work resulting from the selection or arrangement of data." In essence, while the original selection or arrangement of eligible subject matter or data would normally qualify for copyright protection as a compilation, it would not qualify if the underlying work did not fit into these categories.

This is the accepted view in , where Professor states that "[c]ategories of work (other than data) that would not themselves qualify for copyright are excluded." (Vaver, 93)

Despite the clarification made by US Copyright Office, YTTP settled with Bikram and will no longer continue to offer the Bikram style classes in 2013. Interestingly, in an to his students after the settlement, Gregory Gumacio stated:

I find the idea of anyone claiming ownership of yoga asanas, or sequences, counterintuitive to the essence of yoga. I believe that this sacred and traditional knowledge is a gift to all mankind, and thus beyond claims of ownership and copyright.

Indeed, incorporating Traditional Knowledge into CIPO's practice has been made an important . Although the statement of policy from the US Copyright Office did not make reference to Traditional Knowledge, the end result of their position is that yoga teachers may engage in teaching variations of the Bikram sequence while yogis benefit from competition and affordable prices. Having said this, the Bikram Empire is one that is well known, as are his franchising, licensing and certification practices. As a result, despite their questionable legal tactics, Bikram yoga will undoubtedly retain its mass following.

Courtney Doagoo is a doctoral student at the University of Ottawa, Faculty of Law.

The post 'Lock Your Knees': Yoga Sequences Not Copyrightable appeared first on IPOsgoode.

discussing , Professor Sprigman mentioned that the intent of the book was to try to give a “reality check” to the widely accepted justification and theory for intellectual property rights. Namely, the theory that creativity and innovation depend on property rights to protect it. If creativity isn’t protected, copying will “drain away” the resources of creators and they will never be able to recuperate their investment costs, and as a result they will stop creating. Professor Sprigman agrees that the theory is relevant, albeit on an abstract level and with important limitations as there are some very successful industries such as fashion, food, and open-source software that do little to support this theory.

The dynamics of the fashion industry have been of particular interest for Professor Sprigman and co-author of The Knockoff Economy , a Professor at UCLA School of Law. The two authors have previously published several articles concerning the ongoing debate concerning the expansion of intellectual property rights for fashion design including, as well as .

The authors wanted to understand how the fashion industry thrives despite the low intellectual property afforded to it. Professor Sprigman notes that although fashion designers are “free to copy, to take inspiration from their rivals’ designs”, the industry is highly innovative and extremely profitable. The authors identified several advantages of copying in the fashion industry, including trends which act to fuel innovation and new designs: “copying helps spread the trend, and then it helps kill it”, as well as anchoring, which helps to reduce transaction costs by signalling the latest styles to consumers.

The Inaugural Distinguished Lecture featuring Professor Sprigman on The Knockoff Economy follows the latest of three attempts to expand intellectual property rights by proposing a Bill to amend the US Copyright Act to include protection for fashion design. The improved (IDPA, 2012) S. 3523, successor to the (DPPA, 2009) and most recently the (IDPPPA, 2010), was introduced on September 10, 2012 and successfully passed through the Senate Judiciary Committee only ten days later. It is now queued on the Senate’s legislative calendar.
Prior coverage of the IDPPPA can be found .

2012 has endured a flurry of fashion related cases including the high profile case decided by the US Second Circuit Appeal Court in September which granted Louboutin trademark victory for the red soles shoes (except for in the case of monochromatic shoes). Interestingly, Louboutin fought and in the French Cour de Cassasion in 2011 to retail giant Zara. Canadian based lululemon athletica inc also against Calvin Klein Inc late this summer concerning the alleged design patent infringement of their yoga pant waistband design.

In Canada, fashion design protection is fragmented between copyright and industrial design law, as is protection for most useful articles. In the second edition of , , Professor of Law at 91��ɫ, Osgoode Hall Law School observes that clothing has not qualified under the category of (Vaver, 84), and gives a useful example of the shortcomings of copyright law for clothing design under the “useful article” provision in of the Copyright Act :

“The Copyright Act removes full copyright protection from some of the “applied” artwork, applied as a design to a finished “useful article” … if more than fifty copies are made. This means that a Chanel “original” may be fully protected by copyright, as may any other original dress design, until the fifty-first dress is made anywhere with the copyright owner’s consent. Then anybody can copy the dress (a useful article) without infringing any copyright in it or any preliminary sketches and patterns”. (Vaver, 86)

Alternatively, designers may decide to register their designs under the Industrial Design Act which would grant ten years of protection upon mandatory registration, although it might be cost prohibitive to many small and medium designers given the rapid cycle of the fashion industry. As well, it is a limited form of protection, at least compared to other intellectual property rights in Canada. There has been a renewed interest in industrial design protection given the recent Federal Court case Details of the case can be found .

In , authors , Faculty Scholar and Director of the Area of Concentration in Intellectual Property, Information and Technology Law at the University of Western and Amy Muhlstein warn about the difficulties of relying solely on industrial design protection, stating that:

"The narrow definition of design in the legislation, together with the difficulties in interpreting the definition of design and related terms; in establishing criteria for originality; in coping with the subjective element in establishing infringement and in applying legislation from an earlier age to modern designs, all indicate that industrial designs are neither protected comprehensively, nor with any great certainty of enforcement under the current Industrial Design Act." (Wilkinson & Muhlstein, 23)

The legislative policy concerning the relationship between copyright and industrial design has also been found to be rather inconsistent if not arbitrary. (Vaver, 89) Professor Vaver finds that “The attempt to draw a bright line between fine art and industrial design is unfortunately undermined by the list of bric-a-brac that is specifically allowed to retain full copyright protection” i.e. trademark and textile designs, labels and character merchandising to name a few. (Vaver, 89)

Similarly, in her chapter When Intellectual Property Rights Converge: Tracing the Contours and Mapping the Fault Lines 'Case by Case' and 'Law by Law' in , , Associate Professor at the Faculty of Law at the University of Windsor writes:

"It would seem then that in spite of Parliament's best efforts, the segregation of industrial design and copyright has not been entirely successful - and indeed, will not likely be fully achieved unless and until a systematic review of Canadian industrial design law is undertaken that includes a full analysis of its interface with copyright law." (Tawfik, 273)

Despite the fact that Canada has not followed the queue for stronger fashion design protection, the debate for IP expansion is certainly still relevant, as is discussion about Industrial Design Act reform and its relationship with copyright law. It will nonetheless be interesting to see whether any noticeable changes in the fashion industry will occur stateside, including creativity, trend behavior and all of the other positive attributes of low intellectual property industries Professors Sprigman and Raustiala have identified in , should the IDPA successfully pass this time around.

Courtney Doagoo is a doctoral student at the University of Ottawa, Faculty of Law.

The post Third time a charm? The Innovative Design Protection Act in the face of The Knockoff Economy. appeared first on IPOsgoode.

The decision stems from an by Re:Sound on March 28, 2008 proposing two Tariffs (Tariffs 7 & 9), which the Board rejected. Re:Sound collects royalties when a sound recording is performed in public or communicated to the public by telecommunication based on . The proposed Tariffs would have allowed for royalties to be claimed for the 'use of sound recordings embodied in a movie by motion picture theatres and other establishments' (Tariff 7) and 'for the use of sound recordings in programs broadcast by commercial over the air pay, specialty and other television services' (Tariff 9). In other words, the tariff would have required movie theatres and TV stations to pay a royalty to Re:Sound for the recorded music included in movies or TV shows. To read a previous IPilogue analysis of the Board and FCA decisions .

The Motion Picture Theatre Association of Canada (MPTAC) objected to Tariff 7, while a series of telecommunications companies including Rogers Communications, Shaw Communications, Bell Express Vu and Quebecor Media objected to Tariff 9 (collectively referred to as the ‘Objectors’).

The main issue considered by the Board was “...[w]hen is a pre-existing sound recording that is subsequently incorporated into a soundtrack no longer a sound recording?” The basis of the analysis stemmed from the interpretation of pertaining to the defined term “sound recording” and the undefined term “soundtrack”. (Board, 27)

Section 2
"Sound Recording"

‘means a recording, fixed in any material form, consisting of sounds, whether or not a performance of a work, but excludes any soundtrack of a cinematographic work where it accompanies the cinematographic work’

Re:Sound argued that pre-existing sound recordings in a "soundtrack" accompanied by a cinematographic work are included in the definition of "sound recording", and should therefore not be excluded from s.19 remuneration.

The objecting parties submitted that the definition of sound recording and the soundtrack exclusion therein applies to exclude protection from the use of pre-existing sound recordings when they are part of a soundtrack that accompanies a cinematographic work. The same sound recording on its own (not accompanied by a cinematographic work) would remain a sound recording as defined by the Act, and subject to the remuneration right. Otherwise, the objectors contended that the copyright holders of the sound recordings could effectively wield a veto power over any soundtrack which accompanied a cinematographic work.

After reviewing the relevant legislation, namely sections 2, 15, 17, 18 and 19 of the Canadian Copyright Act, the Board addressed the submissions made by the Re:Sound:

• First, the definition of ‘sound recording’ was amended at the Committee stage to ensure that a soundtrack accompanied by the cinematographic work would not be entitled to equitable remuneration while the soundtrack absent the cinematographic work would receive equitable remuneration. (Board, 36)
• Second, cinema and television were not a part of the dialogue concerning the enactment of s.19 of the Act. (Board, 37)
• Third, that Parliament, having aligned its legislation with the does not require protection where the sound recording is incorporated into a soundtrack. (Board, 38)
• Finally, (and what they found to be the most important) the Board observed that the Committee clearly never intended to include television broadcasts within s.19 of the Act. (Board, 39)

Re:Sound relied heavily on Australian, American and UK authorities - all which were rejected by the Board due to legislative differences. The Board concluded that the proposed Tariff had no legal foundation and could therefore not be certified. (Board, 44)

Re:Sound applied for a of the Board’s decision to the Federal Court of Appeal on February 22, 2011. The Federal Court upheld the findings of the Copyright Board and held that the Re:Sound’s concerns that the sound recording could be published and disseminated on the internet, or be extracted from the DVD without recourse or remedy were ill founded. They also found that reference to the Australian jurisprudence and UK law was irrelevant because the jurisdictions are based on fundamentally different laws. Finally, the applicant also raised arguments based on the Rome Convention in which the Court held that phonograms are exclusively aural fixation of sounds (Article 3, paragraph (b)), “...[a]nd that consequently a “fixation of images (e.g., cinema) or of images and sounds (e.g., television) are therefore excluded” (WIPO Guide to the Rome Convention section 3.7).”

The main issue considered by the was the statutory interpretation of the relevant provisions:

"Do pre-existing sound recordings incorporated into a soundtrack fall within the meaning of the undefined term “soundtrack” used in the definition of “sound recording” in s. 2 of the Act? In other words, in view of the fact that only a “sound recording” can be the subject of a tariff under s. 19, can the reproduction of a pre-existing sound recording that is part of a soundtrack of a cinematographic work be the subject of a tariff when the soundtrack accompanies the cinematographic work?" (SCC, 25)

The Court held that a reading of the provisions in a manner other than the one proposed by the Board would be 'superfluous'. As a result, the Court opined that a sound recording in a soundtrack would not trigger the remuneration scheme under s.19 of the Act when accompanied by a cinematographic work or television program.

After reviewing the excerpts made by the Standing Committee on Canadian Heritage concerning the s.19 provision of the Act, the Court confirmed that that a soundtrack CD would normally qualify under the s.19 remuneration scheme, as it is not accompanied by a movie or television program. However, once the soundtrack accompanied either a movie or television program, it would be excluded from the remuneration scheme.

The SCC also addressed the international jurisprudence used by the appellants to support their position, holding that "...[t]he foreign jurisprudence makes it clear that significant differences exist between Canadian copyright legislation and the foreign legislation on which those decisions are based".

Finally, concerning the appellants arguments based on the , the Court held that the appellants overlooked article 3 "...[w]hich defines a “phonogram” as “any exclusively aural fixation of sounds of a performance or of other sounds”. Thus, excluding a soundtrack from the definition of “sound recording” where the soundtrack accompanies the cinematographic work is consistent with the Rome Convention, since this exclusion is not for “exclusively aural fixations”." (SCC, 49) The Court held that Canada is aligned with the Rome Convention because once the sound recordings are extracted from the soundtrack (in which case it is not accompanying the cinematographic work or television program), the remuneration scheme would apply.

After considering both the Copyright Board and FCA’s decisions, the Supreme Court of Canada rejected the appellant's interpretation of 'sound recording' holding that:

“When it accompanies the motion picture, therefore, the recording of sounds that constitutes a soundtrack does not fall within the definition of “sound recording” and does not trigger the application of s. 19. A pre-existing sound recording is made up of recorded sounds. The Act does not specify that a pre-existing recording of “sounds” that accompanies a motion picture cannot be a “soundtrack” within the meaning of s. 2. In my view, a pre-existing sound recording cannot be excluded from the meaning of “soundtrack” unless Parliament expressed an intention to do so in the Act. It could have done this by, for example, excluding only “the aggregate of sounds in a soundtrack”.” (SCC, 36)

The SCC concluded that the Board was correct in its interpretation of ‘sound recording’, ‘soundtrack’ and that its decision was “...[c]onsistent with the scheme of the Act, the intention of Parliament and Canada’s international obligations. Contrary to the appellant’s suggestion, it does not lead to absurd results.”

In a following the decision, Re:Sound President Ian MacKay was quoted as saying that "...[i]t is the Supreme Court's role to interpret the law as it exists, not as it should be. Unfortunately, Canada's copyright law has today been found to put Canadian recording artists and record companies at a disadvantage in the international marketplace." Publishers and songwriters will continue to receive protection for these works under the Copyright Act, whereas performers and musicians will not. However, as the Supreme Court noted, if Parliament intended to exclude pre-existing sound recordings from the definition of a soundtrack - it would have done so. Further, as mentioned throughout the decision, a soundtrack on its own would receive remuneration rights based on s.19, just not when accompanied in a movie or television show.

As the Board mentioned, granting such rights could inevitably "...[p]ermit these contributors to a movie, but not the copyright owner of the movie, to control the rental of the movie." (Board, 29) although this was not addressed by the SCC.

The new Copyright Bill C-11 does little to back Re:Sound's plight for adding Tariffs, although interestingly enough, the decision follows a recent international conference held to formalize a new treaty for audiovisual performers. The , which concluded in June, is meant to grant rights to audiovisual performers akin to copyright. Perhaps future copyright reforms meant to ratify this treaty will grant Re:Sound the rights they are looking for.

Courtney Doagoo is a doctoral student at the University of Ottawa, Faculty of Law.

The post Re:Sound v. MPTAC: SCC Upholds Copyright Board's Decision appeared first on IPOsgoode.

There are currently 22 gTLDs, including .com, .edu, .gov, .net, .org, and .info. By the end of the new gTLD application deadline, a had been received from 60 countries around the world, including:

- 911 from North America
- 675 from EU
- 303 from Asia-Pacific
- 24 from Latin America and the Caribbean, and
- 17 from Africa

The standard application cost was $185,000, in addition to other costs where ‘specialized process steps' were applicable. ICANN considered these administrative costs as ‘breakeven’ although some speculate that the high price tag acted as a barrier to entry, leaving the future of the internet in the hands of a very wealthy few. Concerns were also raised regarding the geographical distribution of the applications – as North American applicants totaled 911, while applications from Africa totaled 17.

Of the 1930 applications, 231 gTLDs were applied for by more than one applicant, including 'cloud', 'design', 'game' and 'eco'.  Google (under 'Charleston Road Registry') and Amazon applied  for 101 and 76 gTLDs, respectively.

The have not yet been approved by ICANN. The gTLD evaluation procedure includes a review which will be conducted to ensure that the applicants will be able to afford and maintain the required infrastructure and service registry agreements.There is also a 9 to 20 month window where the application will undergo rigorous evaluation, which includes a 60 day , as well as a 7 month objection period open to interested parties who can assert objection on one of 4 grounds which are published in Module 3 of the gTLD :

“String Confusion Objection – The applied-for gTLD string is confusingly similar to an existing TLD or to another applied for gTLD string in the same round of applications.
Legal Rights Objection – The applied-for gTLD string infringes the existing legal rights of the objector.
Limited Public Interest Objection – The applied-for gTLD string is contrary to generally accepted legal norms of morality and public order that are recognized under principles of international law.
Community Objection – There is substantial opposition to the gTLD application from a significant portion of the community to which the gTLD string may be explicitly or implicitly targeted.”

Trademark holders can file a Legal Rights Objection which will then be assessed by a panel of experts in order to determine whether or not their trademark rights have been infringed. ICANN has also initiated three new gTLD “” (RPMs) - see below - which can be found in detail under Module 5 of the :

"Trademark Clearinghouse

The Trademark Clearinghouse is a centralized database of verified data on registered (or court-validated, or "statute/treaty-protected") trademarks. The Clearinghouse is intended to minimize burdens on bona fide trademark owners by allowing them to deposit, for a (yet-to-be-determined) fee, their trademark data with one centralized source, rather than with each new gTLD registry; new gTLD registries will be able to retrieve such centralized data from the Clearinghouse.

The Clearinghouse is not itself an RPM, but rather facilitates use of RPMs such as Sunrise registration periods (during which trademark owners can purchase domain names before the general public, usually for a premium fee), Trademark Claims services (notice to a prospective domain name registrant of a potential conflict between the domain name and an existing trademark, with a notice to the trademark owner if the domain name is registered following the registrant’s representation of non infringement), and URS proceedings (described below).

Uniform Rapid Suspension (URS)

The URS is intended to be a lighter, quicker complement to the existing UDRP. Like the UDRP, it is intended for clear-cut cases of trademark abuse. Under the URS, the only remedy which a panel may grant is the temporary suspension of a domain name for the duration of the registration period (which may be extended by the prevailing complainant for one year, at commercial rates). Initial URS timelines, at least from filing to a determination, are similar to those of the UDRP; also, the URS substantive criteria mirror those of the UDRP (but with a higher burden of proof for complainants, and additional registrant defenses).

It is important to note that, as adopted by ICANN, once a determination is rendered, a losing registrant has several appeal possibilities (from 30 days up to one year); trademark owners may consider this in deciding whether to use the URS or the UDRP, which provides a transfer, and thus does not carry a monitoring burden with it. (Either party may file a de novo appeal (for a fee) within 14 days.) There are also penalties for filing “abusive complaints” which may result in a ban on future URS filings.

Trademark Post-Delegation Dispute Resolution Procedure (PDDRP)

The PDDRP is an administrative (court alternative) option for trademark owners to file an objection against a registry whose “affirmative conduct” in its operation or use of its gTLD is alleged to cause or materially contribute to trademark abuse. In this way, the PDDRP is intended to act as a higher-level enforcement tool to assist ICANN compliance activities, where rights holders may not be able to continue to turn solely to lower-level multijurisdictional enforcement options in a vastly expanded DNS.

It is important to note that, as adopted by ICANN, the PDDRP involves a number of procedural layers, such as an administrative compliance review, appointment of a “threshold review panel,” an expert determination as to liability under the procedure (with implementation of any remedies at ICANN’s discretion), a possible de novo appeal (under the same process), and further appeal to arbitration under ICANN’s registry terms. Beyond this, any PDDRP remedy specifically excludes third-party-registered second-level infringing names (which may have been the basis for filing the PDDRP case), and requires specific bad-faith conduct including profit from encouraging infringement in addition to “the typical registration fee.” Also, attorney fees are available against complainants only."

Preparing for the inevitable, on March 6, 2012, the (WIPO) that it would roll out preemptive resources to help prevent the “abusive use of trademarks as gTLDs”. WIPO reports that trademark holders filed 2,764 cybersquatting cases concerning 4,781 domain names with the WIPO Arbitration and Mediation Center in 2011 alone. Applying the (UDRP) procedures and jurisprudence, the WIPO Center  found evidence of cybersquatting in 88% of these cases. The UDRP has become the international standard procedure for trademark related, cybersquatting incidents.

The new gTLD project marks the third such expansion since the creation of ICANN in 1998 - the first expansion occurred in 2000, followed by the second in 2004. Most of the new gTLD applications are expected to be on the “shortest path” to going live in the first quarter of 2013.

Courtney Doagoo is a doctoral student at the University of Ottawa, Faculty of Law.

The post ICANN Reveals New gTLD Applications appeared first on IPOsgoode.

The basis of the Navajo Nation's complaint was that Urban Outfitters made unauthorized use of the ‘NAVAJO’ name in association with various retail items, such as alcohol flasks, women’s clothing and undergarments. In given by Bill Donovan - contributor for the Navajo Times - it was revealed that use of the NAVAJO name was not the only discomfort felt by the Nation: the Nation's traditional designs and patterns had also been used on some of the products.

The NAVAJO name has been used in commerce since 1849 by the Navajo Nation  in conjunction with numerous products including ‘clothing, accessories, blankets, jewelry, foods, tools, decorations, crafts, gaming establishments, tourism, educational institutions, retail services, fairs and events, and a news publication.’ Furthermore, the Nation has used its registered NAVAJO trademark in association with similar products since 1943. (para 2) The Navajo Nation asserts that the unauthorized use of the NAVAJO name and traditional designs in association with the retail products sold by Urban Outfitters conjures up false affiliation, licensing, sponsorship or endorsement by the Nation, seeing as the Nation itself has endorsed various products lines (such as clothing) in the past.

The Navajo Nation was not solely concerned with the use of the NAVAJO name, they were also concerned with the manner in which the name was used. In the complaint, the Navajo Nation claimed that use of the NAVAJO name in association with certain items such as the alcohol flasks was ‘derogatory and scandalous’ since “…[t]he Navajo Nation has long banned the sale, manufacture, possession, transport, delivery, and consumption of alcohol within its borders.” (para 58) In the interview, Donovan explains that use of the name in association with items such as underwear and alcohol flasks was 'tacky' and that the "Navajo Nation has been very sensitive about people using their name to promote tacky products".

Since the complaint, Donovan notes that Urban Outfitters has removed the NAVAJO name from their catalogue although they continue to sell the same items.

A recent explores the contention surrounding the “uneasy cultural exchange” concerning the recent use of traditional and cultural Navajo influences by fashion designers, causing the pop culture phenomenon of what the author coined “Navajo Chic”. ‘Inspiration’ derived from indigenous groups in fashion is hardly new: There was a similar uproar in Canada leading to the 2010 Olympic Games hosted in Vancouver.

The Cowichan First Nation had been negotiating a deal with the Bay to knit authentic Cowichan sweaters for the upcoming Olympic Games. Instead, the to produce similar sweaters rather than the authentic ones produced by the Nation itself due to the fact that production of the authentic sweaters would take too long. An authentic Cowichan sweater is a unique hand made design that could take anywhere up to seventy five hours to knit, whereas the manufacturers would be able to produce a much higher volume in a shorter time frame.

The Bay , asserting  that they were not manufacturing or selling the sweaters as authentic Cowichan sweater designs - although the sweaters did show some similarities.

The Bay finally agreed to a allowing for the Nation to sell their authentic Cowichan sweaters at the First Nations Pavilion and at the Bay's flagship store in Vancouver - blatantly a formality due to the fear of heightened tensions surrounding the controversy and circulating rumors of protest aimed at the torch relay.

The Cowichan sweater was officially recognized as an object of ‘’ by the Federal Government of Canada in March 2012 - one of thirteen such items, or sites given this national recognition.

Unlike the Unites States, Canada does not have legislation equivalent to the Indian Arts and Crafts Act. Instead, Canadian First Nation groups on a mixture of intellectual property, traditional knowledge and other means to protect authentically made products.

Although these two situations are different, the overarching issues remain the same. The contention will continue to be a grey zone pending the outcome of the lawsuit between the Navajo Nation and Urban Outfitters, which once settled, will surely result in defined parameters for use of the NAVAJO name by the world of fashion.

Courtney Doagoo is a doctoral student at the University of Ottawa, Faculty of Law.

The post Navajo Nation Sues Urban Outfitters Inc appeared first on IPOsgoode.

Bill C-11 began with its before the House in September of 2011, and is presently, as of May 14 2012, in its . Otherwise known as Canada’s Copyright Modernization Act, Bill C-11 was met by a list of last minute motions (totaling 23) proposed by the Green Party’s and also by from the Bloc Québécois Party. Interestingly, neither the Green nor Bloc Parties had representatives present in the parliamentary committee studying the Bill.

Particular highlights of the 19 motions proposed by Elizabeth May include her request for amendments to be made to Clauses 21, 22, 27, 29 and especially 47 of the Bill which concern fair dealing, non-commercial user generated content, defining the parameters of the term ‘lesson’, research or private study and technological protection measures and rights management information, respectively.

With respect to the 'fair dealing' provision, May requested that Clause 21 be amended to include a provision which would allow for the Governor in Council to make regulations defining ‘education’ for the purposes of fair dealing.  In the , May elaborated on this provision:

"However, the government threw in “education, parody or satire”, and the use of the word “education” does create some concern, primarily because “education”, as a term or exception under copyright use under fair dealing, has not been previously defined in the courts. It could lead to significant litigation to expand or narrow the meaning in ways that would be prejudicial to the average person who wants to use the material. Given that those people who might want to change the law in ways that restrict consumer access and normal opportunities to use materials are those with the greatest and the deepest pockets to go to court to prove this, it seems that down the road we might want to improve the way the bill currently reads and to create an opportunity by regulation for the Governor in Council to provide a definition of “education”, which is currently not in the bill, in order to leave that flexibility in place down the road. That is what my Motion No. 3 stands for: that the Governor in Council may make regulations defining “education”.

This specific amendment comes from testimony by Giuseppina D'Agostino, a Professor in intellectual property at Osgoode Hall Law School and Founder and Director of IP Osgoode In December 2010, when the previous iteration of Bill C-11, Bill C-32, was before the Parliamentary Committee, Professor D'Agostino commented on the need for an amendment:

"This would allow for a more evidence-based approach and allow government departments with expertise to helpfully collect evidence and be specific on what they need to cure by legislation, and to be nimble and flexible in making adjustments to copyright problems in the educational sector as they arise from time to time."

Motions No. 4 and 5 propose amendments to Clause 22 to remove what will be s. 29.23(1)(b), or the requirement that you cannot circumvent a TPM in order to qualify for the timeshifting exception, and the same for 29.24(1)(c) for the backup copying exception.

Motions No. 6 and 7 propose amendments to Clause 27, allowing students who receive lessons via telecommunication to reproduce the lesson for non-infringing purposes, striking the provision requiring them to delete copies of the lesson 30 days after their exams, and removing the duty from educational institutions to add TPMs to lessons received by students over the internet.

Motion No. 8 amending Clause 29 would remove the condition requiring that libraries, archives or museums providing a digital copy to a person who has requested it from another like institution, take measures to ensure that the person does not use the copy for more than 5 days from which it is first used -essentially removing the 5 day limit from interlibrary digital loans.

Motions No. 9 through to 21 propose changes to the technological protection measures and rights management provisions in Clause 47. Some of the proposed changes include:

• Defining “circumvention” of a TPM as a “measure for the purpose of an act that is an infringement of the copyright in the protected work.” Namely linking circumvention with copyright infringement.
• Deleting the provision which would make the manufacture, import, distribution or offer for sale or rental of circumvention devices illegal.
• Absolving liability for persons who have lawful authority to care for or supervise a minor and who circumvents a technological measure on a legally obtained, non-infringing copy of a work, to protect the minor.

In his , Michael Geist, Professor at the University of Ottawa, Faculty of Law notes that it is uncertain as to whether any of the proposed changes will make the cut, as previous recommendations made by other parties had all been rejected.

Elizabeth May was on her position concerning copyright reform in an iPolitics report, stating that she believes that the digital locks are “too restrictive” and that addressing these issues before they become law would be in the interest of both Canadians and Parliament. Further, she believes that the American entertainment industry is partially responsible for these changes and feels that “…[w]e could create a fairer balance that’s fairer to Canadian consumers.”

Other proposed changes include Andre Bellavance's proposal that Clauses 1, 2, 49 and 62 of Bill C-11 be deleted. These propositions include the definition of the term ‘moral rights’ and ‘treaty country’ and the prescription period for civil remedies.

Currently one step closer to fruition, the current Canadian copyright reform bill – - has come a very long way since its inception as Bill C-32 nearly 2 years ago, in June 2010. For previous IPilogue highlights on Canadian copyright reform efforts, please see .

In her Copyright: Characteristics of Canadian Reform, Sara Bannerman, Assistant Professor at McMaster University presents an insightful and detailed chronology of previous copyright reforms. She notes that the last two major copyright reforms (coined Phase I and Phase II) occurred in 1985 and 1997 respectively: Phase I included protection for “computer programs, to strengthened moral rights and to institute copyright collectives”, and Phase II amendments included “rights in public performances and broadcasts for performers and producers of sound recordings”.

Based on the political climate surrounding the Bill and the previously rejected proposed amendments, it is highly unlikely that May and Bellavance's last minute motions will make a dent in its outcome. It remains to be seen what the ultimate result will be.

Courtney Doagoo is a doctoral student at the University of Ottawa, Faculty of Law.

The post One Step Closer: Bill C-11 appeared first on IPOsgoode.

Botox was registered as a word mark from 1991 to 2003 for goods in (namely for pharmaceuticals) by , “a global, multi-specialty health care company with leading portfolios in eye care, neurosciences, medical dermatology, medical aesthetics, obesity intervention and urologics”. In May 2002, and July 2002 both Helena Rubenstein and L’Oreal filed Community trade mark applications with the Office of Harmonization for the Internal Market (OHIM) for BOTOLIST, and BOTOCYL, respectively for products in (lotions and other superficial cosmetic products).

Allergan filed an unsuccessful application for the declaration of invalidity of BOTOCYL and BOTOLIST in March of 2007, followed by a successful appeal in May of 2008 which was upheld by the OHIM based on which states:

Furthermore, upon opposition by the proprietor of an earlier trade mark within the meaning of paragraph 2, the trade mark applied for shall not be registered where it is identical with or similar to the earlier trade mark and is to be registered for goods or services which are not similar to those for which the earlier trade mark is registered, where in the case of an earlier Community trade mark the trade mark has a reputation in the Community and, in the case of an earlier national trade mark, the trade mark has a reputation in the Member State concerned and where the use without due cause of the trade mark applied for would take unfair advantage of, or be detrimental to, the distinctive character or the repute of the earlier trade mark.

Following Allergen’s successful appeal, Helena Rubenstein and L’Oreal sought the annulment of the decision before the General Court based on two pleas, namely 1) infringement of Article 8(5) of Regulation 40/94 and 2) infringement of Article 73 of the same Regulation. On December 16th, 2010 the General Court dismissed these actions which led to the Appeal at hand.

The first of four grounds raised by the appellants involved the General Court's December 2010 decision in which it held that the appellants trademarks took advantage of, or was detrimental to the distinctive character of the earlier mark “BOTOX”. All four complaints within the first ground were tersely rejected by the Court, including the claims that i) the BOTOLIST and BOTOCYL marks were registered only several months prior to BOTOX (para 10), ii) that the General Court erred in determining that BOTOX’s reputation as a mark was sufficiently proven (para 15), iii) that there is no link between the BOTO- in BOTOX and the two contested trademarks (para 27), and iv) that there was damage caused to the earlier mark (para 30).

The last claim is of particular interest as the ECJ declared that BOTOX was a mark with a 'reputation' and that the appellants had demonstrated evidence of ‘parasitic’ intent in adopting their marks. The ECJ then proceeded to review three seminal cases concerning trademarks with demonstrated ‘reputation’ : ; ; .

Based on the holdings in these cases, parasitism or 'free riding' occurs when the second-comer takes unfair advantage (using the power of attraction) of the trademarks’ distinctive character or repute. Detriment to the trademark does not need to be shown, rather, detriment can be ascertained from the use or advantage taken of the mark by the second-comer. The stronger the reputation of the mark, the greater success will be had of showing that detriment has been caused to it. (para 32)

Finally, the Court held,

 …[t]he existence of parasitic intent is inferred from a number of findings which concern, on the one hand, the fact that Helena Rubinstein and L’Oréal opted to use in their marks a prefix which reproduces almost all of the earlier mark – a decision which, in the view of the General Court and, before it, the Board of Appeal, cannot be justified by the intention to refer to the botulinum toxin which, moreover, does not form part of the goods covered by the contested marks – and, on the other, the characteristics of the earlier mark, that is to say, its strong distinctive character, owing also to its uniqueness and widespread reputation. (para 36)

In the end all four Grounds were rejected.

Courtney Doagoo is a doctoral student at the University of Ottawa, Faculty of Law.

The post Evidence Of Parasitic Intent Not Unfounded: L’Oreal appeared first on IPOsgoode.

The suit was launched by Mr. Lorne Waldman, an Ontario lawyer specializing in immigration and refugee law, who alleged that Carswell (Thomson’s legal publishing branch) reproduced and published publicly filed court documents without the express permission or license of the authors of those works - including his - on “” (a service provided on Carswell's Westlaw). Mr. Waldman alleged that Carswell committed both primary and secondary copyright infringement, infringement of moral rights and filed for $50 million in compensation and $1 million in punitive damages on behalf of the class members.

The Litigator offers several products, including one that grants access to court files such as pleadings, notice of motions, affidavits and factums to its subscribers. Subscribers are not only granted access to the document bank (of roughly 100,000), they are also permitted to download, edit, print, and even allowed to incorporate portions of these documents into their own work. Although Carswell does not request permission from the authors to upload the documents, they apparently adhere to take-down requests made by the authors of those works.

Notably, many of the documents available on the Litigator service are also accessible through various resources such as the Supreme Court of Canada, Legal Aid and the Canadian Bar Association, and also provide disclaimers that caution users against copyright infringement. However, unlike the Litigator they are not for profit.

In general, Thomson argued that restricting access to the documents is “antithetical to the open court system and to access to justice, behaviour modification, and judicial economy, which are the rationales for class proceedings”. (para 3) Further, Thomson argued that the legal documents lack the level of skill and judgment necessary to be considered an original copyrightable work, and also stated that because the documents are authored by clients and lawyers, the suit would mandate a breach of client and attorney privilege, and make it unmanageable for the administration of justice.

The Court summarized Thomson’s position from their filed on December 20, 2011, asserting:

"(a) the subscribers of Litigator are subject to terms and conditions that accord with the Copyright Act;
(b) it did not engage in copyright infringement;
(c) its conduct constituted “fair-dealing,” pursuant to s. 29 and s. 29.1 of the Act;
(d) it has the consent and/or an implied licence to copy and sell copies of court documents; and
(e) has a right supported by s.2(b) (freedom of expression) of the Charter of Rights and Freedoms, to copy and sell the works." (para 48)

was cited heavily throughout the discussions on originality, copyright infringement, and fair dealing. Interestingly, the Court specifically noted:

"Although arguably there may be distinguishing features, by way of analogy, the Great Library’s photocopy service is comparable to Litigator in that legal materials (literary works) authored by lawyers were reproduced by the users of the photocopying service (subscribers) or the legal materials were reproduced by library staff and delivered to the users, who, in turn could use the copies for their own purposes, including incorporating the information into court documents." (para, 82)

However, the Court also ‘appreciated’ the differences between Thomson’s for profit, versus LSUC not for profit photocopying service.

In the end, the Court held that the threshold for certification is one of technicality and procedure, and as a result determined that the elements had been satisfied by Mr. Waldman. The Court also held that the allegations did merit further consideration in future proceedings.

For guidance on the issue, the Court approvingly cited “” (1993) 31 Osgoode Hall L J 661, by , Professor of Intellectual Property Law at Osgoode Hall Law School, stating that:

"The copyright in legal documents is not a settled matter. In his very interesting and informative article, Professor David Vaver identifies the uncertainties associated with copyright in legal documents. Professor Vaver’s article is not specifically about court documents but about legal documents generally, and he points out several public policy concerns that arise because the extent of copyright in legal documents, if any, would affect the ability of lawyers to serve other clients and would detract from the profession’s obligation to serve the public to the best of its ability, would promote needless variety when standardization and consistency in legal expression would be beneficial, and would monopolize legal services and suppress healthy competition. Professor Vaver suggests that it would be unethical and contrary to professional ethics for a lawyer to insist on copyright."  (para, 93)

In his article, Professor Vaver discusses the various issues surrounding the copyright eligibility of legal documents such as the bar for originality, ownership, moral rights, and infringement and concludes with various recommendations for both reform and guidelines for this genre of work. For example, he notes that one solution would be to not give copyright protection to legal documents at all, or that a perhaps another solution would be to “accept that some legal documents need protection in some circumstances”. (Vaver, 681)

As discussed in a written after the lawsuit was first launched in May 2010, the outcome of this decision at trial will have significant ramifications on the future digitization, as well as legal collegiality, and most importantly, on the interplay between users' and creators' rights.

Courtney Doagoo is a doctoral student at the University of Ottawa, Faculty of Law.

The post The Saga Continues: Waldman v Thomson Reuters Corporation Class Action Certified appeared first on IPOsgoode.