The aforementioned decisions show how awkwardly the CIRA dispute resolution framework functions when applied to a new situation: a complaint based on the bad faith use of a personal name as a domain name. The (CDRP) typically contemplates complaints based on financial interests rooted in valid trade-mark rights, not simply in the valid personal interests of complainants. This situation is unfortunate, as these types of proceedings may become more frequent in the future.

Background: Revenge on the Internet

The two decisions, heard together, involve two Complainants - a working in Client Relations at Manulife Financial Affinity Markets and acting as General Counsel for the same company - and a single Registrant, a former customer of the Complainants’ employer.

The Registrant (who took no part in the proceedings) was unhappy with certain decisions made by Manulife which may have cost him money. In response to his dissatisfaction with the company, and with the Vice President in particular, he registered the Vice President’s personal name as a domain name, and threatened to use the domain to harm the Complainant’s reputation.

At the time of the complaint, the domain name had resolved to a website which displayed pornographic images. The Registrant also allegedly promised to drop by the Vice President’s home to discuss the matter, and made other comments which were described by the Panelist as “threats” which “had a personal tone.”

In response, the lawyer working for Manulife sent the dissatisfied customer an email addressing the registration of the domain name and advising him that a visit to the Vice President’s house would be treated as a trespass. The issue was not resolved, and the Registrant soon registered another domain name, this time using the personal name of the lawyer. He threatened to provide personal information about her and her family on the new website.

The email exchanges between the Registrant and the lawyer, while not publicly available, were described by the Panel as “angry and condescending.” Exchanges between the lawyer and the dissatisfied customer apparently included statements by the customer that the Internet was a “dangerous place,” and carried the implication that information included on the website about the lawyer and her children could cause them harm.

Both the General Counsel and the Vice President filed complaints against the former customer on 13 November 2013, seeking to have the domain name transferred to avoid further threats and potential damage to their reputations.

The Policy, the Law and the Problem of Personal Names

The (CDRP) can allow for the transfer of ownership of a domain name registration under paragraph 3.1 where

1. The Registrant’s dot-ca domain name is confusingly similar to a Mark in which the complainant had Rights prior to the date of registration of the domain name and continues to have such Rights;
2. The Registrant has no legitimate interest in the domain name (as described in the CDRP); and
3. The Registrant has registered the domain name in bad faith (also as described in the CDRP)
   
   

The term “Mark” also has a specific definition under paragraph 3.2 of the CDRP. This definition closely tracks definitions in ss. 2 and 4 of the Trade-marks Act (), in that it requires that the Mark be used for the purpose of distinguishing one’s goods and services from those of another.

Both the CDRP and the Trade-marks Act are concerned about preserving the use of one’s personal name from protection, in order to enable people to honestly conduct business under their actual names. However, both the Act and the CDRP address this defensively:

• The Trade-mark Act provides that a Mark is not registrable if it is primarily merely the name or surname of an individual who is living or who has died within thirty years of an application (under ).
• The CDRP protects the ability of Registrants to operate websites under their own name in subparagraph 3.1(b), where the personal name of the Registrant constitutes a “legitimate interest” under subparagraph 3.4(e).
  
  

Neither the CDRP nor the Trade-marks Act recognize a form of rights which arise from one’s personal name outside the use of that name for the purpose of distinguishing one’s goods and services from another. Essentially, the CDRP lays out a procedure for protecting the commercial interests of trade-marks or trade names, and minimizes those protections where the Registrant of a domain name operates a website that is, in fact, his or her name (or a name by which he or she is commonly known).

Under the CDRP, as under the Trade-marks Act, a personal name can be used to block or reduce the scope of protection afforded to a Mark, but cannot necessarily be used as a sufficient basis to give rise to trade-mark-like rights on its own. To establish rights, the crucial factor is the presence of distinctiveness in the context of commercial activity, not the legal name of persons involved in a proceeding.

Solving the Problem Using the CDRP

The approach taken by the CDRP and the Trade-marks Act leads to a problem. In order to obtain relief under the CDRP, a person whose name has been registered in bad faith as a domain must prove that his or her name is a “Mark” using the same kind of evidence and reasoning that he or she would use to prevent his or her name from becoming a “Mark” under the Trade-marks Act.

The CDRP was not written to protect the personal or reputational interests Complainants may have in registered domain names. Even though this problem may be an issue which needs to be addressed, and which poses a substantial problem that should be resolved in the interests of public policy, the situation which the CDRP was meant to address is in fact more narrow. The CDRP protects the valid commercial interests of firms or people operating under a distinctive name. It does not explicitly protect other valid, personal interests individuals may have in registered domain names.

The panel reasoned around this problem by positing that certain kinds of professionals use their personal names in the promotion of their services, and as the professionals in question have promoted their services under this personal name, that name has effectively acquired distinctiveness. In this manner, “professionals treat personal names as trade names or trade-marks.” Thus, the decision of the panel seems to closely track a “acquired distinctiveness” argument for allowing a mark which is barred from registration under s 12(1)(a) and (b).

Problems for the Future

Here, it would have been unacceptable to the Panelist (and most likely to the public at large) to allow the Registrant to continue abusing the domain name system in this manner. However, the Panelist was confined within the parameters of a policy that was ill-equipped to solve disputes of such a personal nature. Using the restrictive definitions of the CDRP, the Panelist achieved the best outcome by avoiding the deficiencies of the CDRP entirely, and holding that the Complainants had common law trade-mark rights in their personal names. Yet the decision shows that the policy itself contains a major flaw, and the workaround may have unintended consequences in the future.

For instance, if a private individual is not part of a professional class in which a member uses his or her name to promote a service, does that mean this person cannot use the CDRP to transfer a domain name registered in bad faith for the purpose of spreading sensitive, personal information about that individual on the Internet?

In addition, if a Registrant provides evidence that a large number of professionals share a name with a complainant, would this mean that the complainant cannot prevent the bad faith registrant from maintaining control of the domain name and continuing to operate a hate site, since for that professional the name lacks sufficient distinctiveness?

Libel laws and privacy laws may help fill in some of the gaps, but unlike the administrative proceedings offered by CIRA, civil actions are often prohibitively expensive for private individuals. Ultimately, the new realities of the Internet era show that the CDRP may have been too narrowly drafted – and there are legitimate needs which the policy may not address.

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

The post Revenge and Domain Name Seizure: CIRA Allows Transfer of Registration of Domain Names Used for Personal Attacks appeared first on IPOsgoode.

Procedural History

In May 2010, a collection of lawyers and law firms in Canada launched a class action suit against Thomson Reuters, alleging that the company’s Westlaw “Litigator” service directly infringed works in which the individual members owned copyright. The claim, led by representative plaintiff , alleged infringement in over 50,000 works available through the Litigator service, and sought general damages of $50 million, as well as $1 million in Punitive Damages (IPilogue’s coverage of the initial is available ).

In February 2012, for the proposed action under the , 1992, SO 1992, c C-6 (for IPilogue’s coverage of the certification, see ). In the decision granting certification, the Court noted certain public policy problems involved in granting copyright protection to the types of material included in Westlaw’s Litigator service. Citing IP Osgoode's , Judge Perell noted in paragraph 93 that recognition of copyright in such materials

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.

However, as this was a certification proceeding, the Court declined to rule on the merits of the action and specifically made no finding on the existence or restriction of copyright protection in court documents.

The Proposed Settlement

Two years after certification, and four years after the action was commenced, the parties negotiated a settlement agreement. One major factor spurring settlement was , two of which (Society of Composers, Authors and Music Publishers of Canada v Bell Canada, and Alberta (Education) v Canadian Copyright Licensing Agency, ) dealt with the fair dealing exception in a manner which had a direct impact on the litigation.

Counsel for the affected class saw these decisions as “substantially increase[ing] the litigation risk for the Class Members” [], as the decisions of the Supreme Court provided Thomson Reuters with a broader fair dealing defence, and clarified that the for-profit nature of its Litigator service was not an insurmountable barrier against pleading fair dealing under The negotiations which followed were, in the words of the Court, “adversarial, arm’s length, and intensive.” In the end, Thomson Reuters made no admission of liability, and continues to deny the validity of Waldman’s claim.

Nevertheless, the parties were able to come to a mutually agreeable conclusion. Thomson Reuters insisted on a licence as part of the settlement, to avoid any claims in the future. Counsel for the class members proposed that Thomson Reuters fund a cy-près trust in the amount of $350,000 in lieu of direct compensation for individual plaintiffs, as specific losses were impossible to calculate.

The settlement also included mandatory copyright notices to users of the Litigator service about potential third-party copyright claims affecting the material accessible through Westlaw’s database. Class Members were permitted to opt out of the settlement, and Counsel for the plaintiffs secured $825,000 in legal fees as part of the settlement.

Fair and Reasonable: Objection to the Settlement and its Rejection by the Court

This proposed settlement was objected to by seven class members, all of whom are individual lawyers whose works appear on the Litigator service. Of these seven, five explicitly mention the disproportion between the amount awarded to the Class ($350,000) and the amount awarded to Class Counsel ($850,000).

Of the remaining two lawyers, one strongly objected to the notion that he retained any copyright in his court documents after they were filed, and objected to the suit on principle. Another objector claimed that no licence should be given to Thomson Reuters, as the settlement would therefore confer a direct benefit on the defendant (a licence) but only an indirect benefit on the plaintiffs (a fund for public interest litigation).

The Court agreed with the objecting Class Members, and rejected the settlement on the grounds that it was not fair, reasonable, and in the best interest of Class Members. In particular, Judge Perell emphasized that the paramount concern in approving a proposed class action settlement is access to justice. Moreover, the decision contains a consideration of what the phrase “access to justice” means in the context of class action settlement. In addition to substantive and procedural fairness, the Court held that a consideration of fairness in the context requires a court to consider:

circumstantial fairness, i.e., the fairness of the settlement to the parties and the class members in their particular circumstances, institutional fairness, and the fairness of the settlement from the perspective of a robust notion of access to justice that includes an outcome that objectively should satisfy the class members’ entitlement to justice for their grievances.����]

In particular, “institutional fairness” prevents a Court from “rubber stamping” settlements, to avoid setting an example through which fatigue, incompetence, opportunism, or the business model of Class Counsel or representative plaintiffs will result in a settlement which restricts the legal options of individual Class Members.

In the current settlement, the Court found it was unable to approve the settlement both because the award to Class Counsel was larger than that to Class Members, and because the settlement effectively “expropriates the Class Members’ property rights in exchange for a charitable donation from Thomson” [].

Moving Forward – Class Actions and Copyright Infringement in Canada

The decision contains valuable insight into judicial approval of class action settlements involving copyright infringement in Canada. The idea of class certification in copyright infringement actions seems at first glance to overcome some of the current barriers imposed on rights holders in asserting claims in the current legal climate – in particular the difficulty of proving individual damages, the restrictions on statutory damages imposed through recent legislative amendments, the limited means of some rights holders, and the relative power of organizations which distribute and communicate works to the public.

However, the decision in Waldman v Thomson Reuters shows that such actions have substantial public policy considerations involving access to justice. In particular, the decision shows that “access to justice” means something particular in the context of a settlement. The access to justice at issue is that afforded to members of the Class, not general projects – such as a fund for public interest litigation – which may provide access to justice for society writ large.

In addition to the concern about optics, the Court also addressed the ability of Class Members to “opt out” of the settlement agreement.  Since classes are certified in part because individual members lack the resources to pursue claims individually, the Court saw the argument that the settlement was fair because individual members could opt out as “specious.” Class action infringement suits may offer Canadian rights holders a powerful option for protecting their intellectual property, but the Ontario Superior Court has made it clear that such options must be exercised with a real concern for the Class Members whose rights are being protected.

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

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Voltage Pictures LLC is a Los Angeles-based studio engaged in the production, finance, and international sales of many popular movies, including the Academy Award-winning film "The Hurt Locker" (2008). In 2012, Voltage retained anti-piracy firm to determine if any of Voltage’s works were being shared via P2P networks in Canada, such as BitTorrent. An investigation determined that Voltage’s works were being seeded by users associated with around 2000 IP addresses.

Voltage, in response, sought a so-called Norwich Order requiring the ISP TekSavvy Solutions Inc. to provide the names and addresses of account holders associated with the internet protocol (IP) addresses in question. While TekSavvy took no position on the motion, the Samuelson-Glushko Canadian Internet Policy and Public Interest Clinic () was granted intervenor status to oppose the order, arguing that privacy considerations and the interests of justice should militate against ordering the ISP to divulge user information.

The Troll Toll – Abuse of Process and the Federal Court

“Copyright trolls” use the threat of litigation to effect quick settlements. These organizations send threatening and often misleading letters to individuals suspected of infringement, implying that liability is a foregone conclusion and demanding relatively small settlement amounts, usually low enough that retaining counsel to mount a full defence makes no economic sense. Frequently, such organizations threaten liability based on the – adding a layer of embarrassment to the demand and further extorting quick (and quiet) settlements from individuals.

To be clear, the plaintiff in Voltage Pictures LLC v John Doe and Jane Doe does not exhibit all of the characteristics of a typical troll. The plaintiff is engaged in a legitimate business, and does not depend on quick settlements as its primary means of generating profit. Further, Voltage produces critically acclaimed movies – not the pornographic content frequently associated with such trolls. However, the order sought by Voltage is so strongly associated with troll-like practices that, in my opinion, the spectre of the copyright troll must have heavily influenced the reasoning behind the order and the conditions under which it was granted. The Federal Court, while aware of the need to facilitate the protection of copyright, also recognizes the need to balance that interest with the prevention of the abuse of its processes.

Standards for Granting the Order – A Bona Fide Case

The specific order sought by Voltage was an equitable bill of discovery, also known in Canada as a Norwich Order after the decision of the House of Lords in . The order was described in as an “ancient” form of pre-action discovery which permits a court, through its equitable jurisdiction, “to order discovery of a person against whom the applicant…has no cause of action and who is not a party to the contemplated litigation.” These orders are meant to facilitate the discovery process where some third-party has relevant information not otherwise available to a plaintiff.

The intervenor CIPPIC strongly emphasized the need to protect the privacy of users, and therefore argued that the applicant had to satisfy a higher standard of a prima facie case before the Court could justify the disclosure of users' personal information. The Court disagreed, reviewing cases from other jurisdictions and concluding that even in the US, where a nominal prima facie standard was required, it was unclear if that standard was maintained in practice.

Slaying the Troll?

Prothonotary Aalto’s decision contains a review of case law from the US and the UK, which notes the shortcomings of judicial practice in jurisdictions where open-ended orders allowed the applicants to use the orders unfairly, by sending misleading letters to persons suspected of infringement. These letters, among other things, suggest that liability is a foregone conclusion and extort settlements from the recipients with no intention of pursuing further legal action on the part of the applicant.

In order to avoid similar abuses, this decision holds that courts should balance the privacy rights of potentially innocent users against the right of copyright holders to enforce their rights. To maintain this balance, where evidence suggests that a copyright holder is motivated by an improper purpose, the Court ought to subject the order to more stringent conditions. In some cases, where there is compelling evidence of improper motive, the Court may deny the motion entirely.

In this instance, the Court held that Voltage had met the lower bona fide standard, and allowed the order – however, it made the order subject to certain conditions meant to curb potentially abusive practices, including:

• making the order subject to oversight by a Case Management Judge;
• ensuring that the letter contains no inappropriate language by subjecting a draft demand letter to review by the Court;
• requiring a statement in the letter that liability for infringement has not yet been established and recommending that recipients seek legal assistance;
• requiring reimbursement of the reasonable costs and disbursements of TekSavvy incurred in providing the necessary information; and
• limiting the information provided to the name and address of the IP addresses implicated in file sharing of the protected works (and not the personal phone numbers or email addresses of such individuals).

Attaching similar conditions to Norwich Orders may well render large-scale actions against individual non-commercial infringers economically unfeasible. In any case, it will be interesting to see how the enforcement tactics of rights-holders develops over the next few years, in the context of a Court cognizant both of the extent of internet piracy and the increasing importance of preserving online privacy.

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

The post Improper Motives: Federal Court Safeguards its Process Against “Copyright Trolls” appeared first on IPOsgoode.

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

The Dispute: Formal Wear vs. Underwear

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

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

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

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

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

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

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

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

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

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

Practice Point: Interested Persons and International Protection

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

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

The post “World War Pink”: Victoria’s Secret and Thomas Pink Square Off in Dispute Over “Pink” Brands appeared first on IPOsgoode.

A Tale of Two Woodpeckers

Two businesses operating in BC allegedly marketed wood flooring products using a trade-mark that contains either an image of a woodpecker or the word "woodpecker" itself. The plaintiff, Woodpecker Hardwood Floors (2000) Inc, has been in the hardwood flooring business since as early as 2000. The defendants, Wiston International Trade Co, Ltd and Wiston Building Materials Co, obtained trade-mark registrations in early 2013 for various logos and word marks including some which use the word “Woodpecker” in association with wares and services involving hardwood floors. The plaintiff, in response to what it viewed as an infringement of its common law trade-mark rights, alleged passing off and sought a declaration of invalidity, as well as an interim injunction.

This situation closely tracks elements in most trade-mark litigation – save for the fact that Woodpecker sought relief in the BC Supreme Court, the provincial court of general jurisdiction. Since the claim involves allegations of invalidity concerning a registered trade-mark, such a claim would at first seem clearly within the Federal Court’s jurisdiction. The fact that an injunction was granted – and upheld on appeal – by BC provincial courts suggests that, in at least one province, whether or not provincial courts can declare trade-mark registrations to be invalid is a serious question to be tried. Related to this issue is whether or not owners of registered trade-marks can be restrained from using their marks by unregistered owners in various provinces.

The “Trump Card” and the Federal View

In Ontario, the Court of Appeal has referred to a trade-mark registration as a “trump card” which gives the owner a full answer to an allegation for passing off. In ([2002] OJ No 2029), the ONCA found that the defendant was entitled to use its registered mark in association with beer, and if a competitor takes exception to that use, “its sole recourse is to attack the validity of the registration” [at para 16].

While the plaintiff in Woodpecker did attack the validity of the defendant’s registration, it did so by seeking a declaration of invalidity in provincial court. This type of attack differs from the interpretation of Molson v Oland offered by the Federal Court in (2010 FC 1099, reversed in part on different grounds) in which Justice de Montigny found that the appropriate remedy for an unregistered owner alleging passing off against the holder of a registration was to “seek the expungement of the infringing trade-mark” [at para 209]. While the Federal Court of Appeal clarified that Molson v Oland only applied to the use of the mark as registered, the decision still seems dispositive in the current case.

Yet the BCCA still confirmed that there is a serious question to be tried. To understand why, one has to look to the language of the Trade-marks Act, the jurisdiction of the Federal Court, and even the division of powers established in .

Jurisdictions, Conflict and the Availability of Relief in Provincial Court

Trade-marks are not explicitly subject to the exclusive legislative authority of the Parliament of Canada under the Constitution Act, 1867, unlike “Patents of Invention and Discovery” and “Copyrights” (, respectively). Instead, federal legislative competence has historically been grounded in the broad section permitting legislation regarding the “Regulation of Trade and Commerce” ().

Parliament’s legislative competence to pass legislation which affects the common law tort of “passing off” was the subject of a direct challenge in , 2005 SCC 65. In Kirkbi, the Supreme Court found that , which codifies the common law civil action of passing off, is sufficiently integrated into the federal trade-mark scheme and therefore constitutional.

However, passing off remains a valid cause of action in provincial courts, who have original jurisdiction with respect to “Property and Civil Rights in the Province” (). Therefore, Parliamentary and provincial authority over trade-marks overlaps between the two jurisdictions.

As a result, potential overlapping jurisdictions can exist between federal and provincial courts where explicitly statutory language does not grant the federal court exclusive jurisdiction. Unfortunately, the Trade-marks Act may not be explicit enough to preclude a declaration of invalidity by a provincial court. The language of grants exclusive original jurisdiction to the Federal Court to order that any entry in the register be struck out or amended on the ground that the entry as it appears on the register does not accurately express or define the rights of the person appearing to be the registered owner of the mark. In addition, grants exclusive original jurisdiction to the Federal Court in any case in which it is sought to have any entry of the register of trade-marks made, expunged, varied or rectified. The subtle distinction drawn by the provincial courts in BC is that a declaration of invalidity is not an order to strike out or amend the register – and therefore does not necessarily fall under the exclusive jurisdiction of the court [see Woodpecker, at para 10].

The Position of the BCCA and its Potential Ramifications

For the interim order, the court concluded that it had the jurisdiction to issue an injunction against the defendants’ use of their registered marks on this basis, as well as jurisdiction flowing from and the inherent jurisdiction of the court. As this appeal involved an interim injunction, it was unnecessary to conclude that the provincial courts in BC did in fact have jurisdiction to make a declaration of invalidity regarding an entry on the Trade-mark Register. The decision simply stands for the proposition that provincial courts in BC still view the effects of registration which were the subject of comment in Molson v Oland and Philip Morris v Marlboro Canada, as well as the effects of to be unsettled matters of law – indicating that they may not interpret the FCA’s interpretation to be binding for the purposes of provincial law.

The issue, if it goes to trial, could have important ramifications. A system of national registration which is subject to inconsistent provincial restrictions could pose obstacles to rights-holders. More importantly, the ability of provincial courts to make differing declarations of invalidity undermines the purpose of a national trade-mark registry, creating gaps in coverage for a system intended to provide an easy method of national protection. In any case, this decision shows that provincial courts are unwilling to limit their jurisdiction without a full hearing on the merits of the case, and that any restrictions imposed on that jurisdiction will not be taken lightly.

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

The post The Curious Case of the Woodpecker and the Injunction appeared first on IPOsgoode.

Videotaping, the Internet and Strike Tactics in the Context of Privacy Legislation

In 2006, workers at the Palace Casino at West Edmonton Mall engaged in a lawful strike which lasted 305 days. During the course of the strike, the Union videotaped and photographed people crossing the picket line. The Union placed signs in the area warning people that images of people crossing the picket line may be placed on a website called www.casinoscabs.ca.

None of the complainant’s photos were actually placed on the website. An image captured of the vice president of the casino, however, was used in a mock “police mug shot poster” and in other satirical ways – although apparently with consent. Yet privacy statutes capture both the use and the collection of personal data. Therefore, even though the materials were never actually disseminated over the Internet, the Union’s activities fell within the application of Alberta’s (“P���ʴ�”).

Nor did the fact that the photos and videotape were taken in public exempt the activities from PIPA. PIPA, like most privacy statutes, dispenses with consent for the collection of publicly available information. Yet the concept of publicly available information is narrowly defined under the . These regulations, which mirror the under PIPEDA, limit the definition of publicly available information to certain information contained in directories and registries when used for a specific purpose, information contained in a judgment or record of a quasi-judicial body, and information contained in a magazine or news publication. As the Court of Appeal noted, “Under the Act, ‘personal’ information is not the same thing as ‘private’ information.”

The Appropriate Remedy for Offending Provisions in Privacy Legislation

All levels of court recognized the need to balance legislation intended to protect an individual’s privacy with constitutionally entrenched concepts of freedom of expression. All three levels of court– , , and the Supreme Court – agreed that the Union's collection of personal information conducted in support of its strike could not be restrained by PIPA.

No level of court had difficulty concluding that the videotaping and photographing of individuals near the picket line constituted free expression within the meaning of s. 2(b) of the Charter. Nor could the application of the ������’s restrictions to the Union’s activities be justified under s. 1. While the restrictions put in place by PIPA were rationally connected to its aim of protecting personal information, the means by which the Act protected this information were not proportionate.

The constitutionality of these restrictions on the Union’s speech was hardly a controversial issue. The key difference between these decisions, however, is the manner in which the differing levels of courts attempted to provide an outcome consistent with the rights guaranteed in the Charter. In the initial appeal of an adjudicator's decision to the Queen's Bench, The chambers judge attempted to use existing exceptions under PIPA in order to avoid the application of the statute and a finding of constitutional invalidity. She included the Union’s activities under the definition of “journalism”, which the Act exempts from its application entirely.

At the Court of Appeal, the court characterized the chambers judge’s attempt to remedy the breach of the Union’s constitutional right as “expansive and somewhat artificial.” Analyzing the situation as “journalism” was not particularly helpful, as not every piece of information posted (or intended to be posted) on the Internet qualifies as journalism. However, the Court of Appeal declined to strike out or read down the statute in any way. It instead issued a declaration that the application of the Act to the Union’s activities was unconstitutional.

In contrast, the SCC, at the request of the Government of Alberta and the Privacy Commissioner, declared the entire statute invalid to allow the legislature to redraft it as a whole.

The remedy granted by the Supreme Court shows the importance of well drafted, balanced privacy legislation. By invalidating the legislation entirely, rather than striking out portions or expanding definitions, the Court has allowed the Province to draft legislation which fits within the delicate framework in which privacy protection operates. Following the reasoning in UFCW, appropriate legislation would sufficiently recognize exceptions to the statutory scheme which allow entities affected by the Act to exercise their freedom of expression, while still preserving protections for individuals from organizations which seek to misuse personal data.

Moreover, a finding of invalidity more closely follows well established Supreme Court precedent. While the courts are the guardians of the Constitution and the individual rights protected by it, it is not up to the courts to provide details that would “”

What’s Next for Privacy Legislation in Canada?

There are important implications for this Decision. Most apparent, the offending sections of PIPA closely resemble the federal privacy statute PIPEDA. Like PIPA, PIPEDA contains no exceptions which would permit a union to use personal information in order to gain an economic advantage during the course of negotiations.

As was noted by the SCC, PIPA was inspired by . Its stated purpose is “almost identical” to the federal act. However, the Court maintained that the scope of PIPA was considerably broader than that of PIPEDA. Unlike PIPEDA, PIPA does not restrict its application to activities undertaken for commercial purposes. Yet it is unclear how this restriction could render PIPEDA constitutional, as an of in shows that the protection of freedom of expression includes commercial speech. While the scope of PIPEDA is more limited than its Albertan counterpart, it remains unclear if the similar provisions in the federal statute would survive a similar constitutional challenge.

Similar problems exist for a recent federal law popularly known as (“CASL”). CASL applies to a broad category of activities classified as “commercial electronic messages.” In order to soften the impact of the law, various exceptions have been created to its application through regulations. However, given the potentially broad scope of the legislation, CASL will probably lead to significant litigation once it is enacted. Once again, the courts will attempt to determine the proper balance between the harms addressed by such statutes and the rights restricted through the statutes’ application - and whether or not these protections are a proportionate response to the harms they seek to address.

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

The post Privacy and Proportionality: The Supreme Court finds Alberta Privacy Legislation Unconstitutional appeared first on IPOsgoode.

The court found that the scanning of over 20 million books and the provision of free snippets of the digitized copies over the Internet falls within the fair use exception provided in . This decision, which the , signals the court's endorsement of Google's practices, and is a further indication of American courts' favourable view toward the role of the Internet and digital distribution.

The Google Library Project

In 2004, Google announced a program called the , a part of its digital books project which involved a collaboration with a number of public libraries and prominent American universities in an effort to digitize the institutions' significant holdings. The project involved the use of optical character recognition, a technology that generates machine-readable electronic copies of the physical books.

Physical copies of books are scanned and placed in an index, which allows users to perform full-text searches in order to identify works relevant to their interests. After performing a search, a reader can access up to three “snippets” of text from a work containing the search terms. These snippets can change depending on the search terms, meaning it is possible (although impractical) to access an entire text by performing a large number of different searches.

A consortium of participating universities, involved in what is known as the (HDL), were also provided with digital copies of their scanned works, and access to a full-text searchable database. The individual universities can download full copies of works contained in their collections, but can gain only limited access to works contained in the collections of other institutions.

Google and the affiliated universities sought no permission from rights-holders before beginning the project. As a result of these activities, the Authors Guild of America and several publishers initiated separate class actions against both Google and the HDL universities.

In 2012, that the activities of universities and libraries involved in the HDL fell within the doctrine of fair use, and therefore the reproductions for use in databases and site-specific digital access to library holdings were not infringements of any rights held by the plaintiffs. This decision by the Authors Guild, and the judgement has not yet been released.

The Google case, however, continued. The commercial status of Google coupled with its decision to make the snippets widely available to the public made its claim of fair use less likely to succeed.

Class Action Litigation as an Alternative to Blanket Licensing

The American copyright system, administered by collective societies such a the , operates under a permission-based licensing process. This contrasts with the practice in Canada, which depends on blanket licensing agreements with collective societies such as , where fees are collected first, and then royalties are distributed among members of the collective according to subsequent audits of practices which fall within the terms of a licence or tariff.

In 2008, Google and the Authors Guild entered into an . This agreement was was in a decision also authored by Judge Chin, then of the District Court of NY on the grounds that it was not fair, adequate and reasonable. Through this class action settlement, Google attempted to lower the transactional costs attributed to permissions-based licensing and to avoid liability for its digitization of orphan works (works for which the author cannot be located, and therefore for which no permission can be obtained). While Google would be able to continue its digitization project, the Authors Guild would receive royalties over both works in its own repertoire and those works for which no author could be located.

As noted in the , over 500 submissions were filed by interested third parties in response to the settlement, most objecting the to arrangement. Judge Chin noted the inadequacy of class notice and representation and antitrust concerns. Amazon and Microsoft, Google's main competitors, arguing that the settlement infringed constitutional authority over copyright law, and that the agreement concerning orphan works resulted in an involuntary transfer of copyright in violation of US copyright law. In addition, were the settlement allowed to proceed, Microsoft and Amazon would have had to obtain permission from their main competitor in order to publish a significant number of unclaimed works.

With the settlement rejected and an application to the Second Circuit for certiorari of the class certification , the case proceeded on a consideration of the merits of Google's fair use defence.

Fair Use – The Benefits of Google's Project

The trial was a major success for Google, as the court rendered summary judgement in its favour on the grounds that all of Google's activities fell within the fair use exception contained at .

The court found that the Library Project provided numerous and significant benefits. Among the benefits mentioned by the court were:

• the increased efficiency in scholarly research;
• the promotion of a type of research known as data mining or text mining, in which large amounts of textual data is analyzed in order to draw conclusions about “word frequencies, syntactic patterns, and thematic markers”;
• the increased access the project provided to under-served communities, including people with visual impairments;
• the preservation and promotion of old and out-of-print books; and
• the promotion and resulting benefit to authors and publishers, as page containing the snippet included links to sellers of the book and libraries which contain the book in their collection.

Fair use, like , is an equitable doctrine designed to promote the development of arts and sciences. As a result, the substantial benefits provided by the project significantly influenced the finding of fair use.

Fair Use - Analysis on the Facts

The court found that Google's use of the protected works is highly transformative. Transformation, a concept not recognized under Canadian law, is a significant element of consideration under the US doctrine of fair use (although not “absolutely necessary”, according to a by the US Supreme Court on fair use).

The transformative character of the Google Library Project significantly militated towards a finding of fair use. In considering the purpose and character of the use, the first statutorily mandated consideration under the fair use analysis, the court found that Google Books does not “supersede or supplant” books because it is “not a tool to be used to read books.” The transformative character of the use acts as a counterweight to the commercial character of Google's operations – a factor that can tilt the balance against fair use.

The nature of the works in question also militated in favour of fair use. Unlike in Canada, US copyright law recognizes that it is in respect of fictional works in comparison with works of non-fiction. The vast majority of books digitized in the course of the Library Project were non-fiction. In another stark contrast to Canadian law, the fact that the books were published also weighed in favour of fair use. Unpublished works lead to a narrower scope of fair use in the American approach. In , the SCC recognized that the unpublished status of works can render a dealing more fair, thus increasing the scope of the doctrine where works are not publicly available.

The amount of the work copied was the sole factor which weighed against a finding of fair use. Google digitized entire works as part of its Library Project although, crucially, the amount of text accessible to a user in response to a search was limited to snippets of text, rather than complete access to the full text.

The effect of the use on the potential for the market also weighed in favour of fair use. The court found that, far from undermining the market for works, the Library Project enhanced sales of books by bringing rare or obscure titles to the attention of readers. Snippets of text were accompanied by links to libraries or websites where authorized copies of the works could be obtained by readers who wished to continue their research. While the analysis of this factor figures more prominently in US jurisprudence than in Canada, the reasoning in the decision resembles that in , a recent SCC decision in which the Court found that the provision of short excerpts from songs as part of a preview function on an online marketplace constituted fair dealing for the purposes of research. In SOCAN, the Court found that the dealing promoted, rather than undermined, the market for the sound recordings (for the IPilogue's coverage of the decision, click ).

While US fair use differs in many significant respects from Canadian fair dealing, the case is highly significant for Canadian copyright practice. Like many of the decisions rendered by the SCC in 2012's copyright Pentology, the American court's stance is pro-technology, favouring new forms of digital distribution over traditional approaches to rights-management which favour owners and authors. Many other aspects of Google's project would also help a such a project qualify for fair dealing in Canada, notably the manner in which the project increases the dissemination of rare texts, promotes the sale of protected works, and limits the amount of a book available to users. Nevertheless, as fair dealing - like fair use - is heavily dependent on the specific facts of a case, it remains hard to accurately predict how a similar case would fare in Canada.

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

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

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

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

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

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

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

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

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

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

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The panel addressed the international aspects of UGC in two different ways: both through public international law obligations imposed on Canada as a result of international treaties, and through addressing private international law issues concerning liability and potential defences to infringement in different jurisdictions.

Sookman: Is the UGC Exception in Conformity with International Treaty Standards?

Barry Sookman's talk focused on whether or not the UGC exception complies with international obligations, in particular the  (and the provisions of Berne incorporated into the WTO's ).

Sookman has previously mentioned that the Copyright Modernization Act could run afoul of Canada's international obligations by creating “” of new exceptions. His presentation during Thursday's panel elaborated upon how the UGC exception could fail to satisfy the “three step test” for permissible exceptions to copyright protection provided for in: where the exception applies only in “certain special cases”, does “not conflict with normal exploitation of the work”, and does not “unreasonably prejudice the legitimate interests of the author”.

Sookman argued that the UGC exception, which applies to all works and subject matter so long as it is used in a non-commercial context does not qualify as a “special case”, nor is it “certain” when it would apply. Moreover, the provision that addresses economic impact (at ) uses the terminology “does not have a substantial adverse effect”, rather than “does not conflict with the normal exploitation of the work” - which raises questions about whether the provision creates a higher burden for rights holders than expressed under the Berne Convention.

Finally, Sookman took issue with the fact that s 29.21(1)(d) seems to allow users to unreasonably prejudice the interests of the author, as the provision does not clearly allow authors to exercise their moral rights in the context of UGC. In comments which echoed the concerns of Marian Hebb, a panelist from earlier in the day, Sookman pointed out that the exception may not allow an author to prevent certain uses of her works for non-financial reasons – including prejudice to her honour or reputation.

Blom: Private International Law and the UGC Exception

Prof. Joost Blom of the UBC Faculty of Law rounded out the panel by talking about the UGC exception in the context of the Conflict of Law rules. Prof. Blom's discussion of IP liability and jurisdiction seems particularly important given the global operation of the market for copyright-protected subject matter and a by the European Court of Justice (to see the IPilogue's coverage of this decision, click ).

Blom began his presentation by outlining the three fundamental questions posed by private international law:

1. Jurisdiction (Where can a proceeding can be initiated?)
2. Choice of Law (Under what rules is a proceeding decided?)
3. Foreign Judgments (Will a judgment in a proceeding be enforced in another jurisdiction?)

Blom indicated that although IP rights are territorially defined, much infringing activity takes place either abroad or on the Internet (the nature of which can make the question of where an infringement has occurred very difficult to determine). In previous infringement proceedings involving the Internet, the Supreme Court has held that a plaintiff must establish a “” between the actionable wrong and Canada before a Canadian court may assume jurisdiction over a proceeding. However, as mentioned by Prof. Blom, this terminology is not specific enough to allow Canadian users to adequately assess their risks before reproducing or communicating their personal UGC.

Prof. Blom provided a powerful example of the potential international liability of creators of UGC, even given the recent amendments to the Copyright Act. Imagine a group of UBC students use five popular songs in a “flash mob” demonstration on campus. The flash mob is recorded, and the subsequent recording is uploaded on YouTube.

In this scenario, the student group has potentially infringed on three different exclusive rights: the right of reproduction, the right of performance and the right of communicating the work to the public. The first two acts occur in Canada, but the third could occur anywhere in the world – and although the UGC exception could exempt the student group from liability in Canada, it would be ineffective against a proceeding brought under any other jurisdiction (such as the USA).

Prof. Blom's presentation, therefore, served as a strong reminder that in the digital age, a domestic exception to copyright infringement only provides limited protection when the new work is provided on the Internet.

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

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Full results from the Harold G. Fox Canadian Intellectual Property Moot can be accessed .

was a crafty piece written by and his esteemed colleagues at . The problem took advantage of the recent developments that the Supreme Court of Canada’s have brought to infringement and fair dealing. Specifically, we were compelled to argue first whether the shortening of a licensed, long-lost Batman film to a song-specific clip (“Batman Style”, popularized by the fictional Korean artist “Pi”) infringed the copyright of the appellant’s sound recording. Second, if infringement was established, we turned to whether the respondent, Professor Michael Caine, could rely on the “private study” exception for fair dealing in providing the sound recording in its original context within the cinematographic work. It was a very fun problem, and I had the particularly onerous task of arguing that Caine’s usage was indeed fair dealing with the work.

The Osgoode team that I proudly represented consisted of myself (, Class of 2014) and Ryan Keller (Class of 2014) representing the respondent Michael Caine (and we had the pleasure of enduring many “Team Ryan” and “R-Squared” colloquialisms throughout the moot), David Bowden (Class of 2014) and Robert Trenker (Class of 2014) representing the appellant Thomas Hardie Music, Inc, with (Class of 2013) rounding out the team as our invaluable researcher.  We all took Legal Reform seminars with  in the fall 2012 term, and we all soon found out just how valuable Professor Vaver’s tutelage was.

Our preparation was extensive. We received the problem in mid-November, but with the time constraints that fall exams placed upon us, we did not sink our teeth into the problem until mid-December. Our fantastic coaches, , , and from provided us with timelines and support throughout the process, which was invaluable.  IP Osgoode's own served as the faculty advisor to the team.  Speaking on behalf of the entire team, we would like to offer our deepest thanks to them. We owe a great deal of our success to our coaches. After countless hours of factum prep, including many Google Doc and Skype sessions, our appellant and respondent teams submitted our respective facta for grading by the Fox Moot Committee in early January. Then began the oral preparation. We had many grinding practice sessions with constructive feedback from our coaches at Cassels (who themselves argued many of the cases that we cited at the Supreme Court – giving us unique insights regarding appellate advocacy) as well as innumerable team sessions, and we quickly found ourselves ready to moot!

The Fox IP Moot took place this past weekend (February 22-23, 2013) at the Federal Court of Canada, in downtown Toronto. Teams from five law schools across Ontario competed for the Harold G. Fox Cup: Osgoode Hall Law School, Queens University, University of Toronto, University of Windsor, and Western University. The competition began on noon Friday with the Fox IP Lecture, delivered by the Honorable , Chief Judge of the United States Court of Appeals for the Federal Circuit. Chief Judge Rader gave a highly entertaining lecture: IP Rights – Do the Remedies Fit the Infringement?, which spoke to the forces that he perceives as governing IP law. While I was disappointed that the "forces" did not pertain to a Jedi versus Imperial struggle, I was captivated by his views on the misconceptions of “patent trolls”, the strong influence of the media on IP cases, and the “culture” of using litigation as a commercial strategy. However, what stood out to me the most was his concerns about the re-entry of the non-expert jurist in the field of IP. In a personal conversation, he acknowledged that IP is becoming a more “sexy” field of law, and the Supreme Courts (most of which do not have IP experts, save for the Honourable of our own Court) are taking a greater interest in what has historically been the predominant realm of the Federal Courts. He cited the primary difference as one of approach, where the Federal Courts emphasize bright line tests and administrative standards, other Courts favour reasonableness standards. I could talk in much greater length about this riveting lecture, which also included strong encouragement for students to learn international IP law and references to , but in the interest of space, I must move on.

Shortly after the lecture (which was delivered while we enjoyed a decadent lunch at Arcadian Court), the first of two preliminary rounds started. New to this year’s competition, each appellant and respondent team would face the opposing side of every other school. This meant that we would moot twice in each of the two preliminary rounds (with the second held Saturday morning), with the aggregate score of our four preliminary moots and our factum determining which teams would move on to the playoff rounds. In the preliminary round, each panel consisted of one jurist and two IP practitioners, which made for a challenging and interesting dynamic. I must say that the that Dimock Stratton was able to attract to this event was, as always, top notch and we were truly humbled in appearing before them.

The preliminary rounds were a lot of fun, and some of the panels were incredibly challenging. I personally faced the difficult task of convincing some very “user rights” focused professionals that we should broadly interpret “private study” in the context of fair dealing. All of our team members became very passionate about our positions, and this certainly helped our persuasiveness in the Moot Court. After each round, we were given extensive feedback from the panels, which was a unique and fruitful way to develop our advocacy skills. Learning from the perspective of judges, who regularly hear appeals, and practitioners, who regularly make them, was one of the greatest benefits of this competition. Perhaps my favourite (and potentially embarrassing) piece of feedback was from the Honourable Justice Lois Roberts of the Ontario Superior Court who praised my voice, calling it “beautiful” and suggesting that I should be a singer. However, I refrained from serenading future judges. Justice Roberts also invited us all to sit in her seat at the bench, allowing us to gain her visual perspective, which made us all cognizant of the subtleties that the judiciary can pick up on.

After lunch on Saturday, the semi-finalists were announced, and we were extraordinarily lucky in that both of our teams advanced. Myself and Ryan as the respondents placed first among respondents in the preliminary rounds, while David and Robert placed second among appellants, in what were both inevitably close races. In a strange and wonderful twist of fate, this set the stage for an all-Osgoode semi-final round in front of the Honourable Justice Robert Blair of the Ontario Court of Appeal, the newly appointed Honourable Justice Michael Manson from the Federal Court, and the Honourable Konrad von Finckenstein, Q.C. a former chair of the CRTC. We both had undoubtedly our best rounds to date, bringing our best arguments forward while facing a very sophisticated and challenging bench, and had a lot of fun doing it. To faceoff against our own teammates who we have been working, commiserating, and practising with for months was exciting and a great way for the moot to come full circle.

In what was later described to me by Justice Manson as the toughest decision that he has made as a jurist yet, our incredible respondent team, David and Robert, moved on to represent Osgoode in the finals. Ryan and I could not have conceded to better opponents. In a packed courtroom full of other competitors, practitioners, friends, and academics (including IP Osgoode Director Professor Giuseppina D’Agostino), David and Robert faced the University of Toronto respondent team who had trumped the Western appellants in their semi-final round. Although the teams were anonymous to the judges at the time, this created a Subway Series that the Fox Moot had never seen before, and a proper (yet cordial) grudge match. In a panel that most experienced litigators would fear, our finalists’ submissions were received by five judges: Justice Rothstein, Chief Judge Rader, the Honourable Justice Stephen Goudge of the Ontario Court of Appeal, the Honourable Justice David Stratas of the Federal Court of Appeal, and the Honourable Justice Judith Snider of the Federal Court. Both teams were challenged early and often, with Chief Judge Rader proving to be particularly adversarial, hitting each oralist with a broad and difficult question within 30 seconds of commencing. Each of the four oralists were graceful, deferent, and rose to the occasion.

We were kept waiting for a few hours until an awards dinner at the University Club. In the end, Osgoode was triumphant with David Bowden and Robert Trenker claiming the Harold G. Fox Cup for the best mooting team. Myself (Ryan Heighton) and Ryan Keller took home the Gordon F. Henderson Award for the (which we could not have done without the hours of editing and revisions by Danny Titolo). The Donald F. Sim and Dimock Stratton LLP awards for best oral advocate and best mooter in a non-graduating year, respectively, went to Kevin Siu from the University of Toronto respondent team. Needless to say, we are incredibly proud to be members of the Osgoode community and represent the school well at such a prestigious event.

I could easily write another 2000 words to further texturize all of the exciting, nerve-wracking, and hilarious things that happened this weekend and it would not do this event justice. Perhaps the biggest thing that I will take away from this moot is the value of collaboration in law. As with many other fields of law, the intellectual property bar is incredibly collaborative, cordial, and this is evidenced by the generous and vast that the event received. Indeed, this event would not be an annual resounding success if not for this collaboration. We would like to thank all of the sponsors, the organizers, our coaches, and professors for making this possible. The event was orchestrated flawlessly, the abundance of food and drink at the receptions was remarkable, and everyone involved was incredibly accommodating and friendly. On a more personal note, I want to thank my teammates for making this a truly enjoyable and enlightening experience. I truly believe that we were as successful as we were because of our great collaboration and constant challenging of one another, and this will certainly persist as one of my most memorable law school experiences.

As a parting note, I would just like to remind all of the gentlemen reading this to heed the advice of Madam Justice Snider, and be sure to button up your jacket when you stand before the Court.

(from left) Danny Titolo, Ryan Heighton, Ryan Keller, David Bowden, and Robert Trenker comprised the award-winning 2013 Harold G. Fox Moot team for Osgoode Hall Law School.

Ryan Heighton is a JD Candidate at Osgoode Hall Law School and was a proud member of the 2013 Harold G. Fox Moot team for Osgoode Hall Law School.

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