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Organization of the Compendium

The Compendium is divided into chapters and begins with an overview of U.S. copyright law and the Copyright Office. This section is particularly useful because it outlines the various offices and divisions within the Copyright Office (an office significantly larger than its equivalent under the auspices of the Canadian Intellectual Property Office.) This is a huge aid to those of us trying to navigate the U.S. Copyright Office and the myriad services it provides. It also outlines important milestones in the history of U.S. copyright law. It continues with the registration process, identifying who may register a work and how to determine what works may be registered in the Copyright Office. It then has separate chapters on copyrightable works including literary, performing arts, visual arts, websites, masks and vessel hulls. Included are some excellent charts that enhance interpretation of the Compendium; for example, page 46 of the Compendium has a decision-making chart to help you determine the appropriate steps to take when registering a work with the Copyright Office; page 93 includes an “at a glance” chart intended to clarify who may file a copyright registration application.

One of the many benefits of the Compendium as an electronic publication is the ability to include hyperlinks to related material. In addition to very detailed and specific definitions and explanations, this document incorporates hyperlinks to significant House of Representatives Reports, relevant sections of the Federal Register, and U.S. Code of Federal Regulations. This design allows you to easily and quickly access the level of information you need.

Scope

Prior editions of the Compendium were for the most part internally directed and this third edition, the first major revision in over 20 years, is a comprehensive overhaul that makes the practices and standards of the Copyright Office accessible and transparent to the public. The Compendium addresses basic copyright principles such as standards of copyright-ability, joint authorship, work for hire, and routine questions like fees, records retrieval and other procedural issues. The compendium will be of help to anyone seeking in-depth information on which applications for copyright registration will be accepted by the U.S. Copyright Office, who may file a copyright registration application, examination practices, and Copyright Office services.

It is important to note that the Compendium does not “have the force and effect of law”; it is intended for use as an administrative manual or guide with appropriate references to the overarching laws from which it draws. However, the Compendium has been cited in many copyright cases (see some examples on page 5 of the Compendium) and is a well-respected voice in copyright because of its “compelling” and “persuasive” interpretations and reasoning.

Also of note is that portions of previous versions of the Compendium remain in effect; one example offered in the Compendium is that Chapter 1200 of Compendium II “continues to be the governing manual concerning the manufacturing clause” for works published prior to June 30, 1986, the expiration date of that clause.

Included in the Compendium is a thorough explanation of the examination process to determine that a work is “copyrightable” and to ensure that all requirements have been met, as well as how to appeal an application that has been refused.

A History of Firsts

Registration of copyright materials over time builds an astonishing cultural database chronicling a history of intellectual and creative endeavor since 1897. The Compendium touches briefly on the many “firsts” in the evolution of rights and protection; coupled with the timeline of copyright history beginning on page 24, it amounts to more than just trivia, it affords insight into trends in rights protection and management that may well open a window into the future of copyright.

��A “Living” Document

The Compendium is at .�� It remains in draft form for 120 days pending final review and implementation and is expected to become final in December 2014. Once final, this compendium will be available on the U.S. Copyright Office website and will be searchable electronically, with links that will vastly enhance its usability and clarity. Each chapter is prefaced by a detailed index for increased usability. The Copyright Office has expressed its intent that the Compendium be a “living” document that is electronically updated as required; to that end, the Office encourages public comment on the Compendium for both content and accessibility.

Lesley is a lawyer, author, educator, and Osgoode��alumnus��(’85). Her book,��Canadian Copyright Law, Fourth Edition, was recently published by Wiley. You can read more of Lesley’s posts at��.�� - See more at:

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As a result, discerning whether the specification has a promise of a specific result can have significant impact on the validity of a patent. The recent Federal Court of Appeal decision of Apotex Inc v Sanofi-Aventis Canada Inc (“Sanofi”), for which the Supreme Court has granted leave to appeal, advocates for a degree of constraint when determining whether a patent contains a promise.

In Sanofi, the Court held that it must look to the patent to determine whether it contains an explicit promise that the invention will achieve a specific result. Since there is no obligation on the part of the inventor to disclose the utility of his invention in the patent, not every patent contains an explicit promise of a specific result.

The idea of a “promise doctrine” is the subject of a NAFTA challenge by Eli Lilly. Central to Lilly’s argument is that two of Lilly’s patents were invalidated on the ground they were not useful, notwithstanding their approval by Health Canada and their commercial success. Lilly alleges that the promise doctrine is inconsistent with NAFTA as it imposes a significantly higher burden on the patentee than the standard of utility mandated by NAFTA.�� Specifically, Lilly alleges that Canada’s failure to abide by its NAFTA obligations has resulted in the unlawful expropriation of its patent rights.�� Lilly argues that the “promise doctrine” has caused a dramatic and unprecedented shift in Canada’s utility standard and is inconsistent with the utility standard embodied in NAFTA.���� Lilly pointed out that one of the patents was challenged and upheld in 18 countries throughout the world, and Canada was the only jurisdiction to invalidate on the basis of inutility.

Canada, in response, has argued that the “promise doctrine” was endorsed by the Supreme Court as early as 1981 in Consolboard v MacMillan, while NAFTA came into force in 1994. There is no requirement to make a promise, but a promise may be made for a variety of reasons, including where a new and non-obvious use of a known compound is the essence of the invention or in selection patents where a sub-species of the genus has a surprising and non-obvious advantage. Canada further notes that NAFTA does not provide direction as to how the core patent concepts of “new”, “inventive”, and “industrial application” are to be interpreted and applied in particular patent cases.

The Sanofi decision appears to have pushed back on certain elements of the “promise doctrine” that Lilly complains of in its NAFTA challenge. Lilly alleges that the Courts read into the patents an “implied promise” that the drugs would work in the longer term based on the chronic nature of the conditions being treated. In Sanofi, the Court of Appeal finds that the Trial Judge erred in finding a promise on the basis of inferences, in the absence of clear and unambiguous language. Sanofi thus draws a distinction between the potential use of an invention and an explicit promise to achieve a specific result, and finds that a goal is not necessarily a promise.

As noted by Canada in its Statement of Defence, domestic patent law continues to evolve, including the promise doctrine.

One possible way forward is to limit the promise doctrine in a manner similar to the Federal Court’s recent treatment of the heightened requirements for a “sound prediction” of utility.�� In a July 2014 Apotex v. AstraZeneca (“�����ٰ����ܱ�Ա𳦲�”) decision, Justice Rennie concludes that the patentee should only face a higher burden for disclosed utility in “new use for known compound” type patents.�� The rational was that, for these “new use” patents, the entire invention resides in the new utility, hence there should be a higher standard for showing utility.

The appeal of Astrazeneca to the Federal Court of Appeal, the Sanofi appeal to the Supreme Court of Canada, and Lilly’s NAFTA challenge will continue the evolution of these doctrines.

David Heller is a Partner at the Toronto office of Ridout & Maybee LLP, where he��specializes in the areas of pharmaceuticals, biotechnology, and chemistry.��David has been recognized as a leading IP lawyer in the Chambers Global Guide 2014, 2013, and 2012 rankings.

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With respect to the exclusive right to distribute the work in copies or phonorecords (17 U.S.C. sec. 106(3)), the U.S. encounters the danger of insufficient international compliance even though it has long been recognized in the U.S., as a matter of statute and caselaw, that the right applies to digital files as well as to material copies.���� But the authorities are inconsistent as to whether the distribution right extends both to offers as well as to actual deliveries of digital copies.�� For the moment, only federal district courts have ruled on the question, but their rulings have ranged from simply asserting that the distribution right includes a making available right, to assimilating making available to “publication” (whose statutory definition encompasses offers to distribute), to requiring actual downloads.���� The last group of decisions thus leaves a gap in U.S. coverage of the full range of the making available right.

With respect to the public performance right, the Second Circuit’s decisions in Cartoon Network v Cablevision and WNET v Aereo seriously compromised U.S. compliance with the WIPO Treaties because the court’s interpretation of the definition of “to perform publicly” excluded on-demand transmissions of broadcast and cable television content offered by remote storage and retransmission services, thus effectively reading asynchronous transmissions out of the statute.�� In ABC v Aereo, which involved retransmissions of broadcast television programming captured by individualized antennas on Aereo’s premises and digitized and stored on Aereo’s servers, A 6-3 majority of the Supreme Court reversed the Second Circuit. ��Justice Breyer’s opinion held that Aereo was “performing” the broadcast programming when the service captured the programming through the users’ individually-assigned antennas, then digitized, momentarily stored in individualized copies and retransmitted the programming to its subscribers at their request.�� The majority also ruled that the performances were “to the public” notwithstanding each transmission’s origin in a separate subscriber-assigned copy.�� The Court’s ruling on this point is consistent with the CJEU’s decision construing the making available right in TV Catchup, a 2014 controversy involving a similar technology.�� What matters is not how many people are capable of receiving a particular transmission, but whether members of the public may receive the performance of the work.�� The majority emphasized Aereo’s resemblance to cable retransmission operators, a service Congress in the 1976 Copyright Act unambiguously brought within the scope of the exclusive right of public performance.�� Although the majority distinguished less cable-like transmission services, notably “cloud storage” models such as Dropbox, and RS-DVR services, it declined to elaborate on the implications of its holdings for these other kinds of internet-based enterprises.���� Finally, the majority posited that in appropriate cases, even if the service is deemed to be “publicly performing” third party content, the fair use doctrine might excuse the transmission.

The dissenters (Scalia, joined by Thomas and Alito) did not address the “public” character of the performance because they contended that Aereo lacked sufficient volition to be “performing” the programming.���� The dissenters distinguished video on-demand services, which exercise volition in the selection of content offered to consumers, from automated retransmission services, which simply relay an upstream transmission entity’s (in this case, the broadcasters’) selection of programming proposed to users.

The Supreme Court’s Aereo decision alleviates some concerns about the conformity of U.S. copyright law with international norms, but the limited scope of the decision allows other shortcomings to persist.�� Thus, the court has reaffirmed the reach of the public performance right with respect to:

near-real time individualized digital retransmissions to members of the public of broadcast content (akin to cable retransmissions);

a-synchronous transmissions to members of the public when the primary value of the service to its customers is to transmit performances of content the customers did not themselves store with the service, or regarding which the customers did not enjoy some possessory relationship to a copy or right to access

Although the Court did not expressly state that the public performance right encompassed offers to transmit performances as well as actual performances, the logic of the decision points toward the broader (and internationally harmonious) interpretation.

The majority did not apply a specific “volition” predicate to determine whether a retransmission service “performs” the content it communicates, but it acknowledged the possibility that in some instances the end-user might be deemed the “performer.”

The Court has not directly spoken to the following issues:

Whether remote storage services are publicly performing content stored at the direction of their customers (but the opinion strongly suggests those services are not publicly performing);

Whether “volition” is a predicate to determine whether a remote storage service “makes” the consumer-requested copies created and retained on its servers;

Perhaps most importantly, because Aereo concerned only the public performance right, the Court did not have occasion to address whether the distribution right encompasses offers to distribute digital copies, or is limited to actual distributions of digital copies.�� As a result, the greatest gap in U.S. compliance with its international obligation to implement the “making available” right remains unremediated.

Jane C. Ginsburg is the Morton L. Janklow Professor of Literary and Artistic Property Law at Columbia University School of Law, and Faculty Director of the Kernochan Center for Law, Media and Arts.

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• Evaluate the merits of the claimed invention in terms of the well-established criteria for patentability, namely: novelty, ingenuity, industrial applicability and compatibility with accepted subject-matter classification (Mueller and Chisum, 2008).

• Collate patent applications and systematically organise the documents in such a manner that: they can be used as a reference body of knowledge both for the purposes of assessing whether subsequent patent applications have not been pre-empted by information in the public domain and to increase the general stock of knowledge in the public domain; and they can be made accessible to interested stakeholders for the purposes of spurring innovation.

The central question of the research study described in this chapter was whether patent systems in African states have the capacity to perform the two aforementioned functions. This question has its foundation in what is the raison ��'ê�ٰ�����of the patent system: the system’s need to facilitate the exchange of valuable information between inventors and society. The bargain or contract between a patentee and society operates on the theoretical premise that in exchange for a limited monopoly on use of an invention for 20 years, society has access to the ingenious information embodied in that invention. This research sought to find out whether this theory is supported by the reality of patent offices in Africa, i.e. do patent offices in the continent function as they should?

It seems clear from the research findings that the patent systems of many African states lack the safeguards and quality control mechanisms necessary to ensure that only inventions that meet the requisite threshold are conferred with patent protection. In addition, there is clearly a lack, in many African countries, of the infrastructure needed to ensure that the information contained in patent applications is collated and made electronically available to members of the public, researchers and technology-oriented industries. In general, the research findings suggest that a large number of African states are at present serving as dumping grounds for patents, with little examination of the merits of patent applications and little public access to the contents of the patent filings (contrary to the provisions and spirit of national patent laws).

Rigorous examination of patent applications requires governments to devote substantial resources to the objective. According to Lemley (2001), because the overwhelming majority of patents are never argued or licensed (i.e. asserted against a competitor), it is arguably financially efficient for a country to make detailed validity determinations in respect of only the few argued and licensed cases rather than in all patent examinations generally (many of which “will never be heard from again” (Lemley, 2001)). This raises the question: are African states perhaps being “rationally ignorant” of the objective validity of patents? That is, it may well be that it is too costly for African patent offices to discover all the necessary facts.

However, the phenomenon of poor record-keeping reveals that there is more than rational ignorance at play in African patent offices’ lack of delivery on their statutory obligations, because poor record-keeping goes entirely against the disclosure objectives of patent frameworks (Ghosh and Kesan, 2004). Further, the argument for rational ignorance is undermined by the reality that a rational national patent regime would be concerned with assessing both the costs and benefits of the patent system on all actors, as opposed to just (in the case of non-examination of applications) the apparent fiscal and operational efficiencies sought by a patent office.

Where patent offices do not provide substantive examination of applications, they encourage foreign patent applicants to seek to overwhelm weak patent offices with dubious applications, in the (entirely reasonable) hope that dubious applications will slip through and be granted juridical validity. Such occurrences would be a deep disservice to the nation concerned. Some scholars have suggested that the patent system could be improved by structuring an incentivised payment system for patent examiners (Burke and Reitzig, 2007; Geller, 2003). A simplified example would be to use court rulings as a measure of performance, i.e. a patent examiner could be sanctioned if a patent application which he/she approved via examination (had another role in the processing of) is later invalidated in court. However, certain practical issues reduce the usefulness of this kind of recommendation, e.g.:

• the rare occurrence of patent disputes and a strong tendency to settle out of court;

• long delays, in patent disputes, between patent issuance and final court judgements;

• other technical grounds for patent invalidations on technical grounds not connected to the performance of examiners; and

• complex sources of prior art in multicultural and multilingual African settings, making accurate examination or search extremely difficult.

A recommendation that cannot be argued against, however, is that there is a need for better training of legal counsel and judges in IP matters in Africa. A high quality patent system is impossible to achieve with poor quality lawyers and inexperienced judges; ineffective examination protocols assist to infiltrate the public domain with harmful and oppressive monopolies (Katznelson, 2010). Patent law requires a heterogeneous national administrative regime, with the patent office in the central but not solitary role (Farrell and Merges, 2004). However, there seems to be, in the countries surveyed, a palpable lack of appreciation for patent administration within a multi-institutional context. Multiple sectors of government need to take a deep and critical interest in the context and operations of a��country’s patent office.

As stated at the beginning of this chapter, patent offices are meant to engage in two key activities:

• Consistently assessing initial applications and granting of patents only to those applications that meet the necessary criteria; and

• Ensuring that the database of patents is reliable and accessible to the public.

The evidence from this research suggests that quality of delivery on both of these services is at present deplorable in many African states. Of particular concern is the potential impact of these faulty African national patent regimes in relation to transfer of emerging technologies. (See Chapters 11 and 12 of this volume on patenting matters in relation to clean energy technology in Mozambique and Egypt respectively.) Economic arguments for patent protection are founded on the need to incentivise research and development (R&D), disclosure of technological knowledge and facilitation of technology transfer. Such arguments collapse in the context of societies lacking the capacities to capture and disseminate technological knowledge. Technology contributes to social welfare and if there is no effective transfer of technological knowledge via the patent system, the raison����'ê�ٰ�����for the patent system evaporates.

At present, African patent offices seem to be operating on what Drahos calls a “trust me” mantra (Drahos, 2008). Such trust, to the extent that it exists, would clearly be misplaced in the case of many of the national contexts surveyed in this study. African national policy-makers need to pay much more attention to what is happening in their patent offices. Transnational companies, the biggest users of the patent system, are happy to have a world in which, at a moment of their choosing, they can obtain high-value patents at a low cost. To such firms, Africa is at present a highway, with no speed limits, on which applications are rushed to patent offices. Business actors encourage the speeding up of the work of patent offices, and reductions in the cost and quality of the application processes (Geller, 2003; Jensen et al., 2005).

There is therefore a clear need to, inter alia, utilise the teeming number of African science graduates to fill some of the gaps in the examination modalities. There is also an urgent need to improve the information technology facilities at African patent offices. Much of the scientific information contained in African patent applications is at present not electronically available to stakeholders. The result is that market monopolies are being granted to foreign and domestic patent-holders in exchange for nothing in terms of transfer or dissemination of crucial innovative knowledge. Patent offices are supposed to facilitate interactions between manufacturers, inventors and broader society. The offices are sustained not just by inventors but also by society, and therefore they owe a duty to society. When patent offices give short shrift to examination of applications, and fail to collate and publicly disseminate the patent application information they possess, they have clearly taken sides with the inventor.

Ikechi Mgbeoji is a Professor of Law at Osgoode Hall Law School and a member of IP Osgoode. You can click to read the full chapter from which this redacted article derives.

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Currently, the requirement under the Trade-marks Act that goods and services be stated “in ordinary commercial terms” in applications has been interpreted as requiring very detailed listings of goods and services.�� Further, under Bill C-31, the language of the requirement will not be changed, such that it is expected that the current Canadian practice will be continued, at least initially, after the amendments are implemented.�� Accordingly, it is not immediately evident and therefore interesting to consider what the benefits of adopting the Nice classification system will be.

To put the issue in context, it has to be understood that the requirements in Canada for specifying goods and services are stricter than requirements in almost all other countries of the world.�� Further, requirement for statements “in more specific terms” of goods and services listed in applications filed in the Canadian Trade-marks Office are the most common reason for issuance of Examiner’s reports by the Trade-marks Office.�� Considering sufficiency of descriptions is time consuming for examiners and responding to description requirements is time consuming for practitioners and costly for applicants.�� Accordingly, there is no doubt that there would be significant cost benefit to the Government and trade-mark applicants if adopting the Nice classification system will minimize issues arising in respect of sufficiency of descriptions of goods and services in Canadian Trade-mark applications.

Another benefit to the adoption of the Nice Classification system is that it will facilitate implementation of the , which provides for the international registration of trade-marks (or more correctly a system for cost-effectively obtaining domestic registrations in multiple jurisdictions). Article 3(2) of the Protocol provides for classification under the Nice system in international applications under the Madrid Protocol.�� Accordingly, adoption of the Nice Classification system goes hand in hand with the provisions in Bill C-31 for implementation of the Madrid protocol.

One issue that has been discussed in the context of descriptions of goods and services in international applications under the Madrid Protocol arises from the fact that international applications and registrations under the Protocol are based on home country applications and registrations.�� However, different countries provide different scope of registration as a result of different levels of detail being required in descriptions of goods and services.�� For instance, while some countries like Canada and the United States require specific descriptions, other countries like Italy and Australia accept broad specifications including Nice Classification class headings.�� There are variations lying at different points along the spectrum of specificity, including many countries that will accept descriptions of goods or services provided under Nice Classification class headings and others requiring individually defined specificity.�� The concern is that the scope of international registrations under the Protocol based on registration in countries requiring high specificity may be significantly narrower than those based on countries accepting broad descriptions.

The issue of scope of registrations under the Madrid Protocol was the subject of much debate leading up to the ratification of the Protocol by the United States in 2003.�� Further, the scope of protection issue has been raised as a reason why there have been fewer Madrid Protocol filings originating in the U.S. than were expected (see e.g. Donald Prutzman, (2010) 25:2 Int’l Practicum p. 173 at 177).

��In light of the foregoing, it is clear that the benefit to Canadians of adopting the Nice Classification system may depend upon the extent to which the strict requirements for descriptions of goods and services are maintained by the Canadian Trade-marks Office after implementation of the Nice Classification system.�� However, one also has to consider the overall effect on the trade-mark system in Canada, including the fact that registration provides a monopoly with respect to use of the registered trade-mark for the registered wares and services across Canada, and that proposed amendments to the Trade-marks Act in , the Combating Counterfeit Products Act, limit offences and remedies to unauthorized use of trade-marks in association with registered goods and services.

The extent to which descriptions of goods and services in trade-mark registrations should be broadened is not a trivial question.�� It will be interesting to see whether and how the regulations, policies and practices of the Canadian Trade-marks Office evolve in respect of such requirements under the updated Trade-marks Act.�� Hopefully, we will end up with needed clarity as to what descriptions will be acceptable; and scope for registrations that achieves a fair balance between the need to provide for effective enforcement of rights to protect brand owners and consumers, and the need to maintain a sufficient stock of language to facilitate effective selection, adoption and use of distinctive trade-marks by traders in Canada.

Brian P. Isaac is a partner at the Toronto office of��Smart & Biggar/Fetherstonhaugh.��Mr. Isaac's practice has involved litigation in all areas of intellectual property for over 20 years and has appeared before the Federal Court of Canada, the Ontario Superior Court of Justice, and the Federal and Ontario Courts of Appeal. He has also acted on numerous matters before the Canadian Trade-marks Opposition Board and Patent Appeal Board. Mr. Isaac received his L.L.B. from the University of Ottawa ('89) and was called to the Ontario Bar in 1991.��

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While the Bill will enable Canada to implement several international trade-mark treaties and make other welcomed changes to the law, the proposed elimination of the requirement to “use” a trade-mark before obtaining a registration for the mark is a major departure from the foundation of Canadian trade-mark law.�� This is significant because the law of trade-marks is based on use.

It is understood that the goal of Bill C-31 is to improve the position of Canadian businesses, including by reducing their costs.�� However, the proposed amendments to the TMA to delete the requirement for an applicant to have made “use” of a trade-mark before obtaining registration in Canada will negatively impact Canada’s trade-mark system.�� This will result in significant adverse consequences to Canadian businesses by increasing costs, causing delays, adding uncertainties and creating risks.

The proposed change will also increase litigation, which will stress the already overburdened resources of the Trade-marks Opposition Board and the federal court system. The elimination of “use” as a precondition for registration is not required by any of the treaties Canada intends to join pursuant to the amendments.

Use as a Cornerstone of Trade-mark Law

For over 150 years, the Canadian trade-mark system has required that a person “use” a trade-mark.�� The requirement has been repeatedly confirmed by the Supreme Court of Canada (see, for example, Justice Rothstein’s comments in the decision). A trade-mark is typically “used” with goods by displaying the mark on the goods or their packaging or labelling when the goods are sold.�� A trade-mark is typically “used” with services when the mark is displayed in advertising the services, such as on letterhead and signage.

Currently, in order to acquire rights in a trade-mark in Canada, a person must use the mark.�� Unregistered rights at common law are obtained through the acquisition of a reputation in the trade-mark as the identifier of the source of goods or services with which the mark is used in the marketplace.

To obtain a registration of a trade-mark, use is also a requirement.�� A Canadian trade-mark application may be based on one or more bases, all of which require use of the trade-mark, in Canada or elsewhere, before a registration is issued.

Elimination of Use of Mark as Requirement for Registration

The changes proposed in the Bill will permit an application to be filed, and a registration to be obtained, without any “use” of the mark by the registrant having occurred in Canada or elsewhere.�� The proposed changes will also remove the requirement that an application for a trade-mark identify whether the applicant has “used” the trade-mark and, if so, where, when and in association with which particular goods and services.

The proposed deletion of the requirement of “use” of a trade-mark by the applicant prior to registration is a fundamental departure from the Canadian trade-mark system that many in the international community consider to be the best in the world.

The government has stated that deletion of the “use” requirement is necessary for Canada to comply with two of the treaties, the Madrid Protocol and the Singapore Treaty.�� However, that is not the case.�� Specifically, the treaties do not preclude requiring “use” of a trade-mark as a prerequisite to registration.

A written for the Canadian Intellectual Property Office (CIPO) by the Department of Justice expressly acknowledges that deletion of the “use” requirement is not necessary for accession to the treaties.�� In fact, when the United States implemented those treaties, it did so without eliminating its equivalent “use” requirement.

It is true that many countries in the world have a system like the one that is being introduced. ��While, at first blush, one might think that the new system would make life easier for Canadian businesses, it will have the exact opposite effect for a number of reasons.

Increased Clearance Costs, Delays, Risks and Uncertainty

In the proposed system, businesses will suffer the consequences of a reduction of available trade-marks.�� Since there will be no requirement to “use” a trade-mark before registration, trade-marks which have never been “used” anywhere may be registered, including by trade-mark trolls who make no investment in the economy, and removed from availability to Canadian businesses.

Applications and registrations will cover long lists of goods and services for which there will be no “use” of, or even any intention to “use”, the trade-marks so a person who “uses” the trade-mark ALPHA with clothing might register the trade-mark for furniture, food and landscaping services, and prevent two other unrelated businesses from using the same mark.

This will likely to be a significant increase in cost for Canadian business and uncertainty in clearing trade-marks for use and registration.�� There will be more applications and more registered marks and, without investigation, there will be no way of determining from the application or registration information whether such marks have ever been used in Canada or elsewhere.�� When faced with these challenges, costs, delays, risks and uncertainties, businesses may choose alternate marks from a smaller available pool.

Trolls

Trade-mark trolls have not been a significant factor in Canada to date.�� The current use requirement has impeded the ability of a troll to secure registrations in Canada without any investment in a real business.�� Outside North America, trade-mark trolls often are able to register a mark used by others in another country, without the trolls being required to have used the mark before registration.�� The Bill invites trade-mark trolls to Canada.

Increased CIPO and Court Litigation

A very significant cost, in money, delay, risk and uncertainty, to applicants, registrants and third parties will be the administrative and court litigation that will result.�� The basic requirement of use prior to registration of a trade-mark will no longer act as a gate to registration.�� Businesses will have to incur the responsibility and the costs of adversarial proceedings to prevent and cancel third party registrations for confusing trade-marks that are not in “use” or that have overreaching lists of goods and services.

The increased litigation will take several forms, including opposition, non-use, infringement and expungement proceedings:

Once an application is approved by CIPO, it is advertised so that third parties can make a decision as to whether they wish to oppose the application to prevent or limit registration of the trade-mark.�� Oppositions have many of the hallmarks of traditional litigation and can take years to complete, both within CIPO and on appeals through the federal courts.

Given that trade-marks which have never been “used” will be the subject of applications covering long lists of goods and services, there will be many more oppositions by parties seeking to prevent or limit such registrations.�� The European experience is instructive. ��Currently in Canada only about 2-3% of all trade-mark applications are opposed.�� In Europe, which has a system similar to the one being introduced by the Bill, over 15% of applications are opposed.

After the third anniversary of a registration, a person may seek to cancel or limit the registration for non-use of the trade-mark.�� With registrations having been obtained without “use”, there will be many more non-use proceedings in CIPO by parties seeking to cancel or limit such registrations and appeals therefrom to the federal court system.

With an increase in the number of registrations, there is likely to be an increase in infringement and related litigation.�� Good faith common law use in Canada may be alleged to infringe a registration for a trade-mark that has never been used anywhere.

Lawsuits by trolls are likely to be settled by legitimate businesses paying “go away” money.�� Also, under other pending amendments to the TMA, a registrant may be permitted to avail itself of border measures to stop “counterfeiting” even where the registrant has never used the mark.

Applications to “expunge” registrations for reasons other than non-use are also likely to increase.

Constitutional Issues

The federal government has constitutional limitations that most other national governments do not.�� Specifically, trade-mark law is governed both under the federal Trade and Commerce power and the provincial Property and Civil Rights power. There are those who are of the view that aspects of the amended TMA will not be constitutionally valid because a system that grants registrations in the absence of “use”, namely without the trade-mark being “used” in trade or commerce, cannot be supported on the basis of the federal Trade and Commerce power.

Some have even suggested that the Bill might encourage provincial legislatures to enact their own trade-mark legislation. This would result in a patchwork quilt of both federal and provincial trade-mark rights, which is the case in the United States with both federal and state trade-mark registrations.

��What is the Status of the Bill?

Many Canadian large and small businesses and trade associations, such as the Canadian Chamber of Commerce, have communicated to the government their strong objections to the change in the use system.�� These voices have been joined by Canadian and international intellectual property organizations, and most of Canada’s leading trade-mark lawyers, despite the possibility that the new regime will create more legal work for lawyers.

The government is also being criticized for introducing this fundamental change by way of a budget bill, which has traditionally been the subject of less opportunity for analysis. ��Businesses, trade associations and the trade-mark bar have asked the government to, at least, remove three sections and one transitional section from the Bill in order to have meaningful analysis and debate.

However, to date, the government has not shown a willingness to engage in meaningful debate on the proposed changes.�� It is difficult to understand why or how a government that says it is committed to assisting Canadian businesses is taking such a bold step to create more cost, delay, risk and uncertainty for them.

Sheldon Burshtein and Antonio Turco are partners at the Toronto office of Blakes, Cassels & Graydon LLP. ��Mr. Burshtein's practice includes the clearance, prosecution, acquisition, enforcement and exploitation of patents, trade-marks, copyright, industrial designs and other forms of IP.��Mr. Turco's��practice focuses on litigation related to intellectual property rights, including disputes related to patents, copyright, trade-marks, industrial designs and trade secrets.��

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1. You’ve been asked to speak at Canadian Music Week this year. Could you give us a sneak peek of what you are going to talk about?

I will be speaking on two panels this year. One of the panels, titled “,” will be moderated by Rich Bengloff of A2IM (American Association of Independent Music) and is designed to bring together US and Canadian government representatives, lawyers and music industry players to compare and contrast the legal environment as well as business developments in each country applicable to the music industry. The first part of this panel will be geared towards addressing recent industry developments in the recording and music publishing industries in Canada and the US.�� Personally, I will tackle Canada’s music publishing industry and, more specifically, the recent that was decided by the Supreme Court of Canada a few years ago and its impact on royalty rates applicable to downloads and streams of music. ��The second part of this panel will focus on a compare and contrast of the United States’ and Canada’s copyright law regimes, including recent developments in each.�� We will cover differences between the two regimes, including their respective approaches to fair dealing/fair use, availability of neighbouring rights, ISP notice and notice versus notice and takedown regimes and other contrasting points. Again, I will be tackling the Canadian side of this discussion and Richard Steffens, Minister Counselor of Commercial Affairs at the US Department of Commerce will discuss the American perspective.

The second panel, titled “” will be presented by the International Association of Entertainment Lawyers (IAEL), of which I am a proud member, and moderated by its President, Jeff Liebenson. This will also compare the American and the Canadian approaches; however, the discussion will be more focused on trends in new income streams and business models given recent changes in the music industry. My job on this panel is to update the audience on legal developments in the Canadian music law scene, the copyright pentalogy, and further reforms such as the recent case decided by the Supreme Court – if I can get to it in the short time allotted! This panel is mainly populated with US-based lawyers so I will be holding down the fort for Canada.

2. Why do you think Canadian Music Week is important for Canadians? What can Canadian artists and individuals learn from this event?��

Considering that CMW addresses a wide range of areas, there are numerous benefits to having this event. Some obvious benefits include the awards, educative panels, music festivals and networking opportunities, both formal and informal.

Sure, the week is helpful because it discusses the nuts and bolts of the music industry and the current events related to the industry, both in Canada and internationally. However, I find that the real benefit comes from the opportunity it affords to step back and consider the big picture.

Finally, there is a real benefit to the networking opportunities at these events. CMW not only attracts experts from within Canada, but internationally as well. Many of the industry folk I talk to from around the world seem to know of and respect CMW. This international exposure has the benefit of attracting international experts to speak at CMW conferences and panels, and consequently creates a great networking opportunity for event attendees.

3. You’ve had a fantastic career in the entertainment law industry in such a short period of time. How do you think the music industry and its legal landscape have changed since you first began practising entertainment law in Canada?

The legal landscape has changed tremendously since I first started practising entertainment law in Canada. I had the benefit of starting my music law career at the beginning of the latest technological revolution in the mid-1990s so I witnessed the early stages of the transition from physical to digital output of music. At that time, the music industry was likely at its height in terms of record sales so I was really able to see everything unfold. For example, there was the emergence of Napster and the consequential business model changes to address the issue of illegal downloading. From a legal perspective it has truly been a fascinating industry in which to practice. Since then, there have certainly been ups and downs in addressing the difficult legal issues that have presented themselves due to changes in technology and, generally speaking, the music industry is confronting a different economy now that it was in the 90s. As far as the work for lawyers, however, it seems that the demand has stayed fairly consistent.

Other than the obvious changes to the business models, there have been major differences in how people work in the music industry. It used to be that people would work in silos according to their areas of expertise; for example, you were either a music lawyer, or a tv lawyer, or a film financing lawyer or a fine arts lawyer.�� The niche aspect of the silos made you even more valuable to your clients seeking that particular expertise. Nowadays, all these different areas of the industry have started to collapse into new and mixed-silo business models and so if you work in a silo you are actually doing your client a disservice. For example, there is now a tendency to focus on the brand of the artist, as opposed to their music alone, which can result in the need to deal in all kinds of rights, including name and likeness, music publishing, recording, merchandising, live performance and other rights.

4. Similarly, what do you think are the biggest issues facing Canada’s music industry today?

In my opinion, there are three main issues facing Canada's music industry today. The first is ensuring that��artists are compensated for their music so that the music industry doesn't turn into the realm of�� a mere hobby. The second issue is finding a way to cause consumers to appreciate the value of music while the industry satisfies consumer demand for wide and easy access to music. Finally, we need to protect and enforce copyright in today's digital age where infringers can easily hide behind their ISPs in cyberspace, while balancing that with the need to protect privacy in appropriate circumstances. Legislative reform has recently finally proven to be one practical way to tackle these issues, but the developments of new ways of doing business in this industry must go hand-in-hand with that to make it really work.

Susan H. Abramovitch is the Head of Gowlings' Entertainment Law Practice. Her��practice covers all aspects of transactions and disputes in the music, film, television, live theatre, multimedia, videogaming, branded entertainment and book publishing industries. Susan received her L.L.B. and B.C.L from McGill Law School ('91) and has since then been called to the Bar in Ontario ('96), New 91��ɫ ('94), and Quebec ('92).��

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

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

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

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

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

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

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

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

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

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

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

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

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

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

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

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

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

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

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

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

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

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