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Prof. Pina D’Agostino is the Founder and Director of IP Osgoode, the IP Intensive Program, and the IP Innovation Clinic, the Founder and Editor-in-Chief of the IPilogue, the Deputy Editor of the Intellectual Property Journal, and an Associate Professor at Osgoode Hall Law School. This article features contributions from Ryan Wong (IP Osgoode & IP Innovation Clinic Alumnus), Sabrina Macklai (IPilogue Senior Editor), Tianchu Gao (IPilogue Writer), and Ashley Moniz (IPilogue Managing Editor).

2021 was an exciting year for the IPilogue. Our hard-working students and community members published more than twice as many articles than in 2020 and the most articles in a calendar year since 2011. This sharp increase helped us stay up to date with some of the biggest topics shaking up intellectual property: from , to ; and from growing investments in and , to IP registrars around the world grappling with whether to acknowledge  as an inventor or artist. This article summarizes the top developments reported on our blog and in patents, trademarks, and copyright law in 2021. For a review of Privacy legislation in Canada, check out .

Top 10 Most Read IPilogue Articles Published in 2021

1. by Sabrina Macklai & Emily Chow
2. by Prof. David Vaver
3. by Claire Wortsman
4. By Claire Wortsman
5. by Natalie Bravo
6. by Prof. Giuseppina D’Agostino
7. by Bonnie Hassanzadeh
8. By Meena Alnajar
9. by Prof. David Vaver
10. by Bonnie Hassanzadeh

Introducing the College of Patent Agents & Trademark Agents

On , the came into force. The Act established the (‘’), an independent public interest regulator of patent and trademark agents in Canada. The purpose of the College is “to enhance the public’s ability to secure the rights provided under the and the .” The College’s responsibilities include maintaining professional competencies and ethics, issuing licences, collecting fees, and administering certification exams. This development marks a key milestone for the profession and for Canada’s . Though still in its infancy, the College has been criticized for and its , which may impose an additional fee on lawyer agents. It remains to be seen how influential the College is on the profession as it is expected to be fully operational within the next two years.

Patents

Overbreadth as an Independent Ground of Invalidity

On July 28, 2021, the Federal Court of Appeal confirmed overbreadth as a standalone attack on patent validity: . In this case, the appellants argued that there is no statutory basis for overbreadth as a ground for invalidity. The Federal Court of Appeal disagreed and found that overbreadth can be supported by a combination of sections 27(3) and 27(4) of the Patent Act. Case law has often overlapped overbreadth with other grounds of invalidity such as obviousness, anticipation, and inutility.Ìę

First Time Interpreting Patent Agent Privilege

Similar to solicitor-client privilege, patent agent privilege was introduced by section 16.1 of the Patent Act on June 24, 2016. The first case on patent agent privilege was decided this year: In this decision, the Federal Court provided some helpful commentary and analysis on the application and limitations of patent agent privilege.Ìę

Patent Prosecution History Now Admissible as Evidence

In 2018, section 53.1 of the Patent Act was added to make patent prosecution history admissible as evidence in patent proceedings. This was a significant development as the Supreme Court of Canada had expressly rejected the idea and stated that admitting patent prosecution history “would undermine the public notice function of the claims, and increase uncertainty as well as fuelling the already overheated engines of patent litigation” (Free World Trust v Électro SantĂ© Inc., 2000 SCC 66 at para. 66). Three subsequent Federal Court of Appeal decisions developed this provision further: ; ; and .Ìę

Continued Debates over AI as an Inventor

Around the world, patent registrars grappled with patent applications that credit artificial intelligence software as the inventor. Dr. Stephen Thaler’s “DABUS” (Device for Autonomous Bootstrapping of Unified Sentience) applied for patents around the world for its interlocking food containers. DABUS was granted patents in Australia and South Africa, with . In line with the and the , the disagreed, stating that absent express intention from Congress, the term “individual” in their statutory definition of “inventor” . The Supreme Court of Canada last considered the definition of "inventor" in 2002, but has yet to consider whether it would include non-human entities.

Trademark Law

Parody in Trademarks is No Joke

In , the Federal Court reaffirmed that parody is not a defence against trademark violation. Unlike the 2020 decision ), where the Federal Court failed to find the marks confusing, Justice McHaffie held there was a likelihood of confusion and passing off. This was based partly on the similarity of the trademarks and the overlap of the goods (both offering baked goods). However, even if the nature of the parties’ trades differ, trademark owners may still find recourse against spoofed versions of their marks through claiming depreciation of goodwill under section 22 of the . Here, the Court found goodwill in Subway’s trademarks, which was damaged by the nature of Budway’s products, as contrary to Subway’s “healthy and active” lifestyle promotion. With damages amounting to $40,000, it is clear the courts are unamused by parody in trademarks.

The Road Less Travelled Cannot be Trademarked

Like most countries, Canada bars the registration of “clearly descriptive” trademarks to prevent applicants from monopolizing words that merely describe the goods or services at hand. For this reason, marks consisting of are typically unregistrable. In , the Federal Court clarified when such marks might be protected. Hidden Bench and Locust Lane are two wineries operating on the same little road, “Locust Lane”. Although the Federal Court agreed that Hidden Bench met the threshold for a valid common law trademark over “Locust Lane”, they ultimately held that the mark, as clearly describing the goods and services’ place of origin, lacked both inherent and acquired distinctiveness. Therefore, Hidden Bench could not establish the necessary goodwill for a passing off claim. Only descriptive marks that have acquired a “secondary meaning” through use may warrant protection.

CIPO Addresses the Application Backlog

While filing trademarks is important for brand protection, the examination stage can take . In May, the Canadian Intellectual Property Office (CIPO) new measures to address the application backlog. Trademark owners may now file requests to expedite their examination where the registration of their mark is necessary for special circumstances such as if a Canadian court action involving the mark is expected or underway or if the goods or services are aimed at preventing, diagnosing, treating, or curing COVID-19. If accepted, the examination will take place within two weeks. The examination is also automatically expedited by approximately 6-10 months when the goods and services in the application are listed in CIPO’s . Though it is too early to assess the effect of these changes on mitigating the “”, the backlog of CIPO’s unexamined trademark applications appears to have as of December 13, 2021.

Push to Register Non-French Trademarks for Use in Quebec

Among the controversies associated with Quebec’s proposed Bill 96, , the bill stipulates new requirements for trademark owners operating in Quebec. Currently, under Quebec’s French-language laws, both registered and unregistered (i.e., common law) trademarks recognized under the may appear on public signs, posters, and commercial advertising in Quebec, in languages exclusively other than French. If enacted, Bill 96 would permit only registered non-French trademarks to appear on public signage, provided there is no corresponding registered French version of the mark. The Coalition Avenir Quebec government tabled Bill 96 on May 13, 2021, and Quebec’s National Assembly last examined it on December 10. Some iteration of the bill will likely become law by the end of this year. But even if it fails to pass, businesses relying on common law trademarks would be wise to try to register them, given the many that registration provides.Ìę

Copyright Law

In 2021, the Federal Court and Federal Court of Appeal heard 57 copyright infringement proceedings, approximately of all IP-related litigations at these levels.

Developments in Fair Dealing

The Copyright Act’s section 29 fair dealing provision, which allows for certain uses of copyright-protected materials, remained a central issue. affirmed that fair dealing for the purpose of news reporting (section 29.2 of the Act) must provide attribution, mentioning both the source and the name of the author. An indirect reference to the author accessible through “minimum research” is insufficient. As such, the Federal Court of Appeal rejected Trend Hunter’s argument that hyperlinking to the source article where Stross was credited was sufficient to meet the second requirement. The Court also declined to find fair dealing under s. 29 more broadly, considering that Trend Hunter’s dealing was commercial in nature, reproduced Stross’ work in its entirety, and that alternatives were available.

Fair dealing was once again at issue in , where the Federal Court held that the Conservative Party’s use of the CBC’s news footage of Liberal Party Leader and Prime Minister Justin Trudeau during their 2019 election campaign did not infringe CBC’s copyright. The court undertook a large and liberal interpretation of fair dealing, finding that the Conservative Party’s use of CBC footage was for the purpose of criticism under s. 29.1.

91ŃÇÉ« achieved a in the copyright tariff dispute with the Canadian Copyright Licensing Agency (“Access Copyright”) in In a unanimous decision, the Supreme Court ruled that the interim tariff approved by the Copyright Board is not mandatory. Users can choose whether to accept licences or pursue alternative methods to lawfully copy works. Notably, this marked Justice Rosalie Abella’s final decision before her retirement from the Supreme Court of Canada. Throughout her tenure, and her judgement here provided helpful obiter regarding fair dealing as integral to users’ rights.

Even Fake Facts are Not Copyrightable

involves the alleged copyright infringement of the famous true-crime story The Black Donnellys. The book had always been presented and accepted as “.” The Federal Court ruled that “an author who publishes what is said to be a nonfiction historical account cannot later claim the account is actually fictional to avoid the principle that there is no copyright in facts.” Given today’s popularity of the phrase “based on a true story”, this ruling is a that there is no copyright in facts, even if they are later found to be untrue.

Copyright in Evolving Content Transmission

In , the Federal Court found the defendant liable for copyright infringement in its provision of pre-loaded set-top boxes and internet protocol television (IPTV) services and awarded the plaintiff nearly $30 million in damages. These services made copyrighted works owned by the plaintiff available to the public without the plaintiff’s permission. This decision marks the first time The court dealt with a similar issue in ). As IPTV is growing increasingly popular across the globe, its poses a challenge in Canada.

Availability of Reverse Class Actions for Copyright Infringement Claims

The first of its kind in Canada, the Federal Court of Appeal in affirmed that reverse class actions may be pursued in connection with copyright infringement claims. Though the matter was sent back to the Federal Court for further consideration, this judgement may encourage and enable mass copyright enforcement in the future, especially in our digital age where copyright infringement is more commonplace.

Public Consultations Ahead of 2022’s Copyright Reform

As part of the (CUSMA), which came into force on July 1, 2020, Canada has until the end of 2022 to implement numerous changes to their domestic copyright laws; most notably, extending the general term of copyright protection from . In light of the upcoming legislative amendments, the Government of Canada hosted three public copyright consultations in 2021:

• ;
• ; and

With the consultations now closed, it will be interesting to see how Canadian copyright laws will change in 2022 to accord not only with international obligations but our ever evolving digital world and public attitudes surrounding copyright laws.

The post 2021 IP Year in Review appeared first on IPOsgoode.

Walmart, Costco, Best Buy, Gap, Old Navy and Guess have against the Quebec government in response to fines issued by the (OQLF). The fines were issued pursuant to the (hereby referred to as the Charter) – a piece of Quebec legislation designed to promote the use of French in everyday life for its residents. The fines for contravening any provision in the Charter can range from $1500 to $20000 – a hefty sum that can be doubled for subsequent offences (Section 205 of the Charter) and can result in the revocation of a company’s “francization certificate” (a designation given by the OQLF entitling the company to certain provincial tax benefits and to enter into contracts with the Quebec government).

The OQLF stated that these companies were contravening Section 63 of the Charter which requires businesses operating in Quebec to have French names. Alternatively, companies could include a descriptive slogan or line in French in order to comply with this requirement. While a number of businesses operating in Quebec have complied with the Charter by renaming themselves completely (such as KFC – known as PFK in Quebec) or by adding French to their signage (Starbucks is known as CafĂ© Starbucks Coffee), the 6 retailers listed above have refused to do so and have instead taken the issue to the courts to decide.

The fines come following done by the OQLF earlier this year, in which that they would “initiate other steps against businesses that refuse to post their trade name in compliance with the Charter [of the French Language].” Previous to these recent fines, the OQLF rarely went after trade names and much of the case will likely turn on the interpretation of the Quebec Regulation Respecting the Language of Commerce and Business (the Regulation). Section 25(4) of the Regulation provides that “a recognized trade-mark within the meaning of the Trade-arks Act” can be shown on public signs, posters and commercial advertising exclusively in a language other than French, thereby being an exception from Section 63 of the Charter.

However, there has been some argument over whether a trade name – the name used by a business for commercial purposes – can be considered to be included in the reference to “trade-mark” in the Regulation. As quoted by the Quebec Superior Court in (Procureur gĂ©nĂ©ral), author Harold Fox (in The Canadian Law of Trade Marks and Unfair Competition) describes the differences and interactions between the two concepts as:

"The distinction between trade names and trade marks lies mainly in the fact that a trade-mark is used in association with vendible commodities or services while a trade name is more properly used as applied to the goodwill of a business
 But it must be remembered that trade names are often used in association with vendible commodities and services and that trade-marks, just as much as trade names, are a constituent part of the goodwill of a business."

As some of these countries operate on an international scale, it is easy to understand why they are so resistant to some of the provisions that are now being strictly enforced by the OQLF in Quebec. The trade name of these companies and their associated logos are very closely related to the products and services that they provide to customers, and therefore, the goodwill that those generate toward the company itself. While it may seem fairly innocuous for Walmart to alter their signs to say “Le Magasin Walmart” (a possible compliant alteration), the costs of such a change could, in actuality, be quite large. These corporations spend massive amounts of money to design logos to attract customers and such a change could interfere with the look and feel of the chosen branding. There is no evidence that foreign countries have forced big name retailers to alter their signage in order to fit with the culture; should the Quebec government be so demanding of these corporations to change for such a relatively small market?

On the other side of the coin is the cultural sustainability that the OQLF and the Charter are attempting to maintain. French culture has been a defining point for Canadian culture and history – a fact recognized and referred to in many Supreme Court decisions. Should this not have any bearing on how these large companies do business in Quebec as a francophone province, if at the very least out of respect for the cultural heritage of our nation?

As the issues at stake are important to the operation of business in Canada and related to our French-Canadian culture and heritage, it is likely that the trial decision will be appealed. Regardless of the outcome at the end of the proceedings, will the businesses be left wondering if the money spent litigating these issues would have been better spent on redesigning their corporate branding? Only time will tell.

Adam Del Gobbo is a JD Candidate at Osgoode Hall Law School.

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As is well-known, one of the more unusual features of Canadian law that somehow remains perpetually understated in IP circles is that our federal laws are proclaimed in two official languages, English and French; as per Section 18(1) of the Charter, both versions of the law are equally authoritative. Similarly, decisions from many adjudicative boards and courts are published in both English and French and both versions are also, at least in theory, equally authoritative. Given this trait, as a point of habit in my research, I often compare important passages of a legal text (statute, decision, etc.) published in English with the equivalent passages in the French version (and vice-versa), to see if any identifiable differences exist between the two.

I’ll return to the linguistic duality of Canada’s legal system in just a moment, but for now, let’s shift gears over to some fundamental principles of copyright law. As every student of copyright in this country is taught, “copyright shall subsist in Canada [...] in every original, literary, dramatic and artistic work” (s 5(1) of the Copyright Act), with the added nuance that copyright law protects only the original expression of ideas, not the ideas in and of themselves (Moreau v St Vincent, [1950] 3 DLR 713 (Ex Ct), at 203). The question of what constitutes “original expression” in a work, though, required an answer from the Supreme Court, given that the Copyright Act does not itself define the terms (nor the term “original” by itself). As every student of copyright in this country also learns, in CCH, Chief Justice McLachlin wrote that:

“What is required to attract copyright protection in the expression of an idea is an exercise of skill and judgment.” (CCH at para 16, my emphasis)

This passage is well-known, and is often taken as the definition of “original expression” in Canadian copyright law. Original expression involves skill and judgment. Such a phrase is repeated ad infinitum in law schools across the country.

What seems less well-known, though, is how this oft-cited and crucial observation from CCH was presented in the French version of the decision:

“L’élĂ©ment essentiel Ă  la protection de l’expression d’une idĂ©e par le droit d’auteur est l’exercice du talent et du jugement.” (my emphasis)

For readers with even a most rudimentary understanding of French, a surprising nuance jumps out here. The term ‘skill’ in English is translated as ‘talent’ in French. Linguistically speaking, this is somewhat unusual. My own term for translating ‘skill’ is ordinarily ‘habileté’ ; as it turns out, the Government of Canada’s Translation Bureau (proxied here via Termium Plus, “the Government of Canada’s terminology and linguistic data bank” for matters of translation) agrees with me that this is the normal, so-called ‘correct’ translation. Nowhere in any given translation of the term ‘skill’ does the word talent (in French) appear as an option. The inverse is also true: searching for translations of the word talent (in French) does not yield the term ‘skill’ in English. Unsurprisingly, in that latter case, the term ‘talent’ (in English) is suggested.

So, “original expression” is skill and judgment in one language, and talent and judgment in the other. This is a rather interesting choice, to say the least.

How are we to think about this difference, given that both texts are supposedly equally authoritative? One could be tempted to write off the translation as an error and move on to more pressing matters. Yet that sits somewhat uncomfortably as an argument, in that it presumes that the Supreme Court does not actually mean what it claims black on white that it means. There is also a problem in implicitly asserting that the French version is by default a translation of the English version; given the collaborative nature of SCC decision-writing (see McInnes, M., J. Bolton, & N. Derzko, "Clerking at the Supreme Court of Canada" (1994) 33 Alta L Rev 58), for all we know, the paragraph first originated in French, and was later translated into English. Finally, there is some danger in presuming that the nation’s most careful group of writers inattentively let one go by, no matter how small the nuance. Even though bilingualism is not a formal requirement of acceding to the Supreme Court’s bench, most Justices of the Court are nonetheless at very least functionally bilingual, with many achieving complete fluency. These linguistic competences should in both theory and practice ensure that most Justices are attuned to the nuances of judicial translation. Then there is the fact three Justices involved in deciding CCH list French as their first language (Bastarache, LeBel, Deschamps). As a default position, then, assuming that the Court means what it says black on white seems like the more prudent (and legally defensible) position.

Therefore, given the difference between using the term ‘skill’ in English and the term talent in French, what do we make of that? To illustrate the wiggle room the nuance between the two terms opens up, consider the following pairs of sentences. Is there any meaningful difference between the first and second statement?

“François is a skilled cook.”

“François is a talented cook.”

“The concert featured a very skilled soloist.”

“The concert featured a very talented soloist.”

To my linguistic senses, while the terms “skill” and “talent” are related, they are not quite fully interchangeable either. To me, talent appeals to some higher capacity than skill. While I would happily eat a meal prepared by a skilled cook any day, one prepared by a talented cook seems even more appetizing; and while hearing a skilled soloist perform in concert sounds great, hearing a talented one sounds even better. Anecdotally, people here at Osgoode Hall with whom I’ve discussed this observation agree that there seems to be a bit a gap - not a large one, but a noticeable one nonetheless - between skill and talent. The term ‘skill’ points more toward the technique involved in performing an activity, be it writing poetry, composing music or coding software. Talent, on the other hand, implies some aptitude that requires skill and technique, yet pushes beyond these categories in such a way that some kind of quasi-innate personal creative spark is recognizable. For instance:

 “Jordan is a skilled basketball player.”

“Jordan is a talented basketball player.”

Talent again seems to come in one notch ahead of skill. Where does this nuance come from? One possible answer is the divergence between civil law and common law, as represented on the bench of the Supreme Court. Whereas in the English common law, copyright is understood in a more Lockean labour-oriented perspective, en français, civil law jurists in the droit d’auteur tradition have long adopted a more personality-oriented Kantian view of copyrighted products, such that poems, songs and even academic articles represent the inalienable essence of a person. To be sure, this is of course a gross oversimplification of how Canada and Canadians as a whole understand the copyright/droit d’auteur divide. Yet it is also a useful categorization, insofar as it helps reconcile the divide between the English ‘skill’ and French ‘talent,’ in that the former is more labour-oriented, whereas the latter is more personality-oriented. Given the Supreme Court bench ordinarily comprises of three civil law jurists, this may in part explain how this ‘discrepancy’ came up. Since these civil law jurists come from QuĂ©bec, and Supreme Court jurists from QuĂ©bec almost unequivocally show complete command of the French language, a civil law-based standard that requires talent instead of habiletĂ© for original expression here is likely to find greater favour among those jurists of the bench who speak French. That this nuance would then show up in the terminology of the decision, intentionally or not, is therefore not all that surprising.

Whatever the difference’s origin, one crucial point about it remains: it is entirely possible that the language in which one reads CCH may influence one’s reading of the standard required of expression for it to qualify as original. If, as I show above, talent actually is understood as being one notch ahead of mere skill, then it follows that a judge of the Federal Court of Canada hearing a copyright action in QuĂ©bec City in French may grasp a slightly different meaning from CCH than another judge hearing a similar action that same day in Vancouver in English. While the two meanings are hardly irreconcilable (and the shared meaning principles of R v Daoust, [2004] 1 SCR 217 would probably make short work of any differences between the two meanings, should the topic come up in court), the nuance is still a most interesting one to notice as a proxy for how different modes of legal thought and analysis operate and come together at the highest court in the land (or not, even when the Justices themselves claim they do).

Guillaume Laroche is a Graduate Student Member of IP Osgoode and an LLM candidate at Osgoode Hall Law School, where he researches issues on music and copyright.

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