Granting monopoly and exclusivity rights to a company/brand owner for a trademark vastly depend upon the owner demonstrating “use” in “correlation” with its description of classified goods and services. Also, the 2020 amendments to the Trademarks Act, RSC 1985, c T-13 have emphasized the importance of “use” in many contexts. Recently, in , we witnessed that evolving jurisprudence of “use” in trademarks when the courts deviated from the old concept of brick and mortar presence. However, in non-use cancellation proceedings, the Canadian Intellectual Property Office (CIPO) maintains that a trademark owner should establish a direct correlation and association of goods and services with the trademark’s use. The Federal Court notes that they are considering the in the meaning of section 4 and 45 of the . proceedings are not a mala fide attempt of unwarranted expungement (which is filed under of the ), but to clear out “dead wood” from the trademark database and create space for other brand owners to register their trademarks.

a) Summary – Federal Court Upheld the Trademarks Opposition Board Decision

Justice Fuhrer upheld the decision of G.M. Melchin, Trademark Hearing Officer (THO), CIPO in the matter of . The Federal Court (FC) reiterated that a preponderance of evidence is not required to prove the use of the trademark in Canada, but rather emphasizes that, in non-use cancellation proceedings, the evidence must correlate with the goods/services. Accordingly, the FC did not find any palpable and overriding errors in the THO process and decision. As per the dated January 09, 2020, the description of goods for the trademark “en Vogue”, (TMA789,288) needs to be amended to delete the goods “adhesives used in industry”, “nail adhesives”,��“nail brush cleaners”, and “apparatus for lighting, namely, UV lamps (not for medical purposes)” from its description because the Applicant failed to demonstrate a correlation between the evidence submitted for the trademark “en Vogue” and the aforementioned goods. Justice Fuhrer dismissed the appeal with costs payable by the Applicant to the Respondent.

b) Application of Standard of Review by the Federal Court��

The Supreme Court of Canada established in�� that the appellate court’s role is to identify whether a Hearing Officer has erred in their findings and, if so, to narrow their analysis to any palpable and overriding errors in the inference drawn from the evidence. Only at this point can the Federal Court delve into mixed facts and other inferences which the Hearing Officer reasonably may have drawn from the evidence. Simply put, the appellate court must first identify which standard of review applies to the issue in question, then apply it appropriately. Since the Applicant’s evidence does not support their factual conclusions and the Respondent did not present new evidence, Justice Fuhrer applied this principle in her analysis and dismissed the appeal. Therefore, a .

c) Correlation or Overkill via Evidentiary Documents��

Many summary non-use cancellation proceedings have affirmed that a trademark owner is not required to provide an evidentiary overkill to demonstrate “use” (meaning not all examples of use must be evidenced), but merely that a single document can substantiate the “use” within the last three years. However, pertinently the owner’s evidence should directly demonstrate a correlation between the mark and its associated goods and services. The Court in (“Pacific Sky”) observed that although the “use” threshold is not stringent, particularly to use within the last three years, for a decision-maker to infer an association and correlation between the evidence and the description of goods specified under the registration, relevant and definitive facts within the submitted evidence must suggest a direct correlation. Hence, the THO is not just emphasizing “use”, but also “use” in “direct correlation” between the “classified description of goods” and the “evidence” so brought on record. ��

d) Ambiguity in establishing correlation via evidence/affidavit

In the present case, the Applicant’s affidavits, filed by its President, failed to explicitly demonstrate their use pf the mark in association with the said goods and services. The Federal Court suggests that a sworn affidavit can establish use of a mark. An Affidavit is produced in absence of evidence or to combat the risk of breaching confidentiality. In Pacific Sky, the Applicant’s binding officer filed an affidavit because it could not furnish evidence associated with “consumer and industrial safety products namely flashlights, flares” and “consulting and assessment services” and pleaded confidentiality. However, the court concluded that the Applicant’s affidavit did not explicitly suggest “use” for the identified goods and services and was vaguely attested.

IN CONCLUSION, trademark-owners should maintain evidence that they consciously label their sales revenues, advertisements, and merchandise products with their registered mark to safeguard themselves from non-use cancellation proceedings. If they don’t, trademark registrants who cannot generate evidence that they have used their mark in association with their specified goods and services can lose their trademark rights and suffer huge monetary losses. Consequently, the brand owner might have to dispose of all property depicting the logo or trademark.

Written by Aishwerya Kansal, IPilogue Contributor. Aishwerya is pursuing Master’s in Law in International Business Laws at Osgoode Hall Law School, and she is also an IP Innovation Clinic Fellow.

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The potential benefits of climate engineering technologies are massive, including the possibility of reducing temperatures immediately and reversing atmospheric greenhouse gases to pre-industrial levels in the matter of decades. Such technologies largely fall within two broad categories: solar radiation management (SRM) and carbon dioxide removal (CDR). SRM technologies can immediately reduce temperatures by reducing the amount of radiation received from the Sun. For example, SRM technologies range in their complexity from such things as putting , , to increasing the . SRM is a cost-effective solution to reducing temperatures but is only effective in the short term and do not confront climate change at its source. CDR technologies address global warming at its root by directly removing CO2 from the atmosphere, however, they tend to be more complex and expensive, and require decades of use before they have any significant effect. These technologies include, giant , and good old fashion trees.

Climate technologies, however, are not “one and done” solutions. These technologies need to be massively produced and deployed around the world to effectively mitigate climate change. This requires, among many things, an IP strategy designed to deliver (not just inspire) innovation, investment, production and cooperation between nations. Canada’s current strategy is to fast track patent applications that relate to clean technologies.

of the Patent Rules states that the Commissioner shall advance an application upon the request of an applicant “if the applicant files with the Commissioner a declaration indicating that the application relates to technology the commercialization of which would help to resolve or mitigate environmental impacts or to conserve the natural environment and resources”. Climate technologies, such as those previously mentioned above, are likely to fall within this category.

Patents, of course, provide the holder with the right to exclude others from the creation, use and selling of the patented invention, but, it is this right to exclude that has some researchers suggesting an outright on climate technologies. Due to the indispensable nature of climate technologies on the world, their fear is that climate technologies are far too important to be left in private hands and excluded from others. However, climate technologies require a considerable amount of investment and patents provide a level of protection that is attractive to investors. To put this situation into perspective, the predicts that several hundred billion dollars in global investment is needed in clean technologies to maintain global temperatures below the 2 °C threshold.

A number of possible solutions present themselves. First is compulsory licensing, which allows governments to license patented inventions without the consent of patent owners. It is a solution for urgent problems and is a strategy by the United States during World War I with the introduction of 1917 Trading with the Enemy Act. Whether compulsory licensing , it may encourage it by increasing competition but also discourage innovation by reducing expected returns to private-sector research and development.

Similarly, in Canada, the��has a provision (s.19) for government appropriations. Section 19 of the��Patent Act��permits federal and provincial governments to make an application to the Commissioner for the use of a patented invention. In order for an appropriation to be granted it must be in accordance with the following principles: (a)��the scope and duration of the use shall be limited to the purpose for which the use is authorized; (b)��the use authorized shall be non-exclusive; and (c)��any use shall be authorized predominantly to supply the domestic market. However, prior to authorization, the Commissioner must make an effort to obtain use of the patent on reasonable terms and within a reasonable period. Once authorized, as per s.19(4) “the authorized user shall pay to the patentee such amount as the Commissioner considers to be adequate remuneration in the circumstances, taking into account the economic value of the authorization.”

There are a number of situations where the conditions for authorization do not apply. As per s.19.1(2), the Commissioner does not have to seek authorization in “cases of national emergency or extreme urgency or where the use for which the authorization is sought is a public non-commercial use.” Some idea of what a national emergency might entail can be found in where “Public Emergency” is defined as “an emergency that is caused by a real or imminent (a) fire, flood, drought, storm, earthquake or other natural phenomenon, (b) disease in human beings, animals or plants, or (c) accident or pollution, and that results or may result in a danger to life or property, social disruption or a breakdown in the flow of essential goods, services or resources, so serious as to be a national emergency.” The previously mentioned report by the IPCC warns that all these listed hazards are high likely to occur unless global temperatures are kept below a 2 °C increase. These hazards are potentially appropriate situations where government may appropriate a patented technology.

Patent pools are another possible solution to the problem of a patent holders right to exclude. The World Intellectual Property Organization as “an agreement between two or more patent owners to license one or more of their patents to one another or to third parties.” Essentially, patents from multiple patent owners are pooled together and made available to member and non-member licensees and allocates a portion of the licensing fees it collects to each member in proportion to each patent's value. Patent pools have historically been used in the production of everything from . Chapter 7 of the enforcement guidelines on IP acknowledges that patent pools can often serve a pro‑competitive purpose by, among other things, integrating complementary technologies, avoiding costly litigation, reducing transaction costs and clearing blocking patents.

Lastly, one further option is that a patent holder may take a page out of the book of automotive company and open up their patents. In other words, Tesla will not initiate patent lawsuits against anyone who, in good faith, wants to use their technology. Tesla’s goal is to accelerate the advent of sustainable transport in order to address the carbon crisis, and by opening up their patents and eliminating an intellectual property barrier they have. In the same manner, patent holders to climate technologies may choose to open their patents in order to accelerate the development of climate technologies in order to address climate change.

Some lessons may be drawn from past, but this is largely uncharted territory. At no other time has the world been faced with such an urgent problem. As time goes on and climate change worsens, it is likely that rights to climate technologies will become a balancing act between the rights of the few (patent holders) and the rights of the many (the world).

Written by Alex Dumais. Alex is an IPilogue Editor and a JD Candidate at Osgoode Hall Law School.

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Academics from all over Europe give a final warning against the ill-conceived plans for the introduction of a new intellectual property right in news. Read the full letter here in��, or below.

Statement from EU Academics on Proposed Press Publishers’ Right

We, the����169 scholars [of whom 100 are full professors] working in the fields of intellectual property, internet law, human rights law and journalism studies at universities all over Europe write to oppose the proposed press publishers’ right.

Article 11 of the proposal for a Directive on Copyright in the Digital Single Market, as it currently�� following negotiations in the EU Council and Parliament, is a bad piece of legislation.

��Why?

• The proposal would likely impede the free flow of information that is of vital importance to democracy. This is because it would create��very broad rights of ownership in news��and other information. These rights would be territorial ­­– there would be one for each Member State. The rights would be owned by established institutional producers of news. And in each Member State, the new right would sit on top of all the other property rights that such publishers of news already enjoy: copyrights, database rights, broadcast rights and other related rights.
• This proliferation of different rights for established players would make it more expensive for other people to use news content.��Transaction costs��would be greatly increased, as permissions would need to be sought for virtually any use. Even using the smallest part of a press publication (except perhaps for strictly private use) would mean payment would be due to an institutional news publisher.
• That means, the proposal would be��likely to harm journalists, photographers, citizen journalists and many other non-institutional creators and producers of news, especially the growing number of freelancers.
• The people most likely to benefit would be the big established news institutions. If they should benefit, this is likely to��exacerbate existing power asymmetries in media markets��that already suffer from worrying levels of concentration in many Member States.
  That said, it is not clear that even these big news institutions would benefit. Similar rights introduced in Germany and Spain were not effective.
• The proposed right would provide no protection��against ‘fake news’.
• There is��no sound economic case��for the introduction of such a right. An additional intellectual property right would not change the fundamental problems that news institutions face. They would still have to compete with many other actors for consumer attention, advertisers and hence revenue.

Problems with the Initial EC Proposal

The academic community is virtually unanimous in its opposition to the European Commission’s proposal for a press publishers right. We commend to you the previous critical interventions from Bently��et al, Danbury, the European Copyright Society, Geiger��et al, the Max Planck Institute, Peukert, van Eechoud, and the Study conducted by Bently, Kretschmer��et al��for the JURI Committee in September 2017.

We agree with the supporters of this right about one thing:��journalism matters, and quality journalism matters even more.��As public watchdog and forum for public debate, the traditional print press plays a vital role in democratic societies, but so do newer online media. All actors in the media ecosystem enjoy freedom of expression, as guaranteed under the European Convention on Human Rights and the Charter of Fundamental Rights of the EU. ��This proposal will do nothing to help journalism, but seriously risks doing disproportionate harm to media creators, to smaller publishers, to SMEs seeking to innovate with online media services, to citizens and to society at large. Inventing new rights is not the solution.

In order to appreciate why the balance is so clearly against this proposal, it is important to understand that��press publishers already have very significant rights in their publications. They own enforceable rights in much of the material in a publication by virtue of assigned copyright (or exclusive licences), through national rules on employer ownership or collective works, and through the EU wide��sui generis��right in databases (a term broad enough to cover all newspapers). This is already a formidable arsenal. Even without the introduction of the proposed right, it is unlawful (and when done knowingly and with a view to profit, often criminal) for third parties without licence (or a defence) to reproduce or make available copyright-protected material. The reproduction or making available of small parts of such material may also be unlawful, where those parts are themselves creative. The EU’s��sui generis��right in databases not only gives investors in collections of material the right to prevent wholesale copying, but also to prevent the systematic extraction of insubstantial parts.

While press publishers are very well protected already, the Commission did identify particular problems for German press publishers in relying upon authors’ rights in articles and photographs. As a result of German rules and procedure, it is administratively cumbersome and time-consuming for press publishers to rely on such rights. Documentation is required from authors in respect of the rights in each and every item in a publication. However, a German procedural problem deserves a German solution, not one at a European Union level. That is exactly what has occurred with the one year��Leistungsschutzrecht��introduced in Germany. There is no need for the other 27 Member States to swallow the German medicine, the efficacy of which is so far wholly unproven.

The proposed right would not improve the economic position of press publishers elsewhere. There is no basis for the suggestion that an “EU wide right” (in fact, separate rights for each MS) would improve the bargaining position of press publishers vis- á-vis platforms: they already have authors’ rights and the EU’s��sui generis��right in databases. If it has any effect, the recognition of a press publishers right would strengthen their bargaining position with respect to authors and creators, a relationship which is hardly one of economic equivalence as it stands. However, such a right may well exacerbate existing media concentration problems, not least because media outlets would themselves have to seek permission from one another for the use of publications (and parts of publications), thus placing SMEs at a bargaining disadvantage.

There is also no basis for thinking this proposal will tackle “fake news”: indeed, the opposite seems likely. If certain users of platforms such as Twitter are prohibited from circulating the links posted by subscribers to online, publicly accessible, quality news, the chances are that such users will circulate information derived from other sources. The creation of rights so as to restrict further the circulation of quality news would simply play into the hands of producers of “fake news”. This will not, as Mr Voss’s amendment to recital 32 implies “guarantee the availability of [re]liable information” so much as guarantee the dominance of fake news.

In contrast, one thing is clear: the proposed right will be harmful. Adding yet another layer of protection will create uncertainty, both as to coverage and as to scope. The proposed right is not subject to a requirement of investment (by contrast with the existing protection or databases) or an originality threshold (as applies to copyright). As a consequence, the proposed protection would extend to virtually any use, even of the smallest part of a news item or other content. It has been suggested that the right will prevent the re-use of snippets from, and hyperlinks[1]��to, publicly available websites. If these claims turn out to be true, the new right will also harm freedom of expression and freedom of art, and impede innovation. Even if they turn out to be unfounded, the duplication of protection will create congestion and make clearances more complicated. These harms are further exacerbated by the prospect that the new right would last for a full twenty years, that is, long after the publication has any value as ‘news.’

Rapporteur Voss’s Proposed Amendments Will Make Matters Even Worse

As the legislative process reaches a crucial stage, various amendments have been tabled that make the proposed right even more harmful. In particular, the proposals of the JURI rapporteur, Axel Voss, are positively dangerous. These would:

• Extend the right to “news agencies”;
• Extend the rights conferred beyond reproduction and making available to encompass rental, lending and other forms of distribution to the public (Articles 3 and 9 of Directive 2006/115/EEC);
• Create an unwaivable right for the benefit of press publishers to fair and equitable remuneration as a result of all uses of their publications – even licensed ones.

If it had not come from such an influential source, we would not take these three suggestions seriously.

The first proposal is fundamentally misconceived, because press agencies do not produce press publications (the subject of the rights recognised in Article 11(1)). If the effect of the proposal is to give rights in any item included within a press publication to both press publishers and news agencies, the result will be yet another layer of licensing. For example, even if a press publisher were to permit re-use of a publication, any content within the publication deriving from a news agency would need a distinct licence.

The second proposed change, which extends the press publishers’ rights to cover public lending, rental and distribution to the public, would seem to be designed to capture for press publishers a share of funds available for ‘e-lending’ by public libraries (following the��VOB��decision of the CJEU). This extension would either require the allocated funds to be increased to remunerate press publishers, or would inevitably leave authors and book publishers with a smaller slice of the cake.

The third Voss amendment would give press publishers unwaivable rights that European Union law does not even recognise for individual authors, photographers or journalists (Indeed, Article 15 of the proposed Directive would not create anything close to this, only allowing authors to claim “appropriate” remuneration where their contractually-agreed remuneration was “disproportionately low”). It is absurd to suppose that press institutions are less able to look after their own bargaining interests than individual authors. If press publishers license their rights cheaply, it is not the legislature’s task to save them from their own bargains. Indeed, it may well be in press publishers’ best interests to license their rights for nothing, relying on other business models to profit from their investments. It is not for the EU legislature to dictate particular business models to economic entities. Indeed, the Spanish precursor of Mr Voss’s initiative attracted widespread criticism on this basis.

However, Mr Voss does propose two useful amendments. First, the suggestion that the right “shall not prevent legitimate private and non-commercial use of press publications by individual users” is welcome because it is the first recognition that,��if there is to be a new EU right, there is no reason why exceptions to that right should not also be mandatory. That said, like his other amendments, the proposal is flawed. In particular, the addition of the term “legitimate” to “private and non-commercial” leaves users with no certainty as to where they stand. Moreover, there is no sense as to how this “exception” relates to the optional private copying exceptions in Article 5(2) of Directive 2001/29. Second, Mr Voss’s proposal��that journalists should receive a share of any remuneration raised��is consistent with the goals of article 15 of the proposed Directive, though it will be virtually impossible in practice to identify (i) whether remuneration results from rights in the content (for which the author has already received contractual remuneration) or from the rights in the press publication itself, and (ii) the “appropriate share” of any additional revenue.

Conclusion

We call on all MEPs to oppose the Commission proposal, and with yet more determination, Mr Voss’s amendments. It is time to reject, once and for all, this misguided legislative reform.

[1]��Of note, the usefulness of a ‘naked’ link (mere URL) on the web, or in other applications like ftp, is very limited as it offers the reader little useful information on the resource to which the link directs. Hence, it is customary to use link descriptors, snippets or thumbnails to assist the user in determining whether the resource linked to is worth consulting. For example, without some additional information a user will not know that <https://eur-lex.europa.eu/legal-content/EN/TXT/?uri=CELEX%3A52016PC0593> directs to the EC proposal on Copyright in the Digital Single Market,�� COM/2016/0593 final.

Professor Marco Ricolfi
Chair of Intellectual Property, Turin Law School, Italy

Professor Raquel Xalabarder
Chair on Intellectual Property, Universitat Oberta de Catalunya, Barcelona, Spain.

Professor Mireille van Eechoud
Professor of Information Law, University of Amsterdam, The Netherlands

The full list of signatories to this Statement is available .

The post Academics Against Press Publishers’ Right: 169 European Academics Warn Against It appeared first on IPOsgoode.

The entered the blockchain world to solve four problems facing the creative industry: (1) unclear ownership of intellectual property (IP), (2) inadequate data authenticity (which often leads to unfair distribution of proceeds), (3) the centralized governance of publishing, distribution and platform management (which can prevent quality content from reaching consumers), and (4) difficulty in converting work products to liquid assets such as cash.

So how can this technology help creative minds address the aforementioned problems? Last Fall, I attended the launch event of to talk to its developers and find out. is a decentralized solution that harnesses the combined power of Consortium Blockchain, Public Blockchain and Cross-chain Interoperability to address challenges with respect to ownership and rights to the resulting content.

Decentralization means that the control of any process or service, such as domain or content registration, does not to belong to a single person, organization or government. Rather, the process is distributed among all users to record and track ownership of content that cannot be erased or modified by third parties.

Consortium blockchain is a type of a hybrid between and .

Cross-chain technology allows two people holding tokens (or any other asset) on two different blockchains to trade directly and instantly without the risk of one party pulling out of the trade before its completion.

So how does Ink use this technology?

Firstly, as , an attorney at Gerard Fox Law, : “When IP rights holders register their works to a blockchain, the rights holders can ultimately end up with concrete evidence of ownership, which is free from tampering, because once a work has been registered to a blockchain, that information cannot ever be lost or changed. So, third parties can use the blockchain to see the complete chain of ownership of a work, including any licenses and assignments.” Overall, the system addresses a fundamental challenge in content creation by allowing the owner and consumer to trail content ownership.

Secondly, the aforementioned blockchain designs each serve a distinct technical purpose. Ink strategically chose to use consortium blockchain to limit operations to country-specific regions. They refer to this concept as the “”. Given that content creators are bound by their country’s unique legal frameworks, regulatory policies and even cultural norms, the design had to account for complications that might arise from operating in multiple jurisdictions by implementing this very concept.

But, if the technology is only operable within a given country, how can Ink fulfill its mission to “distribute creative work without ���dzܲԻ岹�������”? This is where cross-chain technology comes in and acts like a bridge that allows information and content to flow freely between public blockchain (Qtum) and Sovereign Consortium Blockchain. For example, once you produce content that adheres to domestic regulations including copyright law, you can secure it on the local sovereign consortium blockchain. The content then passes into the proprietary Cross-chain Protocol to reach various public blockchains and can be traded through the blockchain globally.

By creating a decentralized registration system that allows one to claim ownership within seconds and reach its users around the globe through the cross-chain protocol, Ink is set to tackle the concerns of content providers and facilitate the flow of innovative ideas. It seems clear to me that, as part of the emerging decentralized web, blockchain has the potential to revolutionize our understanding of content creation, registry, and dissemination by using a decentralized database for IP.

Ekin Ober is an IPilogue Editor and a JD/MBA student at Osgoode Hall Law School and the Schulich School of Business.

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The Current Legal System on AI and Big Data

AI today creates and with minimal human input. This seems to create the expectation that AI machines will eventually reach fully decisions, in spite of the debate of the amount of time it will require. Yet, regardless the significant strides in the field, such as “AIVA”, the AI-powered , and the news that Saudi Arabia became the first state to grant to an AI robot, “Sophia”, IP law stands as a passive observer, with legislators hesitating to attribute authorship or inventorship, thus ownership, over AI-generated work.

As Osgoode Hall Law School PhD Candidate, , explained from a theoretical IP perspective, “there are three stages of development: computer-assisted, computer-generated, and AI works”. In computer-assisted works the computer is nothing more than a tool, like a pen. This was the conclusion in , which maintained that ascribing rights to a computer is as absurd as attributing authorship to a pen. But, as Gaon pointed out, even where there is strong evidence of minimal to zero human influence on the creative process, “courts will try to find some human ingenuity to establish authorship within the computer assisted work safe haven”, relying on the decision of the Alberta Court of Appeal in which addressed the issue of copyright protection of collection and computer assessment of seismic data.

The issue of IP rights over AI-generated work seems intertwined with ownership over data and databases, since AI algorithms employ big data. While in the United States (US) raw data and databases are not ordinarily copyright-protected, , Director at Zvi Meitar Institute of IDC Herzliya, highlighted the fact that, if a database is uploaded online bearing digital rights management protection, said database along with its underlying data is deemed copyright-protected under the . Raw data can also be protected as trade secrets or under . Conversely, accessing password-protected online data is considered (prohibited) unauthorized access, thus a violation of the US Criminal Act. That being said, Greenbaum�� argued that the real value is not in the data but in the analytics, providing as an example Celera Genomics, which gave away genomic data that cost to sequence.

Commercial Practices on Big Data and AI-generated work

Given that under no regime is AI considered an author or inventor, an invention is either owned by people or falls under the public domain. That is why establishing a high degree of human influence on an invention is important, a point underscored by , Associate at McCarthy Tétrault LLP. From a legal perspective Piovesan also prompted AI stakeholders to illustrate the of the system in order to strengthen their claims for IP rights before courts, for instance elucidate whether the system is a product or a service, if it is a tool or an agent, and whether it is being controlled by the programmer or the user.

On the other hand, although the law is not settled on IP protection of big data, the latter is being commercially exploited. , Partner at Norton Rose Fulbright LLP, illustrated some practical aspects of commercializing big data: industry trends in licensing agreements include between “owners” of a (unique) data set and those who have the AI tools to process it. Additional value can be generated by “clearing data in a bad state”. Collaboration agreements, as Medeiros stressed, must draw a clear line on the expectation of who owns what. Data providers will aim at controlling access and retrieve it when the agreement ends, while AI providers will try to own or control data aggregation from different data sources. Such expectations should be clear in the pertinent contract, even though, as Medeiros emphasized, the issue of IP protection on the ownership of the transformation of data aggregates has not yet legally settled. Given the above, co-ownership between data and AI tech providers would not be recommended by Medeiros, who introduced sublicensing data for commercialization revenue share of the ultimate refined AI tool, as a trend.

Addressing the legislative gap

While AI is growing exponentially and robots are developing , regulators can address the legislative gap, for example, by framing AI as an employee, which would require minimal amendments in Copyright Law, assuming it encapsulates vicarious liability provisions. Nevertheless, as Piovesan argued, gaps could also be overcome by systems, as is being considered by legislators in Estonia.

Alternatively, Gaon proposed that a model for computer-generated work could prevent unlawful exploitation of AI works through promoting integration of knowledge and recreation of works. According to this model, IP rights could be divided between the programmer and the AI computer which, practically, means that computer rights would become available to the public for a short time or profits would be invested for the public good. Naturally, this model requires development of a test in order to establish human impact on creation, as Gaon noted.

Finally, , Senior Lecturer at UNSW Sydney Law, foresees that the AI challenge will be resolved by espousing the same principles that law evolved on, since the metaphysics have not changed. However, she argued that revolutionary change requires that we should have put that to place, as AI is already upon us. Similarly, , Associate Professor at Osgoode Hall Law School, echoed George’s views and posited�� that we ought not to think about expanding the confines of IP without revisiting the normative justifications and rationales on which existing IP rights are premised. Yet, Piovesan noted that some of the fundamental principles of IP law are being challenged due to AI’s very nature, referring to fact that AI cannot be incentivized to innovate through recognition and reward. Moreover, although we have yet to reach “”, AI’s developing “emotional nature is pushing the boundaries of how we conceptualize and identify humans”.

All in all, the longer we delay addressing the issue of AI rights, the more radical of a reform will be required as the existing legal “boxes” may not be sufficient to fit the growing capabilities of AI, being the least of the recognitions it can attract. On the other hand, it seems contentious to approach this issue based on what AI can do; focus should be placed on what AI is, especially in light of it eventually reaching fully autonomous decisions. AI remains a tool, even if it ultimately behaves like humans. It is therefore imperative that, as a tool, AI continue to be under control, something which may be disincentivized if AI-generated work were to fall under the public domain.

��

Yonida Koukio is an IPilogue Editor and an LL.M. Candidate at Osgoode Hall Law School.��

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Prof. Gordon began by tracing the concept of users’ rights back to the American jurist Wesley Hohfeld’s notion of rights and privileges. For Hohfeld rights and duties were correlated concepts – that is the possession of a right by one party could impose a duty to honour that right on another party. Claim rights, as they are often called, are such rights – they impose duties to the rights holder onto others. Liberty rights on the other hand are rights that do not impose obligations, they simply entail freedom on the part of the rights holder. Prof. Gordon went on to explain that whether we define users’ rights as claim rights or liberty rights has important implications. If users’ rights are liberty rights – for example people are free to copy works in the public domain – there are no obligations on others to facilitate such rights. If, on the other hand, users’ rights impose obligations on others we could say that not only are people free to copy works in the public domain, but also that others are prohibited from locking up public domain works through the abuse of paywalls or digital rights management tools. If we conceptualize users’ rights as claim rights, as I believe Prof. Gordon was suggesting, we end up with a stronger conception of what user’s rights entail.

Daniel Bereskin, QC, speaking from an academic perspective, noted some of the ways diminished conceptions of users’ rights with respect to trademarks could lead to problematic situations. Mr. Bereskin noted that without balance between the rights of creators and users’ the objective of preventing depreciation of goodwill could be overtaken by the objective of protecting market share. Mr. Bereskin also shared some thoughts on proof of harm in trademark cases and how sometimes proof of harm is presumed, instead of proven, once likelihood of confusion is established. Mr. Bereskin highlighted the importance of assessing the impact of the harm done by an infringing use of a mark, particularly where injunctive relief is sought. Because injunctions are a form of equitable relief granted in extraordinary cases, a court considering whether or not to issue an injunction should look to the effect an injunction may have on values of competition and free speech.

In the field of patents, Prof. Shamnad Basheer made reference to the Indian IP doctrine of “working the patent” that allows for compulsory licensing of a patent that is not being “worked for the public good” by the patent-holder. Prof. Basheer explained that, starting three years from the date of grant, the patent holder must submit statements to the patent office of how it is “working the patent.” If, from these statements, the patent office is not satisfied that the patent holder is sufficiently “working” the patent it may grant a compulsory license in the patent to a third-party. The link between this doctrine and users’ rights is readily apparent. Recognition by the patent office of the public’s stake in scientific innovation suggests that users may have potential rights to innovations that benefit the public good. For more on the application of this doctrine see the Indian case of Natco Pharma Ltd. v Bayer Corporation, which was referenced by Prof. Basheer during his presentation, as well as on his IP blog,��.

The author would like to thank all the speakers, volunteers, and co-ordinators who made “Intellectual Property: Fuel for the Fire of Genius or Shelf Life of a Banana” a reality, as well as Prof. Vaver for his ongoing contribution to the field of Intellectual Property law.

Stephen Cooley is an IPilogue Editor and a JD Candidate at Osgoode Hall Law School.

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Patents and Plant Breeders’ Rights

Focusing on the overlap between patents and the plant breeders’ rights (PBR), Prof. de Beer, quoted Justice Arbour’s dissenting opinion in , which adopted Prof. Vaver’s view that “patents should not necessarily be available when other, more tailored intellectual property protection exists”. The same idea is traced back in the dissent of the United States (US) Supreme Court’s 5-4 decision of , which influenced the position of the Canadian Federal Court of Appeal in regarding the patentability of higher life forms. A decade later, when the Supreme Court of Canada was faced with the same issue in , Justice Bastarache suggested that PBR would not be available if patent rights were meant to apply and that plant breeders’ protection was better tailored for this purpose.

Prof. De Beer shed further light on the current development of PBR legislation and the business model built around the rights it introduces. In particular, influenced by a shift in Australian agricultural policy, Canada introduced the ��in 2015 to amend PBR legislation by establishing broader, longer, and stronger rights for plant varieties in Canada. Moreover, while revenues are generated on the recurring sale of inputs, namely seeds, under the patent regime, the revenue system stemming from the Plant Breeders’ Rights Act provides that royalties are collected on harvested materials. These end-point royalties serve as a risk sharing mechanism for farmers and are considered more favourable to farmers then the revenue system under the patent regime.

According to Prof. de Beer we can expect to see multiple IP rights in the lucrative industry of . Deciding which IP rights will apply in that context depends on scientific, economic, and business factors.�� However, he noted that it is scientifically questionable whether cannabis is stable enough to breed in a way that would meet the requirements for plant breeder rights, and there are also questions as to what a variety or strain is in the medical context.

The Relationship between Trademark Rights and Unfair Competition Law

Prof. Dinwoodie commenced his presentation by questioning whether the overlap in IP is ‘too much of the same’. While noting that there is no single general way to address the overlap of different IP rights, he suggested that a number of principles or other estoppel-like arguments could be used to circumscribe this outcome, for example the election doctrine as cited by the US Supreme Court decision in .

He also noted that legitimate social policy has been recognized by legislatures and courts as a competing force to accord constrained IP protection. For instance, to avoid the application of cumulative IP rights, the European Union and the United Kingdom use a hierarchical approach which can be cheekily summarized as “when two IP regimes come into conflict, trademark loses”.�� Citing ��Prof. Dinwoodie suggested that due to the functionality doctrine of trademark law, producers often opt for patent, copyright or design law protection over trademark protection.

Invoking the decision of the US Second Circuit Court of Appeals in , Prof. Dinwoodie proposed applying a normative approach to the scope of trademark protection. For example, treating shape marks as “thin” trademarks could help achieve a better balance between the industrial policy and consumer protection objectives of trademarks and unfair competition. Besides, the complementary role of unfair competition law [2], recognized in , could be further untangled, for instance by offering weaker remedies to empirically-grounded unregistered claims, while also requiring proof of real social harm.

Finally, Article 10bis of the could be employed to balance IP over-protection with users’ rights. As Prof. Dinwoodie suggested, since trademark defences in the EU inquire of honest practices in industrial and commercial matters, the existence of a right to engage in a particular conduct under another IP regime with equal claim to regulate may offer a way of reconciling the competing claims of trademark and other IP regimes.

The Hon. Roger T. Hughes rounded off the discussion by explaining why redundancy and overlap are desirable and necessary.�� Drawing examples from his engineering training and legal practice, he craftily illustrated that redundancy and overlap can lead to the evolution of IP law.

There was consensus among the panelists that there would be less redundancy if the lines of the overlapping applicable IP legislation are more clearly drawn as the law evolves to respond to emerging issues. Besides, as Justice Robin Jacob observed, "The big question for David is and always has been, where is the rational, the sensible, place to draw the line between too much and too little" [3].

Yonida Koukio is an IPilogue Editor and a LL.M. Candidate at Osgoode Hall Law School.�� She holds LL.B. and LL.M. degrees from Democritus University of Thrace, Greece, and is a member of the Athens Bar Association since 2014. As a lawyer, Yonida practiced in the areas of health law and civil litigation. Currently, Yonida’s further interests extend to privacy and technological innovation. She is also the co-founder of LAWCALS, the first L2L platform in Greece, which connects lawyers and simplifies the delegation of legal tasks among them.

[1]�� See also Mark D. Janis, “Interfaces in Plant Intellectual Property”, at Neil Wilkof & Shamnad Basheer (eds), Overlapping Intellectual Property Rights (Oxford: Oxford University Press, 2012), at 83.

[2]��See also Axel Nordemann & Tara Mooney Aaron, “The Relationship between Trademark Rights and Unfair Competition Law”, at Neil Wilkof & Shamnad Basheer (eds), Overlapping Intellectual Property Rights (Oxford: Oxford University Press, 2012), at 341.

[3] Catherine Ng, Lionel Bently & Giuseppina D'Agostino, eds.,��The Common Law of Intellectual Property: Essays in Honour of David Vaver (Hart Publishing Oxford 2010) at vi.

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Living up to its tough-on-tar��, the Australian government passed the����(TPPA) in December 2011, a result of not finding pre-existing measures as effective as desired in lowering smoking rates. By December 1, 2012, all cigarette packaging in the country will be identical in unembellished, legislated size, shape, and colour (the������). An equally unsightly health warning will cover three-quarters of the front panel, while additional warnings and a quitting hotline claim 90 per cent of the sides and back. Brand, company, and associated names, the only distinguishing feature allowed, will shed their unique typographies for a��, no bigger than point-size 14,����makeover.

Lighting Up: The Constitutional Challenge

Needless to say, the tobacco industry got rather����over the new law. JT International (JTI) and three arms of British American Tobacco (BAT), supported by brethren tobacco-purveying intervenors,����that the��TPPA��mandates amounted to “acquisition of property��from [them] otherwise than on just terms”.����of the Constitution provided grounds for the challenge: as it grants Parliament power to acquire property “on just terms”, courts interpret the provision to mean citizens may challenge any acquisition on terms less than or other than just.

More specifically, the tobacco companies accused the government of unjustly acquiring their intellectual property, in the form of trade-marks, patents,��, literary and artistic works, registered design, trade dress, and goodwill associated with all of the above. The High Court thus faced two issues:

1. Does intellectual property such as trade-marks and goodwill constitute “property” under s. 51(xxxi) of the Constitution?
2. If yes, did the Australian government, via��TPPA��provisions, in fact acquire said property, on other than just terms?

Where There's Smoke, There's Not Necessarily Fire: The Decision

In a decision more multihued than the products in question (comprising five shades of concurrence and one contrasting dissent), the court affirmed that (1) the plaintiffs' intellectual property as described above does constitute “property” under s. 51(xxxi), but (2) the government did not acquire said property, under s. 51(xxxi), by enacting the��TPPA. The following will present the court's reasons taken all together.

I. Putting the property in intellectual property

First, the court agreed that intellectual property constitutes “property” under s. 51(xxxi), and is able to make claim to just terms of acquisition. One opinion suggested uncertainty about goodwill because it already operates under restraints from the common law, unlike statutory intellectual property rights.

II. Taking from the rich...

The court also decided that the government's enactment of��TPPA��amounted to “taking” of property. The provisions of the Act, for all intents and purposes, deprived the companies' trade-marks, copyrights, patents, and registered designs of all value and use. One opinion rejected the companies' argument that they were deprived of the “substance” or “reality” of their property rights, indicating that they could still use brand names, which was the essential part of trade-mark “for purposes of distinguishing”. On the way to the final decision, however, another judge noted the words of Justice Brandeis from the U.S. Supreme Court: “restriction imposed to protect the public health, safety or morals from dangers threatened is not a taking.”

III. ...But not acquired by the poor (or government)

What Parliament takes, Parliament does not necessarily acquire; this is the key to the court's reasoning in��JT International SA.��The majority of judges found that that while a “taking” occurred, the��TPPA, even if it “adversely affects or terminates a pre-existing [property] right”, did not amount to the Australian government's “acquisition” of a proprietary interest in a way that engaged s. 51(xxxi). The tobacco companies retained ownership of the intellectual property rights themselves.

The court went on to reason that the ability to control use of the plaintiffs' trade-marks did not constitute a proprietary interest, as the government “accrued no benefit of a proprietary nature”. Essentially, controlling is not the same as owning, nor is it the same as proprietary interest no matter how liberally interpreted. Continuing in this vein, the court deemed the��TPPA��regulatory rather than proprietary; it was merely an extension of what legislation already allowed Parliament to do with respect to mandating health warnings on tobacco products.

The court rejected the plaintiffs' argument that proprietary benefit resided in: saved costs of additional advertising, fulfillment of��, and the potential of Quitline gaining goodwill. Even if considered advantages, they were not proprietary and would only further the purpose of the legislation.

IV. Stepping Out: The Dissent

Heydon J's dissent held that acquisition under s. 51(xxx) only required “some identifable and measurable countervailing benefit or advantage” and that the government acquired such by not compensating the tobacco companies for their restricted rights. He stated that the��TPPA��“deprives the proprietors of their statutory and common law intellectual property rights and their rights to use the surfaces of their own chattels. It gives new, related rights to the Commonwealth [which control the surfaces of said chattels].” The dissent also raised a floodgates concern, in that the majority decision could allow government to apply similar limits to other products or for other legislative objectives in the public interest.

One Last Puff: Analysis

Potentially problematic aspects of the court's decision include (some might argue): the emphasis on the form of intellectual property rights as opposed to the substance (i.e. the distinction between having a right in theory and being able to exercise it in practice); the ethics of allowing a business to register trade-marks and accepting fees for such, then restricting use of those trade-marks; and potential cognitive dissonance in the law of applying such measures to what is, at the end of the day, a legal activity.

The implications of this case are widespread and enormous. Debates abound over the extent of the��,����������; whether it will induce growth of the��; whether a����is what people think it is; whether the floodgates have opened to plain packaging of food and��; and whether this����international World Trade Organization (WTO)��, just to name a few.

Closer to home, Canada has addressed����in����and��, and the United States recently closed off such a possibility in��.��However, all three decisions rested on freedom of expression grounds, and Canadian law does not include constitutional protection of property.��Meanwhile, the United Kingdom, New Zealand, and����have been����to consider Australia a test case for their own initiatives. Whether or not the��TPPA��was a single unlucky strike upon the multinational industry remains to be seen.

Cynthia Khoo is a JD Candidate at the University of Victoria.

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Our very own Osgoode professors and feminist scholars, and presented a thought-provoking keynote entitled,��“Copyright and the Moral Arts of Appropriation: Feminist and Postcolonial Perspectives”, at the Conference hosted by the of the University of Toronto on November 11, 2011. Linking the overarching conference themes of how appropriation affects different feminisms to the intellectual property rights of postcolonial societies, the presentation provided an intriguing insight into the conflicted worlds of economic rights, technology, knowledge-sharing and cultural preservation.

Speaking on the ideas developed in their paper “” (co-authored with Joseph Turcotte), both Professors Coombe and Craig explored the concept of digital appropriation with respect to developing societies, especially highlighting the impacts of the economics-based property rights management model of the contemporary global intellectual property regime on local communities. The concept of the ‘cultural commons’ here, they argued, was being eroded by the narrow application of intellectual property rights, which confined ownership to one or a few, effectively reducing the scope of societal development by the exclusion of crucial perspectives, especially those of women.

While Craig proposed that the WWW and emerging technologies could be used to enable the public to contribute to the creation of more egalitarian intellectual property rights, Coombe suggested that the very idea of ‘public’ needed an overhaul to include diverse voices, as the term was historically entrenched in gender and social inequalities. Both authors concluded that that “a more inclusive notion of stewardship” is necessary, and that intellectual property rights will only work favorably in postcolonial societies if they work symbiotically, not parasitically, with the communities they wish to benefit from.

Professor Coombe’s approach further involved a critique of North American public domain policies as “too individualistic with their emphasis on public freedoms,” and cited the incompatibility of intellectual property rights derived from these ideas with postcolonial societies. Intellectual property, she said, was more of an enclosure to these societies, and because of this, the notion of the ‘public domain’ itself became “a modern bourgeois term,” that restricted cultural development instead of freeing cultures. According to Coombe, current intellectual property concepts only supported the continued dispossession of local communities, effectively becoming a tool for recolonization. Citing the role of women in farming communities in the developing world, Coombe emphasized the importance of vernacular property rights, including knowledge of land use and agriculture that was passed down orally, “through networks of women’s trust.”

She also argued that with moves such as the patenting of seeds, or preventing cross-breeding of seeds, intellectual property rights were doing more than just preventing innovation in agricultural development— they were denying communities the means to propagate their own intangible wealth of social history, effectively debilitating the already-damaged fabric of postcolonial societies. The answer, according to Coombe, is to broaden the existing perception of private goods and the public domain, and to ensure that intellectual property rights are not just involved in protecting tangible expression, but that a novel “postcolonial ethic of stewardship” can give the intangible contribution of distinctive groups their due.

Professor Craig also drew on a relational theory of copyright law and suggested that, in order to be legitimate, a system of copyright must provide access to various cultural landscapes and must be modified to create spaces where the process of authorship enables “ongoing social dialogue as part of cultural conversation, which then helps shape communities.” The current practice of using copyright law to put forward proprietary claims is a form of Lockean possessive individualism, argued Craig, and only propagates the marginalization of the same groups that have suffered due to exclusion historically. This effectively creates the same problems in intellectual property rights as faced by real property management regimes, because copyright law "wants to believe that expression is created in a vacuum," rather than being a complex interplay of various influences. The solution, according to Craig, lies in open-access initiatives like the (A2K) movement, which is built on collaborative knowledge sharing across cultures. Craig also pointed out that feminism and open-access complemented each other perfectly, since both were concerned with “prioritizing the marginalized and countering private appropriation,” and were “optimistic about technology’s capacity to destabilize the existing power structure.”

Tied into one of the conference’s main concerns of how appropriation could be used in a positive context, the keynote focused on advocating for a more nuanced approach that preserved the uniqueness of postcolonial societies and the “need to protect the ‘we’ with more humility.” It provided a worthy segue into the conference’s second and final day, where many of the questions raised by Professors Coombe and Craig were discussed and debated, and created the background for further dialogue on feminism and the politics of appropriation.

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