IP Osgoode is pleased to announce the new team of student editors for the Intellectual Property Journal (IPJ). Returning this year are Sarah Raja, Nikita Munjal, and Androu Waheeb. New student editors are Ibrahim Arif, Patricia Borja, Emily Chow, and Sabrina Macklai.��
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Alexandra Mogyoros, Assistant Professor at Lincoln Alexander School of Law at Toronto Metropolitan University, is also joining the ranks as a book review editor. ��
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The IPJ is Canada’s leading peer-reviewed journal with a focus on IP law related areas such as patents, trademarks, copyright, designs, trade secrets and competitive torts. Leading the IPJ’s editorial team is Editor-in-Chief, Pina D’Agostino, Associate Professor at Osgoode Hall Law School and IP �������Ǵǻ��’s Founder and Director; Deputy Editor Dr. Aviv Gaon, Senior Lecturer at the Harry Radzyner Law School, Reichman University; and Senior Editor Ryan Wong, Associate at Smart & Biggar LLP.��
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The IPJ’s editorial board consists of Prof. David Vaver, Hon. Justice Roger T. Hughes, Daniel Bereskin, Prof. Ikechi Mgbeoji, and Hon. Justice Marshall Rothstein. Prof. Bita Amani and Prof. Saptarishi Bandopadhyay are the book review editors.��
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The IPJ editorial team wishes to thank Prof. David Vaver, IPJ’s founder, for his mentorship and unrelenting support.  The IPJ’s continued success is made possible by the contributions from its panel of expert reviewers.��
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IPJ accepts article submissions on an ongoing basis. If you’re interested in submitting an article to the IPJ, please email us at .��

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Founded in 1984, the Intellectual Property Journal (IPJ) covers matters relating to all aspects of Intellectual Property such as patents, trademarks, copyright, designs, trade secrets, and related areas such as privacy. The focus of the journal is on Canadian material with a mix of comparative and international law content. The IPJ contains articles, opinions, book reviews, case commentaries and writings on legal developments around the world. The IPJ accepts submissions from any interested parties, including students, provided that they meet a high standard of scholarly rigour.

The Journal, edited by Professor Giuseppina D’Agostino, is published by Carswell (three times per year.

Professor D’Agostino invites Osgoode law students to apply for the student editor positions. These editors will be responsible for reviewing and arranging for the peer review of journal articles, providing feedback to those who have submitted papers to the journal and coordinating logistical matters, including communicating with authors regarding deadlines and other journal policies.

Term:���� Fall Semester (September 2022)

Time Demands:��Approx. 1-2 hrs per week

Qualifications:

• An interest in learning about current IP law and technology issues
• Ability to write in a concise and clear manner
• Excellent organizational skills

Application Process:

Please provide via email to��iposgoode@osgoode.yorku.ca��by��Tuesday, May 31, 2022 the following materials:

• One-page cover letter (briefly outlining your interests in IP law)
• Copy of your resume and grades

Please send any questions you may have to:��iposgoode@osgoode.yorku.ca. We thank all applicants for their interest. We will only contact those selected for an interview.

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The Journal, edited by Professor Giuseppina D’Agostino, is published by Carswell (three times per year.

Professor D’Agostino invites Osgoode law students to apply for the student editor positions. These editors will be responsible for reviewing and arranging for the peer review of journal articles, providing feedback to those who have submitted papers to the journal and coordinating logistical matters, including communicating with authors regarding deadlines and other journal policies.

Term: �� Fall Semester (September 2022)

Time Demands: Approx. 1-2 hrs per week

Qualifications:

• An interest in learning about current IP law and technology issues
• Ability to write in a concise and clear manner
• Excellent organizational skills

Application Process:

Please provide via email to iposgoode@osgoode.yorku.ca by Friday, May 18, 2022 the following materials:

• One-page cover letter (briefly outlining your interests in IP law)
• Copy of your resume and grades

Please send any questions you may have to: iposgoode@osgoode.yorku.ca

The post CALL FOR APPLICATIONS - Intellectual Property Journal Student Editors (September 2022) appeared first on IPOsgoode.

Prof. David Vaver is the Acting Director of IP Osgoode and a Professor of Intellectual Property Law at Osgoode Hall Law School. The following is a preview of a paper to be published in the Intellectual Property Journal.

��

Something has recently gone awry with the law of copyright ownership in a movie or other film — a “cinematographic work”, as s. 2 of the [Act] calls it. ��

Part I of the Act deals with the ownership of copyright in works. Section 13(1) provides that the author of a work is its first copyright owner. Section 13(2) provides one exception: where the work is done by an author-employee for their employer as part of their job and there is no contrary agreement. All this applies to cinematographic works, a species of dramatic work, as the Quebec courts recently confirmed: at [12], aff’ing at [51]-[2] [Choko]. A copyright owner may of course transfer the right as it wishes (s. 13(4)); but apart from another exception on Crown works (s. 12), these provisions in s. 13 are the only ones that deal with the ownership of copyright in works. Another section in Part II of the Act (s. 24) deals with first ownership of copyright in subject-matter other than works: performer’s performances, sound recordings, and communication signals.

Owning copyright is one thing; proving ownership is another. Section 34.1(1) of the Act helps plaintiffs out by giving them certain presumptions if they sue for infringement or take other civil proceedings. The section reads (emphasis added):

"In any civil proceedings taken under this Act in which the defendant puts in issue either the existence of the copyright or the title of the plaintiff to it,

(a)��copyright shall be presumed, unless the contrary is proved, to subsist in the work, performer’s performance, sound recording or communication signal, as the case may be; and

(b)��the author, performer, maker or broadcaster, as the case may be, shall, unless the contrary is proved, be presumed to be the owner of the copyright."

At first sight, the words in (a) — “work, performer’s performance, sound recording or communication signal” — appear to be paired with those in (b), in the same order, to mean “author [of a work], performer [of a performer’s performance], maker [of a sound recording], or broadcaster [of a communication signal]”. It would seem unnatural, for example, to read “maker” as referring to both a “sound recording” and a “work”. That however overlooks the fact that s. 2 of the Act defines “maker” as referring to both a work and a sound recording.

Does that definition apply here so as to disturb the apparent pattern of paras. (a) and (b)? Or do the words in context make s. 2 inapplicable? I suggest that they indeed do disapply s. 2 for cinematographic works and that, in context, “maker” in para. (b) means only the maker of the sound recording referred to in para. (a).

Not everyone thinks so — in particular, some judges of the Federal Court.

*

Section 34.1(1) is supposed to make a plaintiff’s life easier in starting and running a copyright claim in court. It neither creates presumptions outside civil proceedings nor creates, transfers, or changes anyone’s actual title, and any proceeds recovered from a defendant are held for the benefit of the true owner: see Hogg v Toye & Co [1935] Ch 497, 520 (CA) on the corresponding provision in the (UK) on which the Canadian section is based. If any presumption happens to be displaced by contrary evidence, the proceedings can be amended and other parties joined so that defendants are not put in double jeopardy.

The presumption was applied straightforwardly in Choko (above). The plaintiff claimed a declaration of copyright ownership in a documentary he had shot for the defendant, while the defendant counter-claimed that the copyright belonged to the defendant as the plaintiff’s employer. The court applied s. 34.1(1)(b) to presume ownership in the plaintiff, he being the “author” of the “work” (Choko, QCCS at [55]). The defendant lost at trial and on appeal because he failed to prove the contrary, i.e., that he employed the plaintiff under a contract of employment (Choko, QCCA at [13]).

The Federal Court of Canada has, however, in at least three decisions said that s. 34.1(1)(b) presumes that the film’s “maker” is the copyright owner of the “work” unless the contrary is proved: see at [24]-[6]; at [32]; at [47]. The ultimate result in these cases may be justifiable: agreement or employment may have given the plaintiff actual ownership in Interbox (see [24] & [26]-[8] of the decision); ownership was “uncontested” in CBC (see [36] of the decision); and certificates of registration would have shifted the presumption of ownership to the plaintiffs in Bell (see [53] of the decision).

Interbox nonetheless does appear to be a decision on the s. 34.1(1)(b) point and was treated as such in CBC at [32]. ��

The correct view however seems to be that, read in context, “maker” in s. 34.1(1)(b) refers only to the maker of a sound recording. Were it to include the maker of a cinematographic work, s. 34.1(1)(b) would be the only provision in the entire Act where "maker" alone bore this meaning. It would also make s. 34.1(1)(b) create two inconsistent presumptions on ownership of the same work, with no way to decide which should prevail. Suppose an “author” and “maker” of a film sue each other, each claiming to be the copyright owner: whose duelling presumption should prevail? To call the result a stalemate would stultify the point of having presumptions at all and would anyway probably be contrary to art. 15(1) of the [Berne], which requires the author to prevail if their name appears on the work in the usual manner.

The problem is that, although “author” and “maker” can mean much the same thing in ordinary parlance, they do not in copyright law. The Act does not define “author” but judicial decisions identify this person as the individual or individuals who give a work’s ideas their original form or expression ( (NBCA)) — a question of fact in each case. Authorship is established easily enough for the video shot on someone’s smartphone; less so for a complex production such as Star Wars, which could involve multiple authorship or the director as sole auteur, the individual responsible for translating the work’s vision into its final expression.

By contrast, “maker”��—��producteur��in the French version —��has a definition in s. 2 of the��Act��that spans both cinematographic works and sound recordings. For a cinematographic work, the “maker” is��“the person by whom the arrangements necessary for the making of the work are undertaken”; for a sound recording the same formula applies to the first fixation of sounds.����

In cases like��Choko��(above) which involved a single individual shooting and editing a film, the same person may coincidentally be both maker and author: the two roles are easily enough mistakenly conflated (see, e.g.,�� at [156]-[7], appeal dismissed 2021 ONCA 532 for non-compliance with order to post security). In many major commercial films, however, the maker and author��—producteur��and��auteur��—��will be different persons, particularly because the maker may be a corporation whereas an author must be a natural person, i.e., a flesh-and-blood human being:��,��234 [Massie].��

One might ask: if “maker” in s. 34.1(1)(b) really applies only to sound recordings, what is the point of having a definition of “maker” of a cinematographic work at all? The answer: to allow Canada to comply with Berne article 4 and ensure that films are protected in Canada even where none of the authors is a Berne national or resident, no matter who owns the work’s copyright. This s. 5(1)(b)(i) of the Act achieves (see Bell, above, at [47]) and also extends protection to other states as required by treaties such as the of 1994. The relevant part of s. 5 reads: ��

"5.(1) Subject to this Act, copyright shall subsist in Canada, for the term hereinafter mentioned, in every original literary, dramatic, musical and artistic work if any one of the following conditions is met:

���������������������� …

(b) in the case of a cinematographic work, whether published or unpublished, the maker, at the date of the making of the cinematographic work,

(i)��if a corporation, had its headquarters in a treaty country, or

(ii) if a natural person, was a citizen or subject of, or a person ordinarily resident in, a treaty country [emphasis added]."

Section ��34.1(2)(c) reinforces this provision, as Berne art. 15(2) requires, by providing that “if, on a cinematographic work, a name purporting to be that of the maker of the cinematographic work appears in the usual manner, the person so named shall, unless the contrary is proved, be presumed to be the maker of the cinematographic work” — note, not the “copyright owner”, an error made in Wiseau (above) ONSC at [156], although the court ultimately found the person who wrote, acted in, and produced the film to be its “author” and at least a co-owner (ibid at [157]).

Sections 5(1)(b)(i) and 34.1 (2)(c) are the only provisions to which the definition of “maker” of a cinematographic work applies. Had the drafters integrated the contents of s. 34.1(2)(c) into s. 5(1), as they could easily have done, the definition of “maker of a cinematographic work” could also have been shifted from s. 2 to s. 5(1). The mischief its location in s. 2 causes would have disappeared. Such are the potential effects of drafting decisions that are thought to be stylistic but which others misunderstand as having a substantive effect.

Let us examine more closely why s. 34.1(1)(b), in context, cannot include the maker of a cinematographic work. Admittedly, s. 2 could make it include that person — which raises the question: had the drafters intended to confine “maker” to sound recordings, why did they not just add the phrase “of a sound recording”? The answer is because, in the context of section 34.1 and the Act as a whole, the drafting in this respect is often elliptical, and the drafters here thought that meaning was already implied.

The drafters used a similar ellipsis in the next subsection, s. 31.1(2), where the word “maker” in the phrase “author, performer, maker or broadcaster” in the concluding portion of s. 31.1(2)(a), and in s. 31(2)(b)(i) and (ii), clearly means the “maker of the sound recording” specifically mentioned earlier in s. 31.1(2)(a)(iii).

They also used the same ellipsis elsewhere in the Act. Thus s. 29.21(1)(b) requires the creator of user-generated content to name their available source if they are to avoid infringement. The source is stated to be “the author, performer, maker or broadcaster” of the prior “work or other subject-matter.” “Other subject-matter” is the shorthand used throughout the Act for a performer’s performance, sound recording, or communication signal, and the preceding section (s. 29.2(b)(iii)) again makes it clear that the “maker” referred to is the “maker of a sound recording”.

The fact is that the words found in s. 34.1(1)(a) “work, performer’s performance, sound recording or communication signal” in either their singular or plural form appear as a set throughout the Act and are typically linked distributively to the set of persons the Act designates as their respective first owners: “author, performer, maker of a sound recording, or broadcaster” (see, e.g., s. 2, definition of “collective society”). Thus s. 13(1) designates the author as first owner of a work and sections 24(a), 24(b), and 24(c) respectively — and significantly, in the same order — designate the performer, maker of a sound recording, and broadcaster as first owner of their respective subject-matter.

The maker of a cinematographic work would be the odd one out in s. 34.1(1)(b), for the provision otherwise designates the presumption only in favour of first owners. Nothing in the Act, other than employment, contradicts s. 13(1)’s grant of first ownership to the work’s author. The Act nowhere suggests that the maker of a film displaces the author as first owner. Nor does the Act bridge the gap between “maker” and “author” the way UK law does by deeming a film’s author to be its maker — or “producer,” as UK law has it—together with the principal director ( (UK), s. 9(2)(ab)). Although Canadian and UK ownership rules may differ, both are internationally compliant: Berne art. 14^bis(2)(a) allows member states to decide ownership rules for films for themselves since the states had widely disparate views on the matter and no agreed position could be struck at Berne.

It is equally noteworthy that the maker of a cinematographic work is omitted from the list of persons whose interests may be recorded on the Copyright Register — namely, “authors, performers, makers of sound recordings, broadcasters, owners of copyright, assignees of copyright, and persons to whom an interest in copyright has been granted by licence” (s. 54(1)(b)). All these categories are persons whom the Act designates as first or later owners of copyright or an interest in copyright. The omission of the maker of a cinematographic work as such — nowhere designated as a category of owner or holder of an interest — is striking were it is indeed presumed to be an owner for civil proceedings. ��

In general, it makes sense when civil proceedings are brought, to start with a presumption that the person the Act designates as the first owner of any copyright is still its owner unless someone proves the contrary. It generally makes no sense to start with a presumption that a person that the Act nowhere designates as such as first or any owner should currently be presumed the owner. The only exception is where material is anonymous or pseudonymous: for reasons of privacy, s. 34.1(2)(b) provides that the publisher whose name appears on a work is presumed to be its owner — even though the publisher is likely not the first owner and, as Berne article 15(3) states, is really only “deemed to represent the author” to vindicate the latter’ s rights.

None of this will come as any surprise to corporate broadcasters and film producers. They have known for decades that they cannot rely on the presumption in s. 34.1(1)(b) favouring a film’s “author” since in Canada, as noted earlier, the term “author” is reserved for flesh-and-blood human beings: Massie (above) at 234. They have also known for decades of the “intolerably heavy” burden and “serious handicap” the author/ownership presumption imposes on them or any other plaintiff who happens not to be the author: , 605. They also have known for decades of the cheap and effective way to overcome this burden and handicap, as endorsed by Circle Film, itself a case on cinematographic works: before filing infringement proceedings, just spend the $50 and the few minutes it takes to apply online to register the film’s copyright with the Canadian Intellectual Property Office, and get a certificate of registration stating one’s copyright ownership. Registration then provides all the contrary proof needed for the registrant to rebut the author/owner presumption (Act, s. 53(2); Circle Film, at 606-7). That is why no practical need has existed to amend the law to include a presumption of ownership in favour of the maker of a cinematographic work. Registrations can go where presumptions fail to tread.

It is therefore hard to understand why s. 34.1(1) has been pressed into doubtful service where clear and simple alternative means of initially establishing copyright subsistence and title for film “makers” so readily exist. The sooner the Federal Court clears the matter up, the better.

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Top Row: Madelaine Lynch, Richard Du, Androu Waheeb Bottom Row: Nikita Munjal, Sarah Raja, Tiffany Wang

IP Osgoode is pleased to announce the new team of student editors for the Intellectual Property Journal (IPJ). Returning this year are Madelaine Lynch and Nikita Munjal. New student editors are Richard Du, Sarah Raja, Androu Waheeb, and Tiffany Wang.

The IPJ is Canada’s leading peer-reviewed journal with a focus on IP law related areas such as patents, trademarks, copyright, designs, trade secrets and competitive torts. Leading the IPJ’s editorial team is Editor-in-Chief, Pina D’Agostino, Associate Professor at Osgoode Hall Law School and IP �������Ǵǻ��’s founder and director; Deputy Editor Dr. Aviv Gaon, Assistant Professor at IDC Herzliya; and Senior Editor Ryan Wong.

The IPJ’s editorial board consists of Prof. David Vaver, Hon. Justice Roger T. Hughes, Daniel Bereskin, Prof. Ikechi Mgbeoji, and Hon. Justice Marshall Rothstein. Prof. Bita Amani and Prof. Saptarishi Bandopadhyay are the book review editors.

The IPJ editorial team wishes to thank Prof. David Vaver, IPJ’s founder, for his mentorship and unrelenting support.�� The IPJ’s continued success is made possible by the contributions from its panel of expert reviewers.��

IPJ accepts article submissions on an ongoing basis. If you’re interested in submitting an article to the IPJ, please email us at ipjsubmissions@gmail.com.

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IP Osgoode is pleased to announce that Ryan Wong is the new Senior Editor for the Intellectual Property Journal (IPJ). Ryan recently graduated from Osgoode Hall Law School and will be starting his articling with Smart & Biggar LLP this summer. Ryan previously acted as a Clinic Coordinator with the IP Innovation Clinic.

The IPJ is Canada’s leading peer-reviewed journal with a focus on IP law related areas such as patents, trademarks, copyright, designs, trade secrets and competitive torts.�� Leading the IPJ’s editorial team is Editor-in-Chief, Pina D’Agostino, an Associate Professor at Osgoode Hall Law School and IP �������Ǵǻ��’s founder and director, and Deputy Editor Dr. Aviv Gaon, Director of Experimental Programs at IDC Herzliya.

The IPJ editorial team wishes to thank Prof. David Vaver, IPJ’s founder, for his mentorship and unrelenting support.�� The IPJ’s continued success is made possible by the contributions from its panel of expert reviewers.��

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About the Journal

Founded in 1984, the Intellectual Property Journal (IPJ) covers matters relating to all aspects of Intellectual Property such as patents, trade-marks, copyright, designs, trade secrets, and related areas such as privacy. The focus of the journal is on Canadian material with a mix of comparative and international law content. The IPJ contains articles, opinions, book reviews, case commentaries and writings on legal developments around the world. The IPJ accepts submissions from any interested parties, including students, provided that they meet a high standard of scholarly rigour.

The Journal, edited by Editor-in-Chief Professor Giuseppina D’Agostino, Editorial Board Member Professor David Vaver, Deputy Editor Dr. Aviv Gaon, and Senior Editor Ryan Wong, is published by Carswell () three times per year.

Submission Guidelines

Submissions should be double spaced, in Microsoft Word format and sent via email to ipjsubmissions@gmail.com. Submissions are reviewed on a continuous basis. Following consideration for eligibility, the editorial team will be in contact with all those who submit content. Please note that all content will be subject to a double blind review process before publication.

A) Subject Matter

Submissions to the intellectual property journal should focus on patents, trade-maks, copyright, designs, trade secrets, competitive torts, or related subjects. The following are welcomed by the editorial team:

• Articles of 8,000 - 10,000 words (including footnotes) focusing on IP law or policy issues.

• Notes and Comments of 2,000 – 4,000 words focusing on legislation, case law and IP practice.
• Book reviews of 2,000 - 4,000 words evaluating scholarly books on IP law and policy.

B) Title Page

All submissions to the intellectual property journal must include a title page that identifies the following information:

1. The title of the submission
2. The name(s) of the author(s)
3. Contact information for the author(s)
4. Mailing address for the author(s)
5. Short biography of the author and/or any comment about the submission (up to 250 words)

C) Abstract

All submissions must include a 100-150 word abstract.

D) Citations

All submissions must include citations in footnote format in accordance with the Canadian Guide to Uniform Legal Citation, 9^th Edition (McGill Guide). Submissions with endnotes are not accepted for review.

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The Journal, edited by Professor Giuseppina D’Agostino, is published by Carswell (three times per year.

Professor D’Agostino invites Osgoode law students to apply for the student editor positions. These editors will be responsible for reviewing and arranging for the peer review of journal articles, providing feedback to those who have submitted papers to the journal and coordinating logistical matters, including communicating with authors regarding deadlines and other journal policies.��

Term: �� Fall Semester (September 2021)

Time Demands: ����Approx. 1-2 hrs per week

Qualifications:

• An interest in learning about current IP law and technology issues
• Ability to write in a concise and clear manner
• Excellent organizational skills

Application Process:

Please provide via email to iposgoode@osgoode.yorku.ca by Friday, May 14, 2021 the following materials:

• One-page cover letter (briefly outlining your interests in IP law)
• Copy of your resume and grades

Please send any questions you may have to: iposgoode@osgoode.yorku.ca

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The globalization of culture and creative collaboration, the effect of virtual worlds in dismantling physical borders, peoples’ constant search to share and consume diverse cultural commodities and information, and the success of copyright harmonization through treaties and conventions, legal transplantation and diffusion of norms and principles between states – all contribute to this unity and the nature of copyright as a global discipline. As such, comparative inquiries into the development of copyright norms in other countries, as opposed to less harmonized legal fields, can immensely benefit the process of international harmonization and local debates on the legitimate boundaries of copyright. This article takes the Israeli copyright system as its organizing principle and provides insights from recent Israeli copyright decisions delivered mainly by the Supreme Court. These decisions will remind foreign readers of many of the landmark decisions that they find in their local jurisdiction. The cases examined demonstrate how the Israeli Supreme Court, like the Canadian Supreme Court that shook the foundations of Canadian copyright law, constantly requires to update existing principles, reject obsolete principles and refine the spectrum of copyright ownership, while remaining attentive to the social needs of authors and users. The cases show that learning from other legal systems has a unique normative value. This value is grounded not only in showing that Israeli copyright law is comprehensible and adequate, but in the mechanisms that the Israeli system has developed to resolve complex legal problems with which other systems deal.

Featured here is the first part of an article by . The full article will appear in an upcoming issue of the Intellectual Property Journal.

Dr. Lior Zemer is a Lecturer in Law at Radzyner School of Law and Visiting Associate Professor at Boston University School of Law. He has previously taught at the faculties of law in Leicester and Birmingham, UK and at Osgoode Hall Law School in Toronto. The opinions expressed in this paper are his own.

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