The nexus between copyright law and the human right of freedom of expression is not hard to see.�� puts it this way,

��“The basic structure of copyright law – the property right accorded to authors in their original works,[footnote omitted] means that they can exclude anyone form using their works…. When a speaker wishes to ‘use’ another author’s expression as part of his own expression he has to obtain the owner’s permission.�� It is this very limitation, the essence of copyright law, that creates the tension.”

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Western Distinctions Between Copyright and Freedom of Expression

From a Western standpoint, the tension is not so pronounced because there is a general conception that copyright doctrine has sufficient internal mechanisms that safeguard freedom of expression without resorting to human rights instruments.��

In Canada, Ysolde Gendreau (warning: PDF link) the few cases in which the freedom of expression guarantee in the Charter of Rights and Freedoms has interacted with copyright law and concluded that “the Charter argument does not lead anywhere in a copyright analysis.” (at p. 34)�� The United States Supreme Court also precluded the infringement of copyright onto free speech by opining that “it should not be forgotten that the framers intended copyright itself to be the engine of free expression.” (Harper & Row Publishers v. Nation Enterprises, )�� In a recent case in the United Kingdom (Ashdown v. Telegraph Group Ltd, ), the Court of Appeal arrived at a similar general rule – leaving the door open only for “rare circumstances.”

Generally, the mechanisms relied on within copyright law in these jurisdictions are twofold: (1) the distinction between idea and expression, and (2) the fair dealing/ fair use exception.�� The first argument suggests that the unprotected idea is free to be disseminated without the hindrance of copyright.�� The second argument suggests that the fair use/ fair dealing provisions sufficiently capture any expression that would fall under a person’s right to freedom of expression.��

These rationales make sense for Anglo-American jurisdictions, but they don’t apply in China given the history of Chinese copyright law.��

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Historical Development of Copyright Law in China

that historically, “the concept of having a property in one’s work had no counterpart in China.” (at p.12).�� In modern history though, attempts to bring in a property-based copyright system started as early as 1910.�� However, regime instability and political turmoil prevented deployment of the law until the 1980s. Even during the Mao era at the beginning of the Communist regime, ideological differences prevented a fulsome discussion of the policy rationales for copyright law.�� By the 1990s, China adopted the rationale that there is a close interrelationship between innovation and IP.�� This rationale served as the driving force for the transplanting of international IP standards into China’s borders.������

The evolutionary history of British copyright law differed.�� Emanating from social dialogue amongst conflicting stakeholders in the publishing industry in early 1710, the laws grew organically out of a societal value and appreciation for the spreading of ideas.�� ��Whereas Western nations now have almost 300 years of copyright law acting as a backdrop to their cultural practices, Chinese citizens have at most 30 years.��

Thus, Chinese copyright law did not emanate from a coherent cultural and philosophical understanding based in Chinese society.�� This means that the laws do not share the value system that informs Western copyright law.��

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Western Distinctions Between Copyright and Freedom of Expression Don’t Work for China

The idea/expression dichotomy is not cogent in China’s context because the very distinction presupposes a value system that is not present in China.�� The prevention of copyright attaching to ideas is based on a recognition that there is a societal benefit to the free dissemination of ideas.�� In China, it is the very idea that is embedded within the expression that the Chinese government wants prohibited.�� As such, this distinction could be misapplied repeatedly to prevent the dissemination of copyright-protected ‘expressions’, so as to have the real net effect of limiting the expression of the idea.�� In Western countries, the underlying value for freedom of expression would safeguard such an event from happening, but in China, no underlying value acts to prevent such an occurrence.��

The fair use exception is also not very cogent for similar reasons.�� While Western notions of freedom of expression recognize that a core purpose of the right is to facilitate in democratic participation, these values again don’t exist in China.�� As such, different values inform the use of China’s fair use/dealing expressions.�� Although Art. 22 of contain explicit exceptions for private study, comment, or use in news media, it seems unlikely that should copyright be asserted as a means to stop the dissemination of a political work, that these exceptions will be interpreted broadly enough to take into account the impact it has on political speech.��

Absent the values that uphold these exceptions, these exceptions are impotent to safeguard the freedom of expression concerns.�� As such, copyright law can seemingly be easily usurped to achieve an objective that limits the political and civil rights of Chinese citizens.

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Copyright Law Cannot Aid Political Expression in China Like It Does in Western Countries

The retort to the position above would be that copyright law provides the proper incentives and economic rewards to sustain a person who is expressing their views.�� Absent such incentives, , only those who can afford to spend the extra time doing it would be able to express themselves.��

Again, this presumes a society that values freedom of expression.�� In China, the central government wants to stifle any dissemination of works deemed dangerous to the regime.�� As such, there is no market for such political works, and copyright can only act as an additional tool for the central government to employ in restricting dissemination.

��

Conclusion

Given the way in which copyright law was transplanted into China without a fulsome cultural understanding of the values that informed the system, it seems the power of copyright can be easily usurped for means that infringe on political and civil rights.�� And yet, the United States, through the WTO process, is seeking stronger copyright protection in China.��

This seeming inconsistency may not currently be a large issue because of the more explicit means of control available to the Chinese government.�� However, as political pressure mounts on the human rights front, it is possible that the Chinese government may have to be more covert in their attempts to suppress political speech.�� If that happens, copyright law may begin to look appealing to the Chinese government as a means of control.��

The post Potential of US Copyright Agenda to Endanger Freedom of Expression in China appeared first on IPOsgoode.

While such lock-ins act as an incentive for the company that can procure them, it has the potential to harm the competitiveness of the marketplace by creating barriers to entry for newcomers and by causing complacency in the incumbent market leader. ��This leads to a fear that there may be a lack of innovation in that space. ��

As such, there has been a movement to establish open standards that level the playing field for the marketplace.�� These movements have played out in a variety of different ways, but perhaps the most pervasive illustration of standards today is those set by the World Wide Web Consortium () which aims to “allow��any hardware and software used to access the Web to work together.”�� To the extent that standards is said to enable innovation, the existence of open and clear web standards is an exemplary example because it facilitated a vibrant marketplace for online innovation. ��

While it is generally recognized that open standards is increasingly necessary in our age of global cross-platform communications, how exactly this policy goal intersects with holders of patent rights is unclear.�� For example, what if the implementation of a standard is covered by a patent? Will this not create the possibility of exorbitant royalties and undermine the purpose of creating standards in the first place? These were the issues that formed the subject of a WIPO panel .��

The panelists had several suggestions to mitigate the potential impact of patents on standards: the involvement of government through implementing a requirement for disclosing relevant IP information on standards; modifying TRIPs so as to introduce an interoperability provision for standards, just as there is for public health; and using competition authorities to monitor the development of standards to ensure that anti-competitive practices are not employed.��

It is the last of these which highlight a more general tension between intellectual property rights (IPRs) and competition law. ��Whereas IPRs provide a paper monopoly by means of a private right to exclude all others from utilizing an invention or work, such a concept is antithetical to competition law because it restricts otherwise capable parties from entering a market.�� Ultimately, the setting and implementation of standards is as much a competition concern as it is an innovation concern because the two are inextricably linked in the area of hi-tech.�� Nevertheless, one must not discount the effect of IPRs in providing an economic incentive for private parties to develop robust and useful standards.����

As the dialogue around this issue continues to grow, it will be interesting to see how the policy initiative of achieving optimal innovation in society will be achieved while taking into account the tension in the two legal regimes.��

��

The post Discourse About Patents and Standards Highlight Tension Between Intellectual Property Rights and Competition Law appeared first on IPOsgoode.

Underlying the different stories is a concern for consumer protection. As the government of Saskatchewan put it in their discussion paper, there is a concern that there should be “a way to ensure that members of the public have ‘fair’ access to tickets for desirable sporting and entertainment events.” While the provinces of Ontario, Manitoba, and Alberta have specific anti-scalping legislation (Ticket Speculation Act, , The Amusements Act, , and The Amusements Act, respectively) to prevent the reselling of tickets above face value, the VANOC suit filed in British Columbia Supreme Court had no similar legislation to stand on. Instead, VANOC pursues its claims under generic consumer protection legislation, contract law, and intellectual property laws. It is the last of these that raises concern.

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Trade-mark Overreach

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While we have not been able to obtain the statement of claim filed by VANOC, it has been that VANOC is making an argument that ticket broker is infringing on VANOC’s official marks. This seems problematic in two ways: (1) it usurps official mark protection for a purpose it was not intended for, and (2) related to (1), it creates an inequitable application of the law by giving VANOC a remedy for ticket-scalping that other event organizers in B.C. don’t have.

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Purpose of Official Mark Protection

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S. 9(1)(n)(iii) of the Trade-Marks Act, separates official marks used by ‘public authorities’ from traditional trade-marks and gives them broader protection. These marks benefit from a simple adoption and publication process (without any opposition hearings), and are not limited in the scope of their protection only to certain wares and services. The rationale behind these marks is that these are not just marks used to identify goods and services, but rather have a greater significance because they emanate from a ‘public authority’ whose identity must be especially safeguarded.

��

To the extent that the Vancouver 2010 Olympics played an especially important public role, parliament went even further and passed the Olympic and Paralympic Marks Act, [OPMA] – an act which explicitly laid out the marks for which the Olympic committee wanted protection. While we don’t know if VANOC made an argument under the OPMA, the wording in s. 3 of the OPMA tracks the words in s. 9 of the Trade-marks Act fairly closely, so it can be presumed that the avenue of argument is open to them.

��

But what is the purpose of these protections? For official marks, it is to ensure the protection of the identity of the public authority. For the OPMA, it is to ensure that the Olympic committee can protect its sponsors from other businesses usurping their sponsorship status. Here, however, the ticket broker is trying to sell legitimate tickets obtained from VANOC. This is not a problem with the ticket broker holding themselves out to be VANOC, nor is it a problem of businesses trying to employ the Olympic marks to obtain an unauthorized benefit. Purchasers of the tickets know that these are second-hand tickets which are likely resold without the knowledge of VANOC. As such, although reselling tickets may not be socially desirable, using official mark legislation to stop such practices contorts the law to achieve an end it was not designed for.

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Inequitable Application of Law

��

Corollary to the first problem is the second problem of the inequity that flows from only allowing Olympic organizers to have a remedy for ticket scalping but not others in similar situations. That is, because official mark protection is so broad, VANOC will likely be able to succeed under such an argument whereas an event organizer with just a regular trade-mark will not. That is because regular trade-marks are limited to preventing confusion in the marketplace. In the resale of a legitimate ticket, the event organizer’s trade-marks are used merely to describe what is being sold. There is no deception, and trade-mark law will likely not help them.

��

For example, if the National Hockey League’s Vancouver Canucks franchise makes it to the Stanley Cup Final this year, game tickets will undoubtedly be in high demand – just as Olympic tickets are. The question then becomes: how fair is it that VANOC has a broader official marks argument available to them in stopping ticket scalping, but the Vancouver Canucks cannot make the same argument on what are almost identical situations?

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Consumer Protection and Ticket Speculation

��

I hope not to leave the impression that I don’t support VANOC’s efforts here. Their public-interest and consumer protection rationale for pursuing this lawsuit seems well-based. This is especially so for an event like the Olympic Games where so much national pride and patriotism is at stake. The public deserves to have a fair shake at attending these events and VANOC is trying to achieve that.

��

My criticisms are leveled at the hijacking of the official mark protection for use in a way that renders it unfair. It warps the purpose for which official marks protection exist, and makes the OPMA seem even more like an unfair piece of special-interest legislation.

��

This lawsuit is ultimately about two things: (1) consumer protection from fraudulent ticket vendors and (2) a broader societal disdain for ticket scalpers. Instead of contorting Official marks legislation to achieve its aims, VANOC should address the ticket scalping problem by lobbying the BC legislature for laws prohibiting scalping. This is the more appropriate avenue because it leaves the integrity of official marks legislation intact, and provides a more equitable application of the law for all British Columbian event organizers (not just VANOC).

��

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The post VANOC Ticket Broker Suit Raises Concerns about Reach of Official Marks appeared first on IPOsgoode.

On March 13, IP Osgoode a panel discussion entitled Business Method Patents: Bilski and Beyond. While the tagline of the event indicated it was to ‘Explore the effect in Canada of recent US business method patent jurisprudence,’ attendees got treated to a lot more. Speaking from a wide array of perspectives, the panelists provided insightful, yet accessible substance, all the while facilitating an encouraging environment for intellectual cross-pollination.

For the unacquainted, the US Court of Appeals for the Federal Circuit released their decision in In re Bilski, (warning: PDF link)��in October 2008. As pointed out by panelist Bob Nakano, the case was heard en banc by the court, and no less than 39 amicus briefs were filed. Clearly, it was a highly anticipated case with far reaching implications on many stakeholders. In the end, the decision changes the decade-old test in State Street Bank v. Signature Financial Group, for the patent-eligibility of business methods. The test of a ‘useful, concrete, and tangible result’ is out, and the older ‘machine or transformation’ test is back in. Greater details about the case can be found and here.

I summarize the main points of the panelists below:

IP Owner

Appropriately starting the discussion was a representative from the stakeholder group which serves as the driver for patent law – inventors. Krishna Pathiyal, Director of IP at Research in Motion provided two key highlights: (1) a useful analytical tool for evaluating caselaw with regards to business method patents, and (2) a view into how innovative businesses view IP risk assessment.

First, the analytical tool used by Krishna employs a spectrum consisting of purely technological innovations on the one end and purely business innovations on the other. In the space filling the two extremes are hybrid innovations. Krishna observed that where the former State Street test allowed hybrid innovations that came very close to being purely business innovations, the current Bilski formulation reins back that line towards the center of the spectrum.

Second, Krishna provided a perspective of the IP risk management issues emanating from Bilski. He noted that the recalibrated test will create investment risks in the form of monies already spent on prepared or outstanding applications because the ultimate procurement of the patent may be at risk. Also, infringement risk may be created because existing patents will now be subject to a more stringent subject matter test.

Practitioners

Two partners from McCarthy Tetrault shared their views. provided the perspective of a patent agent, while gave the view of a litigator.

After taking the audience through a more detailed look at the scope of the new test in Bilski, Bob pointed to the US Patent Office’s internal memo (date Jan. 7, 09) to patent examiners on how to apply Bilski. This memo (found ) contained 3 points: (1) a reiteration of the basic machine or transformation test, (2) a statement that the machine or transformation must impose meaningful limits on the claim’s scope, and (3) an indication that insignificant extra-solution activity which recites a specific machine or a particular transformation of a specific article will be insufficient to make unpatentable subject matter patentable.

While the first 2 points took wording specifically from Bilski, there was a question raised as to what extent the USPTO had authority to implement the third point. This is especially so for the machine prong of the test where the court decided to “leave to future cases the elaboration of the precise contours of machine implementation.” (p.24)

Andrew Reddon provided some strategies on how to litigate business method patents. First, he reminded the audience that when litigating business method patents, subject matter arguments are not the only game in town. Anticipation, obviousness, and breadth are tools in the patent law toolbox that are also available, and can result in fruitful results considering that many business methods patent applications are just attempts to claim methods which have long been used in traditional commerce.

Second, he provided an analysis of Bilski, and discussed how it might be utilized in Canadian courts. Noting that the Canadian conception of ‘art’ outlined in (MoPOP) requires both “an act or series of acts performed by some physical agent” (arguably akin to a ‘machine’) and a requirement to “produc[e] in that object some change of either character or condition” (arguably akin to a ‘transformation’), he observed that the Canadian requirement is in fact narrower than the Bilski test which just required a machine or a transformation.

Additionally, he noted that the dividing line for what can and cannot be transformed as espoused in Bilski is not a meaningful distinction. That is, the court’s distinction (at p. 25-26) between acceptable transformation of data based on physical objects versus unacceptable transformation of data based on intangibles such as legal relationships, business risks, or abstractions creates vague results. If Bilski supports your case, Andrew suggests characterizing Bilski as providing a bright line test; conversely, if Bilski harms your case, Andrew suggests arguing that the distinction in what can be ‘transformed’ is not meaningful.

Last, Andrew pointed out how the recent Supreme Court of Canada case in Apotex v. Sanofi, alluded to US and UK jurisprudence in reformulating the Canadian test for obviousness. In seeking to apply Bilski, Andrew suggested citing this case as one where Canadian courts looked to foreign jurisprudence with favor. If seeking to distinguish Bilski, Andrew suggests characterizing Apotex as only looking to foreign jurisprudence when there was a convergence in foreign viewpoints, which is not the case for the patent-eligibility of business methods.

Academic

Professor Mgbeoji provided a more theoretical and historical viewpoint of the impact of US patent jurisprudence on Canadian patent law. Using the metaphor of an uneasy dialog, Mgbeoji illustrated his point by parsing several key US and Canadian patent cases. Of note, he pointed out the similarity in language and temperament between the majority decision in Diamond v. Chakrabarty, (1980), and the minority opinion in Harvard College v. Canada (Commissioner of Patents), .

Decision-Maker

Coming from the Patent Appeal Board, Paul Fitzner put a face to a government institution that could at times seem distant. After providing an overview of the thicket of procedural steps involved in how patent claims come to be litigated in court, he briefly reviewed the leading case law in Canada surrounding this topic. Observing that there has been a lack of consistency in how Canadian courts have supported their conclusions that such litigated claims were unpatentable, Paul left the audience in anticipation of revised versions of Chapters 12 and 13 of MoPOP which are to be published on April 27, 2009. In addition, he indicated that a Commission decision relating to the patentability of business methods will be handed down around the same time.

(Update: March 16, 2009, 2:50pm - The text above has been updated to correct the erroneous indication that the pending Commissioner's decision concerned claims similar to those in Bilski.�� Paul made no reference to the similarities or differences between the claims in the pending decision and the claims in Bilski.)

Reflection

From a student’s perspective, the wide array of theoretical and practical points was enlightening. Specifically, the perspectives offered by Krishna and Paul concerning the business and decision-maker viewpoints respectively were a rare treat that law students seldom see. I’m sure all audience members, no matter their background, learned a lot from this event.

Powerpoint slides for some of the panelist presentations will be made available here on IP Osgoode soon.

The post In re Bilski North of the Border appeared first on IPOsgoode.

Authors Guild Executive Director Paul Aiken the feature is legally suspect: “They don't have the right to read a book out loud, …That's an audio right, which is derivative under copyright law.” In an on gadget blog Engadget, Mr. Aiken provides further details of his concerns:

Well, the legal objections fall in a couple categories. One is the basic copyright objection which I know has been bandied about a lot online, and that objection comes in two parts. There's the unauthorized reproduction of the work which is one claim under copyright law -- for that there has to be fixation of the copy and there's a legal question as to whether or not there's adequate fixation in the Kindle. The second claim is that text-to-speech creates a derivative work, and under most theories of copyright law, there doesn't have to be fixation for there to be a derivative work created.

The general reaction in various blogs has been that both these arguments are tenuous. I will take a look at each of the arguments.

Fixation

As Mr. Aiken states, for federal American copyright protection to attach to a work, the work needs to be “fixed in a tangible medium of expression” (Copyright Act, [Copyright Act]) While fixation in an electronic medium clearly gives rise to copyright protection (as in the case for the text on the Kindle or a discrete audiobook recording), the difficulty here is that there is no separate fixation of the audio apart from the text. This is because the text-to-speech functionality translates the text into audio on the fly.

Thus, it was suggested that the Authors Guild was claiming legal rights over the reading aloud of books generally – a claim which has been met with some strong resistance. The most extreme of responses is that the act of parents reading to their children would be made illegal if such a right is recognized.

Mr. Aiken, however, is quick to point out that this is not what he meant. Further on in the Engadget interview, when posed with the question of “what's the difference between the Kindle and the average person either reading or performing the book?”, he answers:

As we see it, the difference is, the machine playing an audio version that the publisher often does not have the right to sell. They do not have the multimedia or audio right that goes with the electronic book. As a matter of contract, we have a problem and as a matter of copyright, we have a problem.

From the perspective of fixation, he is arguing that because the device enables the text to be both read and heard, it serves as a “hybrid ebook / audiobook”. Seemingly, he takes the position that the fixation of the digital file will be sufficient for both visual and audio rights.

Derivative Work

With regards to the second of Mr. Aiken’s arguments, he is claiming that even if there isn’t sufficient fixation to constitute another copy, then the reading aloud of the text constitutes a derivative work. Under of the Copyright Act, the copyright owner has the right to control any “derivative works”, which defines as “any … form in which a work may be recast, transformed, or adapted”. (For example, the Harry Potter movies would be a derivative work of the Harry Potter novels)

While the threshold of creativity required to “recast, transform, or adapt” a work is low, a mechanical reading will likely not even meet this low bar. This is because such a reading contains very little transformative effort. There are no additions or subtractions from the text, and no editorial liberties taken. Even within the confines of the text, there no creative effort put into the way the text is read. Unlike a human actor which reads an audiobook, there is no emphasis or inflection in the reading, and no “emotional flavors and subtle real-life cues” (as puts it). As such, it seems difficult to argue that a derivative work has been produced through the text-to-speech function.

Amazon Backs Down

Despite the seeming weakness of the Authors Guild’s legal position, Amazon . While still employing strong verbiage to emphasize the legality of the text-to-speech functionality, they nevertheless decided to give authors the right to switch on or off the text-to-speech functionality on any works going out to a Kindle.

Implications

In the short term, this will mean that buyers of the Kindle 2 will not have the text-to-speech functionality that was originally promised. Considering Amazon's willingness to drop this feature as an automatic inclusion, it seems likely that the functionality was not too integral to the product.

Nevertheless, text-to-speech software (video link, beginning at 2:52), and the Authors Guild raising the issue now seems to indicate that the Kindle 2 achieves a type of technological convergence unseen before. That is, the Kindle 2 is likely the first piece of technology that could potentially threaten the existing audiobook market.

On a greater scale, this series of events reflects the multi-faceted considerations that copyright law is intended to take into account. On the one hand, there is the interest of the authors to not have their legal rights be taken away from them. But at the same time, the technological innovation undertaken by Amazon to ease the delivery and consumption of written materials should also be encouraged. Moreover, the benefit of increased accessibility for consumers is a further factor to be taken into account.

In this case, a judicial determination of the proper weight to be afforded to the different considerations has been avoided. This seems to be the best way to resolve the inevitable legal tensions that will arise as technology continues to progress. Instead of resorting to inflammatory rhetoric about the rights of each side, there is likely a common middle ground that could be found. Indeed, when asked why they would want to fight technology in the Engadget interview, Mr. Aiken responded,

We don't want to fight it, we want it to be licensed. We think the lesson from the music industry is to make stuff available at reasonable price, and that's what we want to do. We want to enable this market, but we don't want Amazon to take control of it by default. We think it's something that is rightfully the rights holders' to license.

Ultimately, the end result is that the parties wishing to have this feature for the text will have the opportunity to purchase it, whereas those that don’t ever want to listen to a text-to-speech rendition of their purchase won’t need pay for it. This is seemingly an amicable solution that takes into account the needs of all those involved without resorting to a lengthy and costly legal battle.

The post Resolution to Kindle 2’s Text-to-Speech Issue Benefits All Involved appeared first on IPOsgoode.

In response to this reaction, Internet Infrastructure blog CircleID has an interesting post that questions the fear about the new TLDs.

at the statistics concerning if/how trade-mark owners currently register their trade-marks across existing multiple TLDs. Confining himself to just the seven most popular TLDs, (.com, .net, .org, .info, .biz, .us, and .mobi), he found that 194,325 second-level names were registered across these 7 TLDs. Of these, he noted that only 3% of these names are registered to the same registrant, and that around 27% of these are USPTO registered word marks.

More interestingly, Stahura also attempted to determine the number of trade-marks not registered across multiple TLDs. Taking Verizon as an example of a company which protects its trade-marks in domain namespace strongly, Stahura constructed lists of strings which are close typos of the name or actually contain the name of the company. He then used this list to see how many of them are registered across multiple TLDs, and also, how many of them are registered just in the .com space. He found that

only three of what may be misspellings of "Verizon" ("veriz0n", "ver1zon" and "verison") which are registered in .com are also registered across five or more of the other six gTLDs. We also found eight of the strings that contain "verizon" (exactly) are registered in .com and are also registered across five or more of the other six gTLDs. The majority of them were solely registered in .com and not in any other TLD that we examined. (emphasis mine – note, he uses gTLD to refer to generic TLDs, the subset of TLDs containing the 7 more popular TLDs mentioned above)

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Using a slightly different methodology, Stahura repeated the exercise for Amazon.com. There, he concluded “[t]he vast majority ([roughly] 80%) of Amazon's names are registered solely in .com.”

Admittedly, his ad hoc approach of taking two example companies is not scientific. However, it serves as a good indicator of the extent companies look to different TLD registrations when protecting their trade-marks.

As a result of his analysis, he determines that “the vast majority of trademark holders are not registering their trademarks in all the current gTLDs, let alone all the TLDs. Therefore, we do not expect them, in general, to register their trademarks in new gTLDs.”

It should be noted that ICANN’s proposal does attempt to address trade-mark owner concerns by incorporating stringent requirements for operators of new TLDs. In addition to high fees and a determination of business viability, any potential administrator of a new TLD needs to also be able to get over any third party objections. The objections may be based on (1) the legal rights of others, (2) confusing similarity to an existing TLD, (3) concerns regarding morality and public order, and (4) substantial opposition from a significant portion of the community targeted by the TLD.

Proponents further that the debate about the potential negative impact on trade-mark owners has blurred the benefit that new TLDs can offer. That is, it is suggested that grouping domain names around interests (e.g, .golf) or regions (e.g., .toronto) would greatly simplify the organization of information on the web.

Such viewpoints support ICANN’s move. However, the other side has not stayed silent. For example, there have been for ICANN to more thoroughly explain the problem they’re trying to solve with the new TLDs.

It will be interesting to see how this whole debate ends up. While trade-mark owners are rightly cautious in approaching any change which may threaten their trade-mark investments, the posts above seem to indicate that the inertia of current TLDs will be quite difficult to displace.�� As such, any potential negative impact on existing trade-mark owners does not seem so great.

However, the internet moves quickly, and it may very well be the case that this is the catalyst that sparks a paradigmatic change away from the .com TLD. If that happens, the fears about increased policing costs may very well come true.

The post New Top Level Domains (TLDs) Create Tension For Trademark Owners appeared first on IPOsgoode.

Canadian Law Perspective

Such practices are legal under Canadian Trade-mark law.�� In Consumers Distributing Co. v. Seiko, , the Supreme Court of Canada held that because the trade-mark owner first placed the goods on the market, no distinction is to be made between such goods and the goods sold by authorized distributors.�� That is, the doctrine of exhaustion of rights applies – the manufacturer’s rights have been exhausted when the goods were first sold, wherever that may be.

However, this has not stopped trade-mark owners from trying to use other legal tools to stop grey-market goods. ��For example, in Euro-Excellence v. Kraft Canada, ,��an authorized distributor of chocolate bars unsuccessfully claimed copyright infringement in the logo on the packaging of the goods to stop the parallel imports. ��Also, trade-mark owners typically use restrictive contracts with their foreign distributors so as to penalize them if ��their goods enter grey-markets.

These examples show how much of a problem this is for trade-mark owners and authorized distributors.����Specifically, it shows the extent to which they are willing to go to stifle a grey-market.����

Why is Parallel-Importing Not Illegal?��

From a policy standpoint, there are competition and consumer-interest reasons to maintain the grey-market. In most instances, the grey-market goods are identical to their authorized counterparts so there is no possibility of confusion in the mind of the consumer as to the actual origins of the goods.�� Thus, the grey-market allows consumers to purchase goods at cheaper prices.����

Counting the Costs

Where problems arise is when counterfeit goods can’t be distinguished from legitimate grey-market goods.�� In a recent in Lawyers Weekly, Teresa Scassa described 3 scenarios when goods are seemingly grey-market, but are in fact counterfeit: (1) when trade-mark owners outsource manufacturing to a factory, and the factory runs an illegal extra shift to create unauthorized goods; (2) when rejected first quality goods are to be destroyed, and such goods end up being sold; and (3) when second quality goods are sold without adhering to the disposal requirements (such as black-lining trade-marks on tags and labels).

The problem is an inability to ascertain, at the time of import, the legitimacy of the way in which the imported goods were acquired.�� To that extent, The Gray Blog in the U.S. that “at least some portion of��...�� seizures are genuine parallel market goods which [U.S. Customs and Border Protection] detains under dubious claims that they may be counterfeit.”

The post The Grey-Market: Are the Benefits Worth the Costs? appeared first on IPOsgoode.

The primary rationale advanced by the students is that textbooks are becoming more and more expensive, and that absent such copying, students would be forced to eat ‘spaghetti for dinner every night’.�� (As a student, I can certainly empathize with such a position.�� However, I think I’d be remiss if I didn’t mention that I’ve also heard on more than one occasion that “college students seem to always find money for beer”.)��

Additionally, it is lamented that publishers take advantage of students by releasing new editions with miniscule changes so that students are forced to buy new texts instead of using older editions available on the used-book market.��

Regardless of the rationales, it seems most are willing to admit that the act of piracy itself is illegal or is somehow wrong.

How then can students legally reduce their textbook costs in the face of an ?�� Posted about a year ago, one blogger 3 websites that help students save money by attempting to change the status quo with respect to how textbooks are currently distributed.�� Briefly, they are as follows:

aims to pull together free educational materials and convince teachers and professors to use them.

provides an Expedia-like comparison shopping experience to help students to find the lowest price for commonly required texts.

��provides a textbook rental service.

Since the Internet is a more effective and inexpensive publishing medium, a further possibility is connecting authors directly with students to cut out the expenses of printing and distribution.

These examples demonstrate the many ways that the Internet can help to legally address the rising costs of textbooks.�� These solutions will likely not completely erase the economic benefit of piracy to the student, but they may help reduce costs to a point where piracy is not resorted to.��

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The court relied upon an earlier precedent that held that “private life” covered the physical and moral integrity of a person, and highlighted the vulnerability of the boy due to his young age as well as��“the potential threat to the applicant's physical and mental welfare brought about by the impugned situation” (para. 41)�� Further, the court reiterated that the right to private life (Art. 8 of the European Convention on Human Rights) places not only a negative obligation on states to abstain from interference, but additionally required a positive obligation to enact criminal-law sanctions to deter “grave acts, where fundamental values and essential aspects of private life are at stake.” (paras. 42-43)

The technology law angle to this case illustrates the difficulty in identifying online child exploitation perpetrators.�� To that extent, the Ontario legislature recently passed , which requires mandatory reporting of child pornography.�� While such a requirement is undoubtedly well-intentioned, there are nevertheless concerns about possible unintended consequences of casting such a wide net.

Over at slaw.ca, there was an interesting concerning the pragmatic difficulties of such obligations: namely, imposing burdensome obligations on system investigators, and difficulties of identifying borderline child porn cases.�� Such concerns result in fears that police will be inundated with false alarms.��

While it seems appropriate to require ISPs to disclose the identity of online child exploiters as the European Court of Human Rights has found, it remains to be seen whether a broad obligation of mandatory reporting on all citizens is the correct approach.�� Although the efforts of politicians to address this growly problem are to be applauded, it seems that obligations should be carefully tailored to stem the intended crime, without creating undue liability for those who cannot actually impact the exploitation of victims.

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The paper, entitled "Perceptions of Intellectual Property: a review", explores the many perceptions of the term ‘intellectual property' in public discourse, and aims to "grasp underlying themes, assumptions and connotations associated with the term ‘IP', so as to identify paths leading to a more comprehensive understanding of IP and the opportunities it provides to market participants, consumers, policy makers and citizens worldwide." (p. 2)

Emanating from a premise that language "has the power to create the reality in which we live," Ghafele's methodology seeks to "'dismantle' many of the inherent assumptions associated with the two letter word ‘IP'."�� Specifically, the report does not "argu[e] in favour of or against a specific view, but simply ... illustrate[s] the collectively-accepted social truth we all live by when speaking of ‘IP'." That is, it attempts "to demonstrate the linguistic space in which policy makers, business and NGOs operate." (p. 26)

Ghafele structures the report into 4 main areas: IP and Globalization, IP and Health, IP and Counterfeiting/Piracy, and Discourse on various forms of IP.�� While noting that each discourse has its own themes and stakeholders, she nevertheless observes that common to all the debates is vocabulary from the domain of war, military, and football.�� To that extent, she observes that "the current discourse on intellectual property shows a remarkable polarization of positions, where NGOs can be found at one extreme and business at the other." (p. 30) While I will leave it to the interested reader to read the report in its entirety, I will nonetheless survey some of examples she provides.

Please note that the footnotes have been omitted for the quotes below.

IP and Globalization

The report observes that there are two main camps driving this discourse:

"The one is interested in advancing the knowledge economy, an approach based on the belief that knowledge is the driving factor behind economic growth. The other resides on a belief that IP is a major means to advance the process of globalization.����While the former is strongly motivated by new economic growth theory, as for example advanced by Stanford professor Paul Romer, the latter is based on typical antiglobalization arguments, such as for example the position that the IP system helps multinational companies to build up monopolies to the detriment of the poor, drives small and medium-sized enterprises (SMEs) and local business in developing countries out of business and increases prices for consumer products, be they pharmaceuticals or software."��(p. 3)

In the context of discussing criticisms of the Uruguay Round of the TRIPs agreement, the report further notes:

"Since IP gained recognition primarily through the international trade/trade��liberalization perspective, rather than through an internal market, innovation, cultural policy or even business perspective, the perceived advantages and disadvantages of IP were primarily assessed through the trade lens. ... Under this paradigm academics have primarily investigated multi-country trade and direct investment surveys or flows, finding either that weaker intellectual property protection policy systems discourage or that stronger intellectual property protection policy systems encourage trade and direct investment.��These findings suggest that developing countries will receive more trade and direct investment after intellectual property reform, and these are important research findings-but they say nothing about the domestic innovation effects of reform. Rather, these studies tend to put developing countries in a receiving position and ignore the pool of talent existing in developing countries." (p. 6)

IP and Health

Ghafele observes a similar polarization in the context of IP in its relation to health, noting that "[t]he debate is polemic, passionate and everything other than calm and balanced".�� On the one hand, there is the argument that pharmaceutical patents stand in the way of public health by causing important medicines to be more expensive than they otherwise would be.�� On the other hand, there is the argument that patents provide the proper incentive for undertaking the expenses involved in developing innovative drugs.��

Despite the polarization, Ghafele points out a minority school of thought that takes "a more pragmatic approach and asks what��type of policy choices may work towards obtaining social inclusion and equitable distribution of research and development findings within the existing intellectual property framework." (p. 17)�� She describes this school of thought as follows:

"The discipline considers itself as "public interest IP management" and seeks to offer policy choices on how to reconcile the apparent contradiction between the exercise of exclusive rights and the universal right to equitable access to health. ... Public interest IP management argues that the IP system cannot be viewed in isolation, but is part of a wider matrix of policy choices regulating property. It is the successful interplay of a variety of various policies, such as antitrust, free speech, privacy, telecommunications law, tax law, international trade law and intellectual property law that makes or breaks the success of public policy aiming at assuring equity and equality." (p. 17)

IP and Counterfeiting/Piracy

Ghafele notes that even though the TRIPs agreement��provided rights holders with "a major��breakthrough [that] enabled the internationalization of the knowledge-based��economy," (p. 18) the actors in this arena are markedly different. ��While��governments, industry/trade associations, and police are active in the discourse, there is an absence of NGOs and anti-globalization voices in this debate. ��Thus, the seeming counterweight acting against the many international initiatives aimed at preventing counterfeiting and piracy is existing consumer opinion. ��

To illustrate this, Ghafele surveys several consumer opinion surveys. ��For example, she mentions a Gallup survey which consisted of��65,000��interviews in 51 countries showing that 25% of those surveyed purchased counterfeit goods. ��Generally, the cited surveys seemed to indicate that there was a general apathy in the mind of the consumer when it came to consuming counterfeit/pirated goods, regardless of whether they are apparel, bags, footwear, music or movies. The exception was a Microsoft counterfeit survey which showed that��52% of UK respondents considered the purchase of��counterfeit goods as theft, and further, that they would stop if they knew other crimes were funded with the proceeds.

Against this backdrop of a seeming consumer disrespect for IP rights and a growing exposure to piracy via the Internet, Ghafele notes that the use of polarizing terminology such as a 'war on piracy' for the 'health' of the economy has emerged. ��However, Ghafele's general theme that rational thought instead of emotional rhetoric should prevail can be found in this section also.

First, she notes that the discourse is often framed in the context of legal rights as opposed to business assets - i.e., that "IP ... operates to��let players 'defend one's rights and protect oneself against infringers'."(p. 20) �� To that extent, Ghafele observes that such discourse "has��not recognised that piracy and counterfeiting may have both positive and negative��effects." (p. 20) ��She elaborates this point by pointing to further studies that indicate that "inimitability of an entrepreneurial firm's IP does not necessarily diminish��performance since piracy can increase the value of this resource by stimulating��networks and provoking signaling and standard-setting effects." (p. 23). ��However, I would note that such studies only concerned software firms, and it seems such arguments may not necessarily be applicable to other goods such as media content or apparel.��

Second, she notes that there has been a large emphasis in quantifying the costs of counterfeiting/piracy. ��For example, Ghafele points to a 2007 OECD presentation that estimates the costs at US$ 176 Billion annually, which constituted about 2.4 percent of world trade in manufacturing. ��

These latter themes seemingly focus the discourse on the real economic effect of counterfeiting and piracy. To that extent, they provide rational fact-based arguments for understanding why such activities should be stopped. ��Though it is not clearly enunciated, it would seem that such arguments are preferred over emotional rhetoric. ��

Discourse on various forms of IP

In this section, the author notes that "[a]mong the various forms of IP, only patents and copyrights and related rights emerge as controversial subjects." (p. 23) Ghafele then continues to explore poignant issues with regards to both patents and copyright.��

With respect to patents, it is observed that even though patents are romanticized as providing protection for the individual inventor, they are in fact often used amongst other business facilities in generating profit. Moreover, patents in large corporations are seldom used to exclude others from the stated invention, but rather are used as bargaining chips in licensing negotiations to ensure freedom to operate.��

With regards to copyright, the author points out uncertainty in the online marketplace and freedom of expression as main concerns in current public discourse.

Conclusion

Overall, this report helps to illustrate the vast number of stakeholders that IP touches - and the difficulty in formulating appropriate policy that properly meets the different needs.�� In light of this difficulty, Ghafele suggests that the current climate of ideological polarization is not helpful in safeguarding the interests of all parties.�� Instead, she suggests that further research should be pursued in a solution-driven perspective "around questions such as managing IP in the public interest or the role of IP in public private partnerships for health or environmental protection." (p. 31)

For further reading, the report is , and another review is available .

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