�ճ�� (the “Gowling WLG IPilogue Prize”) was pioneered in ’s Intellectual Property class in the Fall 2007 term and has been generously sponsored each year since then by , formerly Gowling Lafleur Henderson LLP. As a sector-focused law firm, Gowling WLG provides clients with in-depth expertise in key global sectors and a suite of legal services, including a  and 300-strong .��

All blog entries and comments on the IPilogue submitted by Osgoode students are considered automatically for the prize. In each academic semester, one prize is awarded for the best blog post and one prize for the best comment.��

This award is a chance to recognize Osgoode students’ research and writing in a specialized and technical field and further encourage them to develop their strong interest in Intellectual Property Law. Of course, the subject matter of the IPilogue goes beyond strictly IP. Our stories also delve into related areas including: internet law, privacy rights, broadcasting, social media and free speech.��

We are pleased to announce this year’s winners of the Gowling WLG IPilogue Prizes:��

Fall 2021 Term:��

Best Blog: Kwangil (David) Park: ��

Best Blog Comment: We have a tie.��

Samantha Melhado’s comment on “”��

Lamont Abramczyk’s comment on “”��

Winter 2022 Term:��

Best Blog: Claire Wortsman: ��

Best Blog Comment: We did not award a winner for this category��

Congratulations to our winners and thank you to all who make the IPilogue possible. We are most grateful to Gowling WLG for its generous support.��

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This past fall, I completed an internship at TVO as part of Osgoode Hall Law School’s Intellectual Property Law and Technology Intensive Program (IP Intensive). TVO is one of Ontario’s foremost educational television networks, making it an ideal destination for anyone interested in broadcasting. Operating under the Ontario Educational Communications Authority (OECA), TVO has been delivering thought-provoking documentaries, in-depth current affairs and children’s programming to Canadian households for over fifty years. In addition, the company has also recently begun offering digital education services geared towards elementary and high school students. Through products such as Mathify and the Independent Learning Centre (ILC), children can access remote tutoring and complete courses for credit towards their OSSD. During my ten-week placement, I gained invaluable experience working under the direct supervision of TVO’s in-house counsel, Mark Le Blanc (General Counsel) and Patricia Cavalhier (Legal Counsel). I am truly grateful to have had an opportunity to work with them this semester.

Drafting Agreements

During my first few days at TVO, I was introduced to the company’s acquisition officers. In addition to producing original content, TVO partners with co-producers and licenses the rights to programs created by independent third parties. TVO’s acquisition officers are primarily responsible for brokering these deals. I had several opportunities to work with them throughout the semester, revising agreements and updating their templates’ standard terms and conditions. These tasks enabled me to improve my legal drafting skills while simultaneously gaining insight into the Canadian broadcasting industry. Along the way, I was introduced to standard industry practices, terminology and guidelines.

Privacy and Access to Information Requests

TVO is currently in the process of updating its privacy policies and procedures. The company is in a unique position because it is not subject to either the Personal Information and Electronic Documents Act (“PIPEDA”) or the Privacy Act. Nonetheless, TVO is eager to facilitate access to personal information requests and wants to be prepared in case it becomes captured by new federal privacy laws. I am very interested in privacy rights, so I was ecstatic when my supervisors asked me to review and summarize Bill C-11 for them. Although Bill C-11 recently died on the order of paper, Parliament will likely introduce some variation of the Bill when it updates Canada’s federal privacy law regime. While reviewing Bill C-11, I also had an opportunity to review Canada’s current privacy laws. I have a much better understanding of this area of law now as a result.

CASL

Another interesting area of law that I was previously unfamiliar with but had an opportunity to dive into this semester was Canada’s Anti-Spam Legislation (CASL). A manager from TVO’s marketing department came to my supervisors with a question concerning emails and implied consent and I was asked to review CASL and help respond to the inquiry. The question itself related to a grey area of law, so we had to be very careful when drafting our response. One of in-house counsel’s primary goals is to mitigate risk, so it is important to consider all outcomes when responding to legal questions. In addition to reviewing CASL, I also searched for case law addressing the marketing department’s activities.

Workplace Dynamic

I only had a couple of opportunities to visit TVO’s office in person this semester but was still able to forge close relationships with my coworkers and never felt like an outsider. Despite working remotely, my supervisors made a concerted effort to ensure I was comfortable by scheduling weekly coffee chats and giving me opportunities to speak during meetings. Moreover, they never asked me to complete arbitrary assignments. My supervisors always provided me with background information about the tasks I was completing, which made me feel as though I was making meaningful contributions to their team.

Overall, I had a wonderful experience at TVO and couldn’t be happier with how my placement unfolded. My supervisors exposed me to the broadcasting industry and areas of law I had not yet encountered up until that point during my time in law school. If you are reading this reflection with your sights set on Osgoode Hall Law School’s IP Intensive, I highly recommend applying to TVO.

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It is common practice for jockeys to equip horses with blinders. The effect is to narrow a steed’s field of vision to prevent it from panicking or becoming distracted by peripheral objects. Members of the legal profession tend to adhere to a similar practice. Although creativity is tolerated, our industry highly values precision. Hence, articles on intellectual property sometimes lack character. Lawyers tend to employ legalese and a bland writing style when commenting on legal issues, prioritizing directness and efficiency over the human issues in a case. Perhaps this is what makes “” so refreshing.

Published by the New 91��ɫ Times on October 5^th, 2021, “Who is the Bad Art Friend?” details an ongoing legal dispute between two writers, Dawn Dorland and Sonya Larson. In 2015, Dorland decided to donate one of her kidneys to a stranger. Before the procedure, she created a private Facebook group so she could share her experience with others. The group included close friends and family members, as well as several writers from her local community. Little did Dorland know that one such member would eventually write a story in response to the preceding. Dorland shared many personal feelings with her Facebook group, including a heartfelt . A year after her surgery, she happened upon “”, a short story by Sonya Larson about a narcissistic white woman who donates a kidney to “save” a person of colour.

There is no copyright in facts and historical events; however, writers can claim copyright in their letters if they are sufficiently original. Like Dorland, the protagonist in Larson’s narrative writes a letter to her kidney’s beneficiary. While this alone is not sufficient to give rise to a claim for copyright infringement, Dorland and the protagonist do express similar sentiments. Dorland and her lawyer sent various cease and desist letters to Larson and her publishers, but it wasn’t until Dorland happened upon an audio recording of an earlier iteration of “The Kindest” that she decided to take action. In her original version of “The Kindest”, Larson included a near-verbatim replica of Dorland’s letter:

Dorland’s letter: “Personally, my childhood was marked by trauma and abuse; I didn’t have the opportunity to form secure attachments with my family of origin. A positive outcome of my early life is empathy, that it opened a well of possibility between me and strangers. While perhaps many more people would be motivated to donate an organ to a friend or family member in need, to me, the suffering of strangers is just as real.”

Larson’s audio version of the story: “My own childhood was marked by trauma and abuse; I wasn’t given an opportunity to form secure attachments with my family of origin. But in adulthood that experience provided a strong sense of empathy. While others might desire to give to a family member or friend, to me the suffering of strangers is just as real.”

Following further back-and-forth, Dorland decided to sue Larson for copyright infringement and intentional infliction of emotional distress in the United States District Court for the District of Massachusetts. Dorland had received backlash from several prominent writers and members of the pair’s community, many of whom believed the damage to Larson’s professional reputation was an egregious consequence of the situation.

“Who Is the Bad Art Friend” offers little in terms of legal nuance. , her copyright infringement claim is still pending. If the case proceeds to trial, its outcome will likely rest on whether the Court believes the letter in Larson’s story is transformative or derivative of Dorland’s letter. If transformative, Larson’s appropriation may amount to nothing more than plagiarism, which is not in itself actionable; if derivative, Larson’s actions may constitute copyright infringement unless she can successfully argue fair use. Nonetheless, Robert Kolker’s article is noteworthy because it draws attention to the fact that Dorland and Larson are real people.

“Who Is the Bad Art Friend” contains the expressed thoughts and feelings of its subjects, in contrast to articles in legal journals, which typically omit such information. Because it encompasses aspects of human interest, it enables readers to become personally invested in its outcome. As such, I personally believe more legal commentators should try to incorporate elements of human interest into their articles. The Intellectual Property Journal does not need to emulate the New 91��ɫ Times, but a publication bridging the gap between the two could definitely increase interest in, and accessibility to, our profession.

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In 2019,����started licencing facial recognition software to law enforcement agencies in Canada and the United States. In addition to��, the��. At first, the product seemed promising. Clearview AI’s application helped law enforcement officers track down otherwise unidentifiable criminals. However, Privacy Commissioners for , , and immediately launched a joint investigation into the company when news reports began to circulate raising questions and concerns about Clearview AI’s facial recognition technology.

The problem with Clearview AI’s application is that it requires a large biometric dataset in order to operate. To obtain biometric information, Clearview AI has scraped the Internet and collected over 3.3 billion images of faces and associated data from publicly accessible online sources, including Facebook, YouTube and Instagram. Clearview AI uses facial recognition software to create a biometric array for each of its images. When a user uploads a photograph, Clearview AI assesses its biometric data and retrieves images with corresponding information from its database. Each image in its database contains metadata and a link to its original source, so users can cross-reference and identify people using images found online.

Now, almost a year since news first broke about Clearview AI, Canada’s Privacy Commissioners have finally concluded their investigation into the company. In a����issued on February 2, 2021, the Commissioners collectively condemned Clearview AI for collecting, using and disclosing personal information without the requisite consent. Subject to Canadian privacy laws governing private sector entities, Clearview AI’s activities contravene principle 4.3 of Schedule 1, as well as section 6.1 of , section 7(1) of , sections 6-8 of , and sections 6 and 12-14 of .��

. However, many are now calling on the Trudeau government to ban federal law enforcement and intelligence agencies from using facial recognition for surveillance purposes entirely. Last July, individuals and organizations representing privacy, human rights and civil liberty advocates penned an��, calling on the federal government to “[e]stablish clear and transparent policies and laws regulating the use of facial recognition in Canada, including reforms to the Personal Information Protection and Electronic Documents Act (PIPEDA) and the Privacy Act.”��

Law enforcement agencies can now identify suspects within a matter of seconds. With facial recognition, all it takes is a single photograph to obtain a wealth of personal information about an individual. However, everything comes at a cost, and utilizing facial recognition for law enforcement purposes is no exception. If I have learned anything from Michel Foucault, it is that collective security should not come at the expense of individual autonomy. Do you disagree?

Lamont Abramczyk is a JD Candidate at Osgoode Hall Law School. He is the Deputy Director of the Osgoode Art Law Society and an IP Osgoode Innovation Clinic Fellow.

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Toys “R” Us recently brought an action against Herbs “R” Us alleging trademark infringement, passing off, and depreciation of goodwill. Despite clear similarities between their respective trade names and design marks, the Federal Court concluded that consumers are unlikely to confuse the two companies, thus rejecting Toys “R” Us’ claims for trademark infringement and passing off. Nonetheless, the Court has ruled that is likely to depreciate the goodwill attached to Toys “R” Us’ registered trademarks pursuant to of the .

Section 20: Trademark Infringement

Upon registration of a trademark, its owner receives the exclusive right to use the trademark with respect to the goods and services listed in accordance with its registration, per . Anyone else who sells, distributes, or advertises goods or services in association with a confusing trademark is deemed to have infringed the registered owner’s rights according to of the Act. A trademark is said to be confusing if “ .”

Considering all factors listed under of the Act, the Court concluded in Toys “R” Us that despite similarities between both trademarks, consumers were unlikely to mistake either company for the other because the goods and services associated with their trademarks are entirely distinguishable. It struck Justice McHaffie as “” Thus the Court found no basis for concluding that Herbs “R” Us’ trademark infringed those belonging to Toys “R” Us. ��

Section 7(b): Passing Off

of the Act prohibits individuals and businesses from directing public attention to their goods, services, or business in a manner likely to cause confusion between their goods, services, or business and those of another. This is commonly referred to as “passing off”, which can be thought of as one business pretending to be another in order to increase their sales or trade on the genuine party’s goodwill or reputation. The t that 1) goodwill exists, 2) the public has been deceived due to a misrepresentation, and 3) that actual or potential damage has manifested as a result.

The Court in Toys “R” Us concluded that because the only misrepresentation that Toys “R” Us relied on was the likelihood of confusion previously addressed and denied when assessing their claim for trademark infringement, the second requirement for establishing a claim for passing off could not succeed.

Section 22: Depreciation of Goodwill

of the Act states, “no person shall use a trademark registered by another person in a manner that is likely to have the effect of depreciating the value of the goodwill attaching thereto.” Unlike section 20, this provision is not predicated on a possibility of confusion; depreciation of goodwill may arise even if consumers can distinguish between two trademarks.

To make a claim under section 22, a claimant that 1) their registered trademark was��used��by the defendant in connection with wares or services, 2) their registered trademark is��sufficiently well known to have significant goodwill��attached to it, 3) their mark was used in a manner��likely��to have an effect on that goodwill, and 4) the��likely��effect would be to depreciate the value of said goodwill.

For the purpose of this test, the defendant need only “�ܲ���” the claimant’s trademark in a manner that evokes a mental association for consumers. Notably for �� of the to be properly invoked the defendant as the term��“�ܲ���”��is defined by ss. 2 and 4 of the Act. Therefore, the defendant is said to have “used” the claimant’s trademark even if consumers are able to distinguish between the defendant’s mark and that which it resembles. Thus, a registered trademark owner can claim depreciation of goodwill even if they are unable to establish trademark infringement.

Concluding that the Herbs “R” Us trademark could dilute the distinctiveness of the Toys “R” Us trademark and damage the goodwill attached to it by connoting associations with cannabis and Herb’s “R” Us (an unlicensed dispensary that leverages adult-oriented marketing tactics), the Court sided with Toys “R” Us on this point of contention.

Conclusion

Imitation is frequently heralded as a sincere form of flattery. However, this decision serves as a stern reminder that parodying a competitor’s brand may have consequences. Despite restraining oneself to the extent that you do not infringe your competitor’s trademark, establishing an identity reminiscent of somebody else can consequentially negate the distinctiveness of the latter’s brand. For new businesses entering the market, it is important remain conscientious when developing a branding strategy and not produce imagery that may depreciate the value of a competitor’s trademark.��

Written by Lamont Abramczyk, a second year JD Candidate at Osgoode Hall Law School. Lamont is Deputy Director of the Osgoode Art Law Society and an IP Osgoode Innovation Clinic Fellow.

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In Solid Oak Sketches, the defendants (video game developer Take-Two Interactive Software and their subsidiary 2K Sports) reproduced life-like depictions of NBA players and their tattoos in three installments of their popular video game franchise “NBA 2K”. The plaintiff (Solid Oak Sketches), having obtained the exclusive licencing rights to five of the tattoos that appear on three of NBA 2K’s playable characters, filed a suit for copyright infringement. The defendants motioned for summary judgement, which was granted by the Court on the basis that the defendants’ infringement was de minimus and that it constituted fair use. Furthermore, the Court determined that an implied non-exclusive licence may be found “.” Based on an assessment of the facts, the Court held that even if Solid Oak were able to establish copyright infringement, their claim must fail because the three NBA players in question received implied licences to use their tattoos as elements of their likenesses when they obtained their tattoos: (i) the Players each requested the creation of the Tattoos, (ii) the tattooists created the Tattoos and delivered them to the players by inking the designs onto their skin, and (iii) the tattooists intended the Players to copy and distribute the Tattoos as elements of their likeness, each knowing that the Players were likely to appear in public, on television, in commercials, or in other forms of media.

Although merely persuasive in Canada, this decision follows years of national discussion with respect to the reproduction of tattoos in television, movies, and video games. Many have been quick to point out that the notion that copyright protection extends to tattoo artists and not their human canvases is consistent with the Canadian , however, with most high-profile cases occurring outside of Canadian jurisdiction, the jury is still out when it comes to binding jurisprudence. When it comes to tattoo ownership, questions remain with respect to and , however, and has even been in relation to tattoo authorship by Mark D. Penner and Olivia McKenzie.

Solid Oak is a noteworthy case that may impact the development of Canadian copyright law. It is wise for courts to consider whether an implied licence exists when assessing claims for copyright infringement concerning the reproduction of tattoos, but there is still work to be done when it comes to qualifying what constitutes a likelihood of reproduction. An implied licence can be easily ascertained when the recipient of a tattoo is a celebrity, but the Court’s decision in Solid Oak Sketches does not lend itself to circumstances where the recipient of a tattoo does not expect to reproduce their likeness but subsequently does so. Parity is an essential�� policy element that should not be taken into consideration when developing the common law. Therefore, it may ideally follow that an implied licence to reproduce a tattoo as an element of one’s likeness is presumed for all individuals who decide to “get inked”, not just celebrities.

Written by Lamont Abramczyk, a second year JD Candidate at Osgoode Hall Law School. Lamont is also a Clinic Fellow at IP Osgoode Innovation Clinic.

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Blockchain, a ground-breaking technology synonymous with cryptocurrency platforms such as Bitcoin and Ethereum, is a decentralized network that supports peer-to-peer (P2P) transactions. By way of a public ledger, individuals can encode and send digital information to each other, protected by cryptography. Each transaction is verified by other network users using a consensus mechanism, which in turn creates a new digital block that is added to a pre-existing chain of blocks representing previous transactions. The result is a permanent, transparent record that can be accessed by users to verify transactions.

Roanie Levy, President and CEO of , , the record of ownership and exhibition history of a work. Through , Access Copyright’s innovation lab, artists will be able to that will track the work’s history as it changes hands. For artists, this means that any subsequent copies of their work can be traced back to its original source. Each artwork registered to the blockchain platform corresponds with a unique digital fingerprint, . Parties can consult Access Copyright’s to determine the rightsholder if copyright to a registered work is disputed.

An innovative feature of Prescient’s blockchain is its capacity to support , whereby visual artists receive payment when their work resells on the secondary market. Smart contracts (self-executing contracts supported by computer protocol) corresponding with artwork registered to the blockchain can automatically divert a percentage of the sale price to an artist each time their work transfers ownership.

Unfortunately, artist resale rights have yet to be legislated in Canada. Although musicians receive royalties each time one of their songs is played on the radio or streamed online, Canadian artists . The nature of the art market is such that works tend to appreciate over time. It is not uncommon for collectors to turn large profits when they resell work that they purchased for a fraction of the cost decades prior because the reputation of the work's producer has developed over time. With the establishment of a blockchain solution, Canadian artists may soon find themselves sharing in the proceeds of their labour.

Public consensus is a key requirement for a technology of this nature to gain traction, and there are still many questions that remain unanswered with regards to the sustainability of the proposed blockchain platform. Only time will tell what the future holds for Canadian artists, but with the CARFAC set to begin administering services for this new platform in 2020, the future appears to be bright for copyright protection for creators and artists in Canada.

Written by Lamont Abramczyk, a first-year student at Osgoode Hall Law School.

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