Top 10 Most Read Blogs of 2020

COPYRIGHT LAW

CUSMA Implementation

On July 1, 2020, the (CUSMA) officially came into force, replacing the North American Free Trade Agreement (NAFTA). Signed in 2018, the desired effect of CUSMA is to preserve existing trade relations between the three North American countries, and to introduce modernized provisions that address 21st-century trade issues. In particular, the builds upon the legal framework of standards in North America for the protection and enforcement of IP rights.Ìę

Regarding copyright and related rights, Canada is increasing the duration of its term for general copyright protection from 50 to 70 years following the life of the author. Canada will have a two-and-a-half-year transition period to realize this new measure. Additionally, the term of protection for performances and sound recordings will also increase from 70 to 75 years plus life. CUSMA will also increase protection for Rights Management Information (RMI), also known as digital watermarks. While Canada already imposes criminal remedies for altering or removing Technological Protection Measures (TPMs, or digital locks), the Agreement creates new criminal remedies for circumventing RMI. Organizations will have to be mindful when implementing these new provisions to ensure that their practices align with CUSMA’s new obligations.

Canadian Copyright Case Law

91ŃÇÉ« v The Canadian Copyright Licensing Agency, 2020 FCA 77

On April 22, 2020, the regarding a dispute between 91ŃÇÉ« (“91ŃÇɫ”) and The Canadian Copyright Licensing Agency (“Access Copyright”), holding that the tariffs set against 91ŃÇÉ« by the Copyright Board are not mandatory, but dismissed 91ŃÇɫ’s counterclaim regarding the fair dealing guidelines. Access Copyright had sued 91ŃÇÉ« for non-payment of tariffs, arguing that they are mandatory and enforceable against anyone who infringes upon a copyright owner’s exclusive rights. Following this decision, both parties filed for leave to appeal the FCA decision to the Supreme Court of Canada.

Tariffs
The FCA held that the tariffs set by the Copyright Board are not mandatory. Because 91ŃÇÉ« opted out of the tariffs in 2010, they are not enforceable against 91ŃÇÉ«. On this issue, the FCA stated, “Acts of infringement do not turn infringers into licensees so as to make them liable for the payment of royalties. Infringers are subject to an action for infringement and liability for damages but only at the instance of the copyright owner, its assignee or exclusive licensee.”

Fair Dealing
91ŃÇÉ« argued that it was not accountable for any tariffs associated with the reproduction of materials because they met their “” and therefore constituted fair dealing pursuant to section 29 of . On this issue, the FCA found that the Federal Court made no palpable error in its analysis, concluding that even though copying followed the guidelines, this did not necessarily make it a fair dealing.

Continuing into 2021
On October 15, 2020, the Supreme Court of Canada granted leave to appeal. This eagerly anticipated decision will affect many of Canada’s educational institutions who opted out of paying tariffs and have also followed the Fair Dealing Guidelines discussed in this decision. Further, a Supreme Court decision in 91ŃÇɫ’s favour will surely cause businesses who rely on similar tariffs to rethink their business model.

Wiseau Studio, LLC et al. v. Harper et al., 2020 ONSC 2504

On April 23, 2020, Justice Paul Schabas’ released his decision in the case of . Filmmaker Tommy Wiseau brought a claim against the defendants, alleging that their documentary, Room Full of Spoons, about Wiseau’s film, The Room, breached his copyright. In his reasons, Justice Schabas provides artists in Canada with an authoritative statement defining documentaries an allowable purpose under the Copyright Act’s fair dealing provisions, “to the extent that a documentary uses copyrighted material for the purposes of criticism, review or news reporting.”

The decision affirms fair dealing as a user’s right, as opposed to a defense to the copyright infringement alleged by the plaintiff, solidifying the balancing of rights and freedoms as a core purpose of the Canadian Copyright Act. In addressing the Copyright Act’s fair dealing provisions, the Court offers useful guidance to documentary filmmakers wishing to stay on-side with section 29 through an analysis of the factors outlined in . A more in-depth discussion can be found . As well, Justice Schabas’ reasons address the Copyright Act’s moral rights provisions, fundamentally finding that criticism or negative tones alone will not trigger a breach of an author’s right to the integrity of a work.

Entertainment Software Association v. Society of Composers, Authors and Music Publishers of Canada 2020 FCA 100 & CMRRA-SODRAC Inc. v. Apple Canada Inc., 2020 FCA 101

On June 5, 2020, the Federal Court of Appeal released two decisions (2020 FCA 100 and 2020 FCA 101) which ruled on the applicability of the “making available right” (“MAR”) under s. s.2.4(1.1) of the Copyright Act. The FCA found that songwriters are not entitled to royalties when music is first posted online, but only after it has been downloaded. This decision overturns a 2017 ruling from the Copyright Board, which found that composers and songwriters are entitled to two royalties: first when it is made available under a streaming platform such as Apple Music or Spotify, and second when the song is downloaded or streamed.

By way of background, The Society of Composers, Authors and Music Publishers of Canada (“SOCAN”) administers the right to “communicate” musical works on behalf of copyright owners. It filed with the Copyright Board proposed tariffs for certain years for the communication to the public by telecommunication of works in its repertoire through online music services including Apple Music and Spotify. These tariffs are available when a musical work is “communicated.”

After SOCAN had filed its proposed tariffs, the Copyright Act was amended to include the MAR Provision, which reads as follows:

For the purposes of this Act, communication of a work or other subject-matter to the public by telecommunication includes making it available to the public by telecommunication in a way that allows a member of the public to have access to it from a place and at a time individually chosen by that member of the public.

This raised the question of whether the mere making available of a work on a server for the purpose of later streaming or download by the public was a “communication” for which a tariff was payable. In 2017, the Copyright Board concluded on the basis of expert witnesses that the double royalty scheme is available.

Stratas J, writing for the FCA, overturned this conclusion and stated that the Copyright Board "skewed its analysis in favour of one particular result" and relied on "leaps of reasoning" that are incompatible with the precedent set out in the Supreme Court of Canada’s (SCC) 2012 Entertainment Software Association v. Society of Composers, Authors and Music Publishers of Canada decision. In that decision, the SCC concluded that transmission over the Internet of a musical work that results in a download of that work is not a communication.

PATENT LAWÌę

The Impact of COVID-19 Legislation on the Patent Act and Patentee Rights

(“An Act respecting certain measures in response to COVID-19”) received Royal Assent on March 25, 2020.Ìę Included in this bill was the addition of section 19.4 to the which significantly changed the rights of patent owners this year. For instance, while section 19.4 allowed the to authorize the government’s use of previously patented inventions to respond to a public health emergency, the Commissioner’s new powers permitted authorization to be granted to other entities as well. In addition, there was no requirement for applicants (be they the government or otherwise) to inform the patentee in advance of applying for authorization to use its patent. This meant that patentees received no notice if an applicant applied to use its intellectual property. Instead, patentees only received notice if the Commissioner granted authorization to the applicant following their submission. Moreover, section 19.4 precluded patentees to an express right of appeal of the Commissioner’s authorization. Instead, patentees were left to rely on section 19.4(8) of the Act and had to apply to the Federal Court to prevent the government (or any applicant) from “making, constructing, using or selling the patented invention in a manner that [was] inconsistent with the authorization.”

While patentees seemingly received little benefit from the Patent Act's amendments mentioned above, the legislative changes offered some positive developments for patent owners. For example, pursuant to s.19.4(5), holders of the patent are compensated for government use, “taking into account the economic value of ‘the authorization and the extent to which they make, construct, use and sell the patented invention.’” Additionally, as of September 30, 2020, the Commissioner can no longer award the government with any authorizations, which effectively serves as an imposed limit on the Commissioner’s powers. While COVID-19 may arguably be captured by other provisions of the Patent Act (cf. s. 19 or s. 21), s. 19.4 clarifies the boundaries of government uses of patents for public health emergencies.Ìę

CIPO Issues New Guidance Document After Federal Court Rejects Problem-Solution Approach to Claim Construction

Following the 2020 Federal Court decision in , CIPO released a new to clarify patentable subject matter under the Patent Act. The court, and CIPO, endorsed the purposive construction approach to constructing claims set out in 2000 by the SCC in and . The new guidelines cover the framework to be followed by patent examiners while identifying certain elements of patent claims as essential. CIPO’s earlier pointed at undertaking claim analysis, which involved identifying the “proposed problem to the disclosed solution.” The Federal Court in Choueifaty clarified this problem-solution test as incorrect for claim construction.

The Federal Court held that a correct approach looks at the entirety of the specification and presumes an element as essential unless demonstrated to the contrary. Purposive construction attempts to give effect to the intentions of the applicant in determining the scope of the claimed monopoly.

This is particularly important for computer-implemented inventions. CIPO, in the , clarified that an algorithm that improves the functioning of the computer would constitute a single invention and is patentable subject-matter. However, the mere use of a computer to execute an algorithm remains nonpatentable subject-matter under subsection 27(8) of the . This update has brought much needed clarity to the subject matter eligibility issues in computer-related patents.

TRADEMARK LAW

Claims to Official Marks not a Complete Defence to an Infringement ClaimÌę

In February 2020, the Federal Court of Appeal upheld the Federal Court’s decision in , finding that public authorities cannot rely on relating to official marks as a complete defence against an infringement claim. At its most basic level, official marks allow public authorities to , even those that may not otherwise be registered as regular trademarks. Quality Program Services Inc. (QPS) brought a Federal Court claim against the Ministry of Energy (MOE) for infringing their “EMPOWER ME” trademark related to energy awareness, conservation, and efficiency services. The MOE had launched a website with the mark “emPOWERme” to educate Ontario residents about the province’s electricity system. In response to QPS’s claim, the MOE sought protection and public recognition of its mark as an official mark pursuant to which states that “no person shall adopt in connection with a business, as a trademark or otherwise, any mark consisting of, or so nearly resembling as to be likely to be mistaken for
 any badge, crest, emblem or mark
adopted and used by any public authority, in Canada as an official mark for goods or services.”

However, the Federal Court was not persuaded that s. 9 provided the MOE complete immunity from an infringement claim. Instead, it was recognized that the infringement rights of a trademark holder, such as QPS under , could not be ignored simply because a public authority has been given public notice of its adoption and use of an official mark, especially when that mark follows a registered trademark which could cause confusion between the two marks, as was the case here. The Federal Court of Appeal further that “a public authority that chooses to use a mark that is confusing to a registered trademark does so at its peril.” As a result of this case, we get more clarity and limitations to the confusing and all-encompassing world of official marks. While it is clear that official marks following an existing trademark do not automatically strike down an infringement claim, the official mark and the preceding trademark must be similar in some way to set off a trademark confusion analysis.

Lack of Use is Insufficient for Opposing a Trademark Application

In , the Federal Court affirmed the Registrar’s decision to reject Pentastar Transport Ltd’s opposition to Fiat Chrysler Automobiles (FCA) US’s trademark application for Pentastar. Pentastar Transport Ltd owns a registered mark Pentastar for its oil and gas services, whereas FCA US applied to register Pentastar for its vehicle engines. Pentastar’s ground of opposition is that FCA US did not possess a genuine intention to use Pentastar for its engines, which contravened s. 30(e) of the old Trade-Marks Act. As summarizedÌę, “opposition proceedings involve a two stage inquiry. First, the opponent bears an evidential burden to establish that the facts alleged to support the issue exist. If established, then the applicant bears a legal burden to show that its application does not contravene the provisions of the Act as alleged.” The Court upheld the Registrar’s factual finding that Pentastar did not adduce sufficient evidence as the factual ground of its opposition. The Court also agreed with the Registrar that “use” and “intended to use” were not synonymous. In this case, this ruling entails that even though FCA US had not started using Pentastar as a trademark on its engines, it did not follow that FCA US had no intention to use it in the future. In fact, there was circumstantial evidence (as summarizedÌę) indicating that FCA US indeed harbored the intention to use Pentastar as a mark for its engines.

United States Supreme Court Developments

In April 2020, the United States Supreme Court decided the case . The Court determined that even an innocent trademark infringer could lose its profits and that wilful infringement is not a pre-condition to a profits award. The Court came to this determination by interpreting which does not mention the condition of wilful infringement. Fossil was liable for $6.7 million in profits to Romag, for using counterfeit Romag fasteners in its manufacturing of leather goods.

In June 2020, the Court in held that a term styled “generic.com” is a generic name for a class of goods or services only if the term has that meaning to consumers. Booking.com sought to register a mark with the USPTO but was denied because “Booking.com” was not a generic name to consumers. Therefore, the term was not held to be generic. The USPTO analyzed the terms “Booking” and “.com” separately. This decision suggests that domain names may need to be marketed to consumers as such to be trademarked.

Trademark Law and Sports in 2020

With all its troubles, 2020 has also been an eventful year for trademark lawyers in sports. In February, a Maryland-based nonprofit Game PlanÌęÌęagainst Lebron James and his commercial associates, including Nike, ESPN, and Take-Two Interactive. Game Plan claims that Lebron and his associates had encroached upon its trademark rights by unauthorized use of the registered slogan “I am more than an athlete” to make profits. In April 2020, Michael JordanÌęÌęin China that had dragged on for eight years. China’s highest court ruled in favor of Jordan against a Chinese company which had been marketing its sports products under the brand name Qiaodan - a Chinese transliteration of Jordan - since the 1980s.

In September, soccer superstar Leo Messi’s legal teamÌęÌęEurope’s highest court that Messi should be granted the exclusive right to the brand name Messi. Other similar names, such as “Massi,” should be disallowed for commercial purposes to avoid confusing the consumers. Lastly, although the Washington Football Team (formerly, Washington Redskins) changed its name in 2020, it now runs intoÌę. As it turns out, many alternative team names have already been registered by a trademark squatter Martin McCaulay. Washington fans may need to wish for the new year that their team will receive a new name that neither infracts trademark law nor carries racist connotations.

Fashion Trends Followed by Brand Owners throughout the PandemicÌę

As it is said, every crisis brings new opportunities. While some members of the general public may have doctor-recommended masks in the early months of the pandemic, they have become a trend for upcoming years. As a result of this trend, big luxury brands tapped into this unchartered territory just after theÌęÌę in July. Luxury fashion companies are now monetizing their brand value through thisÌęÌęi.e., face masks and shields, which have become the new reality and necessity of everyday life. Fashion brands likeÌęÌęhave already filed applications for their trademarks in classes 9 and 10 with the USPTO and other countries for “Protective” and “Respiratory Masks.” In September,ÌęÌęfor its uniquely styledÌęToile Monogram print for itsÌęFace Shield, filed forÌę“protective face shields; protective masks; protective chin shields; [and] protective gloves” (class 9), and “face masks for medical use; Surgical masks; protective face shields for medical use; protective chin shields for medical use; [and] gloves for medical use” (class 10).ÌęÌę

On the other hand, , Nike, andÌęÌęmasks also lead the charts of most searched and purchased masks.ÌęSmall and high street brands are attempting to claim proprietary rights in these trademark classes because of the long-term monetary potential. The new fashion ornament brings in value, and the brand owners wish to benefit from damages in infringement and counterfeits cases. Counterfeits are also escalating on e-commerce portals, such asÌę. A Chinese company has filed a trademark infringement suit for its brandÌęÌęin the Illinois state. Furthermore, on December 14, 2020 theÌęÌęannounced an initiative to accept expediated examination requests for trademark applications for COVID-19 related goods and services, which include sanitary masks and other things. In view of this, we can predict anÌęÌęfrom such luxury and burgeoning fashion brands.ÌęÌę

Bricks and Mortar Presence No Longer Necessary to Establish Use of a Trademark

In the past, the Federal Court of Canada has been unclear as to the fate of travel-related services that do not have a physical presence in Canada, but seek to maintain their Canadian trademark registration through regular use. However, following the Federal Court of Appeal’s decision in , that fate has been clarified in favour of travel-related services. Since 2014, Miller Thompson has tried to expunge Hilton’s WALDORF ASTORIA trademark given that it did not offer physical WALDORF ASTORIA hotel-related services in Canada. As such, Miller Thomson commenced proceedings under s.45 of the Trademarks Act, which would require Hilton to show use of its WALDORF ASTORIA trademark during the three years prior to the proceedings, known as the Relevant Period.

But, on September 9, 2020, the Court of Appeal upheld the Federal Court’s decision that Hilton had demonstrated use of their WALDORF ASTORIA trademark during the Relevant Period. Among other evidence presented by Hilton, during the Relevant Period, Canadians could see the WALDORF ASTORIA trademark when visiting their website and could book reservations in several ways, including directly on the site. As well, Canadians generated $50 million in revenue for Hilton as a result of their stays at WALDORF ASTORIA hotels outside of Canada. Thus, the Court of Appeal summed up the as follows: “so long as consumers, purchasers, or members of the public in Canada receive a material benefit from the activity at issue, it is a service.” This means that online reservations and payment services for later stays outside of Canada are included under the meaning of “hotel services.” Furthermore, a brick and mortar hotel is no longer absolutely necessary to establish use. In fact, in the Court of Appeal’s conclusion, it stated that “the requirements for ‘use’ under section 45 of the Act must adapt to accord with 21st century commercial practices.” For other trademark owners facing the same issue as Hilton, the Federal Court of Appeal provided guidance on how to make a , including website metrics showing that Canadians access their services online and subsequently purchase services as a consequence of their mark being displayed.

Trademark Modernization Act of 2020 Passed

On December 21, 2020, Congress passed the . This bill was enacted to amend the 1946 Trademark Act and authorized third parties "." The bill also introduced aÌęÌęthat would allow any party to petition for the expungement of a registered trademark that is not commercially active. The goal of these amendments was to reduce the number of “” that were on the register despite not being in use, allowing a more productive, competitive commercial trademark market. These amendments are also speculated to affect the longevity of trademark registrations as trademarks become increasingly vulnerable to cancellation. The Trademark Modernization Act of 2020 will certainly continue to generate more discussion and result in changing practices in Canada.

Giuseppina (Pina) D’Agostino isÌęthe Founder & Director of IP Osgoode, the IP Intensive Program, and the IP Innovation Clinic, the Editor-in-Chief for the IPilogue and the Intellectual Property Journal, and an Associate Professor at Osgoode Hall Law School.

With contributions from IPilogue Editors:

Copyright:ÌęMeghan Carlin, Emily Xiang, Joaquin Arias, Sarah Raja,ÌęSaumia Ganeshamoorthy

Patents:ÌęDan Choi, Gurbir Sidhu,ÌęKhristoff Browning, Jin Xu,ÌęMadelaine Lynch

Trademarks:ÌęAdele Zhang, Aishwerya Kansal,ÌęJingcai Ying, Eloise Somera, Lauren Chan

Bonnie Hassanzadeh, Nikita Munjal, Sebastian Beck-Watt, and Alessia Monastero

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On March 21, 2019, we had the pleasure of attending IP Ogsoode'sÌę conference series held at the Toronto Reference Library. This year’s conference theme was data governance, with a focus on novel legal issues with respect to two key sectors - health/science and smart cities. Professor D’Agostino’s opening remarks touched on the legal and ethical dimensions of data governance, given the large amount of activity over the last year in the AI space.Ìę The day was broken down into five panel discussions, with a luncheon keynote by Professor Kang Lee from the University of Toronto.

Why is Data so Important to the Development of AI?

The first discussion focused on the impact of data quantity and quality which determine AI capability. Jonathan PenneyÌę(Assistant Professor of Law; Director, Law & Technology Institute, Schulich School of Law, Dalhousie University) provided three instances where data was more important than the AI systems themselves: in advancing AI, in addressing bias and discriminatory practices in existing systems, and in AI accountability and transparency to understand decision making. Notably, Alexander Wissner-Gross examined the last 30 years of AI development, and found that the recent advances were largely due to the availability of large data sets. In 2011, IBM Watson Jeopardy Champion used data from 8.6 million Wikipedia articles and in 2014, GoogleNet object classification used 1.5 million images on ImageNet to train its AI system. Carole PiovesanÌę(Partner & Co-Founder, INQ Data Law) Ìęechoed the importance of data to AI systems, and touched upon the two growing debates regarding data exchange and privacy.Ìę The crux of the privacy debate focuses on the trade-off between privacy as a quasi-constitutional value versus the importance of innovation and the need for data to produce public goods. She called upon the audience to think about what a fair exchange in today’s data marketplace means to them.Ìę Finally, the shifting policy led by the EU's adoption of the General Data Protection Regulation (GDPR) was discussed. In Canada, current regulations still focus mainly on consent. Both speakers acknowledged that we should be moving towards establishing standards as very few people actually enforce their rights.

Intellectual Property at a Crossroad

Three key ideas came out of the second panel discussion, namely, the issue of whether AI systems and programs are eligible for copyright or patent protection under current statutes, the international implications and developments, and the importance of AI in collaboration. Dave Green (Assistant General Counsel, IP Law & Policy, Microsoft)Ìęshared Microsoft’s perspective on AI’s role in enabling machine intelligence to simulate or augment elements of human thinking. Two copyright issues that come into play with AI are defining “Works of Authorship” and identifying whether specific types of “copying” are enough to create liability, both of which have been complicated by the use of computer programs and factual materials. Internationally, the requirement that humans be the authors of creative works is found in the constitutions of US, Hong Kong, India, New Zealand, in the UK and other countries. As technology and AI advances, do we want to continue to insist upon the requirement that authors of creative works be humans? If we don’t, what does that say about downstream issues such as intent, infringement, and liability? In regards to international approaches to data mining - should there be a fair dealing exception, particularly when you look at addressing the issue of bias? The WIPO recently established a new division that focuses purely on AI, which will be especially important given the spike in AI patenting activity that has occurred over the past several years. Shlomit Yanisky-Ravid (Faculty Member and Lecturer, ONO Academic Law School and Fordham Law School) challenged the audience with the Turing Test, proving that it is often difficult to identify between works created by AI or a human being.

Catherine Lacavera (Director of IP, Litigation and Employment, Google Inc.) shared her belief that the existing patent and copyright systems are robust enough to deal with changes we are seeing in AI, though the regulatory and social impact front of AI are changing at a fast pace. In this regard, it is important to balance social benefit with the potential for abuse and the importance of building diverse data sets and incorporating privacy and affordability in our design principles going forward. Maya Medeiros (Partner, Norton Rose Fullbright Canada LLP) stressed the importance of using IP rights to facilitate multi-party collaborations to protect AI innovation and incentivize collaborative behaviour. Furthermore, she raised the issues of fair dealing in data mining and the use of different types of IP rights to protect different aspects of works being generated.

Resolving Data Barriers

The third panelÌę focused on the tools required to access data and facilitates the development of AI.

Momin Malik (Data Science Postdoctoral Fellow, Berkman Klein Center for Internet & Society at Harvard University) discussed how AI is beneficial in certain contexts, such as for predicting behaviour. However, the data that is valuable for AI is often limited by access to copyright protected materials.Ìę For example, in the development of Google's information retrieval system, the company faced many copyright issues.Ìę However, they were able to successfully navigate the copyright challenges by entering into agreements with publishers to create , and ultimately make data more accessible to the public.

Paul Gagnon (Legal Counsel, Element AI)Ìęcontemplated whether sui generis legislation is the way forward. Europe, for example, relied on the existing concept of fair dealing as an exemption for data mining. However, this exemption is limited as it only applies to researchers and not commercial institutions. Having open data and accessible data are two distinct concepts. Accessibility does not necessitate that you can use the data. Uses may be restricted by specific purposes, such as “for academic use only”.

Dave Green concluded the panel discussion by contemplating whether copyright could “make nice with AI”. AI does not copy for the purpose of replicating the work or infringing on the underlying value of expression, but rather it can unlock different insights than “Works of Authorship”. This is the difference between the use of a photo as a work, for aesthetic purposes or factual reporting, and the use of a photo as data.Ìę Green looked at examples of how different jurisdictions are making copyright safe for AI and machine learning, such as the fair use exception in Israel. Democratizing the right to learn and research is essential to this field and it remains to be seen how other jurisdictions may embrace this fact.

Luncheon Keynote: Affective Artificial Intelligence & Law: Opportunities, Applications, and Challenges

Kang Lee (Professor and Tier 1 CRC Chair in developmental neuroscience, University of Toronto) amazed the audience with aÌęshowcase of his connected health venture, .Ìę Dr. Lee's interdisciplinary invention brings together research from neuroscience, psychology, physiology, and deep learning to produce AI that can detect, measure, and analyze human affect through physiological cues. The mobile application turns smart devices into a personal health tool that individuals can use to manage stress and get updates on their personal health. It uses (TOI), which uses video to recognize facial blood flow imaging from the human face. This image is then processed by , which is the AI that can detect and measure different human emotions. Dr. Lee’s work is significant as it demonstrates how AI can improve the health and science fields to give patients more control over their health care.

Big Data, Health & Science

The fourth panel discussion focused on the unique AI and data issues in the health and science sectors. James Elder (Professor, Lassonde School of Engineering; 91ŃÇÉ« Research Chair in Human and Computer Vision, 91ŃÇÉ«) discussed potential uses for converting raw data into 2D images and subsequently converting these images into 3D models. 3D modelling with real data has applications for road and pedestrian traffic. The technology may also address some privacy concerns since his 3D virtualization technology turns the 2D images into avatars, which has the effect of anonymizing visual appearances. There are many opportunities for visual AI to help improve daily processes.

Victor Garcia (Managing Director & CEO, ABCLive Corporation)Ìędiscussed how big data can transform the health sciences. Data helps to improve the way companies in this sector do business. Clinical, insurance claims, pharmaceutical, research and development, patient behaviour, and lifestyle data can all contribute a plethora of knowledge to the health sector. These can improve process efficiencies and make hospital resources available sooner to new patients. For example, Humber River Hospital used data analytics to improve their health care services and increase efficiency by 40%.

Ian Stedman (PhD Candidate, Osgoode Hall Law School; Fellow in AI Law & Ethics at SickKids’ Centre for Computational Medicine)ÌęhighlightedÌęSickKid's move to integrate AI into their practice with the development of a task force to examine how data governance and policies, infrastructure, AI solutions, and ethics interacted before implementing new AI tools.Ìę Stedman stressed that data source and quality are essential because in the health sector, it is essential to ask all the right questions to make accurate conclusions and diagnoses. With clinical studies, it is much easier to access data since there is a research plan, which includes the research purpose, the targeted population, and the results the researcher hopes to observe. However, with the data that AI relies on, in order to unlock its potential value, researchers study data to find patterns. Therefore, it is difficult to ask for secondary use disclosure before the research is conducted when the researcher may not know what they are looking for. The takeaway is that regardless of the industry, harmonization and collaboration are key. There is opportunity to put data together from different sources to discover the potential of new clinical decision making tools.

What Makes a Smart City?

In Toronto, and internationally, data privacy issues have come to the forefront of public discussion due to the development of smart cities. Given the proposed Sidewalk Toronto, the collection, storage, and use of data has led to a heated debate about data governance. The Mayor of Barrie, Jeff Lehman, discussed the project which calls upon start-ups and small organizations to develop new technologies that use data to address civic challenges. Instead of putting out a traditional municipal tender, the cities released a Request for Solutions and invited responses from the public to provide a cohesive opportunity for collaboration. In response to the issue of data localization in the Sidewalk Toronto debate, Mayor Lehman believes that consent is possible, but that the data must reside in Canada to ensure that the national government can set the rules around the data being collected. Finally, Mayor Lehman advocated for the use of Privacy Impact Assessments to evaluate the impact of new technology on privacy.

Neetika Sathe (Vice President, Advanced Planning, Alectra Inc.)Ìęadvocated for the importance of data policies regarding smart cities to be worked on at every level of government to develop a national data strategy. Furthermore, Sathe introduced the audience to some of Alectra’s projects and the data collection challenges associated with each. These projects included (end-to-end integrated EV workplace charging pilot project), the (which collects smart meter data), and the (which uses a private blockchain network that limits access to data).

Natasha Tusikov (Assistant Professor, Dept. Social Science, 91ŃÇÉ«; The City Institute at 91ŃÇÉ«)Ìęchallenged the audience to think about who should own, control and govern data related to smart cities.Ìę Prof. Tusikov discussed the issue of conflicting public and private authority, raising her concern that Waterfront Toronto is not an expert in IP, but in land development. As an example of regulating the governance of smart cities, Barcelona developed a manifesto outlining the importance of technological sovereignty and maintaining digital rights.

To close the panel discussion, John Weigelt (National Technology Officer, Microsoft Canada Inc.)Ìę spoke about the importance of solidifying the participants involved in developing a smart city and the business model we want to create. If employed correctly, AI will solve societal challenges. Municipalities and companies that can thoughtfully clarify their approach to AI first will prosper the most from its benefits.

The conference encouraged thought-provoking discussion about data governance and its implications on health and smart cities. We hope that the discussion about data collection and what we value as society continues beyond this event. Thoughtful and inclusive discussion will allow us to collectively brace for impact as AI technology continues to advance.

Written by Lauren Chan and Summer Lewis. Lauren Chan is an IPilogue editor and a business student at the University of Guelph, and Summer Lewis is an IPilogue editor and a JD candidate at Osgoode Hall Law School.

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2018 was also a celebratory year for Prof. David Vaver. To honour Prof. David’s Vaver’s double induction into the Order of Canada in 2017 and as a Fellow to the Royal Society of Canada in 2018, IP Osgoode released a . The video features many experts, colleagues and mentees and friends from around the world who participated in the symposium we organized in his honour to showcase his important contributions and leadership in intellectual property law. And to close the year, we edited a of the in his honour! Some must read gems include contributions from The Hon. Marshall Rothstein, The Hon. Roger T. Hughes and Justice Michael Manson.

On the wider IP front, 2018 also marked the year the Government of Canada finally recognized the importance of IP legal clinics in the country’s innovation ecosystem in its . The recognition of IP clinics that enable law students to learn more about IP, help businesses get a sense of their IP needs and facilitate access to the profession that can provide quality IP advice is very much in line with the objectives of the Innovation Clinic. Founded in 2010, the Innovation Clinic was the first IP legal clinic of its kind, operating in partnership with an established accelerator and an international law firm. Eight years later, the Innovation Clinic has become the largest IP legal clinic operating in Canada and provides important IP information, awareness, and assistance for our clients as well as crucial experiential learning experiences for Osgoode Hall Law School students.

To meet increasing demands for services, the Innovation Clinic has built on its successful partnership with , which began in 2016, and in 2018 also partnered with . Lawyers at both firms volunteer their valuable time to supervise our law student volunteers as they assist start-ups, entrepreneurs, and inventors across Southern Ontario.

At the end of 2018, I completed my research project on IP legal clinics in Canada, which was funded by the at the (CIGI) and will soon be released. The report underscores the importance of supporting IP legal clinics operated by Canadian law schools. Universities, law schools, and law professors can play a pivotal role in addressing the IP education and innovation gaps in Canada. Crucially, IP legal clinics work to fill gaps in the broader innovation ecosystem while offering students practical, hands-on experience in IP and related business law matters. Underscoring some of these issues, I published an article on the and the , entitled “How the IP Strategy Could Transform Canadian Innovation.” We look forward to publishing the report and continuing further dialogue among law schools, industry, law societies, the Canadian Intellectual Property Office (CIPO), levels of government, and other relevant stakeholders regarding the creation of a network of IP law clinics across Canada.

Top Ten Most Read Blogs of 2018

As we look back to the three main areas of IP, there are some noteworthy highlights.

Patents

Canadian statutory amendments, patent rule changes, tense multinational trade negotiations, and sui generis cannabis legislation broke new ground in the patent law landscape.

C-86 and the Patent Act Updates

was introduced in 2018 and clarified patent rights in court cases, experimentation with existing patented materials, compliance with technical standards, and prior use rights. Passed on October 29, 2018, the bill amends the Patent Act as a piece of omnibus legislation.

binds both original and subsequent standard essential patent (SEP) owners to licensing obligations. n (section 52.1) also extends to certificates of supplementary protection (CSPs), which offset the approval period for pharmaceutical products.

, written communications can be used as evidence to counter assertions made by the patentee when construing patent claims. These communications pertain to the prosecution history of said patent (presupposing their relevance to legal claims). Furthermore, a legal authority now exists to set requirements for cease-and-desist-like letters sent to patent holders. The complaint is valid if the recipient is in Canada, meaning foreign patent holders can seek compensation. These claims are to be handled in the Federal Court.

Furthermore, to encourage innovation, experimental use of patented materials to further the craft is now generally permitted by statute (as opposed to the prior limited, common law exception). The experimental use analysis is conducted by the courts and includes an assessment of the intent in experimentation.

Prior user rights are also expanded. If before the priority filing date a person commits an act considered infringement and then commits the same act post-priority, it is no longer an infringement of the patent or CSP. Exceptions apply only in good faith situations, whereas intentional violation of the patent’s information counts as infringement.

Changes to Canadian Patent Rules

December saw the release of CIPO’s , to align Canada’s patent regime with Patent Law Treaty (PLT) standards and fulfill the . While the draft rules were still open for public comment throughout December 2018, the draft clarifies what the proposed changes are likely to be and how they will be implemented.

The new regulations overhaul many of the administrative rules surrounding patent applications, and include greater leniency with respect to payment of fees after the filing date (balanced by a new late fee), processes governing documents submitted in languages other than English or French, and allowing applicants to follow up with missing descriptions or drawings (though this mechanism cannot be used to change the scope of the invention). Photographs can now be used in limited circumstances where the invention does not otherwise lend itself to schematic drawings, and a single nucleotide or amino acid sequence can be the subject of any one application. Furthermore, patent applicants are now able to designate a “common representative” for joint applications, who will be allowed to represent the others in dealing with the Patent Office.

Requests for priority will be brought into compliance with PLT and Patent Cooperation Treaty (PCT) standards, and it will no longer be possible to prevent publication of an application by withdrawing the application when an applicant provides consent for early publication.

The time limit for examination will be decreased from five to four years after filing, with a four-month time limit (down from six) to respond to an examiner’s report, rejection, or notice of allowance. Amendments can still be made to an application after allowance, but the new rules will set up a more rational system where a notice of allowance can be withdrawn at the applicant’s request, followed by re-examination and amendment. The new rules will also allow correction of “obvious errors”, ostensibly a broader definition than the current “clerical error” standard (which is an attempt to bring patent law in line with trademarks and industrial designs).

The new rules also set up a ‘due care’ requirement for applications abandoned or patents deemed expired because of missed maintenance fees, or applications abandoned as a result of failure to request an examination. This, combined with more direct third-party rights protections for infringement, are meant to compensate for the longer time limits for correcting application deficiencies.

Finally, procedures surrounding divisional applications (those where inventions are split off from an original parent application) will be mostly unaffected, though the codification of guidelines currently contained in practice notices is likely to make the system easier to navigate.

The new Patent Rules present a much awaited and needed consolidation (Canada signed the PLT in 2001 but has yet to ratify it), and one which will hopefully bring some clarity to both applicants and CIPO. As with any regulatory framework, however, only time will tell if the changes achieve this goal.

CUSMA

While CETA was the international agreement that pre-occupied the IP world in 2017, one of the biggest stories this year was the tense, down-to-the-wire negotiation around the . Out of a broad chapter on IP, the largest impact of CUSMA on Canadian patent law is likely to be changes to rules for biologics and for applicant-CIPO interactions.

Biologics are molecules produced by living organisms which have pharmaceutical applications. These drugs are at the cutting edge of both treatment () and diagnostic tools (like [ELISA]). The fact that CUSMA will, over a five-year transition period (Article 20.90), increase the term of market exclusivity for biologics to 10 years from the current standard of eight (Article 20.49) has therefore caused some concern about what the new agreement may mean forÌę.

The second big change for patents in CUSMA affects how applicants interact with the CIPO. Those seeking a patent will now be able to expect compensation in the length of the patent grant for unreasonable delays in application processing, with the caveat that a delay can only be unreasonable if more than five years have passed since filing or three years have elapsed since a request for examination. (Article 20.44)

Cannabis

The , which legalizes recreational use of cannabis for individuals of 18 years of age or older, came into force on October 17th, 2018. Allowing nationwide use of the drug and possession of up to 30 grams, this effectively ends the prohibition on cannabis in Canada (although provinces can approach legalization in their own way by restricting public use or sale).

The for the drug is estimated at $4.9-$8.7 billion per year, with an anticipated market impact of up to $22.6 billion. Due to its lucrative market, IP protection is likely to be sought by manufacturers in all avenues of production of cannabis.

According to the , novel varieties of cannabis are eligible for patenting given they are novel, non-obvious and stable. Cannabis patents are not restricted to the whole plant under the Patent Act – patents can be filed incorporated in the plant, patches, gels, combinations of ingredients, cannabis extracts, methods for extracting active ingredients (eg. THC), and even devices used to ingest cannabis. When it comes to the plants themselves, for a variety to be considered “new” it can be sold for up to 1 year within Canadian borders and 4 years outside prior to its PBR application.

It is expected that the rate of patent applications will skyrocket with the new legislation passed. Prior to the Cannabis Act, only medical marijuana was available in Canada; with general legalization, it is likely that companies seeing this economic opportunity will enter the field at an expanding rate. By in June of 2018, there are at least 60 companies in the cannabis industry listed on the Toronto Stock Exchange.

Trademarks

While 2018 made its advancement new trademark legislation, we are still trekking through uncharted territory, as the effects of the new changes are far off into the future.

Progress for New Trademark Legislation

Finally, on November 2018, the government June 17, 2019 as the coming into force date of amendments to the Trade-marks Act. The amendments (see , and ), included key changes to several areas, such as trademark selection, opposition, and enforcement:

• Trademark applications will no longer require a date of first use;
• The definition of a trademark will expand in scope, giving protection to scents, sounds, colours, etc.;
• Trademark applications will no longer need a Declaration of Use;
• New registrations will have a 10-year renewal term;
• Canada will join the Madrid Protocol;
• Canada will adopt the Nice Classification of goods and services; and
• There will be an associated fee-per-class for trademark applications.

Both academics and practitioners expressed concerns over the amendments. Much of this concern stems from the fear of taking advantage of the elimination of the requirement to prove “use”. ÌęIndeed, since the announcement of the amendments, there has been a significant increase in the number of applications covering all Nice classes of goods and services, in anticipation of the amendment.Ìę However, the Government of Canada took steps in 2018 to address these concerns by announcing in the a proposal for bad faith trademark opposition and invalidation grounds and a requirement for registrants to use their trademark within three years of registration for their enforcement rights to be valid.

included not only the proposed opposition grounds and three-year limitation period announced in the National IP Strategy but also additional changes, such as:

• Imposing statutory limits on published official marks;
• Allowing the Registrar to order costs, case management, and confidentiality for documents filed during contested proceedings;
• In cases where parties are appealing the Registrar’s decision, only allowing new evidence to be filed with leave from the Federal Court; and
• Implementing a new Act to license and regulate trademark agents.

As the Bill has only been tabled recently, it still has a long way to go before its effects will be felt. Furthermore, there is uncertainty as to whether the new bill will adequately address the shortcomings of the 2014 amendments to the Trade-marks Act.

CUSMA’s Implications for TMs in Canada

Canada will be in compliance with many of the CUSMA provisions when the amendments come into force. The CUSMA that are already expected to be implemented next year – such as ratifying the Madrid Protocol and allowing the registration of scent marks. The CUSMA also explicitly provides that in civil proceedings related to trademark counterfeiting claims, each partyÌę must establish a system that provides for any “pre-established damages”, or “additional damages” sufficient to deter infringements. Also, the nation in question must establish a means that will allow them to “fully” compensate the rights holder in question. The current provisions in the Trade-marks Act already allow for punitive damages for trademark infringement, however, these statutory damages can help to reduce litigation costs, and thus may be favorable for future court proceedings.

Reaffirming the Broadening of “Use” for TM Registration to Include Ancillary Use

The recent Canadian Federal Court decision in (Hilton Worldwide) – which is in line with the decision in – affirms that the physical establishment of a hotel in Canada is not necessary to constitute the “use” of a trademark in Canada. Consequently, in Hilton Worldwide, the Federal Court overturned the Registrar’s decisionÌę to remove the Hilton Hotel’s registration of the trademark WALDORF-ASTORIA in association with “hotel services”, where a so-called Ìęwas not present in Canada. As part of the Hilton Hotel’s defence, it was stated that they offered several services which were accessible to Canadians, and that these services were associated with the trademark WALDORF-ASTORIA. These services included the operation of an interactive website, a worldwide registration service, and discounted offers to customers who pre-paid for rooms and loyalty programs.

This decision brings these “hotel” cases in line with decisions that pertain to retail store services, such as . However, only time will tell how broadly this decision will be applied in the future, especially with the upcoming legislative changes to Canadian trademark law. Some cases may be consistent with this decision, by focusing on the interactivity of a website and the “benefit” given to Canadians. Nevertheless, other cases may instead focus on whether hotels offered pre-paid reservation services to Canadians, or perhaps even on when the registration was issued. However, it is clear that this decision has made an important impact that will have ripple effects on trademark law in the upcoming years.

Official Marks are not Absolute Defences to Infringement Claims

On October 4, 2018, the Federal Court ruled on a new trademark issue in . In its decision, the Court held that official marks are not absolute defences for trademark infringement.

The case was based on Quality Program Services Inc. (QPS)’s registered trademark, “EMPOWER ME”, which was used in its energy awareness program. In 2013, the Ontario government created a website titled “emPOWERme” that also focused on energy use and generation. Despite receiving official mark status under section 9(1)(n)(iii) of the Trade-marks Act, the Court found that the Ontario government’s “emPOWERme” mark infringed on QPS’s registered trademark.

This decision clarified certain limitations on official marks, which are trademark rights that can be granted to public authorities. These marks are powerful tools, with features that place them well above typical registered trademarks. For example, official marks have several , such as they cover all goods and services, and they are not subject to opposition proceedings, renewal, or expungement.

Copyright

CUSMA

CUSMA emphasizes that “the protection and enforcement of intellectual property rights should contribute to the promotion of technological innovation and to the transfer of technology.” In furtherance of this objective, the CUSMA includes increased protection for material covered by the Canadian . Specifically, Canada has agreed to extend the term of copyright protection from “life plus 50 years” to “life plus 70 years” for works authored by natural persons. Works other than those by natural persons will be protected for no less than 75 years from the date of first publication.

Furthermore, under CUSMA, Canada has agreed to implement stronger border security measures to prevent counterfeiting. Canada will assign agents to oversee in-transit shipments and stop shipments to investigate the suspected presence of counterfeit products. This extends the government’s previous commitment to preventing counterfeiting of goods as part of the negotiations of the Trans Pacific Partnership (TPP) agreement, which included both the United States and Mexico but was abandoned by the Trump Administration. Additionally, under CUSMA, Canada will maintain its for copyright infringement claims. Finally, CUSMA outlines the criminal and civil remedies available for removing digital watermarks from works or interfering with digital locks.

Combating infringement

In March of 2018, the Federal Court of Canada released its decision in Therein, the court granted the plaintiff’s motion for default judgement and awarded $5,000,000 in statutory damages against the defendant, who was found to have infringed the plaintiff’s copyright by streaming Greek television programming for which the plaintiff was the exclusive distributor in Canada.

Relatedly, in , the Federal Court of Appeal upheld an Anton Piller order granted against the defendant on the grounds that there was a strong prima facie case that the defendant had infringed the plaintiff’s copyright by operating a website offering “software add-ons” that allowed users to stream infringing television and movie content.

On October 2, 2018 the Canadian Radio-television and Telecommunications Commission (CRTC) released its on a website-blocking application filed by Fair Play Canada – a coalition of media companies including Bell, Rogers, Corus and CBC/Radio Canada. Fair Play applied to the CRTC to institute a website blocking regime to combat online piracy; a proposal that received significant as well as numerous interventions both for and against the proposal. Ultimately, the CRTC rejected Fair Play’s proposal on the grounds that the proposed regime is not within the CRTC’s jurisdiction.

Copyright Notice-and-Notice System

The (Bill C-86) includes a number of proposed changes to Canadian IP laws. One such proposal is a plan to deal with the use of the notice-and-notice regime to send settlement demand letters to internet users suspected of pirating copyright-protected works. This attempt to address abuse of the notice-and-notice system follows up on an initial flagging of the issue in the , which was announced in Spring 2018.

Under the notice-and-notice system, a copyright holder who suspects that their protected work is being infringed by a party can send notice to that party via the party’s internet service provider (ISP). adds additional wording to the stating that such notices cannot contain an offer to settle, nor a demand for payment or personal information, among other specifications. These amendments mean that an ISP could refuse to deliver notice to a user, if the notice at issue contains any prohibited demands.

Review of the Copyright Act

2018 saw the continued review of the ÌęCopyright Act. As part of the review, the Standing Committee on Canadian Heritage conducted , which drew briefs from Canadian , , and – to name just a few.

Simultaneously, the Standing Committee on Industry, Science and Technology conducted its review of the Copyright Act. One area in which many stakeholders weighed in on was educational copying, in particular fair dealing and decreasing revenues from licensing of educational material. On the one hand, a , recommended that fair dealing be limited so as not to cover educational copying of works that are commercially available. On the other hand, and argued against circumscribing fair dealing, recommending that the government take different steps towards supporting Canadian authors and publishers.

Copyright and Internet Service Providers

In September 2018, the Supreme Court of Canada released its decision in . At issue was whether the respondent film production companies should bear the costs borne by Rogers as an ISP in complying with a Norwich order to disclose the identities of its customers accused of infringement. Ultimately, the SCC sided with Rogers, reversing the Federal Court of Appeals’ previous decision. While the SCC remitted the issue to the motion’s judge for a determination of the quantum of Rogers’ entitlement to costs, the decision is an important precedent for ISPs who are compelled to disclose their customer’s personal information.

Written by Giuseppina D’Agostino, Founder & Director of IP Osgoode, the IP Intensive Program, and the Innovation Clinic, the Editor-in-Chief for the IPilogue and the Intellectual Property Journal, and an Associate Professor at Osgoode Hall Law School.

With contributions from IPilogue Editors: Summer Lewis, Lauren Chan, Imtiaz Karamat, Neda Foroughian, Peter Werhun and Rui Shen, and from IPilogue Senior Editors: Stephen Cooley, Sebastian Beck-Watt and Dominic Cerilli.

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The speakers briefly introduced cryptocurrency as a digital currency that relies on encryption techniques to generate and verify the transfer of funds. Blockchain is the underlying technology that records and keeps a ledger of cryptocurrency transactions. Several relevant legal issues surrounding cryptocurrency were raised, and it quickly became clear that the law lags behind technology in this space. As Phull mentioned, this is still a very niche area of the law but there is a growing need for related legal services and a greater understanding of common issues. Specifically, issues with cryptocurrency contracts and litigation and the recent anti-money laundering legislation draft were discussed.

Cryptocurrency Denominated Contracts

While now regularly pay for goods and services in cryptocurrency, contracts involving cryptocurrency as “money” present a unique challenge. UnderÌę of the Currency Act, “every contract [
] for money and every transaction, dealing [
] with money [
.] shall be made [
] in the Currency of Canada” unless executed in the currency of another country or a “unit of account that is defined in terms of the currencies of two or more countries”. To date, cryptocurrency – including bitcoin – is not officially considered currency in any country.

We learned from the Conference that it is best to treat cryptocurrency as a commodity to ensure that contracts are enforceable. Still, there are challenges related to the treatment of cryptocurrency as a commodity. Recently, the regarding Token Funder Inc. required that the initial token offering price be fixed to Canadian fiat currency instead of Ethereum to avoid the question of whether Ethereum should be considered “money”. Furthermore, suppliers of cryptocurrency are required to charge GST and HST on their payments, adding another hurdle to using cryptocurrency as payment in contracts.

With respect to enforcing cryptocurrency contracts, treating cryptocurrency as a commodity is similar to the treatment of foreign currency “as a commodity in the sense of an object of a commercial transaction” (). Therefore, should a dispute arise between two parties in a cryptocurrency-based contractual agreement, the aggrieved should not seek damages. As Phull describes in his , seeking specific performance or mandatory injunction is more appropriate.

Significant progress and clarity with respect to the Currency Act will be required over the coming years, as more individuals choose to use cryptocurrency as a means of monetary exchange.

Anti-Money Laundering Draft Legislation

Hartzman discussed how companies that engage in cryptocurrency exchanges act in a quasi bank-like role, yet businesses dealing in cryptocurrency are not currently required to have a licence to practice. CoinSmart, although unlicensed, is unique since it is the only Canadian company dealing in cryptocurrency that is backed by two Canadian banks (DC Bank in Vancouver and Luminis Financial in Toronto).

An absence of legal rules governing these businesses could allow for criminal activity and money laundering. Phull referenced the , which is set to be amended to impose more regulations on “money services businesses”. In a in the Canada Gazette, there is a summary of the proposed amendments for the legislation. Its objective is to create more regulations for decentralized virtual currencies, which are “convertible” – that is, exchangeable for funds. Convertible virtual currencies are vulnerable to manipulation by criminal organizations who . These tokens are attractive based on their anonymity, global accessibility, and simplicity of transactions that do not require an intermediary.

The legislation proposes that businesses “dealing in virtual currency” would be “financial services”. As a “money services business”, businesses would be required to fully comply and register with FINTRAC. For example, when entities receive more than $10,000 in virtual currency, there are reporting steps that the business must take. By monitoring suspicious transactions, this new provision will allow for some level of legal oversight, but it may not be enough.

Businesses dealing in cryptocurrency need to be fully recognized as a unique business. There is tension between whether Ontario’s or the should govern these businesses. Instead of tweaking one piece of legislation to include cryptocurrency regulations for two very specific crimes, it may be necessary to draft novel legislation that explores the many ways that individual users and businesses engage with cryptocurrencies.

If cryptocurrencies continue to become more accessible to the general public and are increasingly used as “money”, it will be necessary for the law to adapt to the technology. As the law currently stands, it is important for businesses to be aware of the potential complications that cryptocurrencies pose. We will continue to watch for innovation and new legal precedents in this area of law.

Ìę

Written by Lauren Chan andÌęSummer Lewis.Ìę Lauren Chan is an IPilogue Editor and a business student at the University of Guelph.ÌęSummer Lewis is an IPilogue Editor and a JD candidate at Osgoode Hall Law School.

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Burberry has been trying to take control of this issue. Earlier this year, Burberry Limited (US) and Burberry Limited (UK) filed a complaint against Target Brands Inc. for “offering for sale and selling various products featuring the BURBERRY CHECK Trademark or confusingly similar variants.” They claim these actions are “willful, intentional, and damaging to Burberry.” [1]

Burberry builds their image of luxury by pricing their items appropriately and ensuring that they are exclusive and coveted. Target’s designs included scarves of at least five different colour variations, eyewear, luggage, and bottles at much cheaper prices. In their original lawsuit, Burberry claimed Target had committed trademark counterfeiting as described in Sections 32 and 43(c)of the . Introduced in 1946, the Lanham Act protects owners of registered trademarks from the use of similar marks that result in “consumer confusion” or “dilution” of a mark. Additionally, Burberry referenced , claiming that Target’s actions “affected the public interest of New 91ŃÇÉ« and have resulted in injury to consumers in New 91ŃÇɫ” and damaged Burberry’s business reputation. Finally, Burberry claimed trademark infringement and unfair competition under the common law of the State of New 91ŃÇÉ«. Burberry sought $2 million dollars for each trademark violation and additional damages in an undetermined amount. The case was Ìęthis past fall after the parties settled the trademark dispute. Although the specific terms of the settlement were not released publicly, it seems likely that Target agreed to cease production and sale of the specific items and paid Burberry for violating their trademark. Burberry had also filed against JC Penney for similar infringements butÌę the case.

In their , Burberry’s independent auditors’ report stated the company’s need to assess the number of items that are “ultimately destroyed or sold below cost.” In 2018, a whopping 28.6 million pounds worth of merchandise and 10.4 million pounds worth of beauty inventory were destroyed. This was done to ensure that these products would not be sold significantly below retail price or sold off-market.

Historically, it has been extraordinarily difficult to trademark fashion items because often the items serve a . To become recognizable and distinctive, brands must establish a reputation for producing a specific design over time exclusively. In Canada, trade dress can be protected under the if the “distinguishing guise” is recognizable to the public and associated with a specific brand. However, a company can only register a distinguishable guise once it is recognizable by the public, and it is their responsibility to prove its distinctiveness. Similarly, in the United States, trade dress constitutes a “symbol” or “device” under the and has been expanded to cover not only the packaging of a product or good but also the overall design and product’s features. According to the , the examining attorney must separately consider functionality and distinctiveness in determining whether a trade dress can be registered.

With some retailers, such as Forever 21 and Zara, selling numerous clothing pieces that are similar to designer items, it has become easy for consumers to purchase affordable versions of expensive designs. With Zara’s ability to produce an item from a runway show in less than two weeks, it has become the go-to place for consumers to find current fashion trends and goods disconcertingly similar to designer items. Although Zara has been sued numerous times by indie artists, small businesses, and well-known designers alike, the success of their claims has been varied due to differing levels of the distinctiveness of their designs. For this reason, large retailers have gotten away with producing items “inspired” by other brands on a regular basis.

Often, it can be difficult to determine the precise boundary between trade dress or trademark infringement and drawing inspiration from other designers. What is clear, however, is that brands such as Burberry will continue to fight to protect their designs and their brand. While these actions can only be taken retroactively, it is ultimately up to consumers to voice their opinions with their purchase decisions.

Written by Lauren Chan, IPilogue Editor and a JD Candidate at Osgoode Hall Law School.

[1]ÌęBurberry Limited (UK) et al v. Target Corporation et al, 1:2018-cv-03946 (SDNY)

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