Through my internship I ��gained a more comprehensive understanding of what copyright policy actually means, and how it is used as an instrumental tool essential for the promotion and encouragement of Canada's creative industries.��Having the opportunity to intern at the Federal Government was an invaluable experience, as it allowed me to glance into the typical workday of a civil servant and gain a meaningful understanding of how policy is processed from the inception of an idea into action and reform.

What I appreciated most about my experience was seeing how the culture of the Copyright Branch cultivated hard-work and intellectual development. Balancing the interests (and demands) of industry stakeholders, users and rights-holders while simultaneously dealing with the practical implications of the is no easy feat. Beyond their expertise and impressive knowledge about copyright law, the people at Heritage were also well-versed on the values of peer-support and collaboration.

Our weekly “water-cooler” meetings reflected this unwavering team spirit. Getting the group together at least once a week provided a valuable opportunity to learn about ��different projects, ask questions or discuss hot topics in the world of Copyright law, all within a casual setting. I even had the chance to lead one of the meetings as I recapped my research findings and offered my opinion about current international developments.

My work at the government office focused on both Canadian and international law. During my placement I ��helped create a “Frequently Asked Questions” (FAQ) Sheet to be posted on the Government’s website in the near future. This initiative will hopefully make copyright law more accessible and transparent for the Canadian public.��The Copyright Branch is committed to achieving harmony between the Canadian Copyright system and other countries worldwide. As a result, I was able to work on a long-term assignment which involved gathering and synthesizing large amounts of data relating to current international reforms and recent initiatives in copyright.��From this, I gained indispensable insight into entirely new systems of intellectual property law while learning much about the cultural industries of different countries.

Above all, my work at Heritage afforded me a perfect opportunity to practice and polish my legal analysis and research skills, an advantage that will surely benefit me in my future career. Importantly, I learned how to sieve through large amounts of information and provide a comprehensive and succinct memo (called fiches) as a final product. I even researched and summarized documents in different languages with the help of translation applications.

I was most impressed with the Copyright Branch’s ability to keep its finger on the pulse of international copyright reforms occurring worldwide. Accordingly, Canadian Heritage’s objective of achieving copyright harmony within an international context was reflected in their positive and extremely diplomatic relationships with delegates across the globe.��It is precisely these strong international relationships which lead me to the highlight of my internship. I felt grateful to have the opportunity to attend a full-day seminar delivered by Spanish Delegates regarding the recent changes made to the Spanish copyright system. Since I had conducted research on the Spanish copyright system in an earlier assignment, I was able to follow along with the talk comfortably. At certain points I even had the opportunity to offer my opinions to the table. Overall, it was a very exciting (and at times surreal) day; it was very memorable to be part of this greater dialogue between the Copyright Board, Industry Canada, Canadian Heritage and Spanish delegates.

I am truly thrilled to have been part of such a vibrant and dynamic team at the Department of Canadian Heritage - Copyright and International Trade Branch. I am grateful to my supervisors (both at Heritage and IP Osgoode) for making this internship opportunity possible, and for making my experience in Ottawa one I will never forget.

Mona Zarifian is a JD Candidate at Osgoode Hall Law School and was enrolled in Osgoode’s Intellectual Property Law and Technology Intensive Program. As part of the program requirements, students were asked to write a reflective blog on their internship experience.

The post IP Intensive Program: A Semester at Canadian Heritage - An Insider's Look into the Copyright Policy Shop appeared first on IPOsgoode.

The iconic sneaker company they own trademark registrations for the “distinctive midsole design made up of a toe bumper and a toe cap, plus an upper strike and/or a lower stripe” and explained that this is now a design which has become synonymous with Converse. Importantly, the Converse star (logo) is not in question.

When on the mega-lawsuit, Jim Calhoun, the chief executive of Converse, was reported as stating “We welcome fair competition, but we do not believe companies have the right to copy the Chuck’s trademarked look.”

The issue the court must therefore determine is whether the defendants have infringed upon the aforementioned “trademarked look”, or design of Converse sneakers so as to constitute a likelihood of confusion between the sources. Under () of the Lanham Act, the test for trademark infringement is whether the mark creates a likelihood of confusing customers as to the source of the product.

Infringement and Likelihood of Confusion – Ninth Circuit’s

In order to succeed, Converse must prove that the defendant(s) sold confusingly similar products, so as to lead the public to believe their products were manufactured by Converse. In the case at hand, this means that consumers must link: a rubber toe cap, diamond pattered toe-guard and/or solid black line around the shoe as originating from Converse.

Balancing the factors enumerated in the , used by United States Courts for the Ninth Circuit ��to determine trademark infringement, it seems that the strongest argument(s) for Converse is the strength (and fame) of their mark[2], the use of the design mark in relation to the same goods (casual “street” sneakers) and the striking similarity (or “Knock-Off” as Converse has claimed) between the design marks.[3] Additionally, shoes, especially sneakers are often sold and marketed in similar channels of trade. These factors, taken together, may enable Converse to satisfy the confusion standard.

However, an important contrast the defendant(s) can point to is that while all of them integrated the rubber-toe cap in their impugned shoe designs, some of the shoe caps were different in size compared to the original Converse.[4] Additionally, not all toe-guards incorporated the diamond shaped pattern, as some used plain rubber instead.

Still, to satisfy confusion, a consumer need not engage in a detailed “side by side” comparison. With small differences in appearance or size of the rubber embellishments, a hurried consumer may nonetheless mistakenly believe sneakers come from the same source.[5] Moreover, the degree of care or caution demonstrated by a customer when purchasing a pair of casual sneakers (costing around $50) may be relatively low.

Following in Louboutin’s Footsteps

While the cost between a pair of Converse sneakers and French designer pumps is vastly different, the case law is applicable to both. In , shoe designer Louboutin successfully argued that red-soles were a protectable element, constituting a distinct design. Louboutin was granted the right to prevent others from selling red-soled shoes, so as long as the entire shoe was not red. (For more analysis on the Louboutin case see the IPilogue coverage , and ).

It appears that the Louboutin case may strengthen the arguments put forth by Converse, as the court protected a design element manufactured into the actual design of a shoe. However, the Louboutin case was focused on the trademarked sole in relation to a distinctive color (in that case red), whereas Converse is making a broader claim by asserting trademark protection over the rubber cap, and toe-guard itself.

While the color of the Converse rubber design marks may be a moot point, it is nonetheless worth mentioning as granting trademark protection over a toe-guard and rubber cap (irrespective of color) may give Converse an unfair monopoly over a fashion style, and not a distinct indicator of source.

Rubber Caps and Toe Guards as Functional or Indicators of Source?

In their , Converse asserts that their trademarked design has a distinctive overall appearance that is non-functional.

While it may be true that the solid black stripe on the soles does not serve an obvious function, it can be argued that a toe-guard and rubber-cap above the foot do. Given that sneakers are made up of canvas material (a cloth-like fabric that is unforgiving when wet), the toe-cap can be seen to function as a repellant of rain or other precipitation.

Furthermore, it may also be suggested that the toe-“guard”, does just that; protect the toes by serving as a rubber buffer against an otherwise malleable shoe. If the court find that these design elements are actually functional, and not indicia of the producer, then Converse’s claim will be kicked out.

Has Converse Stepped into a Generic Category?

Apart from the obstacle of functionality, Converse may be faced with the counter-argument that it has become a generic brand. Importantly, the design of the Chuck Taylor All-Star has remained largely unchanged since its introduction in 1908, which may be probative of a generic (yet unwavering) fashion style. Nonetheless, Converse maintains their brand has acquired substantial secondary meaning in the marketplace through their extensive and continuous use, advertising, promotion and sales. But this long-standing fame may actually serve as a double-edged sword.

Under trademark law, a brand becomes generic when, in the minds of consumers, the primary meaning of the trademark becomes the product itself rather than an indication of source. Therefore, the multi-million question is: when consumers see the rubber embellishments on a canvas sneaker, or when they hear “Converse”, do they think of the brand, or a style of shoes?

In avoiding allegations that they have become a generic brand, Converse may point to evidence that upon the takeover by Nike in 2003, Converse shoes experienced resurgence in popularity (and sales) after launching several new styles, colors. It follows that only upon the promotional “comeback” of Converse, the existence of “knock-off” Converse sneakers proliferated. In this regard, it can be maintained that Converse is not generic for a specific fashion trend, but that they are the trend.

While litigation over the style of sneakers is a not a new trend – (Adidas has famously , and , several sporting goods designers for sporting multiple stripes on their apparel) – the most recent case resulting in .). However, what is unprecedented with the case at hand is the sheer number of defendants targeted and the wide variety of styles that Converse claims within the ambit of its trademark. One thing is for certain; after this case, the sneaker game will never be the same.

Finally, regardless of the outcome, Converse should be prepared for the possibility that the customer perception of their brand may change after launching this mega-lawsuit. Owning a pair of Chuck Taylors has often been associated with the culture of “cool” and a symbol of an urban lifestyle. I guess we will have to wait to see if longstanding fans remain loyal to the brand, and if Converse keeps its “cool” after they go toe-to-toe in litigation.

Mona Zarifian��is a JD Candidate at Osgoode Hall Law School and is enrolled in Osgoode’s Intellectual Property Law Intensive Program.�� As part of the program requirements, students were asked to write a blog on a topic of their choice.

The post “Shoe-in” for Converse? Iconic Sneaker Company puts Foot Down and Sues for Trademark Infringement appeared first on IPOsgoode.

"Dumb Starbucks" quickly garnered the attention of coffee lovers, intellectual property lawyers and even Starbucks themselves. As one spokesperson for the Starbucks brand , "we appreciate the humor, but they cannot use our name, which is a protected trademark."

The owners of "Dumb Starbucks" wholeheartedly disagree, taking the position that their use of the Starbucks registered trade-mark is permissible. The owners of the new coffee shop that they are operating legally, as a form of parody art - functioning as an art gallery and distributing��free coffee as the "art". While "Dumb Starbucks" has since been by the Los Angeles Health Department for operating without a permit, the legal buzz it created during its brief existence will not be forgotten.

Despite its comedic intention, "Dumb Starbucks" raised serious debate about the scope and extent of parody protection in the context of trade-mark law. The heart of the matter rests on the following questions. Is "Dumb Starbucks" considered a parody? If so, would it be successful in avoiding liability under current trade-mark law?

Trade-mark Infringement and Parody

Under , infringement does not occur unless there is a likelihood of source confusion. The use of a parody argument against a claim of trade-mark infringement advances the proposition that there was no infringement in the first instance as the was improbable. Unlike the doctrine of "" in US copyright law, parody is not technically considered a defence under trade-mark law. The owners of “Dumb Starbucks” may deny a claim of infringement entirely by suggesting that by placing the word “Dumb” in front of the mark “Starbucks” they are obviously engaging in an act of parody, and are expressing their views in a form of critical social commentary.

A trade-mark infringement may nonetheless be found to occur if the public could not distinguish between the parody and the original trade-mark, or the public believes that a is associated with both the parody and the original mark. In the case at hand, it seems rather unlikely that the public would confuse the “Dumb Starbucks” establishment as originating from the same owner of the international chain of Starbucks coffee shops. For one thing, the word “Dumb” is prominently placed in front of the word “Starbucks” and is depicted in the same font, shape and size as the rest of the mark. A Starbucks��spokesperson confirmed the lack of confusion between the original and “Dumb Starbucks” by stating to a member of the press that it's “” There was no evidence that the public was duped either, thousands of tweeted about the joke and even uploaded their own pictures with novelty items from the parody coffee shop. A novelty "Dumb Starbucks" cup recently to the tune of $200 (without any "dumb coffee" in it, of course).

Weak Coffee: Does “Dumb Starbucks” Dilute the Original Trade-mark?

Considering the earlier analysis, if we assume that it would be difficult to prove trade-mark infringement, Starbucks may nonetheless decide to commence legal action based on a claim for trade-mark dilution.��Under the US��,��dilution refers to a situation whereby the owner of a��famous mark may prevent others from using their mark in a manner that would diminish its distinctiveness or reputation. The potential harm to the reputation of their trade-mark��leaves the door open for Starbucks to��pursue an action��on the basis of��dilution by tarnishment, even without proof of actual economic harm.

In the case at hand, the parody not only explicitly associates Starbucks with being "Dumb", but it also potentially associates the original mark��with low-quality products, depending on what was being served in-store. By connecting Starbucks to products of inferior quality and by��depicting the Starbucks brand in a negative light, “Dumb Starbucks” might be liable for tarnishing Starbuck’s reputation as a brand.

The post Parody in Trade-mark Law - "Dumb Starbucks" Might Not Be So Dumb After All appeared first on IPOsgoode.

The ��emphasizes the importance of developing a��“cultural��policy��instrument��that,��through�������𲹰�,�������徱���ٲ������������Ի����ڲ�������rules,��supports creativity and innovation.” ��To help lawyers and judges keep in line with the goals of balance in copyright, and to achieve clear and comprehensive laws, it is important that we examine two vital questions concerning the UGC provisions.

1.��What exactly��is��a “commercial purpose”?

One of the factors that places a limit on UGC is the condition that the new work is done solely for non-commercial purposes (an undefined concept in the Copyright Act).��To limit the uncertainties created by s.29.21(1)(a), it is therefore crucial to look beyond the words (or lack thereof) of the provision itself, and instead look toward a purposive and holistic approach to the UGC exception.

, an Associate Professor at the University of Western Ontario, argues that in order to help overcome ambiguity, the UGC provision should be interpreted in the same context as the fair dealing provision.

What we can learn from incorporating a fair dealing analysis to the UGC exceptions is that we are to define commercial purposes on a continuum (recall that in ��the court endorsed a non-restrictive test to assess the user's purpose). Moreover, the facts of the CCH decision involved some “commercial” element since the materials were distributed to lawyers in the course of their professional employment.

Viewing s.29.21(1)(a) and s.29.21(d) together, we should therefore understand commercial purpose as a matter of degree. In doing so, we leave open the possibility for new-works to have at least some commercial element, so long as this element is not substantial.��

2. How can we define a “substantial adverse effect” on an existing or potential market?��

s.29.21(d) requires that the new-work shall not have a substantial adverse effect, financial or otherwise, on an existing work.��This condition raises several difficult questions. First of all, do the words “or otherwise” extend to include an author's moral rights? If so, wouldn't including moral rights in user exceptions to infringement be legislatively redundant? (Moral rights run parallel to economic rights, and can be exercised regardless of copyright exceptions.)

It is also unclear what a substantial adverse effect on a (potential) market means.�� s29.21(1) describes UGC as a “new work” or other subject matter in which copyright subsists. This may indicate that the courts consider UGC to be an original work, possibly attracting its own copyright protection.

When interpreting s29.21(1)(d), it may be useful to look to the American decision of ��to understand that the market of a new work is necessarily distinct from the market of the original.��For example, music covers disseminated on YouTube can be understood as a separate market from existing works. Rather than competing with an existing work, it is possible to argue that by transforming an existing work into a new work, a different market and/or audience is thereby created.

We must nonetheless recognize that the author of the new work may invariably compete with the market of the existing author. Take for example Justin Bieber’s early YouTube cover of Chris Brown’s song “With You.” It can safely be said that these two authors are now competitors in the same pop-music market.

Panellists, Professor Trosow and legal practitioner Marian Hebb, alluded to the possibility of a remuneration scheme whereby revenues of commercially successful UGC is allocated between authors, users, and disseminators. This��arrangement of revenue allocation through collective societies may be a useful option to consider. Of course, fairly compensating artists is an essential objective, but we must also consider that this may inhibit users from creating UGC due to fears of taxation.

Conclusion

Before users begin to fully enjoy the benefits of this new UGC provision, it is my opinion that a number of clarifications related to definitions must be sorted out. First, I think the scope of “commercial purpose”��should be limited to works which have a substantial commercial element. Purposes should be viewed on a continuum, giving flexibility to UGC provisions by permitting some nominal commercial success.

In situations where a UGC competes substantially with an existing work, I think we should consider setting up an allocation model whereby authors of existing works are remunerated by intermediaries and authors of new-works. Borrowing from the analysis in Campbell, we should be careful not to interpret s.29.21(1)(d) too broadly since the market of UGC works and existing works can be understood as distinct from one another.

While this provision is certainly a step toward a more progressive, user-friendly model, I think we have some work to do before the benefits of the UGC exceptions come to fruition.

��

Mona Zarifian is an IPilogue Editor and a JD Candidate at Osgoode Hall Law School.

The post User Generated Content: Generating More Questions than Answers appeared first on IPOsgoode.

J.K Rowling certainly felt����when thousands of fans used the characters in Harry Potter to publish their own stories online. The late J.D Salinger, on the other hand, did not feel as enamored when Holden Caulfield, the teenage protagonist in his famous novel,��Catcher in the Rye,��was����as an elderly man fleeing from a nursing home.��Despite an author's preference to keep their characters frozen in time or kept alive through exploratory recreations, section 29.21(1) of the ��may be the saving grace for super fans engaging in fan-fiction works in Canada. However, it also raises serious concerns with respect to issues of misappropriation, fair compensation, and tensions between moral and economic rights.

Since the UGC provision is the first of its kind, its interpretation in the context of litigation has yet to be seen. It is therefore imperative to open up a dialogue between creators of copyright-protected works, users, and lawyers with respect to the scope and limitations of the UGC exceptions. The IP Osgoode symposium on User-Generated Content Under Canadian Copyright Law��provided a forum for panelists to do just that.

What Rights Should the Authors of an Existing Work Have? Toward a Private Model for UGC

What rights, if any, do authors of an existing work have in relation to a fan-fiction creation?��On the one hand, a fan-fiction creation can be understood as a derivative work, finding its origin only in relation to the existence of a previous work. However, it can also be argued that both works are distinct and original under Canadian Copyright law.

In her presentation on the legal aspects of fan-fiction, lawyer , suggested that the UGC provisions should strive to reflect the Act's pre-existing policy by limiting reproduction for private purposes to “only for the individual's private purpose” as seen in .��In her proposed private UGC framework, dissemination of a UGC work (such as fan-fiction) would only be possible if the copyright holder initially authorized the distribution of the new work and received fair remuneration from intermediaries.

The idea of creating a private model of the UGC exceptions is a worthwhile idea to consider, especially in light of the complications which arise under . Guarding the (potential) market of an existing work could be made possible by preventing fan-fiction creations (which compete against or deplete the commercial value of an existing work) from being distributed.

Moreover, this arrangement would encourage greater communication between authors and users at the outset of dissemination, thereby ensuring that creators of fan-fiction stay within the limitations of UGC and do not overstep the boundaries of the exception.

What About the Rights of Fan-Fiction Creators and Users?��

While granting authors the right to control the distribution of fan-fiction works may achieve the goals of fair compensation (particularly in situations where a fan-fiction author financially benefits from the labour and skill of another), the interests of the public are nonetheless at stake.

Browsing reveals that fan-fiction is not only an opportunity for fans to share new stories and recreations of their favourite characters, but it also serves as an imaginative platform for a diverse fan community.��The dissemination of knowledge and intellectual creations, flowing from both authors and users, is therefore essential to the world of fan-fiction. When considering a private model to UGC exceptions, we must ensure that the goals of the free and public knowledge are met and that fans will still be able to meaningfully contribute to the works of authors.

��

We should therefore be wary of giving the considerations of authors too great a role in interpreting UGC exceptions as this may run the risk of granting copyright holders an inappropriately broad gate-keeping role with respect to user access of the s.29.21(1) provisions. (This is better left to the Canadian .)

A move toward a private model of UGC, whereby an author has the initial right to preclude the dissemination of a fan-fiction work may tip the balance disproportionately in favour of author rights. We should perhaps consider by starting off with a scheme of remuneration whereby creators of fan-fiction and intermediaries that have received financial success must compensate authors of existing works.

This approach may help strike a fair balance between the rights of users to enjoy artistic creations and build upon them, and the rights of authors to be appropriately remunerated.��After all, while it may be flattering for authors, it is still tough work to have thousands of fans standing on their shoulders.

Mona Zarifian is an IPilogue Editor and a JD Candidate at Osgoode Hall Law School.

The post Fan-Fiction as User Generated Content: Free Ride or a Free Right? appeared first on IPOsgoode.