Nikita Munjal is a 3L JD/MBA Candidate at Osgoode Hall Law School. This article was written as a requirement for Prof. Pina D’Agostino’s IP Intensive Program.

Using the Internet inevitably requires consenting to have your personal information used, collected, and disclosed by the websites you visit. A common reason for individuals, corporations, and non-profit organizations to collect your personal information is to influence your behaviour online, from your to your . One of the most effective ways to influence consumer behaviour online is through targeted advertising.

Value for Advertisers

Access to personal information has become necessary for advertisers to convert potential leads into customers. Think back to 2012, for example, when a suggested that a statistician working at Target predicted a teenage girl’s pregnancy based on her shopping habits. What did Target do with this information? It mailed her coupons for baby clothes and cribs.

that the value of your personal information to advertisers depends on various factors. Factors influencing value include your gender, race, and sensitivity of the information (that is, cost more than ). If, for example, the target audience for a new sneaker launch is young males of middle eastern origin, the spent to acquire your personal information is a minor investment to incur to influence you to purchase $180 sneakers.

Value for Users

Traditionally, users have valued the ability to share their personal information while using online services, like search engines or social media platforms, citing their .

However, increasingly, . This trend has mobilized startups in Silicon Valley to appeal to privacy-conscious users by providing them an incentive to share their personal information. Known as paid-to-surf models, companies in this space require their users to install browser extensions to track their browsing.

What monetary value do some privacy-conscious users demand to share their personal information? $20 a month for users of . Others are . While these paid-to-surf models have the potential to be disruptive, they are not yet a viable alternative, as users must surf a certain amount before they can cash out. ��

Value Going Forward

The tech industry has built empires based on collecting, using, and selling its users’ personal information to third-party advertisers. Surprisingly, some factions of the tech industry are modifying their business models to limit the tracking of personal information. Apple, for example, introduced a new iOS in 2021, s. Similarly, on its Chrome browser is estimated to impact millions of advertisers.

Apple and Google argue that these changes are necessary to respond to increasing and customer sensitivity to sharing personal information (the IPilogue has documented increased regulation in the and ). However, , including , lament that the changes are veiled anti-competitive practices.

Interestingly, increasing barriers to the online advertising ecosystem may benefit users. If access to personal information becomes impeded, interested parties may need to incentivize users to share their personal information, increasing users’ bargaining power. Although it is unclear what effect Apple and Google’s changes will have on the ecosystem, I am hopeful that users can leverage more control over their personal information for fair compensation by technology companies or advertisers for their valuable commodity.

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Nikita Munjal is a 3L JD/MBA Candidate at Osgoode Hall Law School. This article was written as a requirement for Prof. D’Agostino’s IP Intensive Program.

I loved my placement with the (CBC).

Walking to the Toronto office on the first day of my placement, I felt nervous about whether I’d fit in with the seasoned legal team. Like most of my law school experience, I had worked myself up over nothing. The warm welcome I received from the lovely legal assistants, Justine and Celena, and my placement supervisor, Dan Ciraco, made me feel like a valuable member of the team. That feeling never faded during my 10-week placement, and a key reason for my positive experience is the thoughtful guidance and mentorship I received from Dan and my lawyer mentors.

My placement with CBC was possible due to Osgoode Hall Law School’s (IP Intensive). Pioneered by Osgoode , the IP Intensive is an innovative program that places third-year JD students in an organization heavily involved in IP matters. The first two weeks of the program function as a “boot camp” by introducing students to the fundamental aspects of IP and technology law. Immediately after, students are ushered off to their placements, allowing them to develop their interpersonal and practical legal research and writing skills. As I reflect on my experience, I can honestly say participating in the IP Intensive has been the highlight of my time at Osgoode.��

At the beginning of each week, I was assigned a mentor from either the Business Law or Media Law Group. I spent time with the Media Law Group learning about the importance of the open-court principle, drafting submissions to the Federal Court, vetting stories, conducting legal research on the responsible communication defence, and attending a trial at the Federal Court of Appeal.

One of my most memorable experiences with the media lawyers occurred during my second week when I joined a call with the executive producers of an upcoming Fifth Estate documentary. I learned how to evaluate scripts to determine the level of legal risks accompanying a story by listening to the lawyers ask questions about the investigative process. Watching the documentary evolve from the initial script to the final screener, I gained an appreciation for the role CBC’s in-house counsel plays in supporting journalists to tell stories in the public’s interest.

I tailored my experience with the Business Law Group reviewing contracts, drafting amendments, and conducting research interpreting specific contractual provisions. A significant highlight for me was learning about contractual drafting and negotiation from my mentors. Contract drafting, I realized, can be a very personal exercise. Lawyers’ drafting choices can sometimes explain the minute changes between two contracts rather than reflecting any developments in case law. One of the most important lessons I learned from the business law team was navigating complex issues with no clear legal answer. We’re taught how to think like lawyers in law school, but the issues we solve are hypothetical. In practice, your clients still require solutions to their problems even if the law is unclear or unhelpful. Finding solutions to novel issues involves delicately balancing business knowledge, capital constraints, and the interests of different stakeholders.

As you can see, my placement taught me a lot about practicing law. However, the aspect of my internship I will treasure the most is the mentorship the lawyers provided me. I got to experience the best of both worlds by having a hybrid internship. I would try to coordinate my days in the office with my Toronto mentors, so we could go out for lunch or have impromptu chats in the hallway. My Montreal and Vancouver mentor’s enthusiasm and virtual check-ins never made me feel like I was missing out. Thinking back to a time before hybrid workplaces, it seems surreal that I might have never gotten to work with them.

I want to thank Professor D’Agostino and Ashley Moniz for securing placements and providing students with experiential experience early in their legal careers. I’d also like to extend my gratitude to my CBC supervisor, Dan Ciraco, and my lawyer mentors – Kat, Trevor, Danielle, Azim, Stephanie, Eve, Stephany, and Marguerite – for providing me with such a positive experience. If you are considering applying for the IP Intensive, I highly recommend choosing CBC for your placement.

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Nikita Munjal is an IP Innovation Clinic Fellow and a third-year JD/MBA Candidate at Osgoode Hall Law School. This article was written as a requirement for Prof. Pina D’Agostino’s Directed Reading: IP Innovation Program course.

Artists in the digital space have always been vulnerable to the unauthorized distribution, copying, and sale of their work. Still, the for creating non-fungible tokens (NFT) has accelerated the . Listing someone else’s artwork on an NFT marketplace is as simple as saving a copy of the work from an artist’s website or social media platform and uploading it onto a marketplace where it is minted into an NFT. The rampant theft has forced some artists to , limiting the ability of artists to profit from the commercialization of their IP.

What Can Artists Do When Someone Else Mints their Work into an NFT?

Copyright law provides recourse to authors who feel their work has been minted into an NFT without permission, but as copyright attorney cautions, “IP considerations get very complex very quickly.” The author of a copyright-protected work can bring a claim for copyright infringement, but this is contingent on knowing the infringer’s identity. Many NFT marketplaces do not require the person listing the piece to provide proof of ownership or personal information. Alternatively, authors can inform marketplaces of copyright infringement and request the removal of infringing content. Some marketplaces, like OpenSea, provide artists with a when they suspect someone is infringing their IP. However, this mechanism places the burden on artists to monitor marketplaces for infringement and is given the number of requests OpenSea receives to take down listings.

What Can Be Done?

Various stakeholders that can implement changes to reduce the likelihood of thieves profiting from the commercialization of others’ IP. First, marketplaces should partner with companies like DeviantArt, which have created to scan public blockchains and third-party marketplaces and inform users of any potential infringement. This recommendation would still require artists to verify the results and report an infringement to marketplaces. However, artists would be aware of the infringement and could use their platforms to inform consumers of the scam. Second, marketplaces need to overhaul their process for verifying listings. For example, , it updated its requirements for listers to “provide their names, a photo of themselves, proof of them creating the work, and a digital portfolio.” Third, consumers should do their due diligence by reaching out to artists to verify the authenticity of the NFT before purchasing. Alternatively, consumers should purchase from auction houses like Christie’s or Sotheby’s to reduce the likelihood of buying a fake.

Incorporating these changes will require significant investment from stakeholders. However, since art is a cultural tool and an economic driver, those who create work should be protected by all invested stakeholders.

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Suryast painting generated by the AI tool RAGHAV. Photo by Sukanya Sarkar (ManagingIP.com)

Nikita Munjal is an IP Innovation Clinic Fellow, a Student Editor with the Intellectual Property Journal, and a third-year JD/MBA Candidate at Osgoode Hall Law School.

Sabrina Macklai is an IPilogue Senior Editor and a 2L JD Candidate at the University of Toronto Faculty of Law.

��In September 2021, the IPilogue that India’s copyright office recognized the RAGHAV Painting App (“RAGHAV”), an artificial intelligence (“AI”) tool, as an author of the copyright-protected artistic work, Suryast. The work (reproduced above) was “created” using a base dataset of Vincent van Gogh’s Starry Night painting and a photograph taken by Ankit Sahni, the IP lawyer who created RAGHAV and the work’s listed co-author. Like a natural person, AI might use a painting or photograph as inspiration for their work; unlike a natural person, however, AI can “create” work at an exponentially fast pace. AI’s capability to outperform natural persons is just one of the reasons why its authenticity as an author, sole or joint, is controversial. Labelling the work as a “creation”, as opposed to an “output” or “generation”, has been .

Following registration in India, Mr. Sahni also achieved success in registering RAGHAV as his co-author for Suryast with the (“CIPO”) in December 2021 (CIPO, registration number 1188619). This registration marks the first time Canada has attributed copyright authorship to a non-human, signaling a victory for stakeholders who firmly support an amendment of Canada’s Copyright Act (“t��� Act”) to support the changing needs of innovators and consumers in a high-tech world. Recognizing AI as an author may spark further in the Canadian AI sector.

On the contrary, some scholars, including Osgoode Hall Professor Carys Craig, expressed disdain over CIPO registering AI as an author before the government released the conclusions of their (IoT). Concerned stakeholders had from to submit evidence on whether and how amendments to the Act should be made to achieve its underlying policy objectives while ensuring that Canada’s economy “” The discussed three possible approaches for recognizing AI authorship in the Act:

1. Attribute authorship of AI-generated works to the person who arranged for the work to be created;
2. Clarify that copyright and authorship applies only to works generated by humans (i.e., requiring some human participation for AI-generated works to receive authorship); and
3. Create a new set and unique set of rights for AI-generated works.

It seems that CIPO’s registration of Suryast signals the Canadian government’s enthusiasm for the second proposed framework, since RAGHAV is a listed co-author along with its human counterpart Mr. Sahni. However, since the submissions have yet to be publicly shared, some find that this registration amounted to CIPO “jumping the gun” and undermines the purpose of running a public consultation.

While recognizing AI as an author can lead to further innovation in AI-generated works, many drawbacks exist. Some of the most notable arguments are included in a on the public consultation by 14 Canadian IP scholars. They recommended against recognizing AI as an author and argued that AI-generated works should remain in the public domain. There are technical arguments that the language of the Act implies human authorship and that AI-generated works cannot meet the threshold of “originality” required for copyright subsistence. Further, scholars emphasize that “giving copyright to AI-generated outputs serves none of the [public interest] purposes of copyright protection.” As the Supreme Court of Canada noted in , copyright is usually presented as “a balance between promoting the public interest in the encouragement and dissemination of works of the arts and intellectual and obtaining a just reward for the creator” (at paras 11-12). Where a work lacks significant human involvement (i.e., is truly AI-generated), the scholars argue that no author is denied their “just reward”, as an act of authorship is missing. Similarly, they argue that there is no reason to assume that AI-generated works will be under-produced in the absence of copyright protection, and so the incentive copyright is meant to provide is absent.��

It is important to remember that once an applicant files their registration with CIPO, the office conducts a formal check of the details submitted in the application. Neither this oversight process nor the certificate of copyright registration amounts to a guarantee of the legitimacy of ownership or that the originality of the work will remain unchallenged. The lack of critical examination throughout the process is significant and may not be the victory for AI that many proclaim it to be. Theoretically, granting registration imparts onto the AI “author” the same rights and remedies that a human author would receive under the Act. An AI could enforce its copyright if a user is infringing. However, a user could challenge an AI’s copyright-protected work on the grounds that it lacks originality and, therefore, lacks copyright altogether. While this is a hypothetical situation, given the amount of controversy this registration has generated, it would be unsurprising if legal action followed.

Although the reach of this registration is limited, it does showcase the growing uncertainty around how AI interacts with copyright laws. Only time will tell where Canada stands on AI authorship as we await the results of the public consultation. Regardless of the position taken, the government must act urgently to address AI and copyright. These questions only become more complex as technology evolves.

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Photo from , Smithsonian Design Museum, 1926.

Sabrina Macklai is an IPilogue Senior Editor and a 2L JD Candidate at the University of Toronto Faculty of Law.

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Nikita Munjal is an IP Innovation Clinic Fellow, a Student Editor with the Intellectual Property Journal, and a third-year JD/MBA Candidate at Osgoode Hall Law School.

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While many were observing the new year, intellectual property scholars and the artistic community were celebrating . January 1^st marks the expiration of most jurisdictions’ copyright terms. The previously copyrighted works enter the public domain, free to use and copy. In 2022, A. A. Milne’s Winnie the Pooh, among other famous characters like Felix Salten’s Bambi, entered the U.S. public domain. Already, versions of the beloved teddy bear are making rounds on , with celebrity even introducing his own “Winnie-the-Screwed” book in an ad for Mint Mobile.

Though the expansion of the public domain is cause for celebration, the honey-loving bear was already freely available for use in Canada since 2006. Works enter the public domain on a country-by-country basis, depending on the jurisdiction’s laws. Canada currently maintains a shorter copyright term than the U.S, set at . In contrast, generally subsists for 70 years after the death of the author or 95 years after first publication for works-for-hire. In other words, all works of corporate authorship first published in 1926, such as Winnie the Pooh, did not become freely available to use in the U.S until the end of 2021.

Copyright terms were not always this long. The U.S.’ first established a copyright term of 14 years, with an optional 14-year renewal period for living authors. This term was eventually extended to 28 years (with a 28-year renewal option) by a , then even further to 50 years from the author’s death in . Lobbying by the American entertainment industry, especially Walt Disney Co, led to the enactment of the , which not only increased U.S. copyright terms but applied them retroactively. Under the former legislation, Winnie the Pooh was to enter the public domain in 2006, 50 years following A. A. Milne's death, but the Extension Act delayed its entrance by 16 years.

The mismatch between copyright terms amongst jurisdictions poses various problems, especially in our digital age. While the public was free to use and copy Winnie the Pooh’s image in Canada long before January 1, 2022, they had to be careful not to make their works accessible in the U.S. or other jurisdictions such as the where the work was still protected by copyright. Though the Berne Convention for the Protection of Literary and Artistic Works, worldwide, attempted to provide some standardization by mandating a minimum copyright term of 50 years after the author’s death, countries like the U.S. have adopted longer terms and ignore the “rule of shorter term”, which provides that the term of copyright in a work created in a foreign country may not exceed the term received in its origin country.

While U.S. copyright terms remain one of the world’s longest, this will soon change due to the (CUSMA), which came into force on July 1, 2020. , Canada has until the end of this year to extend their term of copyright protection to 70 years after the author’s life, in harmony with the U.S. This requirement has garnered much controversy, as user rights advocates are concerned that it will lead to a 20-year gap of materials entering the public domain, significantly restricting access to works. In response to these concerns, Innovation, Science and Economic Development Canada released a noting several limitations and accompanying measures that Canada may choose to adopt to mitigate any potential harms of term extensions.

What does this mean for Winnie the Pooh? As it has already entered the public domain, any changes to copyright terms will not retroactively affect the bear’s status. However, it is important to note that the Winnie the Pooh available for use differs from Disney’s version, which is still under copyright and protection. Only the characters and stories from A. A. Milne’s original 1926 works are freely available. As author Tim X Price , “Red shirt on the bear, artists beware. If nude he be, your bear is free.”

Although Disney did not protest Winnie the Pooh’s entrance into the public domain, some intellectual property experts expected the corporation to lobby for extended copyright terms, as it has successfully done in the past. Granted, the rise of the Internet has , as empowered grass-root organizations and the public fight back against such efforts. Nevertheless, if Disney were to revive its lobbying efforts, it would likely be soon as the Steamboat Willie version of its beloved mascot, Mickey Mouse, is set to enter the public domain on January 1, 2024.

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Photo Credits: (The image above is that which received copyright protection)

Nikita Munjal is an IP Innovation Clinic Fellow, a Student Editor with the Intellectual Property Journal, and a third-year JD/MBA Candidate at Osgoode Hall Law School.

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Creative works, such as artworks, qualify for copyright protection if they are original. It is not surprising that human artists are granted such protections. The labour, skills, and expertise required to create are apparent to anyone who dabbles in the fine arts or enjoys its casual consumption. However, recent developments in India may signal the emergence of a new era of protection extending beyond humans to include artificial intelligence.

In August of 2021, India’s copyright office recognized the RAGHAV Painting App, an artificial intelligence tool, as , Suryast. According to Ankit Sahni, an IP lawyer who owns RAGHAV and is the co-author of Suryast, the copyright office rejected an application listing RAGHAV as the sole author. Competing conceptions of ‘authorship’ and ‘originality’ in the copyright community explain this rejection.

There are two opposing views on authorship and originality regarding copyright protection for AI-assisted or AI-generated works. Some stakeholders believe an author must be a natural person. They assert that copyright law is meant to “,” and extending copyright protection to AI would result in irreparable economic harms since humans would not be able to create at the same pace as AI. These proponents recommend extending copyright only to AI-assisted works, rather than AI-generated works, given that a natural person was involved in the creative process.

Others assert that denying AI-generated works copyright protection would stifle innovation. Given how integral AI has become for businesses and research, any nation that adopts laws favourable to AI could boost its economy by attracting investors and businesses.

Which side of the spectrum is Canada on?

The Copyright Act does not explicitly define the term “author” or whether an AI application can be an author of a work. However, Canadian copyright jurisprudence has previously suggested that an author “must be a natural person who exercises skill and judgment in creating the work.” Moreover, the exercise of skill and judgment required to produce the work “” (at para 16).

In July of 2021, acknowledging AI’s potential for challenging notions of authorship and originality, Innovation, Science and Economic Development Canada (ISED) launched a consultation titled . Invested stakeholders had until September 17, 2021, to provide submissions on what policy measures should be undertaken to ensure that Canada’s copyright framework “continues to achieve its underlying policy objectives and related priorities in the face of the challenges brought about by AI and the Internet of Things.”

Any decision the Canadian government makes regarding the copyright framework will not exist in a vacuum; it will be affected by developments in other jurisdictions. The , , and the are just a few entities that have held consultations on whether intellectual property frameworks are the appropriate venue to address these matters. Indeed, given how closely this decision from India followed the , it seems to be only a matter of time before Canadian copyright laws are amended.

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

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

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

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

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

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

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Nikita Munjal is the IPilogue Content Manager, an IP Innovation Clinic Fellow, and a third-year JD/MBA Candidate at Osgoode Hall Law School.

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In January 2021, the then-acting president of the United States, Donald Trump, from Facebook for statements he had made in the immediate aftermath of the violent insurrection which took place at Capitol Hill. Trump’s comments were seemingly the last straw for the social media giant who had repeatedly cited its commitment to upholding free speech in defending its stance on Trump’s use of inflammatory language on the platform.

However, Facebook’s decision in January was not final. When accounts are banned or posts are removed from Facebook or its subsidiary, Instagram, users can appeal the decision to the quasi-judicial body, Alternatively, Facebook can refer cases to FOB to determine whether its decision had been fair, as was the case here.

FOB’s Decision

In early May 2021, the that Facebook was justified in suspending Trump’s accounts. However, they stated that it was “not appropriate” for Facebook to impose an indefinite suspension, which contravened Facebook’s standard operating procedure. Facebook’s penalties usually pertain “removing the violating content, imposing a time-bound period of suspension, or permanently disabling the page and account” (at p.1). FOB gave Facebook six months to reexamine its arbitrary penalty and give an appropriate penalty based on the gravity of the violation and the prospects of future harm.

Facebook’s Response

In June 2021, approximately a month after FOB’s decision and within the six-month time period, Facebook : Trump’s suspension from Facebook and Instagram will last for two years, effective from the initial suspension date. However, at the end of the two-year period, Facebook will reassess whether the risk to public safety has receded.

Unsurprisingly, this set of decisions has garnered mixed reactions. Some writers have stated that this is a victory for Trump, who could return to the social media platform in time for a potential 2024 presidential run. Others have argued that this is a victory for Facebook since it could decide whether to continue to the suspension or allow Trump back on its platforms ��based on the political landscape at the time while hiding their rationale behind the risk posed to public safety.

Broader Implications for Free Speech on Social Media

Trump’s social media presence during his presidency exacerbated the discourse around regulation and moderation of content posted on social media. Specifically, questions have arisen as to whether corporations or governments are better positioned to regulate content on social media.

Some industry members including FOB member and former prime minister of Denmark, Helle Thorning-Schmidt, are calling for . These proponents cite its funding, autonomy from Facebook, and diverse membership as reasons for its potential success in regulating the space. However, not everyone agrees with that position. For one, FOB seems powerless in for its role leading up to the insurrection. This is not to suggest that Facebook is the only social media platform grappling with finding an appropriate balance between promoting free speech and preventing harm; however, its role cannot be understated.

Critics argue that FOB’s decisions by focusing too much on corporate oversight. Instead, the focus should be placed on passing legislation that curtails Big Tech’s business models and protects users from their voraciousness.

Currently, the Canadian federal government is preparing to unveil legislation regulating social media content. The legislation to be modeled after Germany’s NetzDG law, which requires social media platforms to remove illegal content under tight deadlines or face severe fines.

warn that following Germany’s precedent could be problematic for two reasons. First, it won’t effectively deal with content that is “lawful but awful”, that is, content that is legal but is known to create real-world harm. Given the Charter of Rights and Freedoms’ broad protections for freedom of expression in Canada, it will be difficult for the government to curb the expression of harmful ideas in public spaces. Second, the legislation could set a bad example for countries that criminalize forms of expression protected under international human rights law. Laws that impose severe penalties on social media companies for failing to remove illegal content under a nation’s laws could increase the criminalization of political dissenters and minority communities. To address these concerns, scholars suggest Canada adopt a multilateral approach by working with other rights-respecting democracies to prevent the internet from “splintering into a series of national networks.”

Ultimately, until the federal government unveils the legislation and holds consultations, it is difficult to predict its effectiveness. However, online content requires regulation, whether that be from corporate entities, governments, or something in between.

The post Facebook Bans Donald Trump for Two Years, but the Discussion on Regulating Free Speech on the Internet is Just Beginning appeared first on IPOsgoode.

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.��

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

91��ɫ v The Canadian Copyright Licensing Agency, 2020 FCA 77

On April 22, 2020, the regarding a dispute between 91��ɫ (“91��ɫ”) and The Canadian Copyright Licensing Agency (“Access Copyright”), holding that the tariffs set against 91��ɫ by the Copyright Board are not mandatory, but dismissed 91��ɫ’s counterclaim regarding the fair dealing guidelines. Access Copyright had sued 91��ɫ 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 91��ɫ opted out of the tariffs in 2010, they are not enforceable against 91��ɫ. 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
91��ɫ 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 91��ɫ’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 LAW��

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.�� 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.��

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 Claim��

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 summarized��, “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 summarized��) 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 Plan����against 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 Jordan����in 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 team����Europe’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 into��. 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 Pandemic��

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 the���� in July. Luxury fashion companies are now monetizing their brand value through this����i.e., face masks and shields, which have become the new reality and necessity of everyday life. Fashion brands like����have already filed applications for their trademarks in classes 9 and 10 with the USPTO and other countries for “Protective” and “Respiratory Masks.” In September,����for its uniquely styled��Toile Monogram print for its��Face Shield, filed for��“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).����

On the other hand, , Nike, and����masks also lead the charts of most searched and purchased masks.��Small 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 as��. A Chinese company has filed a trademark infringement suit for its brand����in the Illinois state. Furthermore, on December 14, 2020 the����announced 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 an����from such luxury and burgeoning fashion brands.����

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 a����that 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 is��the 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:��Meghan Carlin, Emily Xiang, Joaquin Arias, Sarah Raja,��Saumia Ganeshamoorthy

Patents:��Dan Choi, Gurbir Sidhu,��Khristoff Browning, Jin Xu,��Madelaine Lynch

Trademarks:��Adele Zhang, Aishwerya Kansal,��Jingcai Ying, Eloise Somera, Lauren Chan

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

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The Shift from Traditional Care Delivery to Telehealth - The End of the ‘Waiting Rooms’?

The panel discussed the potential permanent shift from traditional healthcare delivery to telehealth. More specifically, the panel was asked to comment on the increasing shift to virtual care for stigmatized conditions such as mental health issues. Although there are certain benefits to using virtual-care as a means to move away from or supplement the traditional in-person delivery of some forms of health care, such a shift does not come without its risks.

The use of telemedicine in Ontario is , however, since the onset of the pandemic, are now seeking medical care through virtual means. Telehealth offers the benefits of eliminating wait-times and providing a safe and comfortable space for patients to seek services such as mental health care that are still stigmatized in society. The that are often linked with virtual-care involve a lack of control by patients over the use and sharing of their personal health information. Although there are regulatory frameworks set in place to protect patients, increasing reliance on digital means of collection and transfer of health-related data puts patients’ privacy at significant risk. These are issues that are expected to be addressed as we continue to adapt to the changes that the pandemic has imposed on our lives.��

Lack of Accessibility of Canada’s Contact-Alert App

A key topic of discussion for the panel was the problems caused by contact-tracing applications. Attendees might have expected the panelists to delve into privacy issues regarding Canada’s COVID alert app. However, the panelists agreed that the federal COVID alert application is privacy-friendly, a statement . A point of contention among privacy watchdogs is the labelling of the app as a “contact-tracing” application since the federal application is an . The distinction between the two types of applications is important because they differ in how they protect privacy and public health.

The federal COVID alert app does not collect personal information, nor . Instead, the app produces random codes and uses Bluetooth technology to exchange codes with other devices in physical proximity that have the application installed. If a person tests positive for the virus, they are given a key to input into the app. Once inputted, people who could have been potentially exposed over the last 14 days are notified. The entire process is voluntary.

The panelists were far more concerned about the lack of inclusivity of the application.�� The app users to have Apple or Android phones made in the last five years, a relatively new operating system, and wireless access. These requirements make the app for older Canadians and other marginalized groups, who are already disproportionally impacted by the virus. of the application design blame the lack of accessibility on the government, asserting it is the government’s responsibility to ensure that the application is available for all Canadians. For the application to be successful, 65-80% of all Canadians need to use it. However, Canadians still do not have access to the app, partly because not every province has implemented its version or the federal version. While the app is just one aspect of the broader global health response to COVID-19, if it were accessible to more of the population, it could be an integral aspect of Canada’s public health response.

Acknowledgements

The panel consists of a breadth of discussion on balancing privacy and public health during the pandemic, and we would like to thank the panelists for sharing their expertise with attendees!

Written by Bonnie Hassanzadeh, IPilogue editor and Clinic Fellow at Osgoode Innovation Clinic.

Written by Nikita Munjal. Nikita is an IPilogue Editor, Clinic Fellow with the Innovation Clinic, and a JD/MBA Candidate at Osgoode Hall Law School.

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