2011 will be remembered as a year of social movements and political upheavals in many parts of the world. This trend of transformation and development extended to Canadian and international intellectual property law. As a tribute to 2011, here are some of the most important intellectual property issues that IPOsgoode covered in the past year.

Business Methods Patents and the Amazon.com Appeal: The ongoing saga regarding the patentability of Amazon.com’s�� ‘1-click’ shopping method in Canada was the subject of much debate in 2011. The Federal Court of Appeal (FCA) finally in November 2011, directing the application back to the Commissioner of Patents, mandating that it be re-examined according to its articulation of the test for patentability, and highlighting that the scientific or technological requirement was subjective and not determinative in granting a patent. The Canadian Patent Office has now allowed the Amazon.com 'one-click' patent application. It remains to be seen if an appeal of the FCA decision will reach the Supreme Court of Canada (SCC) in 2012 or beyond.

Across the pond, the European Patent Office (EPO) did not have any trouble finding that the 1-click system was too obvious to be patentable. It ruled that using cookies to simplify the online shopping process neither filled a much-needed void in internet inventions, nor created something new and unobvious to a person skilled in the art of cookie technology. In response to this confusion, the CIPO issued new guidelines for its patent examiners in August 2011, broadening the scope of the term ‘actual invention’, while emphasizing that the categories of patentable subject-matter were to be strictly adhered to. By September, speculation was rife whether the Canadian court would allow itself to be influenced by the EPO and the interesting US decision of Cybersource Corporation v. Retail Decisions Inc., both of which ultimately denied patentability to business methods, for varying reasons.

Patenting of Genes: Both the US and the UK handed out important decisions regarding the patentability of genes in 2011, possibly changing the criteria of what has long been considered non-patentable subject matter. In the Association for Molecular Pathology v. Myriad Genetics, the Court of Appeals for the Federal Circuit decided that two human gene patents that were used as detectors for breast cancer in women were patentable, since these had been isolated and were, hence, ‘markedly different’ from naturally existing DNA. In Human Genome Sciences Inc v. Eli Lilly & Co., the UK Supreme Court (UKSC) extended the industrial applicability requirement to genes and, by extension, to biological material. By doing so, the UK’s stance on gene patenting was brought more in line with that of Europe and the US. If the Canadian courts have a chance to rule on a similar decision soon, it will be interesting to see which jurisdiction, if any at all, will be more influential on them.

Masterpiece Trade-mark Decision by SCC: In May, the SCC released its decision in Masterpiece Inc. v. Alavida Lifestyles Inc. and clarified important legal principles concerning the interrelationship in Canada between common law trade-mark rights and those rights which flow from registration.�� The Court held that the Canadian Trade-marks Act gives priority to trade-marks based upon first use, not first registration. The Court also held that the registration system grants national monopolies regardless of the geographic scope of the registrant’s operations.�� In contrast, common law passing off requires proof of a protectable reputation in the same geographic area as the impugned user. The Act altered the common law by requiring a confusion analysis for registered marks with the hypothetical assumption that both marks are used in the same geographic area.

Target Trade-mark Disputes: The legal battle between Target Corporation of the US and Target Apparel of Canada reached a head in 2011, leading to what might best be considered an insufficient compromise for Target Corporation, but one that shows the tendency of Canadian courts to use injunctions sparingly. Target Apparel’s marketing of its clothing using colours, words and symbols that are similar to the American retailer’s, and the subsequent impact this would have on Target Corporation’s reputation, goodwill, and brand once it opens Canadian stores in 2013 were the major points at issue in the case. In dismissing the request for an injunction, the Canadian court’s decision affirmed that the similar branding styles between the two parties could indeed create confusion for consumers, but added that any similarity between the two ended there. Only time will tell if both Targets will be able to coexist in reality, but in the mind of the court, it seems that they definitely will.

Domain Name Developments: 2011 saw three significant changes to the existing policies of the award and management of online domain names in Canada

The Canadian Internet Registration Authority's (CIRA) domain dispute rules were modified, with a focus on streamlining the policy to eliminate the previously broad test for confusion to a “narrow resemblance” test. Further, a "bad faith factor" was added to help determine whether a domain name is for commercial gain. Finally, the new policy did away with the old requirement for the establishment of a generic domain name before the establishment of a legitimate interest. The aim of these refinements was to ensure ease of process and consistency with the other policies that control domain names in Canadian law.

In August, the Ontario Court of Appeal (OCA) ruled in Tucows v. Renner that domain names could be considered personal property in certain instances. Using the fact that the Ontario Rules of Civil Procedure did not have a specific definition of ‘personal property,’ and building on previous decisions, the OCA held that the “possession and control over a domain name gave an individual rights sufficiently similar to the rights considered to define a property interest at common law,” in addition to considering intangible property as disputable subject matter.

Another fascinating development was the Internet Corporation for Assigned Names and Number’s (ICANN) decision to open up the field of gTLD domain names, by allowing the registration of any word, branded or otherwise. ICANN cited as the chief reason for this move its desire to “unleash innovation and global creativity, which could be restricted by scarcity of domain names and a lack of competition and opportunities,” but critics have argued against its necessity, usefulness, pricing and efficiency. The new system has just come into effect in January 2012.

Hyper-linking and Defamation: In October, the SCC handed down a significant decision in Crookes v. Newton freeing hyper-linkers from defamation liability. The decision was a novel twist from the rules of third-party publication in libel law, and the SCC has been hailed for considering the importance of bringing traditional law up to speed with internet technology. The IPilogue was pleased to publish analysis and commentary from both counsel for the plaintiff and counsel for the respondent.

Historic Copyright Hearings at the SCC: In December, the SCC signed off 2011 in style by hearing 5 key cases on appeal from the Copyright Board of Canada and thereby providing plenty of fodder for thought, debate and discussion over the holiday season. IPOsgoode published first-hand accounts of the proceedings.

The arguments in two of the cases, Rogers v. SOCAN and ESA v. SOCAN, related to the elimination of royalty payments for online music downloads. At issue was whether such activities involved a “communication to the public”. Rogers, for example, submitted that each download was made on a one-on-one basis and, hence, could not be deemed as ‘to the public,’ while ESA focused on the inherently public nature of ‘communication,’ in that it is fundamentally performance-based.

In SOCAN v. Bell, the issue was whether the 30-second previews offered by the Apple iTunes Store constituted fair dealing and whether Apple should be subjected to royalty payments for their use.

Alberta v. Access Copyright dealt with the question of applying a tariff to teacher-initiated copyright in secondary education institutions in Alberta. Both sides referred to the SCC’s decision in CCH Canadian Ltd. (2004), with the appellants characterizing the student’s purpose, along with viewing the teacher as the ‘driver of copying’ at the core of the argument. The respondents distinguished the facts of the two cases.

Finally, in Re: Sound, the appellants argued for the application of a tariff on music played in movies and television, by considering neighbouring rights under the Canadian Copyright Act consistently with the Rome Convention. The respondents on the other hand, denied that the Convention allowed for the application of tariffs, preferring instead to stick to the ‘plain meaning’ of the Act.

Social Media, Privacy Concerns and Access to the Internet:�� Facebook’s privacy policy, ever a controversial issue, came under fire again in 2011, with its decision to allow third-party developers access to users’ personal information being regarded in direct violation of Canada’s PIPEDA and, more importantly, the integrity and trust users placed in the social media website. Such concerns continued after Facebook’s new privacy policy was unveiled, with workplace firings (as an example) due to the exposure of comments on the site being attributed to access provided by third parties. A further issue also involved cyber-bullying, and where the limits between what constituted alleged criminal harassment and freedom of expression could be drawn.

In June, the United Nations’ declaration that internet access was a fundamental human right served to bring newer forms of communication within the mantle of existing laws, but did not give much direction on how such a right could be protected and fostered.

Super-Injunctions, Personality Rights and Privacy: In 2011, we also saw an increased granting of super-injunctions by the UK courts and the efforts made to counter them. Lord Neuberger’s recommendations against their excessive application to prevent journalists and the media from utilizing and publishing information on famous personalities showed that they posed a threat to open justice and the freedoms of information and expression. While public figures themselves were divided as to their perceptions and necessity, the consensus was that they were a blunt, if useful, form of privacy protection. By June, the ills of the over-application of super-injunctions were becoming obvious, with efforts being made to reverse their impact through non-formal means in the UK legislature.

Top 10 Most Read Articles of 2011

1. Who Must Show Consent in an Intellectual Property Infringement Case?
2. New Bill C-11 Reintroduces The Copyright Modernization Act
3. There is No Two without Three: Bill C-32 is Dead
4. Jones v. Tsige: Snooping and Privacy in Ontario
5. How Pirates Stole Lola: Ellen Seidler Explains the Intricacies of Online Theft at CMW 2011
6. IP Osgoode Copyright Conference: Can Canada Learn Anything from Europe?
7. Targeting the Target Name in Canada
8. Amazon.com Pursues Business Method Patent At The Federal Court Of Appeal
9. Omnibus Crime Bill Raises Concerns About Privacy And Free Speech
10. A Masterpiece Of Trade-mark Clarity

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On November 1, 2011, at an event titled, “Engineering The Future”, 91��ɫ President & Vice-Chancellor Mamdouh Shoukri announced a $25-million dollar transformative donation from Pierre Lassonde, Chair of Franco-Nevada Corporation, for an expanded School of Engineering at 91��ɫ’s Keele Campus. ��The Faculty of Graduate Studies at 91��ɫ reported on the announcement in a .

“91��ɫ has wanted a full-scale engineering school since 1963, yet still has only about 300 students in specialized programs such as geomatics engineering. Now it is spending $100-million, including Mr. Lassonde’s money and $50-million from the province, on a new faculty and building expected to hold 2,000 students by 2020”, the Globe and Mail in a series showcasing philanthropists, including Pierre Lassonde.

Mr. Lassonde’s transformational donation will lead to the creation of the Lassonde School of Engineering at 91��ɫ by anchoring the construction of a new engineering building.�� In addition, the Computer Science and Engineering Building has been the Lassonde Building, as reported in an article in the , 91��ɫ's daily bulletin.�� The Faculty of Science and Engineering had the Government of Ontario’s commitment of $50 million for the new engineering building at 91��ɫ.

For a report on the announcement and celebration on November 1, 2011, read the of John Dupuis, Head of the Steacie Science and Engineering Library at 91��ɫ in his blog, .

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Today, the Supreme Court of Canada released its decision in , which considers whether the author of a website article can be liable for defamation by hyperlinking to defamatory material on the Internet.

The Court dismissed the appeal and found Newton not liable for defamation.�� Justice Abella, writing for a majority of six, held that hyperlinks are content neutral references and do not constitute a publication.�� Chief Justice McLachlin and Justice Fish co-authored reasons agreeing substantially with the majority, but found that a hyperlink should constitute publication if, read contextually, the text that includes the hyperlink constitutes adoption or endorsement of the specific content it links to.�� Justice Deschamps agreed in the result, but gave significantly different reasons.�� Deschamps outlined a comprehensive test for defamation by hyperlinking, found that at least one of the impugned hyperlinks was a deliberate act constituting a publication of defamatory content, but found insufficient evidence that the defamatory content was received by a third person.

This decision could have implications for copyright law and whether hyperlinking could be considered a publication or reproduction.

We are very pleased that, early next week, we will be publishing feature posts by counsel who appeared before the Supreme Court of Canada for the parties.�� Follow us on Twitter or check back in next week.�� If you would like to receive IPilogue content via email, then please subscribe to the IPIGRAM, our weekly e-newsletter, via the form on our home page () or by emailing us at iposgoode@osgoode.yorku.ca.

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In light of the introduction on September 29, 2011, of , the current copyright reform bill in Canada, we would like to highlight again commentary by , Associate Professor at Osgoode Hall Law School and Member of IP Osgoode, on issues raised by Bill C-32.�� Bill C-11 is a re-introduction of Bill C-32.

was published on the IPilogue.�� In the blog post, Professor Craig considered the threats posed by technical protection measures and anti-circumvention laws to fair dealing and other lawful uses of protected works. She adopted, as a normative starting point, the principle of “prescriptive parallelism” according to which the traditional copyright balance of rights and exceptions should be preserved in the digital environment.

Professor Craig also contributed a chapter in (Irwin Law: Toronto, 2010), a compilation edited by Professor Michael Geist of the University of Ottawa.�� Professor Craig's Chapter Seven - Locking Out Lawful Users: Fair Dealing and Anti-Circumvention in Bill C-32 can be read on or on the .�� The chapter examines the potential impact of the proposed fair dealing and anti-circumvention provisions in Bill C-32, which now also apply to Bill C-11.

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The Government of Canada has reintroduced the Copyright Modernization Act, which is intended to update the Copyright Act for the information era.�� Now designated as , it formerly existed as Bill C-32.

Legislative information on the status of the bill is available on the .�� FAQs and backgrounders are provided on the government website: .

Our coverage of Bill C-32 soon after it was introduced was posted in a series of blogs, which we want to highlight again:

• - June 4, 2010 -
• - June 8, 2010 - Robert Dewald
• - June 9, 2010 - Stuart Freen
• - June 10, 2010 - Steven Zuccarelli
• - June 11, 2010 - Vincent Doré
• - June 15, 2010 - Amanda Carpenter
• - June 17, 2010 - Giuseppina D'Agostino
• - June 22, 2010 - Nathan Fan

Stayed tuned for more updates as we follow Bill C-11’s progress through the legislative process.

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Our own , Associate Professor and Member of IP Osgoode, has recently released a book on copyright that has already made a splash among legal circles.�� It is entitled, (Edward Elgar, 2011).

On , Jeremy Phillips, IP blogger and , and stated that "a great deal of bright, sparkling thinking on copyright is emanating from Canada at the moment, and this is just the latest example of it."

He goes on to comment on the publisher’s description of the book.�� He states that even though the publishers refrain from saying (once again) that this book will be useful to practitioners, "There is actually some significant discussion of case law, by the author and by those whom she cites, from which policy-oriented lawyers and judges can benefit."

Professor Phillips closes by recommending, "Buy it for a friend you enjoy discussing copyright with, read it together and you'll never be bored."

, Associate Professor at Osgoode, .�� Professor Sutherland’s focus was on a discussion that Professor Craig gave of the book:

Carys Craig riffed on the cover image of her book to convey something of its content. It’s a book that squarely takes aim at the dominant conception of copyright as private property. In it, she argues that this conception misrepresents authorship and the process of cultural creation in ways which, when translated into law, lead to the stifling rather than the stimulation of creativity and expression. She proposes instead a relational theory to underpin a copyright law that would better serve our social and cultural values. I haven’t done her presentation justice with that brief description. I tried to take careful notes but soon gave up as pretty much everything she said seemed worth writing down. Of course, this bodes very well for the book! Suffice it to say that it promises to be a most thought-provoking book and I’m very keen to read it.

We are very excited for Professor Craig and expect more positive reaction will be forthcoming on her contribution to the discourse on the nature of copyright law.

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Victoria Espinel, the US Intellectual Property Enforcement Coordinator, , commends an agreement between Internet service providers and entertainment companies to cooperate to combat online infringement.

Ms. Espinel states: "We believe that this agreement is a positive step and consistent with our strategy of encouraging voluntary efforts to strengthen online intellectual property enforcement and with our broader Internet policy principles, emphasizing privacy, free speech, competition and due process.

She closes with a statement regarding future efforts in the area: "the Administration will continue to pursue comprehensive solutions to the problems associated with Internet piracy, including increased law enforcement and educational awareness. To win the future and succeed in the global economy, it is critical to protect the intellectual property of America’s innovators and creators."

, the agreement involves a warning system that will give a customer six strikes, called "Copyright Alerts", before implementing measures like slowing Internet speeds.�� The Huffington Post also reports that "Consumer advocates applauded the measure for its potential to be an 'important educational vehicle,' but also cautioned that rights violations could result depending on implementation."

Check back with the IPilogue for more on this story.

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We, at IP Osgoode, are pleased to announce our new partnership with our friends at MediaLaws, . MediaLaws is a law and policy blog based in Italy which focuses on addressing new trends in case law and practice, along with regulatory issues related to the field of media law.

In an increasingly globalized world, this exciting new collaboration will allow IPilogue readers to receive even more fresh content while benefiting from the expertise of MediaLaws' talented contributors as well as experience the field of media law from a European perspective. Like IPilogue, MediaLaws aims to stoke discussion and address emerging issues in order to provide a valuable resource for its readers, many of whom are professionals involved in the field of intellectual property law.

We hope this newfound synergy between IPilogue and MediaLaws will help contribute to a more globalized approach to sharing information and encourage further intellectual property law debate on the Web. You can look forward to seeing a fresh MediaLaws feature post each week on IPilogue.

We begin with this post by Massimiliano Trovato, on June 27, 2011, in the Comments section of Media Laws.�� Trovato examines the social media spin on consent being the source of all legitimate political authority.�� Lovato asks, does crowdsourcing the reform of the Icelandic Constitution create a more legitimate instrument?�� And would it be feasible to replicate it��on a larger scale?
��

Lysander Spooner And Constitutions 2.0

Massimiliano Trovato is a member of the Media Laws Steering Committee and a member of��the��Executive Team and a Fellow of��the��Istituto Bruno Leoni.

In 1867, legal theorist, entrepreneur, abolitionist and individualist Lysander Spooner that the US Consitution (or any constitution, for that matter)

has no inherent authority or obligation. It has no authority or obligation at all, unless as a contract between man and man. And it does not so much as even purport to be a contract between persons now existing. It purports, at most, to be only a contract between persons living eighty years ago. And it can be supposed to have been a contract then only between persons who had already come to years of discretion, so as to be competent to make reasonable and obligatory contracts. Furthermore, we know, historically, that only a small portion even of the people then existing were consulted on the subject, or asked, or permitted to express either their consent or dissent in any formal manner. Those persons, if any, who did give their consent formally, are all dead now. Most of them have been dead forty, fifty, sixty, or seventy years. And the constitution, so far as it was their contract, died with them.

Whether or not you agree with Spooner’s rather extreme position, the issue of rests at the core of much of modern legal philosophy and needs to be taken seriously. This is why deserves a close look.

A public call for revising the foundations of Reykjavík’s democracy emerged in the aftermath of the financial crisis that severely hit the country’s economic institutions. A 25-member Constitutional Council was elected to finalize a draft that will have to be submitted to the Parliament for approval – and after that undergo a referendum.

Here comes the tasty part. Since April, the Council has been posting draft clauses every week for the people to comment and discuss. It channels further debate through its��,��,�� and�� accounts, and its meetings are open to the public and streamed live. Citizens can scrutinize the process and have a say in the writing, if they feel like it.

Is this arrangement replicable? Does it really address Spooner’s concerns? Of course Iceland, with a population of 320,000, has a better chance at wiki-democracy than most other countries around the world. And it is true that public involvement still falls short of Spooner’s strictly contractual criterion.

However, Iceland’s experiment hints at the potential impact of technology on the political process and paves the way for more transparent, more participatory institutions.

The original posting of this comment��on Media Laws can be found .

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, Professor of Intellectual Property Law at Osgoode Hall Law School, has authored a recently released, updated and expanded edition of his textbook entitled, .

Published by Irwin Law, a description of the textbook can be found and is reproduced here:

Since the publication of the first edition in 1997, David Vaver’s Intellectual Property Law: Copyright, Patents, Trade-Marks has become one of the most important treatises on the subject in Canada. It has been relied upon by scholars, practitioners, policy analysts and students alike, as well as those who use or rely on intellectual property, and has been cited as a leading authority by all levels of courts, including the Supreme Court of Canada. Now, nearly fifteen years later, Professor Vaver has produced a new and greatly-expanded edition that not only takes account of developments that have occurred in domestic and international law, but also provides an in-depth and engaging discussion of the profound changes in the social, economic, and technological environments in which intellectual property law operates.

Already, the second edition has been cited by the country’s highest court. In Masterpiece Inc. v. Alavida Lifestyles Inc., , the Supreme Court of Canada clarified the law relating to geographic scope of trade-mark rights and priority as between registered and unregistered rights. Mr. Kelly Gill, co-counsel to the appellant before the Supreme Court of Canada and member of IP Osgoode’s Advisory Board, blogged on the decision (read ). Writing for a unanimous court, Justice Rothstein cited Professor Vaver’s text for the legislative intent to provide a national scope of protection for registered trade-marks in Canada (para. 33 of the decision, p. 536 of the textbook).

Justice Rothstein also referenced Professor Vaver extensively at para. 49 of the decision:

As Professor Vaver points out, if the marks or names do not resemble one another, it is unlikely that even a strong finding on the remaining factors would lead to a likelihood of confusion. The other factors become significant only once the marks are found to be identical or very similar (Vaver, at p. 532). As a result, it has been suggested that a consideration of resemblance is where most confusion analyses should start (Vaver, at p. 532).

With such a fine reception within the first week of its release, we can only imagine what lies next for Intellectual Property Law: Copyright, Patents, Trade-Marks, 2nd ed. Kudos!

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(University of South Carolina, School of Law) has recently published her research on . Professor Bartow’s scholarship focuses on the intersection between intellectual property laws and public policy concerns, privacy and technology law, and feminist legal theory.�� Along with (Pace Law School), she runs the “” blog.

In her paper, Professor Bartow advocates for copyright law to be used as a constitutional means of discouraging the creation of pornographic works.�� While the denial of copyright protection would not violate an author’s free speech rights, it would decrease the economic value of the work, thus serving as a disincentive to creating the pornographic work in the first place.��

The article is self-described as proceeding in four parts:

1. Copyright law has a structural role in the commoditization of sex. When a generally illegal act of buying and selling sex is fixed in a tangible medium of expression, it becomes an act of free speech that is protected by the First Amendment and an article of intellectual property that is protected by copyright laws
2. Copyright is not a content neutral construct. Copyright laws facilitate the suppression of speech that is copyrighted, speech that is substantially similar to speech that is copyrighted, and speech that is an unauthorized derivative work of speech that is copyrighted. Injunctions premised on allegations of copyright infringement are acts of content based censorship by the government.
3. Some pornographic works may cause harms during production, or as a consequence of distribution, or both. These works are non-progressive and non-useful, and therefore beyond the purview of the Intellectual Property Clause of the U.S. Constitution. They include child pornography, crush pornography, “revenge” pornography, and pornography in which the performers are physically abused or endangered.
4. Withholding copyright protection from non-progressive and non-useful pornographic works would appropriately reduce the government’s role in creating economic incentives for their creation and distribution. Amending the Copyright Act to reduce the ways in which the economic value of harmful pornography can be exploited is a legitimate policy choice that Congress can and should make. The government should not continue to provide copyright incentives for the production and distribution of harmful works.

Professor Bartow also draws comparisons between copyright law on the one hand and patent law and trademark law on the other, explaining that similar approaches can be found.�� On trademark law, the paper’s Abstract describes, “The Lanham Act’s prohibition of the federal registration of scandalous and immoral marks provides an example of government promulgated content based restrictions that do not offend the Constitution. Admittedly, however, the unpredictable, inconsistent manner in which the prohibition is enforced is problematic and worrisome.”

For me, it would be interesting to see whether decreased copyright protection for a pornographic work might lead to increased reproduction and distribution of the work in a way that also creates harm.�� This is difficult to assess as developments on the internet are so face-paced and the future of piracy is so hard to predict. ��Professor Bartow pulls together an immense amount of research and analysis in this paper to make for a fascinating read.

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