Tell me a bit about Lex Machina. Where did the idea for Lex Machina come from and��what has it turned into since the early days of the company?

Lex Machina began as a public interest project at Stanford Law School. A number of big law firms��and technology companies donated a couple of million dollars to what was then called the “IP Litigation��Clearing House,” which Professor Mark Lemley spearheaded to create the first electronic set of patent��litigation analytics and outcomes. After the money was donated and was turned into a public interest��project Lex��Machina spun out of a private venture in 2010,��as so often happens at Stanford when someone says, “Hey I think there might be a business here”.

Unlike traditional legal research that requires top-down control, Lex��Machina provides a novel legal resource called legal analytics. We mine litigation��data and then clean, code, tag, and build meta-datasets. This data then enables��lawyers to make data-driven decisions in their strategy and tactics that they employ for their cases,��transactions, and even for obtaining new clients.

Legal technology has been slow to develop relative to technological��advancements in other industries. Why do you think this is?

The legal services industry organizes itself around precedent and so by nature change is slow. Practicing��law is a very old profession and has been done the same way for a long time. Personally, I think that the��emergence of legal analytics is as big a moment and analogous to the moment when legal research��switched from books to computers.

I like to use the “Moneyball” analogy. Analytics were applied to the Oakland A’s and transformed their��ability to win even though they had a smaller market and payroll. Now, every team employs Moneyball��analytics. The same is true for law as we are able to turn lawyers into Moneyball lawyers. You still��need great legal research and legal reasoning skills but analytics supplements those skills. For example,��let’s say that you are a patent lawyer and your client is suing in Delaware for patent infringement. As a��lawyer you determine that you will have a better chance at winning the case using a jury in��Chicago. Typically, you would do some legal research and use your best legal reasoning to persuade the��judge that there is a basis for transferring your client’s case to Chicago. A Moneyball lawyer is going to��do all that but they will also go into Lex Machina to unpack how that judge has previously treated��motions to transfer in patent cases and extract from the data where that judge’s preferences lie.��Everyone, including judges, have subconscious biases and we at Lex Machina know to the second decimal��point how judges behave. In our example, if the case in Delaware had been assigned to Judge Robinson��and you need to persuade her to move the case to Chicago, you can go into Lex Machina,��push a button, and find the 20 patent cases that have succeeded in motions to transfer under��Judge Robinson. You can then use that data to uncover how best to approach your argument for a��motion to transfer. The data allows you can determine how to speak to Judge Robinson in terms that are more favourable to her, thereby��increasing your odds of winning.

Companies such as LexisNexis and Thomson Reuters have been developing legal��technology for a long time. What can a start-up culture for legal technology offer that��customers might not be able to get from more mainstream legal technology companies?

Just like any industry, big incumbents get big by doing something well. Both LexisNexis and Thomson Reuters provide excellent online legal research environments. They are able to structure their information similar to a law library and train lawyers how to perform legal research using their technology. This strategy has allowed them to become very good at what they do. As startups, however, we are not burdened with that history. We can be nimble and provide services that haven’t yet been done, and try to deliver those services in a saleable market so that we have a successful venture. The rise of e-discovery and the use of algorithms to identify which documents in discovery are relevant to a case was largely driven by small startups. There are also companies like , , and that are now doing analytics around billing data. These services all developed through startups that took a fresh look at existing needs and came up with answers for those needs that had not yet been proposed by the big incumbents. Therefore, just like any industry, there is going to be transformation that is driven by startups who are not afraid to tackle big problems with new approaches.

What is the long-term goal for Lex Machina? Where do you see it in 10 or 20 years?��

We want to bring legal analytics to the law. We have had a great run with our beachhead market of patent litigation. In some respects that was because of luck. If the project at Stanford from which we grew was in a different area of law, it is not clear that it would have provided the same platform for transition into a private sector venture. We have also provided access to data about copyright, trademark, and antitrust, and are now building the Robust Analysts tools for copyright and trademark, which is a platform that we currently provide for patent litigators.

Aside from our IP analytics we have also studied another half a dozen federal subjects. Our focus on federal subjects is largely because we collect our data using Pacer, the federal court reporting system. Whether it is tax, securities, employment law, or another federal subject, we hope next year to move past IP by providing legal analytics to the rest of the federal subjects. In 10 or 20 years, I hope that we are providing analytics for every subject in law, including state law subjects, and that every attorney has his or her specialty empowered with analytics. While there will probably still be those big research incumbents, we hope that there will also be a big legal analytic incumbent called Lex Machina.

Thanks again for meeting with me today, Owen. Is there anything else you would like to add?

Considering that many of your readers are in academia I'd like to make two more points. First, because of our Stanford heritage, we still have a large public interest component to our business. We provide free access to our platform to members of Congress and their staff, to the federal judiciary and their clerks, and to academics and students who are studying IP. We are here to do good and do well, and our public interest program helps us fulfill part of our mission.

Second, I find it interesting that the information about trends in patent litigation is of great interest to academics and journalists. We are glad that we can provide that sort of information. However,��we are going to succeed as a private venture not by looking at those trends but by allowing lawyers to make data-driven decisions and to predict what sort of approaches will affect outcomes and strategies in cases. While trends get a lot of attention in articles, it is the application of analytics and its data to the day-to-day practice of law that holds the most hope in transforming and improving the practice.

Peter Neufeld is the Features Editor of the IPilogue and a J.D. Candidate at Osgoode Hall Law School. Peter met with Owen Byrd when he was��a��Visiting Researcher at Stanford Law School's Codex: The Stanford��Center for Legal Informatics as part of Osgoode's Intellectual Property Law Intensive Program.

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This fall semester I had the honour of attending ��as part of Osgoode's .�� CodeX’s broad mission is to design technologies for a better legal system. Taking this mission in earnest I set out to develop Econo.Mine, a legal analytics platform meant to decipher a judge’s understanding of econometrics used in antitrust litigation. My desire to create Econo.Mine was in response to the rise of complex economic analyses used in antitrust arguments since the late 1990s. By tracking the rate of keywords used in antitrust cases and comparing the frequency of those keywords with appeal rates, Econo.Mine would be able to analyze cases according to their economic complexity and determine which concepts and statistical analyses were particularly difficult for judges. The overall objective of Econo.Mine is to improve the drafting of expert testimonies and judicial education in economics so that judges can make better use of the arguments presented to them when deciding cases.

Developing Econo.Mine at CodeX put me in a position that would make any legal technologist envious. Unlike many of my CodeX colleagues, I was devoid of any coding skills before coming to CodeX. However, the entrepreneurial spirit and positive energy at CodeX provided me with the flexibility and support I needed to make a serious dent in my project. Speaking with people like Itai from and Pablo from allowed me to strategize how I could automate the extraction of data from cases and filter keywords from those cases using regular expressions. I even went beyond the CodeX stratosphere by collaborating with a PhD student at to develop a code that could count the frequencies of my keywords in a document and paste those statistics to a spreadsheet. These successes may have seemed like pebbles to those who helped. To me, however, they were nothing short of milestones.

Even more rewarding was the ability to witness the burgeoning legal-tech startup community at CodeX. I regularly attended CodeX’s weekly meetings where a legal tech entrepreneur would present their technology and entertain questions from the CodeX attendees. Some of the presentations discussed fundamentally changing technology projects. These projects included , a company that wants to digitize corporations into block-chain systems and use Bitcoin as its default online payment system.

Other presentations focused on technology that was familiar but resoundingly helpful. This included a website that improves transactions for child support payments (see ) and a plugin that shows campaign contributions of politicians who are mentioned in online news articles (see ). The growth of this legal tech startup industry was even more pronounced at the CodeX Demo Event and at the CodeX/ Thomson Reuters Summit, where several companies showcased their new technology. The positive reception to these innovative projects and the excitement surrounding their potential growth revealed that these companies were already making a dent in the way that individuals within and outside the legal community interact with the law.

What was almost more revealing from these presentations was that CodeX was the beating heart behind this legal tech community. This was clear in the way that presenters and attendees described CodeX and its bold initiatives underway, such as the Computable Contracts Initiative and the Open Data Initiative. It was also reflected in the trust that our partners bestowed upon us and their consistent eagerness to help us meet our goals. The fact that companies like , , , and ��have thrived from their relationship with CodeX is evidence of CodeX’s fundamental importance to the community.

There is an energy at CodeX that makes leaving very difficult. You sense that it is accomplishing something that no other legal technology organization in the world has accomplished and you know that it’s going to be big. For that reason I’ve decided to only leave CodeX in a physical sense. While I look forward to resuming my regular course schedule at Osgoode, I will continue to work with CodeX on my technology as well as co-manage their website. I am also working with a CodeX affiliate to help map the legal technology industry around the world. It is a hefty project but one that it is absolutely achievable thanks to the breadth of CodeX’s intellectual dedication, hard-working mentality, and inspiring entrepreneurial spirit.

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The Bureau recently that Phase 2 of the IPEGs update could address anti-competitive activity surrounding standard essential patents (SEPs). SEPs are patents that are considered essential to implement an industry standard and are common within the technology industry. The European Commission (EC) that competition concerns arise from SEP holders gaining market power once a standard has been adopted by competing rivals. This makes ensuring fair, reasonable and non-discriminatory (FRAND) licensing commitments particularly important. Google/Motorola and Apple’s recent SEP litigation coupled with the corresponding enforcement by the EC and the United States Federal Trade Commission (FTC) raises questions as to how the Bureau will position the pendulum toward SEP activity.

The Competition Bureau’s Current Approach to Anti-Competitive SEP Activity

While not directly addressed, the Bureau’s note one example in which the Bureau would target anti-competitive SEP activity through of the Competition Act. Section 32 allows the Federal Court, on the advice of the Attorney General, to issue an order that remedies an anti-competitive act occurring from the mere use of an IP right. The IPEGs imply that the Bureau must first establish that the SEP holder dominates the relevant market and that refusing to licence the SEP prevents other firms from effectively competing in the relevant market. Second, the Bureau must establish that invoking section 32 against the SEP holder would not adversely affect the incentives to invest in research and development.

Section 32’s procedurally cumbersome requirements partially explain why it hasn’t been used for decades. The section requires the Attorney General to apply to the Federal Court. The Commissioner is also required to meet the “undue lessening” standard that was from other Competition Act provisions due to its outdated language.

Potential New Approaches to Target Anti-Competitive SEP Activity

The Bureau might characterize anti-competitive SEP activity as an abuse of dominance. The EC recently that Motorola’s efforts to seek injunctive relief against Apple’s use of a smartphone SEP constituted an illegal abuse of dominance pursuant to . The Bureau could argue that similar conduct is an abuse of dominance under of the Competition Act. However, unlike Article 102, explicitly exempts “an act engaged in pursuant only to the exercise of any right…under the…Patent Act”. The Competition Tribunal held in that the refusal to licence an IP right falls under the section 79(5) exemption. Therefore, the Bureau might refrain from characterizing the activity as an abuse of dominance unless it argued that the SEP holder’s breach of its FRAND commitments was something more than a mere refusal to licence.

The Bureau might instead choose to characterize anti-competitive SEP activity as an unfair trade practice. The United States FTC recently Google/Motorola’s FRAND commitment breach through of the FTC Act, which prohibits unfair deceptive acts involving commerce. There currently does not seem to be a provision in the Competition Act synonymous with section 5 of the FTC Act. The Bureau could instead argue that such conduct constitutes an illegal refusal to deal pursuant to of the Competition Act, which might allow the Tribunal to order the supplier of a product (the SEP) to sell to a party within usual trade terms (the FRAND commitment). However, the Tribunal held in that the term “product” in section 75 was not intended for licences of intellectual property, making it much less likely that the Bureau could use section 75 to target breaches of FRAND commitments.

Finally, a uniquely Canadian solution would entail amending section 32’s procedural obstacles outlined above to target SEP activity. Amending these obstacles, which is����by the former head of the Bureau,��could improve the provision’s functionality while ensuring common ground with the EC and FTC’s competitive analyses by preserving the IPEGs’ mandated balancing of competitive effects. Overall, the Bureau has some significant provisions with which to target SEP activity. Whichever route they take, however, evidence suggests that the pendulum will continue moving toward antitrust enforcement.


Peter Neufeld 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.

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Organization of the Compendium

The Compendium is divided into chapters and begins with an overview of U.S. copyright law and the Copyright Office. This section is particularly useful because it outlines the various offices and divisions within the Copyright Office (an office significantly larger than its equivalent under the auspices of the Canadian Intellectual Property Office.) This is a huge aid to those of us trying to navigate the U.S. Copyright Office and the myriad services it provides. It also outlines important milestones in the history of U.S. copyright law. It continues with the registration process, identifying who may register a work and how to determine what works may be registered in the Copyright Office. It then has separate chapters on copyrightable works including literary, performing arts, visual arts, websites, masks and vessel hulls. Included are some excellent charts that enhance interpretation of the Compendium; for example, page 46 of the Compendium has a decision-making chart to help you determine the appropriate steps to take when registering a work with the Copyright Office; page 93 includes an “at a glance” chart intended to clarify who may file a copyright registration application.

One of the many benefits of the Compendium as an electronic publication is the ability to include hyperlinks to related material. In addition to very detailed and specific definitions and explanations, this document incorporates hyperlinks to significant House of Representatives Reports, relevant sections of the Federal Register, and U.S. Code of Federal Regulations. This design allows you to easily and quickly access the level of information you need.

Scope

Prior editions of the Compendium were for the most part internally directed and this third edition, the first major revision in over 20 years, is a comprehensive overhaul that makes the practices and standards of the Copyright Office accessible and transparent to the public. The Compendium addresses basic copyright principles such as standards of copyright-ability, joint authorship, work for hire, and routine questions like fees, records retrieval and other procedural issues. The compendium will be of help to anyone seeking in-depth information on which applications for copyright registration will be accepted by the U.S. Copyright Office, who may file a copyright registration application, examination practices, and Copyright Office services.

It is important to note that the Compendium does not “have the force and effect of law”; it is intended for use as an administrative manual or guide with appropriate references to the overarching laws from which it draws. However, the Compendium has been cited in many copyright cases (see some examples on page 5 of the Compendium) and is a well-respected voice in copyright because of its “compelling” and “persuasive” interpretations and reasoning.

Also of note is that portions of previous versions of the Compendium remain in effect; one example offered in the Compendium is that Chapter 1200 of Compendium II “continues to be the governing manual concerning the manufacturing clause” for works published prior to June 30, 1986, the expiration date of that clause.

Included in the Compendium is a thorough explanation of the examination process to determine that a work is “copyrightable” and to ensure that all requirements have been met, as well as how to appeal an application that has been refused.

A History of Firsts

Registration of copyright materials over time builds an astonishing cultural database chronicling a history of intellectual and creative endeavor since 1897. The Compendium touches briefly on the many “firsts” in the evolution of rights and protection; coupled with the timeline of copyright history beginning on page 24, it amounts to more than just trivia, it affords insight into trends in rights protection and management that may well open a window into the future of copyright.

��A “Living” Document

The Compendium is at .�� It remains in draft form for 120 days pending final review and implementation and is expected to become final in December 2014. Once final, this compendium will be available on the U.S. Copyright Office website and will be searchable electronically, with links that will vastly enhance its usability and clarity. Each chapter is prefaced by a detailed index for increased usability. The Copyright Office has expressed its intent that the Compendium be a “living” document that is electronically updated as required; to that end, the Office encourages public comment on the Compendium for both content and accessibility.

Lesley is a lawyer, author, educator, and Osgoode��alumnus��(’85). Her book,��Canadian Copyright Law, Fourth Edition, was recently published by Wiley. You can read more of Lesley’s posts at��.�� - See more at:

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As a result, discerning whether the specification has a promise of a specific result can have significant impact on the validity of a patent. The recent Federal Court of Appeal decision of Apotex Inc v Sanofi-Aventis Canada Inc (“Sanofi”), for which the Supreme Court has granted leave to appeal, advocates for a degree of constraint when determining whether a patent contains a promise.

In Sanofi, the Court held that it must look to the patent to determine whether it contains an explicit promise that the invention will achieve a specific result. Since there is no obligation on the part of the inventor to disclose the utility of his invention in the patent, not every patent contains an explicit promise of a specific result.

The idea of a “promise doctrine” is the subject of a NAFTA challenge by Eli Lilly. Central to Lilly’s argument is that two of Lilly’s patents were invalidated on the ground they were not useful, notwithstanding their approval by Health Canada and their commercial success. Lilly alleges that the promise doctrine is inconsistent with NAFTA as it imposes a significantly higher burden on the patentee than the standard of utility mandated by NAFTA.�� Specifically, Lilly alleges that Canada’s failure to abide by its NAFTA obligations has resulted in the unlawful expropriation of its patent rights.�� Lilly argues that the “promise doctrine” has caused a dramatic and unprecedented shift in Canada’s utility standard and is inconsistent with the utility standard embodied in NAFTA.���� Lilly pointed out that one of the patents was challenged and upheld in 18 countries throughout the world, and Canada was the only jurisdiction to invalidate on the basis of inutility.

Canada, in response, has argued that the “promise doctrine” was endorsed by the Supreme Court as early as 1981 in Consolboard v MacMillan, while NAFTA came into force in 1994. There is no requirement to make a promise, but a promise may be made for a variety of reasons, including where a new and non-obvious use of a known compound is the essence of the invention or in selection patents where a sub-species of the genus has a surprising and non-obvious advantage. Canada further notes that NAFTA does not provide direction as to how the core patent concepts of “new”, “inventive”, and “industrial application” are to be interpreted and applied in particular patent cases.

The Sanofi decision appears to have pushed back on certain elements of the “promise doctrine” that Lilly complains of in its NAFTA challenge. Lilly alleges that the Courts read into the patents an “implied promise” that the drugs would work in the longer term based on the chronic nature of the conditions being treated. In Sanofi, the Court of Appeal finds that the Trial Judge erred in finding a promise on the basis of inferences, in the absence of clear and unambiguous language. Sanofi thus draws a distinction between the potential use of an invention and an explicit promise to achieve a specific result, and finds that a goal is not necessarily a promise.

As noted by Canada in its Statement of Defence, domestic patent law continues to evolve, including the promise doctrine.

One possible way forward is to limit the promise doctrine in a manner similar to the Federal Court’s recent treatment of the heightened requirements for a “sound prediction” of utility.�� In a July 2014 Apotex v. AstraZeneca (“�����ٰ����ܱ�Ա𳦲�”) decision, Justice Rennie concludes that the patentee should only face a higher burden for disclosed utility in “new use for known compound” type patents.�� The rational was that, for these “new use” patents, the entire invention resides in the new utility, hence there should be a higher standard for showing utility.

The appeal of Astrazeneca to the Federal Court of Appeal, the Sanofi appeal to the Supreme Court of Canada, and Lilly’s NAFTA challenge will continue the evolution of these doctrines.

David Heller is a Partner at the Toronto office of Ridout & Maybee LLP, where he��specializes in the areas of pharmaceuticals, biotechnology, and chemistry.��David has been recognized as a leading IP lawyer in the Chambers Global Guide 2014, 2013, and 2012 rankings.

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Currently, the requirement under the Trade-marks Act that goods and services be stated “in ordinary commercial terms” in applications has been interpreted as requiring very detailed listings of goods and services.�� Further, under Bill C-31, the language of the requirement will not be changed, such that it is expected that the current Canadian practice will be continued, at least initially, after the amendments are implemented.�� Accordingly, it is not immediately evident and therefore interesting to consider what the benefits of adopting the Nice classification system will be.

To put the issue in context, it has to be understood that the requirements in Canada for specifying goods and services are stricter than requirements in almost all other countries of the world.�� Further, requirement for statements “in more specific terms” of goods and services listed in applications filed in the Canadian Trade-marks Office are the most common reason for issuance of Examiner’s reports by the Trade-marks Office.�� Considering sufficiency of descriptions is time consuming for examiners and responding to description requirements is time consuming for practitioners and costly for applicants.�� Accordingly, there is no doubt that there would be significant cost benefit to the Government and trade-mark applicants if adopting the Nice classification system will minimize issues arising in respect of sufficiency of descriptions of goods and services in Canadian Trade-mark applications.

Another benefit to the adoption of the Nice Classification system is that it will facilitate implementation of the , which provides for the international registration of trade-marks (or more correctly a system for cost-effectively obtaining domestic registrations in multiple jurisdictions). Article 3(2) of the Protocol provides for classification under the Nice system in international applications under the Madrid Protocol.�� Accordingly, adoption of the Nice Classification system goes hand in hand with the provisions in Bill C-31 for implementation of the Madrid protocol.

One issue that has been discussed in the context of descriptions of goods and services in international applications under the Madrid Protocol arises from the fact that international applications and registrations under the Protocol are based on home country applications and registrations.�� However, different countries provide different scope of registration as a result of different levels of detail being required in descriptions of goods and services.�� For instance, while some countries like Canada and the United States require specific descriptions, other countries like Italy and Australia accept broad specifications including Nice Classification class headings.�� There are variations lying at different points along the spectrum of specificity, including many countries that will accept descriptions of goods or services provided under Nice Classification class headings and others requiring individually defined specificity.�� The concern is that the scope of international registrations under the Protocol based on registration in countries requiring high specificity may be significantly narrower than those based on countries accepting broad descriptions.

The issue of scope of registrations under the Madrid Protocol was the subject of much debate leading up to the ratification of the Protocol by the United States in 2003.�� Further, the scope of protection issue has been raised as a reason why there have been fewer Madrid Protocol filings originating in the U.S. than were expected (see e.g. Donald Prutzman, (2010) 25:2 Int’l Practicum p. 173 at 177).

��In light of the foregoing, it is clear that the benefit to Canadians of adopting the Nice Classification system may depend upon the extent to which the strict requirements for descriptions of goods and services are maintained by the Canadian Trade-marks Office after implementation of the Nice Classification system.�� However, one also has to consider the overall effect on the trade-mark system in Canada, including the fact that registration provides a monopoly with respect to use of the registered trade-mark for the registered wares and services across Canada, and that proposed amendments to the Trade-marks Act in , the Combating Counterfeit Products Act, limit offences and remedies to unauthorized use of trade-marks in association with registered goods and services.

The extent to which descriptions of goods and services in trade-mark registrations should be broadened is not a trivial question.�� It will be interesting to see whether and how the regulations, policies and practices of the Canadian Trade-marks Office evolve in respect of such requirements under the updated Trade-marks Act.�� Hopefully, we will end up with needed clarity as to what descriptions will be acceptable; and scope for registrations that achieves a fair balance between the need to provide for effective enforcement of rights to protect brand owners and consumers, and the need to maintain a sufficient stock of language to facilitate effective selection, adoption and use of distinctive trade-marks by traders in Canada.

Brian P. Isaac is a partner at the Toronto office of��Smart & Biggar/Fetherstonhaugh.��Mr. Isaac's practice has involved litigation in all areas of intellectual property for over 20 years and has appeared before the Federal Court of Canada, the Ontario Superior Court of Justice, and the Federal and Ontario Courts of Appeal. He has also acted on numerous matters before the Canadian Trade-marks Opposition Board and Patent Appeal Board. Mr. Isaac received his L.L.B. from the University of Ottawa ('89) and was called to the Ontario Bar in 1991.��

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While the Bill will enable Canada to implement several international trade-mark treaties and make other welcomed changes to the law, the proposed elimination of the requirement to “use” a trade-mark before obtaining a registration for the mark is a major departure from the foundation of Canadian trade-mark law.�� This is significant because the law of trade-marks is based on use.

It is understood that the goal of Bill C-31 is to improve the position of Canadian businesses, including by reducing their costs.�� However, the proposed amendments to the TMA to delete the requirement for an applicant to have made “use” of a trade-mark before obtaining registration in Canada will negatively impact Canada’s trade-mark system.�� This will result in significant adverse consequences to Canadian businesses by increasing costs, causing delays, adding uncertainties and creating risks.

The proposed change will also increase litigation, which will stress the already overburdened resources of the Trade-marks Opposition Board and the federal court system. The elimination of “use” as a precondition for registration is not required by any of the treaties Canada intends to join pursuant to the amendments.

Use as a Cornerstone of Trade-mark Law

For over 150 years, the Canadian trade-mark system has required that a person “use” a trade-mark.�� The requirement has been repeatedly confirmed by the Supreme Court of Canada (see, for example, Justice Rothstein’s comments in the decision). A trade-mark is typically “used” with goods by displaying the mark on the goods or their packaging or labelling when the goods are sold.�� A trade-mark is typically “used” with services when the mark is displayed in advertising the services, such as on letterhead and signage.

Currently, in order to acquire rights in a trade-mark in Canada, a person must use the mark.�� Unregistered rights at common law are obtained through the acquisition of a reputation in the trade-mark as the identifier of the source of goods or services with which the mark is used in the marketplace.

To obtain a registration of a trade-mark, use is also a requirement.�� A Canadian trade-mark application may be based on one or more bases, all of which require use of the trade-mark, in Canada or elsewhere, before a registration is issued.

Elimination of Use of Mark as Requirement for Registration

The changes proposed in the Bill will permit an application to be filed, and a registration to be obtained, without any “use” of the mark by the registrant having occurred in Canada or elsewhere.�� The proposed changes will also remove the requirement that an application for a trade-mark identify whether the applicant has “used” the trade-mark and, if so, where, when and in association with which particular goods and services.

The proposed deletion of the requirement of “use” of a trade-mark by the applicant prior to registration is a fundamental departure from the Canadian trade-mark system that many in the international community consider to be the best in the world.

The government has stated that deletion of the “use” requirement is necessary for Canada to comply with two of the treaties, the Madrid Protocol and the Singapore Treaty.�� However, that is not the case.�� Specifically, the treaties do not preclude requiring “use” of a trade-mark as a prerequisite to registration.

A written for the Canadian Intellectual Property Office (CIPO) by the Department of Justice expressly acknowledges that deletion of the “use” requirement is not necessary for accession to the treaties.�� In fact, when the United States implemented those treaties, it did so without eliminating its equivalent “use” requirement.

It is true that many countries in the world have a system like the one that is being introduced. ��While, at first blush, one might think that the new system would make life easier for Canadian businesses, it will have the exact opposite effect for a number of reasons.

Increased Clearance Costs, Delays, Risks and Uncertainty

In the proposed system, businesses will suffer the consequences of a reduction of available trade-marks.�� Since there will be no requirement to “use” a trade-mark before registration, trade-marks which have never been “used” anywhere may be registered, including by trade-mark trolls who make no investment in the economy, and removed from availability to Canadian businesses.

Applications and registrations will cover long lists of goods and services for which there will be no “use” of, or even any intention to “use”, the trade-marks so a person who “uses” the trade-mark ALPHA with clothing might register the trade-mark for furniture, food and landscaping services, and prevent two other unrelated businesses from using the same mark.

This will likely to be a significant increase in cost for Canadian business and uncertainty in clearing trade-marks for use and registration.�� There will be more applications and more registered marks and, without investigation, there will be no way of determining from the application or registration information whether such marks have ever been used in Canada or elsewhere.�� When faced with these challenges, costs, delays, risks and uncertainties, businesses may choose alternate marks from a smaller available pool.

Trolls

Trade-mark trolls have not been a significant factor in Canada to date.�� The current use requirement has impeded the ability of a troll to secure registrations in Canada without any investment in a real business.�� Outside North America, trade-mark trolls often are able to register a mark used by others in another country, without the trolls being required to have used the mark before registration.�� The Bill invites trade-mark trolls to Canada.

Increased CIPO and Court Litigation

A very significant cost, in money, delay, risk and uncertainty, to applicants, registrants and third parties will be the administrative and court litigation that will result.�� The basic requirement of use prior to registration of a trade-mark will no longer act as a gate to registration.�� Businesses will have to incur the responsibility and the costs of adversarial proceedings to prevent and cancel third party registrations for confusing trade-marks that are not in “use” or that have overreaching lists of goods and services.

The increased litigation will take several forms, including opposition, non-use, infringement and expungement proceedings:

Once an application is approved by CIPO, it is advertised so that third parties can make a decision as to whether they wish to oppose the application to prevent or limit registration of the trade-mark.�� Oppositions have many of the hallmarks of traditional litigation and can take years to complete, both within CIPO and on appeals through the federal courts.

Given that trade-marks which have never been “used” will be the subject of applications covering long lists of goods and services, there will be many more oppositions by parties seeking to prevent or limit such registrations.�� The European experience is instructive. ��Currently in Canada only about 2-3% of all trade-mark applications are opposed.�� In Europe, which has a system similar to the one being introduced by the Bill, over 15% of applications are opposed.

After the third anniversary of a registration, a person may seek to cancel or limit the registration for non-use of the trade-mark.�� With registrations having been obtained without “use”, there will be many more non-use proceedings in CIPO by parties seeking to cancel or limit such registrations and appeals therefrom to the federal court system.

With an increase in the number of registrations, there is likely to be an increase in infringement and related litigation.�� Good faith common law use in Canada may be alleged to infringe a registration for a trade-mark that has never been used anywhere.

Lawsuits by trolls are likely to be settled by legitimate businesses paying “go away” money.�� Also, under other pending amendments to the TMA, a registrant may be permitted to avail itself of border measures to stop “counterfeiting” even where the registrant has never used the mark.

Applications to “expunge” registrations for reasons other than non-use are also likely to increase.

Constitutional Issues

The federal government has constitutional limitations that most other national governments do not.�� Specifically, trade-mark law is governed both under the federal Trade and Commerce power and the provincial Property and Civil Rights power. There are those who are of the view that aspects of the amended TMA will not be constitutionally valid because a system that grants registrations in the absence of “use”, namely without the trade-mark being “used” in trade or commerce, cannot be supported on the basis of the federal Trade and Commerce power.

Some have even suggested that the Bill might encourage provincial legislatures to enact their own trade-mark legislation. This would result in a patchwork quilt of both federal and provincial trade-mark rights, which is the case in the United States with both federal and state trade-mark registrations.

��What is the Status of the Bill?

Many Canadian large and small businesses and trade associations, such as the Canadian Chamber of Commerce, have communicated to the government their strong objections to the change in the use system.�� These voices have been joined by Canadian and international intellectual property organizations, and most of Canada’s leading trade-mark lawyers, despite the possibility that the new regime will create more legal work for lawyers.

The government is also being criticized for introducing this fundamental change by way of a budget bill, which has traditionally been the subject of less opportunity for analysis. ��Businesses, trade associations and the trade-mark bar have asked the government to, at least, remove three sections and one transitional section from the Bill in order to have meaningful analysis and debate.

However, to date, the government has not shown a willingness to engage in meaningful debate on the proposed changes.�� It is difficult to understand why or how a government that says it is committed to assisting Canadian businesses is taking such a bold step to create more cost, delay, risk and uncertainty for them.

Sheldon Burshtein and Antonio Turco are partners at the Toronto office of Blakes, Cassels & Graydon LLP. ��Mr. Burshtein's practice includes the clearance, prosecution, acquisition, enforcement and exploitation of patents, trade-marks, copyright, industrial designs and other forms of IP.��Mr. Turco's��practice focuses on litigation related to intellectual property rights, including disputes related to patents, copyright, trade-marks, industrial designs and trade secrets.��

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1. You’ve been asked to speak at Canadian Music Week this year. Could you give us a sneak peek of what you are going to talk about?

I will be speaking on two panels this year. One of the panels, titled “,” will be moderated by Rich Bengloff of A2IM (American Association of Independent Music) and is designed to bring together US and Canadian government representatives, lawyers and music industry players to compare and contrast the legal environment as well as business developments in each country applicable to the music industry. The first part of this panel will be geared towards addressing recent industry developments in the recording and music publishing industries in Canada and the US.�� Personally, I will tackle Canada’s music publishing industry and, more specifically, the recent that was decided by the Supreme Court of Canada a few years ago and its impact on royalty rates applicable to downloads and streams of music. ��The second part of this panel will focus on a compare and contrast of the United States’ and Canada’s copyright law regimes, including recent developments in each.�� We will cover differences between the two regimes, including their respective approaches to fair dealing/fair use, availability of neighbouring rights, ISP notice and notice versus notice and takedown regimes and other contrasting points. Again, I will be tackling the Canadian side of this discussion and Richard Steffens, Minister Counselor of Commercial Affairs at the US Department of Commerce will discuss the American perspective.

The second panel, titled “” will be presented by the International Association of Entertainment Lawyers (IAEL), of which I am a proud member, and moderated by its President, Jeff Liebenson. This will also compare the American and the Canadian approaches; however, the discussion will be more focused on trends in new income streams and business models given recent changes in the music industry. My job on this panel is to update the audience on legal developments in the Canadian music law scene, the copyright pentalogy, and further reforms such as the recent case decided by the Supreme Court – if I can get to it in the short time allotted! This panel is mainly populated with US-based lawyers so I will be holding down the fort for Canada.

2. Why do you think Canadian Music Week is important for Canadians? What can Canadian artists and individuals learn from this event?��

Considering that CMW addresses a wide range of areas, there are numerous benefits to having this event. Some obvious benefits include the awards, educative panels, music festivals and networking opportunities, both formal and informal.

Sure, the week is helpful because it discusses the nuts and bolts of the music industry and the current events related to the industry, both in Canada and internationally. However, I find that the real benefit comes from the opportunity it affords to step back and consider the big picture.

Finally, there is a real benefit to the networking opportunities at these events. CMW not only attracts experts from within Canada, but internationally as well. Many of the industry folk I talk to from around the world seem to know of and respect CMW. This international exposure has the benefit of attracting international experts to speak at CMW conferences and panels, and consequently creates a great networking opportunity for event attendees.

3. You’ve had a fantastic career in the entertainment law industry in such a short period of time. How do you think the music industry and its legal landscape have changed since you first began practising entertainment law in Canada?

The legal landscape has changed tremendously since I first started practising entertainment law in Canada. I had the benefit of starting my music law career at the beginning of the latest technological revolution in the mid-1990s so I witnessed the early stages of the transition from physical to digital output of music. At that time, the music industry was likely at its height in terms of record sales so I was really able to see everything unfold. For example, there was the emergence of Napster and the consequential business model changes to address the issue of illegal downloading. From a legal perspective it has truly been a fascinating industry in which to practice. Since then, there have certainly been ups and downs in addressing the difficult legal issues that have presented themselves due to changes in technology and, generally speaking, the music industry is confronting a different economy now that it was in the 90s. As far as the work for lawyers, however, it seems that the demand has stayed fairly consistent.

Other than the obvious changes to the business models, there have been major differences in how people work in the music industry. It used to be that people would work in silos according to their areas of expertise; for example, you were either a music lawyer, or a tv lawyer, or a film financing lawyer or a fine arts lawyer.�� The niche aspect of the silos made you even more valuable to your clients seeking that particular expertise. Nowadays, all these different areas of the industry have started to collapse into new and mixed-silo business models and so if you work in a silo you are actually doing your client a disservice. For example, there is now a tendency to focus on the brand of the artist, as opposed to their music alone, which can result in the need to deal in all kinds of rights, including name and likeness, music publishing, recording, merchandising, live performance and other rights.

4. Similarly, what do you think are the biggest issues facing Canada’s music industry today?

In my opinion, there are three main issues facing Canada's music industry today. The first is ensuring that��artists are compensated for their music so that the music industry doesn't turn into the realm of�� a mere hobby. The second issue is finding a way to cause consumers to appreciate the value of music while the industry satisfies consumer demand for wide and easy access to music. Finally, we need to protect and enforce copyright in today's digital age where infringers can easily hide behind their ISPs in cyberspace, while balancing that with the need to protect privacy in appropriate circumstances. Legislative reform has recently finally proven to be one practical way to tackle these issues, but the developments of new ways of doing business in this industry must go hand-in-hand with that to make it really work.

Susan H. Abramovitch is the Head of Gowlings' Entertainment Law Practice. Her��practice covers all aspects of transactions and disputes in the music, film, television, live theatre, multimedia, videogaming, branded entertainment and book publishing industries. Susan received her L.L.B. and B.C.L from McGill Law School ('91) and has since then been called to the Bar in Ontario ('96), New 91��ɫ ('94), and Quebec ('92).��

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Movies – A Global Passion

This year, the World IP Day theme is: Movies – A Global Passion.

As WIPO Director General, Francis Gurry stated at the U.S. Copyright Office's “early” celebration of World IP Day on April 23, 2014, “movies really are collections of intellectual property.” Gurry also said, “intellectual property ensures we have a global production of movies that rewards all of those who are involved in the production of movies.”

IP is of course essential to the film business, from the inception of a film throughout the process, including the film hitting the screen. For more information, see��

What Role for You on World IP Day?

Organizations around the world are seizing the opportunity to educate others about IP and the people and process involved in creating IP. ��You too could join in and host a film festival, organize a concert, or exhibit inventions of local inventors. WIPO makes several of activities you can do.�� These activities include:

• Mounting a public exhibition displaying how consumers benefit from IP
• Organizing a workshop to educate specific users such as artists, musicians and inventors about how IP rights benefit them
• Promoting IP through social media
• Running a photo contest to manifest creativity and the working of copyright in practice
• Creating and distributing World IP Day publicity materials such as posters, brochures, etc., for specific audiences

WIPO can help if you are planning a public outreach campaign. Its site suggests that you establish your campaign with specific objectives, you identify the target audience, research the best way of getting the word out to your audience and develop a plan to get that word out. For more information, see��.

Spreading the IP Word

A celebration of World IP Day could be as simple as discussing downloading music with your children around the dinner table. Or sharing with a colleague a URL to an article about legally using trade-marks. Or posting a message on your Facebook page about others obtaining permission to use your photos. Whether we create or use IP, it is easy to see how IP is an integral part of our daily lives. And it seems that IP has grown so quickly to encompass even more of our activities.

One of my favourite quotes about understanding copyright law and “spreading the copyright message” comes from U.S. Register for Copyright, Maria Pallante, where she states that copyright is a life skill:

It’s one of those life skills now, right? When you graduate from high school or college, you should know how to read a map, you should know how to use GPS, you should know a little bit about copyright. If you are somebody who is going to be in a field where you will encounter copyrighted materials all the time, you should know more. If you’re going to be an artist or musician and you’re getting a red-hot degree in the performing arts, you should know a lot. And I don’t think that’s quite the case - I don’t think it’s been built into the curricula.

Do you know a little bit about IP or more? And what can you do today to help your friends, families and colleagues understand how IP affects us all?

Lesley is a lawyer, author, educator, and Osgoode����(’85). Her book,��, was recently published by Wiley. You can read more of Lesley’s posts at��.��

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The discourse and dynamic of open innovation is, however, limited mostly to knowledge production in the digital realms. Open innovation is underexplored in the context of plant genetic resources for food and agriculture (PGRFA). ����Analysts are wont to ignore the significance of customary seed sharing and exchange as the centerpiece of the inherent open nature of innovation in agriculture, especially in indigenous and local communities (ILCs). A critical appraisal of emergent institutional and legal frameworks for the governance of PGRFA, through a complex interaction between the processes and programs of work at the (CBD), the Food and Agricultural Organization (FAO)’s (ITPGRFA or the Treaty) and the (CGIAR) ��finds that they reflect pragmatic attempts at melding both the IP-driven closed model and the accommodation of open or public good approach toward the promotion of access and overall management of innovation in PGRFA.

One of the important lessons of the emergent regime in open innovation or a public good approach to R&D in PGRFA is a repositioning of the role of IP as not necessarily antithetical but potentially facilitative of open innovation. The 2010 CGIAR enunciation of (IA Principles) demonstrates the importance of a pragmatic deployment of IPRs to serve the interests of complex stakeholders involved in agricultural R&D without compromising the overarching imperative for optimal uptake of innovation by those in direst need. According to the CGIAR, the IA Principles provide “a clear framework [...] to help knowledge travel freely [...] to ensure that intellectual assets reach those who need them most [through] adopting common sets of principles with regard to production, acquisition, management, and dissemination of assets.” This approach aligns with new realities in favour of more open, collaborative, shared and non-proprietary essentials, which have been marginalized under the TRIPs agreement. Another obvious lesson from the CGIAR Consortium Intellectual Asset initiative is that subject to the contingencies of a given sector, the optimal exploitation of innovation would require a deliberate calibration of both exclusive and open models.

An IP system that is too strong undermines economic development and public objectives, which are (or ought to be) at the core of both IP and innovation systems in general. By contrast, an unfettered openness could chill the entrepreneurial investment that is necessary to convert invention into innovation for the common good of society. IP and open innovation are hardly ends in themselves. Consequently, fairly recent attempts at mapping the intersection of open innovation and IP within interdisciplinary inquiries focus on how the concepts could best interact to contribute to development. As an outcome, such interaction has potential to address global inequity, democratize creative processes, extend the benefits of innovation, uplift the quality of human life, and advance the optimal realization of human potential with significant impact on those people Larry Helfer and Graeme Austin call the most vulnerable members of the human family.

A word about open innovation: Innovation is inherently open to the extent that openness characterizes or depicts, in an ex post facto sense, universally-shared impressions on the nature of the innovation process as one that “rests on a public domain of ideas.” However, the uniqueness of open innovation arises when openness is a referential or comparative designation in relation to alternatives, especially the closed models that are usually (though, less accurately) associated with IP. Rarely is any innovation system completely closed or completely open. Everything is a matter of degree. Comparatively, open innovation emphasizes or depicts the flexibility in the generation, transition, translation, and transformation of information or knowledge across internal and external stakeholders in the innovation process. It captures the conduct of innovation in the framework of collaboration, collectivity, and community by promoting network-building, sharing and democratic participation. It also capitalizes on the incremental nature of innovation, the interdependence of knowledge systems, and all the actors in the innovation process—not the least of which are generators and users of innovation. Rather than latch onto any perceived demarcation between these two categories, the open innovation paradigm recognizes the interaction between them (i.e. generators and users) as a healthy extension of the innovation process.

The reification of “the culture in agriculture” in ILCs reflects the cooperative and collaborative system of sourcing farm labor and farm resources such as seeds or other genetic materials through a trans-generational, networked process of open knowledge exchange. But it is hardly as if the system of agricultural innovation in ILCs is totally open. It, too, adapts to complex and layered forms of individual, communal, or collective credit or reward for contributions to knowledge and innovation. That said, unlike the conventional IP system where exclusionism and proprietary control dominate, here we see consideration of openness, interdependence, and sustainability as pillars of knowledge production. Thus, before openness was fashionable it was of obligate first nature in agricultural traditions and overall knowledge production in ILCs.

Agriculture reifies or mirrors “nature” as a fundamentally open phenomena. This proposition is, for example, symbolized by pollination, which involves a voluntary and non-voluntary combination of meteorological, bioactive, artificial and other forms of social and ecological collaborative interventions. Humankind and other partners in the ecosystem (i.e., insects, birds, microbes, and animals) are inevitably involved in concerted, accidental, and deliberate dispersals of genetic materials in an open manner that supports food, agriculture and environmental sustainability. The intrinsic self-propagation of PGRFA and the universal culture of seed exchange historically, even if symbolically, remains the mainstay of agricultural production and innovation.

Despite the diversity in global agricultural knowledge systems, no such system operates in isolation. For example, notwithstanding the North-South geo-ecological disequilibrium in the natural dispersal of agro-ecological resources and global plant germplasm, agricultural biodiversity is nurtured and sustained by ILC farmers for the common good in centers of origin and diversity. These farmers’ fields are no less laboratories of genetic revolution than those of their more powerful and better-organized counterparts, steeped in modern forms of agricultural production now epitomized by the ag-biotechnology, especially genetic engineering. Modern ag-biotechnology not only depends on global agro-biodiversity and the sustainability of the plurality of various knowledge systems in agricultural production, its potential for optimal impact on society is largely dependent on the level of openness across these systems. That is why the concerns about Access and Benefit Sharing (ABS) and the imperative for open innovation models are at the center of legal regulatory structuring in PGRFA, as evident in the implementation initiatives of the ITPGRFA and the recent strategic recalibrations at the CGIAR, especially through the IA Principles.

Significantly, the Treaty supports an open approach to innovation in PGRFA through a . Information exchange, access to and transfer of technology, and capacity building (targeting especially developing countries and countries with economies in transition) are constitutive elements of the system, as elaborated in Article 13 on technology transfer. Similarly, the CBD is in the process of consolidating an ABS website pursuant to the Convention’s Article 18.3 and Article 14 of the Nagoya Protocol on ABS. The ABS-CH website allows for tracking and global audit of uses of genetic resources, toward entrenching open innovation and facilitating equitable benefit sharing over the uses of genetic resources and associated traditional knowledge.

Information exchange (or sharing) in these contexts can be distinguished from mere reference to “free information” in the conventional open innovation discourse symbolized by the free software movement. Free information (or the more familiar refrain in ICT, free content) may bridge access gaps, sometimes in order to temporarily fix inequity, but it does not guarantee systemic change or capacity building and socialization of knowledge for the benefit of recipients. More often, the innovation in question is usually a product of centralized or hierarchical order. Information exchange, however, reflects, in part, the essence of openness. Information exchange or openness is not an end. It is innately functional because of its ability to develop capacity or promote empowerment, and it is essentially democratic in its ability to fuel optimal epistemic traffic across diverse competences in society in a horizontal chain of interaction. Rather than serve as a one-directional hand-out meant for consumption or absorption, creating a producer/consumer dichotomy, openness supports “social, [or socialized] information-network-based, models of sharing [and exchange], participation and collaboration.”

Concluding Thoughts

Foundational discourses about open innovation are understandably linked to the impact of digital technology and the internet platform in reifying the elements of openness—specifically collaboration, dependency, networking, and sharing. In this conceptual frame, new information technologies are essentially disruptive as they serve to catalyze pressure, disorient or even dismantle the more conventional, closed innovation model often represented (albeit, less accurately) by IP rights. Consequently, it is tempting to characterize IP as a counterpoint to openness and to deny its relevance in open innovation. However, whether as a metaphor or as a direct analogy, the information-technology driven model of openness requires a pensive approach in regard to its adaptation to sectors in which networked communication technologies are only ancillary. One such sector is the agricultural sector, specifically as implicated in the context of the global regulation of PGRFA. Like several sectors of human innovative endeavor, PGRFA has and is still benefitting from the adaptations or deployments of networked digital technology in furthering and in creating new interest in open innovation.

Unlike in the software sector, the historic poster child for openness, innovation in PGRFA is prima facie an open process manifested across epistemic boundaries of all agricultural knowledge systems. However, despite the innate culture of openness over innovation in PGRFA, there is a glaring equity gap in the diffusion of the benefits of R&D, owing largely to the exaggerated stress on IP as a closed or proprietary model of innovation. That stress is exacerbated through global strengthening and universalization of the IP standard pursuant to the TRIPs agreement. TRIPs and other subsidiary systems, such as the (UPOV), successfully cast IP as selectively exclusionary and rigidly closed regime of protection in a manner that alienated the interests and contributions to innovation made by ILC farmers at the centers of crop origin and diversity. The unbalanced focus on IP, in turn, helped to fuel concerns about equity and ABS in the realm of PGRFA and also provided an impetus for expediting long-lasting efforts in other sites for addressing those concerns, notably the CBD, the Treaty, and the CGIAR-IARC system. Ongoing implementations of the Treaty, recent reforms at the CGIAR and potential coming- into-force of the Nagoya Protocol on ABS encourage the consolidation of open innovation in PGRs and the pragmatic role of IPRs in this new dynamic.

is an Associate Professor at the University of Ottawa's Faculty of Law (Common Law). He is called to the Bar in Nigeria and Canada and is a member of Nigerian Bar Association and Nova Scotia’s Barristers’ Society. You can read Chidi's full article that was used to create this blog .��

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