But apart from substantive knowledge, perhaps the most important lesson I’ve learned in my time at ISED is that government, while a unique institution with a responsibility to the public and mandate to act in its best interest, is still an organization in its own right. In hindsight, it seems strange to view the federal government, which , as a monolith. It is a collection of diverse groups and interests which, despite the (sometimes understandable, sometimes irrational) frustration directed at it, is full of people who genuinely go to work every day with the needs of this country front-of-mind.

There was perhaps no better time for me to have joined ISED; with the caretaker phase of the election, I got a sense of the government’s unambiguous awareness that its actions and legitimacy are deeply intertwined with the Governor-in-Council, and its accountability to Parliament and the Canadian people. But even during this time, with the sensitivity it brings, things need to get done. Without the overarching direction of Cabinet, the iterative nature of governance was on display in a way that might not have otherwise been obvious. That is to say, as much as the activities of a government department may be shaped by the Minister at its helm or the Government of the day, so too does the bureaucracy have a role, indeed a responsibility, to gather information and evidence, to inform, and to provide elected leaders with the tools they need to make decisions and evaluate whether and how past decisions are working.

To do their job properly, policy-makers must consult with a diverse range of stakeholders to ensure that all perspectives are canvassed. But, unlike the adversarial common law framework that has been so engrained in my head these past two years of law school, it is also important that points of view not expressed by stakeholders are considered – in my opinion, it is perfectly reasonable, if not essential, for the government to have its own perspective on a given issue (though it must be tempered by a vigilant ‘step-back’ to ensure that this view is in line with the public interest, both as defined by Canada’s elected leaders and as a more general concept).

Developing that kind of holistic perspective requires continual engagement – identifying stakeholders (including those who may not realize they are stakeholders), receiving their points-of-view, critically evaluating their ideas and concerns, including as against those of other stakeholders, and re-engaging with that newly-informed perspective to repeat the process. The end goal of this is, cognizant of elected leaders’ priorities, to build a consensus where possible, or at least narrow down the range of options and implications. Consensus-building doesn’t just extend beyond government, however. I’ve also very much internalized the importance of understanding that, much as private entities build partnerships and dialogues to achieve their shared interests, it is also invaluable for policy makers to develop those kinds of relationships within government.

Looking toward my future, this process has given me a newfound appreciation for judges, who by the nature of their job have to rely on a limited set of viewpoints. It has also made me, personally, question the advancement of wide-reaching, complex, controversial policy through the courts. It is not a question of trust or competence – judges, from my (relatively) limited experience are certainly among the best and brightest individuals who could be chosen for the role. But that role comes neither with the mandate to consider all points of view nor the institutional supports to do so. I therefore come away from government (and law school) appreciating the judicial system as a pivotal institution to hold the government to account and prod it to action, but am more understanding of decisions that leave the ‘how’ to Parliament, the Executive, and the Administration – when it comes to the judicial branch of a healthy liberal democracy, justice is best served correctively, not prescriptively.

To close, thank you to ISED, MFPB, and my team at CTPD. It was an enriching experience, and I was genuinely sad to leave.

Peter Werhun is an IPilogue Editor and JD Candidate, enrolled in Professors D’Agostino and Vaver 2019/2020 IP & Technology Law Intensive Program at Osgoode Hall Law School. As part of the program requirements, students were asked to write a reflective blog on their internship experience.

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The Gowling WLG Best Blog in IP Law and Technology Prize (the “Gowling WLG IPilogue Prize”) was pioneered in Professor Pina D’Agostino’s Intellectual Property class in the Fall 2007 term and has been generously sponsored each year since then by Gowling WLG.

All blog entries and comments on the IPilogue submitted by Osgoode students are considered automatically for the prize. In each academic semester, there is one prize for the best blog post and one prize for the best comment.

For students, this is a chance to recognize their research and writing in a specialized and technical field. It also encourages law students with a strong interest in Intellectual Property Law to develop that interest. Of course, the subject matter of the IPilogue goes beyond strictly IP. Our stories also delve into related areas including: internet law, privacy rights, broadcasting, social media and free speech.

We are pleased to announce this year’s winners of the Gowling WLG IPilogue Prizes:

Fall 2018 Term:

Best Blog: Peter Werhun on “”

Best Blog Comment: We did not award a winner for this category

Winter 2019 Term:

Best Blog Post – We have a tie:

Gillian Burrell on “”

Saba Samanian on “”

Best Blog Comment: Alessia Monastero’s comment on “”

Congratulations to our winners and thank you to all who make the IPilogue possible. We are most grateful to Gowling WLG for their generous support.

The post Announcing the 2018/2019 Winners of the @GowlingWLG Best Blog in IP Law and Technology Prize appeared first on IPOsgoode.

But the real crux of the problem, the source of tech companies’ economic and social clout, is papered over in only one sentence. It seems likely that’s not because Senator Warren’s team doesn’t care about the issue, but because when it comes to controlling how people consent to data collection, there don’t seem to be any easy answers. That’s especially apparent when it comes to how individuals, corporations, and governments have dealt with data coming from the most plugged in, yet also one of the most vulnerable segments of society – minors.

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The Law on Privacy and Minors

In the US, online collection of personal data for children is primarily governed by the Federal , or COPPA, which is enforced by the Federal Trade Commission (FTC). Under the law, it is illegal to collect the data of children under the age of 13 without parental permission. Given the costs of complying with that kind of consent requirement, many companies simply take the position of disallowing children under 13 from using their platforms altogether.

Canada’s federal system, on the other hand, has led to a more complicated overlay of laws. , the Canadian Federal privacy law, has no specific provisions regarding consent of minors. Under their , the Office of the Privacy Commissioner of Canada (OPC), which administers PIPEDA, generally considers anyone under the age of 13 incapable of giving consent. However, when it comes to , Alberta, British Columbia, and Quebec stick to a strict case-by-case model, rather than any blanket age restriction.

This means that, on the Canadian Federal standard, parental consent is required for collecting online information from children under the age of 13. In the case-by-case model, a child must be able to understand “the nature and consequences of the exercise of the right or power in question”. The case-by-case model also applies federally to children over the age of 13.

Two issues come to mind: are the laws on the books actually working? And furthermore, does anyone understand the nature and consequences of how they are exercising their privacy rights, let alone children?

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Recent Cases: Where the Law Applies and Where it Runs Out

For a look at how child consent enforcement works in practice, let’s again turn to the United States. On February 27^th, 2019, ByteDance, the parent company of TikTok (formerly Musical.ly) . The civil penalty, which is the largest ever for a violation of this kind, was administered because it was found that TikTok had been facilitating the uploads and private messages of children under the age of 13. In fact, a found that 1 in 4 children had connected with a stranger through apps like TikTok, and 1 in 20 had been asked to strip by a stranger during a live stream. While the company has moved to stop users under 13 from uploading videos as a result of the fine, .

, though in this case it was targeting users age 13-35. Participants were secretly paid up to $20 per month to install a “Facebook Research” app, with the goal of collecting vast amounts of data from users’ phones. The app demanded root access to the device it was installed on, giving it virtually complete access to the device’s data: photos and videos, web searches, private messages and texts, and location monitoring – all of which Facebook could collect continuously, regardless of encryption. that participation was consent-based, and that of the less than 5 percent of users under the age of 18, all were required to provide parental consent forms. It has since discontinued the program.

It’s not clear what the long-term effect of the TikTok FTC fine will be. That is to say, it’s not obvious that cost of policing 500 million users is outweighed by a $5.7 million fine . Instead, the way things are today, it seems entirely possible that serious harm to children is an externality of an anonymous (and extremely profitable) internet.

On the other hand, while Facebook’s behaviour might be considered by some to be unsavoury, the question becomes whether there is anything that can be done about it (especially since, unlike the TikTok example, it was not unlawful conduct). What is clear, however, is that ‘consent’ is a nebulous idea, and one not easily grasped by parents, let alone children.

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Is ‘Parental Consent’ Meaningful?

For the sake of argument, let’s set aside the thornier issue of how feasible enforcing informed consent actually is. Instead, the core issue is whether individuals are informed enough to consent in the first place.

Parents often underestimate just how influential the way they handle their children’s data can be. . Information as innocuous as sharing birthdays online can have devastating consequences for a child; , storing data while waiting for children to turn 18, then making credit card and loan applications in the child’s name.

‘Smart toys’ in the home are a problem in and of themselves. These devices are targets for hackers because they are Bluetooth and internet compatible with few safety mechanisms built-in (smart speakers have a similar problem, especially ones marketed to children). But despite concerns and breaches, .

None of this is meant to assign any ill-intent to parents, who have a hard-enough time raising their kids without worrying about hacked toys or policing their own social media presence to protect their children. Whether through ignorance or by choice, though, parents have demonstrated that they are not all that better than their kids when it comes to handling data. But is there any better way to structure the system?

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How DO We Handle Collection of Online Information?

Given all the problems, one might think we should just ban collection of minors’ data altogether, regardless of parental consent. Unfortunately, there are several problems with this kind of thinking.

First of all, there is the practical issue of whether it would even be possible without fundamentally reworking the anonymity of the internet (who wants to sign up for an online account by handing over government ID?). The fact that companies have effectively treated their platforms as 13+ without much success, speaks to the difficulty of implementing any kind of platform-directed user vetting.

Secondly, it would still be difficult to prevent the collection of inferred data, such as what users search and view online, because consent is not directly needed for that kind of data collection.

Lastly, there are the economic implications. Online marketing and data-driven e-commerce are obviously massive fields, but it bears emphasizing just how massive – in 2018, the top six companies in the world by market capitalization were all tech-based (in order: Apple, Amazon, Alphabet, Microsoft, Facebook and Alibaba). Moving the internet to the speed of bureaucracy would therefore undoubtedly have knock-on effects to the global economy.

So should the alternative be, as per the OPC’s guidelines for teens, consent requiring an understanding of “the nature and consequences of the exercise of the right or power in question”? As should be clear by now, that does not seem to be a workable standard, given that even adults have a tough time keeping up with all the implications of the digital economy.

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The Broader Problem with Privacy in the Digital Age

Returning to Senator Warren’s plan, one can see that, notwithstanding the financial merits or demerits of breaking up big tech, we aren’t really at the point as a society of having an informed discussion as to the trade-offs and moral decisions we must make if we want to continue life in an interconnected world.

Breaking up tech companies won’t address the question of who has access to private information (child or adult) and what they’re doing with it. It’s more of a sui generis problem, where the domination of an economic field by an oligopoly (the reason why some call for breaking up the banks) is fundamentally intertwined with an inability to have a broad, meaningful conversation, thanks to a lack public knowledge (similar to how inadequate civic education affects our ability to engage in political discourse). When you factor in concerns about cyberwarfare and election meddling, the ‘big-tech’ debate simultaneously hits at all the core themes of our current world: nationalism versus globalism, social reform versus retrenchment, and wealth inequality.

The question of the global digital economy is thus as much a distillation of the political, economic, and social narrative of the early 21^st century as the Cold War was of the later 20^th century. In that spirit, it may be prudent to take some lessons from Dr. Strangelove, which perhaps best captured the intractability and seeming futility presented by the nuclear age. What I’m left with is the uncomfortable realization that I myself don’t fully understand the implications of my consent and privacy in the digital world; but short of unplugging, it looks like we will keep riding this bomb and hope our choices work out in the end. Is it crazy? Perhaps. But it’s not unprecedented. After all, it only takes one letter to go from MAD to ad.

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Written by Peter Werhun. Peter is an IPilogue Editor and JD Candidate at Osgoode Hall Law School

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

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

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

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

Top Ten Most Read Blogs of 2018

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

Patents

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

C-86 and the Patent Act Updates

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

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

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

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

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

Changes to Canadian Patent Rules

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

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

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

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

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

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

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

CUSMA

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

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

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

Cannabis

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

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

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

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

Trademarks

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

Progress for New Trademark Legislation

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

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

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

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

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

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

CUSMA’s Implications for TMs in Canada

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

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

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

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

Official Marks are not Absolute Defences to Infringement Claims

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

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

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

Copyright

CUSMA

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

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

Combating infringement

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

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

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

Copyright Notice-and-Notice System

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

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

Review of the Copyright Act

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

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

Copyright and Internet Service Providers

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

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

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

The post IP Year in Review 2018 – A Milestone Year for IP Osgoode and Ground-breaking Changes in the Canadian IP landscape appeared first on IPOsgoode.

Copyright

Under the CUSMA, Canada will have a 2.5-year transition period (Article 20.90) to increase the length of copyright protection to life plus 70 years for works, and life plus 75 years for performances. The duration of protection for copyright in performances won’t be changing dramatically (up from 70), but with the length for works currently at life plus 50 years, the new trade deal represents a significant change (i.e. a length of time equivalent to 5/6 of my lifetime) (Article 20.63). It remains to be seen how the deal will affect marginal cases. From the text of the agreement, it seems open for the parties to decide what happens to copyright protections that expire during the transition period. A hard cut-off may be simplest, but it’s not clear that would be fair to owners. The rights-balancing involved should not be understated, since the short transition period means that a more gradual change will be difficult, if not impossible – it is very much a 2-or-20 year extension situation.

Canada’s notice-and-notice framework will persist under the new deal (Article 20.89); for a brief introduction to the notice-and-notice regime, see . While Section J (and its Annex) of the CUSMA IP Chapter preserves the framework, the specificity of the language removes some of the flexibility that Canadian law might otherwise have to respond as notice-and-notice continues to evolve. In the long run, might this increase the risk that Canada shifts to the CUSMA-default notice-and-takedown regime that already governs south of the border?

The CUSMA also goes out of its way to make sure that criminal and civil remedies exist for tampering with digital locks or removing digital watermarks (although criminal remedies were already in place for the former). Nonetheless, a host of common-sense exceptions are directly enumerated, including circumvention by non-profit libraries, archives, educational institutions, or public noncommercial broadcasters, or for research or national security purposes. (Articles 20.67, 20.68)

Trademarks

In trademarks, statutory damages may be required for trademark counterfeiting (Article 20.82). Given the Canadian experience with statutory damages for copyright infringement this is a controversial move; according to Prof. David Vaver, statutory damages may encourage litigation of worthless claims and unfairly compensate rights holders, though on the other hand it may streamline the enforcement of rights protected by law.[1] However, because of the open-ended nature of the provisions, having a system of ‘additional’ (i.e. exemplary or pecuniary) damages instead of statutory ones may suffice (Article 20.82).

The border provisions in the CUSMA also include new procedures for detention of goods that are confusingly similar to registered trademark goods. Arguably the biggest change is the ability of border officials to detain goods in-transit, which, until now, . (Article 20.84)

Patents

Apart from affirming commitments to existing international treaties and trade agreements, the most significant change to patent law is how biologics (large molecules produced by living systems) are protected. Specifically, over a five-year transition period (Article 20.90), the term of market exclusivity will be increased to 10 years, from the current standard of eight (Article 20.49). Given that many novel therapeutic methods depend either directly (for treatment) or indirectly (e.g. for diagnosis) on biologics like antibodies, there are concerns about what even a two-year extension may mean for .

The second big change for patents is more administrative, in that it affects how applicants interact with the Canadian Intellectual Property Office. In particular, those seeking a patent will now be able to expect compensation for unreasonable delays in application processing. The caveat is that a delay can only be unreasonable if more than five years have passed since filing or three years have elapsed since a request for examination. Note also that ‘compensation’ is strictly defined to mean adjusting the lifetime of the patent according to the delay. (Article 20.44)

The ‘Hot Take’

Many commentators view the agreement as a capitulation to US IP demands. I won’t argue for or against that notion. When looking at the larger context of the deal, however, IP stands out as one of the few areas that has been substantively changed by the provisions of the CUSMA. One is left with the uncomfortable question – were American demands acquiesced to in order to appease US negotiators on the substance of the broader deal? On the face of it, that does not seem totally implausible. For Canada, the CUSMA but for opening our dairy market and changes to IP. Unlike the US, though, Canada does not have the luxury of a massive domestic economy to cushion the blow of a lapsing free-trade regime with its largest trading partner, so it’s hard not to see the appeal of taking the best deal we can (sweetened by Canada, and especially Ontario, ).

Regardless of what happened behind closed doors, I hope that the decision to accept these changes to the Canadian IP system was well-reasoned. The ground given on intellectual property will cost Canadian users, but may end up preventing greater damage that would be visited to the Canadian economy writ-large if NAFTA were to end with no replacement. In an international arena increasingly characterized by transactional relationships and realpolitik, such sacrifices may end up being inevitable. At the same time, we should be wary of the potential for IP to end up playing second-fiddle to other policy and economic considerations. There is a reason why other countries are willing to accept concessions on Canada’s IP law and policy in exchange for other, sometimes more tangible, benefits.

Written by Peter Werhun, IPilogue Editor and JD Candidate at Osgoode Hall Law School.

[1] David Vaver, Intellectual Property Law, 2nd ed (Toronto: Irwin Law, 2011) at 644-645.

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[Your ISP] has received a notice from a content owner that alleges an act
of copyright infringement from an Internet Protocol (IP) address assigned to you
at the time of the alleged infringement. We are required by law to let you know
that we have received this notice.

The law in question is the Notice and Notice scheme (). The latter provision, s 41.26, outlines the steps that an ISP must take once it receives a notice of claimed infringement:

1. The ISP forwards electronic notice to the person associated with the IP address alleged to be source of infringement.
2. The ISP keeps records for six months that will allow one to determine who was associated with that IP address.

Now, while you may not realize it, there are entire systems in place to get that notice to you and to further produce your identity to the copyright holder (if the ISP is so ordered by a court). Like most things, getting that system in place and using it costs time and money, and since so many allegations of infringement go out each day (around 5,000 per day from Rogers alone), it turns out to be quite a bit of time and money indeed.[i] In the recent case of [Rogers], the Supreme Court of Canada helped clarify who exactly should foot the bill.

Parliament structured s 41.26 in such a way that ISPs could be reimbursed according to rules at the discretion of the Governor-in-Council. The Cabinet, as is its prerogative under s 41.26(2), decided not to entitle ISPs to any reimbursement for complying with the Notice and Notice regime. One is left, then, with the common law to fill any gaps (notably, actually producing the identity of the alleged infringer is done by application, not by statute).

In Rogers, Justice Brown, writing for eight justices, makes some key observations about this setup. Firstly, he refers to the legislative intent behind ss 41.25 and 41.26 of the .[ii] The background of the 2012 changes to the Copyright Act makes clear that Parliament intended to balance the interests of not only copyright owners and content users, but also of “Internet Intermediaries”.

Secondly, Justice Brown clarifies that the records that must be stored under s 41.26 refer to ones which would allow the ISP to determine who the alleged infringer is.[iii] It does not include the act of translating this information into a means which would be accessible and comprehendible to the copyright owner or the courts. It is this finding which opens the door for ISPs to claim expenses for complying with Norwich orders, separate from compliance with Notice and Notice.

However, according to Justice Brown, it would not be reasonable to reimburse the ISP for work it has already done under the Notice and Notice scheme.[iv] It is this final idea which appears to be the point of contention between Justices Brown and Côté.

Justice Côté agrees with the other justices that “any work required to determine an alleged infringer’s identity and disclose that identity … is not subsumed within the notice and notice regime.”[v] In practical terms, though, the process required to comply with a Norwich order moves beyond verifying pre-existing information obtained by the ISP under Notice and Notice. Instead, it requires ab initio excursions, on the part of the ISP, into figuring out the identity of the alleged infringer.[vi] This is especially the case given the possibility of information changing over the six-month period, and the fact that the statute only requires a ‘static’ record from the time at which notice was received.[vii]

Regardless of their differences, both sides agree that ss 41.25 and 41.26 are not so broad as to exclude the possibility of reasonable reimbursement for ISPs, in contrast to the Federal Court of Appeal. Indeed, both sides also concur in the ultimate result. That is, the matter was remitted to the motion judge for an adequate assessment of the reasonability of Rogers’ process and determination of reasonable costs (although one is sympathetic to Justice Bosworth in that, before the law was clarified on appeal, it wasn’t clear that any fee would have been reasonable, regardless of what process Rogers was using).[viii]

Beyond the reasoning, one is left with the feeling that something is missing from both opinions. The approach seems to be unquestionably one that treats ISPs as a distinctly third party to the issue of the Notice and Notice regime and Norwich orders. Is this really the case? After all, the very acronym stands for internet service provider. The third party in this case provides the alleged infringer access to content for a fee, and is able to pass along those costs to content users.

Is Rogers just about the entitlement of third parties to reasonable costs for complying with Norwich orders? Or might it fit with a broader common law principle that it is up to the holder of copyright to pursue the enforcement of that right? As pointed out in Rogers, the Government of Canada has seen fit to balance the rights of content users and copyright holders by having the third party bear the costs. But when faced with the reality that those costs can be passed on (one way or another) to content users, maybe the ruling in Rogers becomes much more about user rights than statutory interpretation.

Peter Werhun is an IPilogue Editor and a JD Candidate at Osgoode Hall Law School.

[i] at para 63.

[ii] Ibid. at para 25.

[iii] Ibid. at para 43

[iv] Ibid. at para 52.

[v] Ibid. at para 62.

[vi] Ibid. at paras 63-64.

[vii] Ibid. at para 68.

[viii] Ibid. at paras 56-58, 74-75.

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