Anita Gogia is a IPilogue Writer and a 2L JD Candidate at Osgoode Hall Law School.

In , the Federal Court of Canada invalided patents for interactive program guide (“IPG”) technology and clarified a reasonable royalty as the appropriate remedy had the patents been found valid and infringed.

Rovi supplies , and Videotron is a telecommunications corporation providing cable services and . IPGs are interactive menus that you may have used to select/search programming listings rather than viewing them on a paper guide.

Rovi’s revenue model is to license a portfolio for a rate without consideration for the number of patents. Videotron did not renew its license which expired in 2016. Videotron claimed they licensed to avoid litigation, and later realized that Rovi’s portfolio is obsolete. Notably, Rovi wanted to double the royalty rate and when Videotron asked Rovi to “.” Rovi did not provide an adequate answer.

Rovi that Videotron infringed four patents, which Videotron were invalid. Rovi’s patents were held due to obviousness and anticipated knowledge in consideration of prior art and knowledge of the skilled person. Rovi’s patents were secured in the 1990s, one of which claims a “”. ��The Court held that it was obvious to the industry that IPGs would be prominent in the future and that 1990s were “.” Therefore, or obvious extensions.

The Court’s for denying the remedy of accounting of profits is significant, as not much caselaw has clarified this equitable remedy. Videotron’s products are classified as “complex products” since the patented technology is a small part of the overall value of the product —- not analogous to a pharmaceutical product. With standard patent cases, patentees can be granted ‘accounting for profits’ as a remedy. The availability of such a remedy is questionable with non-standard cases. The for awarding an ‘accounting for profits’ ��are as follows:

First, the Court did not find undue delay by Rovi in pursuing litigation against Videotron.

However, upon examining Rovi’s conduct, the Court found that Rovi operated in bad faith — that Rovi was using “” and not disclosing the list of infringed patents to Videotron to prevent them from designing around them. The recognition of “hard-ball” as a characteristic of bad faith conduct is a novel interpretation of a traditional equitable ground.

Second, the judge recognized Rovi’s “” into royalty deals and took note of Rovi’s delay in prosecuting patents which results in the problem of “holdup”. Granting an accounting remedy in this case would set an undesirable precedent contrary to the purposes of IPR as it gives patentees leverage in negotiations where the royalty would reflect the .

Third, Rovi that Videotron wilfully infringed their patents, however, the judge concluded that Videotron refusing to renew their agreement was actually based on a “reasonable assessment of the necessity of the patents”.

As the court considered the fourth factor neutral, it moved on to an interesting analysis of the complexity of calculating an accounting of profits — that inventors are entitled to that portion of which is causally attributable to the invention. However, patentees seeking an accounting remedy must provide a sound and reliable way to calculate profits. Here, the Courts found that Rovi’s proposal for calculating Videotron’s profits complex and unreliable, said to be based on “” evidence. The court noted caselaw describing that “.”

Instead, the Court accepted Videotron’s proposal of the appropriate remedy as a “.” It was a safer approach to argue a reasonable royalty cap of $150,000 per feature based on design-around rather than arguing that the royalty was zero, since the non-infringing alternative is to remove the IPGs all together.

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Natalie Bravo is an IPilogue Writer and a 2L JD Candidate at Osgoode Hall Law School.

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For years now, have identified potential benefits for implementing blockchain technology in the music industry. Blockchain could allow for more equitable pay for artists. Artists currently to achieve pay equity, especially in . in unallocated royalties end up redistributed when rights are unidentified. If implemented correctly, blockchain technology can serve as a database hub for copyright information and metadata.

Technological advancements and increased accessibility to musical tools allow anyone to become a published musician. Aspiring artists no longer need fancy studio gear or support from well-known names to create popular hits. More creatives in the scene drive competition. Thus, . For example, a single hit song, like , could have a dozen writers, each with their own stake in the final product. In the digital streaming era, when music is often written by multiple people, allocating royalties has become much more complicated. Paying artists what they are owed is difficult when ownership data may be complex and/or lacking.

In brief terms, blockchain technology is known as the foundation for cryptocurrency. The technology first appeared in the infamous 2008 Bitcoin authored by Satoshi Nakamoto. Bitcoin works on peer-to-peer network “P2P” as an electronic cash system. It is publicly accessible and transparent through traceable transactions.

Today, blockchain technology’s utility has expanded to much more than just transferring digital currency. For years now, musicians have attempted to make use of the network. Notably, in 2015 . Heap has since been developing , a blockchain-based, music-sharing space. She recently released an in April 2021. Blockchain has established a following amongst listeners and musicians alike. It could drastically change the status quo, if done widely, correctly, and in .

As a trusted network system with no reliance on third parties, blockchain is a fairly transparent and secure platform. are key in dealing with music licensing in particular. To date, no database anywhere accurately demonstrates song and record ownership. Instead, various publishers own distinct datasets. These datasets are not always in agreement, and hence can result in conflicts. No uniform database on music copyright information exists. A notable failed attempt at a singular database is the . There are or , but none are used uniformly and across the board. For a longstanding industry such as music, this is a tremendous concern. Enthusiasts envision a music copyright database implementing blockchain technology that could remedy current industry complications. Ownership information could be accessible and easily verified by all. A network where everything is accounted for could potentially offer quick and seamless royalty payments.

Even if the industry doesn’t warm up to the idea of a centralized database utilizing blockchain technology, writers and musicians will likely keep exploring ways to get their fair share. With tech and music evolving at a rapid pace, it is anyone’s guess where the correct solutions lie.

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The art, designed by , was supposed to be a metaphor for the passage of time according to Gunning. The RCM, acting according to their policy for intellectual property, wanted to collect $1200 in if Gunning were to produce an additional 2000 CDs. The “...is pennies to them but is pretty substantial for me” according to Gunning, no doubt relieved that the RCM chose not to pursue the royalty on the first 2000 CDs he had already made.

The RCM was initially alerted to the issue by a of Gunning’s, who works for the mint. According to Gunning, the fan pitched an idea about trying to sell the album in the RCM gift shop in Ottawa to coworkers. The unfortunate result was that Gunning was subsequently contacted by the RCM to notify him of his breach of copyright.

The of the RCM with regards to intellectual property are outlined on their website in some detail. In order to have acquired the rights to use images of the penny, an application form needed to have been completed and a minimum application fee of $350 needed to be paid. After that point a committee would have considered a variety of factors in determining whether a subsequent royalty would also need to be paid. “Now that we have explained the rules and the policy, it’s very clear what the implications are for using the penny’s image. And we’re certainly being consistent in the applications of our policy for any for-profit use” said (communications manager for RCM).

In to the RCM, Gunning is urging his fans to bring pennies to his concerts in order to fund the payment of the royalty and make a donation of $1,200 to the Izaak Walton Killam Hospital for Children in Halifax. Fortunately for him, the RCM on September the 13^th, stating “The Mint's recent interaction with Mr. Gunning has brought attention to our current intellectual property policy. We now recognize that our policy as it is today may not consider the individual needs and circumstances of those who request to use our images.” However, problematic policy may not be the sole cause of the retraction. After all, policy already states “In some cases, the Intellectual Property Committee (hereinafter the "Committee") may require the applicant to pay royalties in addition to the administration fee” (Emphasis added). The requirement of a royalty payment was always an optional cost for use of copyrighted images according to RCM policy. More likely, the RCM recognized that they were getting bad press by forcing a struggling artist to pay a royalty and retracted the royalty as soon as it became public knowledge. As a result of the RCM retraction, Gunning said that the funds raised initially for paying the royalty would be included in his to the Izaak Walton Killam Hospital for Children in Halifax.

Although the issue between Gunning and the RCM has been solved, it has clearly been identified that there are issues with the current RCM policies regarding intellectual property. Under of the Canadian Copyright Act, works “prepared or published by or under the direction or control of Her Majesty or any government department” are held in copyright by her Majesty for a period of 50 years. This likely includes copyright in Canadian currency, but what does that mean for the enforcement of copyright? Does that mean that David Gunning would have been fine if he had only used images of pennies created before 1962 on his album? Can a penny from 2010 be considered an original work under the definition in section 2 of the , given its similarity to the design of the 1937 penny created by ? In my opinion, the policies and rules governing the copyright of Canadian currency should be clarified by the federal government and the RCM. Otherwise, acts of potential infringement like the situation involving David Gunning are bound to occur in the future.

Adam Stevenson is a JD Candidate at Western University, Faculty of Law.

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