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

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

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

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

Following registration in India, Mr. Sahni also achieved success in registering RAGHAV as his co-author for Suryast with the (“CIPO”) in December 2021 (CIPO, registration number 1188619). This registration marks the first time Canada has attributed copyright authorship to a non-human, signaling a victory for stakeholders who firmly support an amendment of Canada’s Copyright Act (“tłó±đ Act”) to support the changing needs of innovators and consumers in a high-tech world. Recognizing AI as an author may spark further in the Canadian AI sector.

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

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

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

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

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

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

The post Canada's First AI-Authored Copyright Registration Paints a Picture of Uncertainty appeared first on IPOsgoode.

Photo from , Smithsonian Design Museum, 1926.

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

Ìę

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

Ìę

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

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

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

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

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

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

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

The post Oh Dear, Piglet, They Kept My Shirt! appeared first on IPOsgoode.

Photo by Engin Akyurt ()

Prof. Pina D’Agostino is the Founder and Director of IP Osgoode, the IP Intensive Program, and the IP Innovation Clinic, the Founder and Editor-in-Chief of the IPilogue, the Deputy Editor of the Intellectual Property Journal, and an Associate Professor at Osgoode Hall Law School. This article features contributions from Ryan Wong (IP Osgoode & IP Innovation Clinic Alumnus), Sabrina Macklai (IPilogue Senior Editor), Tianchu Gao (IPilogue Writer), and Ashley Moniz (IPilogue Managing Editor).

2021 was an exciting year for the IPilogue. Our hard-working students and community members published more than twice as many articles than in 2020 and the most articles in a calendar year since 2011. This sharp increase helped us stay up to date with some of the biggest topics shaking up intellectual property: from , to ; and from growing investments in and , to IP registrars around the world grappling with whether to acknowledge Ìęas an inventor or artist. This article summarizes the top developments reported on our blog and in patents, trademarks, and copyright law in 2021. For a review of Privacy legislation in Canada, check out .

Top 10 Most Read IPilogue Articles Published in 2021

1. by Sabrina Macklai & Emily Chow
2. by Prof. David Vaver
3. by Claire Wortsman
4. By Claire Wortsman
5. by Natalie Bravo
6. by Prof. Giuseppina D’Agostino
7. by Bonnie Hassanzadeh
8. By Meena Alnajar
9. by Prof. David Vaver
10. by Bonnie Hassanzadeh

Introducing the College of Patent Agents & Trademark Agents

On , the came into force. The Act established the (‘’), an independent public interest regulator of patent and trademark agents in Canada. The purpose of the College is “to enhance the public’s ability to secure the rights provided under the and the .” The College’s responsibilities include maintaining professional competencies and ethics, issuing licences, collecting fees, and administering certification exams. This development marks a key milestone for the profession and for Canada’s . Though still in its infancy, the College has been criticized for and its , which may impose an additional fee on lawyer agents. It remains to be seen how influential the College is on the profession as it is expected to be fully operational within the next two years.

Patents

Overbreadth as an Independent Ground of Invalidity

On July 28, 2021, the Federal Court of Appeal confirmed overbreadth as a standalone attack on patent validity: . In this case, the appellants argued that there is no statutory basis for overbreadth as a ground for invalidity. The Federal Court of Appeal disagreed and found that overbreadth can be supported by a combination of sections 27(3) and 27(4) of the Patent Act. Case law has often overlapped overbreadth with other grounds of invalidity such as obviousness, anticipation, and inutility.Ìę

First Time Interpreting Patent Agent Privilege

Similar to solicitor-client privilege, patent agent privilege was introduced by section 16.1 of the Patent Act on June 24, 2016. The first case on patent agent privilege was decided this year: In this decision, the Federal Court provided some helpful commentary and analysis on the application and limitations of patent agent privilege.Ìę

Patent Prosecution History Now Admissible as Evidence

In 2018, section 53.1 of the Patent Act was added to make patent prosecution history admissible as evidence in patent proceedings. This was a significant development as the Supreme Court of Canada had expressly rejected the idea and stated that admitting patent prosecution history “would undermine the public notice function of the claims, and increase uncertainty as well as fuelling the already overheated engines of patent litigation” (Free World Trust v Électro SantĂ© Inc., 2000 SCC 66 at para. 66). Three subsequent Federal Court of Appeal decisions developed this provision further: ; ; and .Ìę

Continued Debates over AI as an Inventor

Around the world, patent registrars grappled with patent applications that credit artificial intelligence software as the inventor. Dr. Stephen Thaler’s “DABUS” (Device for Autonomous Bootstrapping of Unified Sentience) applied for patents around the world for its interlocking food containers. DABUS was granted patents in Australia and South Africa, with . In line with the and the , the disagreed, stating that absent express intention from Congress, the term “individual” in their statutory definition of “inventor” . The Supreme Court of Canada last considered the definition of "inventor" in 2002, but has yet to consider whether it would include non-human entities.

Trademark Law

Parody in Trademarks is No Joke

In , the Federal Court reaffirmed that parody is not a defence against trademark violation. Unlike the 2020 decision ), where the Federal Court failed to find the marks confusing, Justice McHaffie held there was a likelihood of confusion and passing off. This was based partly on the similarity of the trademarks and the overlap of the goods (both offering baked goods). However, even if the nature of the parties’ trades differ, trademark owners may still find recourse against spoofed versions of their marks through claiming depreciation of goodwill under section 22 of the . Here, the Court found goodwill in Subway’s trademarks, which was damaged by the nature of Budway’s products, as contrary to Subway’s “healthy and active” lifestyle promotion. With damages amounting to $40,000, it is clear the courts are unamused by parody in trademarks.

The Road Less Travelled Cannot be Trademarked

Like most countries, Canada bars the registration of “clearly descriptive” trademarks to prevent applicants from monopolizing words that merely describe the goods or services at hand. For this reason, marks consisting of are typically unregistrable. In , the Federal Court clarified when such marks might be protected. Hidden Bench and Locust Lane are two wineries operating on the same little road, “Locust Lane”. Although the Federal Court agreed that Hidden Bench met the threshold for a valid common law trademark over “Locust Lane”, they ultimately held that the mark, as clearly describing the goods and services’ place of origin, lacked both inherent and acquired distinctiveness. Therefore, Hidden Bench could not establish the necessary goodwill for a passing off claim. Only descriptive marks that have acquired a “secondary meaning” through use may warrant protection.

CIPO Addresses the Application Backlog

While filing trademarks is important for brand protection, the examination stage can take . In May, the Canadian Intellectual Property Office (CIPO) new measures to address the application backlog. Trademark owners may now file requests to expedite their examination where the registration of their mark is necessary for special circumstances such as if a Canadian court action involving the mark is expected or underway or if the goods or services are aimed at preventing, diagnosing, treating, or curing COVID-19. If accepted, the examination will take place within two weeks. The examination is also automatically expedited by approximately 6-10 months when the goods and services in the application are listed in CIPO’s . Though it is too early to assess the effect of these changes on mitigating the “”, the backlog of CIPO’s unexamined trademark applications appears to have as of December 13, 2021.

Push to Register Non-French Trademarks for Use in Quebec

Among the controversies associated with Quebec’s proposed Bill 96, , the bill stipulates new requirements for trademark owners operating in Quebec. Currently, under Quebec’s French-language laws, both registered and unregistered (i.e., common law) trademarks recognized under the may appear on public signs, posters, and commercial advertising in Quebec, in languages exclusively other than French. If enacted, Bill 96 would permit only registered non-French trademarks to appear on public signage, provided there is no corresponding registered French version of the mark. The Coalition Avenir Quebec government tabled Bill 96 on May 13, 2021, and Quebec’s National Assembly last examined it on December 10. Some iteration of the bill will likely become law by the end of this year. But even if it fails to pass, businesses relying on common law trademarks would be wise to try to register them, given the many that registration provides.Ìę

Copyright Law

In 2021, the Federal Court and Federal Court of Appeal heard 57 copyright infringement proceedings, approximately of all IP-related litigations at these levels.

Developments in Fair Dealing

The Copyright Act’s section 29 fair dealing provision, which allows for certain uses of copyright-protected materials, remained a central issue. affirmed that fair dealing for the purpose of news reporting (section 29.2 of the Act) must provide attribution, mentioning both the source and the name of the author. An indirect reference to the author accessible through “minimum research” is insufficient. As such, the Federal Court of Appeal rejected Trend Hunter’s argument that hyperlinking to the source article where Stross was credited was sufficient to meet the second requirement. The Court also declined to find fair dealing under s. 29 more broadly, considering that Trend Hunter’s dealing was commercial in nature, reproduced Stross’ work in its entirety, and that alternatives were available.

Fair dealing was once again at issue in , where the Federal Court held that the Conservative Party’s use of the CBC’s news footage of Liberal Party Leader and Prime Minister Justin Trudeau during their 2019 election campaign did not infringe CBC’s copyright. The court undertook a large and liberal interpretation of fair dealing, finding that the Conservative Party’s use of CBC footage was for the purpose of criticism under s. 29.1.

91ŃÇÉ« achieved a in the copyright tariff dispute with the Canadian Copyright Licensing Agency (“Access Copyright”) in In a unanimous decision, the Supreme Court ruled that the interim tariff approved by the Copyright Board is not mandatory. Users can choose whether to accept licences or pursue alternative methods to lawfully copy works. Notably, this marked Justice Rosalie Abella’s final decision before her retirement from the Supreme Court of Canada. Throughout her tenure, and her judgement here provided helpful obiter regarding fair dealing as integral to users’ rights.

Even Fake Facts are Not Copyrightable

involves the alleged copyright infringement of the famous true-crime story The Black Donnellys. The book had always been presented and accepted as “.” The Federal Court ruled that “an author who publishes what is said to be a nonfiction historical account cannot later claim the account is actually fictional to avoid the principle that there is no copyright in facts.” Given today’s popularity of the phrase “based on a true story”, this ruling is a that there is no copyright in facts, even if they are later found to be untrue.

Copyright in Evolving Content Transmission

In , the Federal Court found the defendant liable for copyright infringement in its provision of pre-loaded set-top boxes and internet protocol television (IPTV) services and awarded the plaintiff nearly $30 million in damages. These services made copyrighted works owned by the plaintiff available to the public without the plaintiff’s permission. This decision marks the first time The court dealt with a similar issue in ). As IPTV is growing increasingly popular across the globe, its poses a challenge in Canada.

Availability of Reverse Class Actions for Copyright Infringement Claims

The first of its kind in Canada, the Federal Court of Appeal in affirmed that reverse class actions may be pursued in connection with copyright infringement claims. Though the matter was sent back to the Federal Court for further consideration, this judgement may encourage and enable mass copyright enforcement in the future, especially in our digital age where copyright infringement is more commonplace.

Public Consultations Ahead of 2022’s Copyright Reform

As part of the (CUSMA), which came into force on July 1, 2020, Canada has until the end of 2022 to implement numerous changes to their domestic copyright laws; most notably, extending the general term of copyright protection from . In light of the upcoming legislative amendments, the Government of Canada hosted three public copyright consultations in 2021:

• ;
• ; and

With the consultations now closed, it will be interesting to see how Canadian copyright laws will change in 2022 to accord not only with international obligations but our ever evolving digital world and public attitudes surrounding copyright laws.

The post 2021 IP Year in Review appeared first on IPOsgoode.

Photo by ()

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

Ìę

Emily Chow is an IPilogue Writer and a 1L JD Candidate at Osgoode Hall Law School. 

Ìę

Fan culture, or “fandom”, is a term used to describe a community of fans built around a shared enjoyment of a particular piece of pop culture. Members of fandoms often participate in various creative activities inspired by their source material, including dressing up as the characters, writing stories based in the fictional universe, and making drawings about the original work.

While most creators support fandoms, with some even , the line between appreciating a creator’s work and copying can be blurred. What may seem like a harmless activity in the spirit of fandom can at times give rise to copyright infringement.Ìę

Cosplay

(or “costume play”) is the act of dressing up as a character, often from anime, video games, comics, television, or film. Though the term dates back to the 1980s, the practice has existed for centuries. It is often associated with , where fans attend in the masses, taking on characters from popular franchises such as Doctor Who, Star Wars, and Marvel movies to the animated universes of ±ÊŽÇ°ìĂ©łŸŽÇČÔ, Naruto, Final Fantasy, and beyond.Ìę

This year, Japan made by proposing a new law that could potentially create copyright infringement problems for cosplayers. In Japan, cosplay can be a fruitful endeavour, with successful professional cosplayers earning upwards of $90,000 a month from public appearances, merchandise, photo books, and more. Japan’s proposed new law would require professional cosplayers to pay a fee to the creators of the characters they cosplay in specific circumstances (, when appearing as a character for an event or on television).

Luckily for most cosplayers, their costumes likely do not infringe copyright laws. In both the and , given their classification as “useful articles.” Although there are complexities—for example, and —replicating costumes, for the most part, is a liability-free activity. Even if copyright subsists in some features of the costume, reproducing these elements for personal, non-commercial purposes is permissible in both and the .

Fanfiction and Fanart

Fanfiction and fanart are other popular forms of fan expression. As the name suggests, fanfiction and fanart are content by fans based on existing works of fiction.

Though fanfiction and fanart have arguably been around as long as fiction, with authors and artists drawing inspiration from one another, the of the activities as expressions of fandom arose in the 1960s via Trekkies (fans of Star Trek).

Unfortunately, laws around fanfiction and fanart are not clear. In the United States, copyright holders have the sole right to , including major copyrightable elements of an original, previously created work. lacks an analogous provision but does have other provisions under that offers rights holders similar protection, such as the sole right to publish any translation of the work or convert the work into other forms. However, users’ rights provisions ( in the United States and in Canada) may provide a legal basis for fan creations to exist. A fairness assessment may consider relevant factors like commercialization, amount and substantiality of the copied work, and how “transformative” the fan-made work is. Fans may not even have to avail to fairness assessments by arguing that their fan creations are sufficiently original. As it is well-established that authors do not have copyright protection in facts and ideas, including , fans may argue that their works contain only the underlying, non-copyrightable elements from the source material.

While the law surrounding fanfiction and fanart is still grey, authors’ views on the subject are divided. Some authors, most notably the late and , strongly oppose fanfiction, believing it to be copyright infringement. The majority, however, see fan-made content as a form of , and essentially, free advertising for the original work. The author of the famed Twilight series, Stephenie Meyer, was known for and , which originated as a Twilight fanfic.Ìę

Despite the legal uncertainty, fanfiction and fanart continue to rise. The ubiquity of fanfiction and fanart combined with high litigation costs may deter the small minority of authors and publishers who dislike the practice from launching lawsuits. After all, suing your fans isn’t the best way to earn their support.

The post Keep Calm and Fandom On: Copyright in Cosplay, Fanfiction, and Fanart appeared first on IPOsgoode.

Photo by Seenbutnotsurd ()

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

Happy spooky season! From “Evil Midweek Cutie” to “Juice Demon”, the Internet has been buzzing with featuring hilarious knock-off Halloween costumes. But why do many retailers resort to using these creative names? Consumers can clearly identify the source material for these costumes (i.e., Wednesday Addams and Beetlejuice). Is changing the name from sufficient to escape liability?

Copyright Creeping into Costumes

In general, any clothing, including costumes, is not protected by copyright laws. In Canada, under section 64(2) of the , it is not an infringement of copyright to reproduce the design of a “useful article”, so long as more than 50 copies are made. The Act defines a “useful article” as having a utilitarian function, which encompasses most clothing.

There are notable exceptions. For one, section 64(3)(a) states that copyright may persist in graphic or photographic representations that are applied to useful articles. In other words, one cannot avoid copyright infringement by merely reproducing a copyrighted work on a shirt or other “useful article.” While this may not apply to most costumes, this can prevent retailers from replicating images of Disney princesses and other copyrighted characters onto their clothing. Another exception, section 64(3)(b), states that copyright infringement may still be found when reproducing an article that contains “a trademark or a representation thereof or a label.” This explains why retailers cannot use logos like the Star Wars logo on their unlicensed costumes.

Courts have interpreted the scope of section 64(2) and it’s U.S. counterpart, , to exclude jewellery and masks. In (c.o.b. SpareParts), the Federal Court of Appeal suggested that original jewellery designs may be subject to copyright protection as the mere fact that they are worn does not make it ipso facto a “useful article.” In a way, purely ornamental jewellery may be analogous to works of art. However, the case was settled before a trial of the issues. Nonetheless, the notes that those in the jewellery industry may be granted industrial design registrations, offering a different kind of intellectual property protection. This is contrary to the U.S. where original jewellery designs are automatically protected under copyright law as . Fortunately for trick-or-treaters, most jewellery designs are not to be registered with the U.S. Copyright Office. Wearing—or selling—a string of pearls to complete a Great Gatsby themed costume will not land anyone in a lawsuit.

Perhaps more relevant to Halloween costumes, in the U.S., to fall outside of the “useful article” classification, as they are not considered to serve a utilitarian function. Therefore, they may be protected by copyright. Although Canada lacks an equivalent case, Pyrrha Designs Inc suggests a flexible interpretation for “useful article”. Even though masks may receive copyright protection in the U.S., they must still meet a threshold for originality. For example, the U.S. District Court for the Eastern District of Pennsylvania that the Michael Myers mask from John Carpenter’s classic Halloween (1978) lacked the requisite originality for copyright protection; the mask was just a mold of actor William Shatner’s head!

More recently, on September 27, the U.S. District Court for the Eastern District of New 91ŃÇÉ« that the parodical and satirical use of Fun World’s copyrighted “Ghost Face” mask was permitted under the fair use doctrine. American professional basketball player Terry Rozier, nicknamed “Scary Terry”, had launched a line of merchandise that included a cartoon image of him wearing the “Ghost Face” mask, as popularized by the Scream film franchise. While the decision does not support retailers wishing to sell their own Scream-inspired mask, with the court even stating that Fun World’s copyright registration gives rise to a presumption of validity, it does demonstrate that there are ways to legally use copyrighted works in one’s own design without seeking permission. Interestingly, the court noted that Rozier produced evidence which called into question whether Fun World’s mask possessed the requisite originality, given that a third-party created and marketed a similar “Wailer” mask several months before the “Ghost Face” mask was registered. Though not resolved in this case, the validity of Fun World’s copyright hangs in the balance.Ìę

Outside of masks and jewellery, a 2017 U.S. Supreme Court case, held that aesthetic elements of useful articles could be copyrightable only if they can be perceived as a two- or three-dimensional work of art separate from the useful article and would qualify as a protectable pictorial, graphic, or sculptural work if it were imagined separately from the useful article. The decision was applied in the costume context, in the 2019 case . Here, it was held that although a full-body banana suit is a “useful article”, the sculpted banana design itself may be copyrighted. It appears in the U.S., copyrighting Halloween costumes is not as bananas as one may think!

Scary Issues with Licensing and Trademarks

Although costumes are generally not afforded copyright protection, trademark laws still prevent retailers from selling and marketing unlicensed versions of costumes using the names which they are based on. protect brands’ corporate image via a sign or combination of signs used to distinguish their goods or services from those of others. This can include words, designs, three-dimensional shapes, textures, etc.

To avoid trademark infringement, retailers will avoid using trademarked names (like and ) and opt to sell their unlicensed costumes under parodied titles that give rise to the comical memes on our social media feeds.

Even so, rights-holders have initiated lawsuits against copycat designs with changed names that do not infringe trademarked words. For example, Fashion Nova is routinely sued for copying iconic fashion designs, even being . The central argument lies in trademark law—that the clothing has acquired the such that it is strongly associated with the brand or designer and copycats would create a high amongst consumers. Although it is unclear how strong these claims are, there remains a risk of being sued and facing litigation costs for copying a well-known design, especially given the decision in Silvertop Associates.

DIY Tricks?

Luckily for at-home costume designers, making your own costume, even of a licensed character, is unlikely to provide grounds for copyright violations. In Canada, provides that an individual does not infringe copyright by reproducing an otherwise copyright-protected work if the individual only uses the reproduction for their own private purposes. Although the U.S. lacks an analogous statutory provision, it is that using copyrighted materials for personal, non-commercial purposes is permissible.

While the last-minute, homemade Supermans and Catwomans can breathe a sigh of relief, issues may still arise if one were to sell their homemade creations on a site like Etsy. Doing so would prevent the maker from claiming a private purpose.

Overall, DIY costume-makers and even commercial costume retailers are very likely safe from liability. Still, it may be better to err on the side of caution and ensure that any costumes created do not infringe copyright (as limited as copyright protection may be) or are sold under trademarked names. Ghosts and skeletons might be scary, but there’s nothing more terrifying than an intellectual property infringement suit!

The post The Hocus Pocus of Intellectual Property in Halloween Costumes appeared first on IPOsgoode.

Photo by ()

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

Ìę

Emily Prieur is an IPilogue Writer and a 3L JD Candidate at Queen's University Faculty of Law.

Ìę

Artificial intelligence (AI) is everywhere. It influences the ways we socialize, work, and carry out our daily lives. Some even say we are in the . But while AI is creating new opportunities and innovations, the law has yet to catch up.

The latest decision from the United States, , comes off the heels of recent judgements in and asking if AI can be considered the inventor in patent law. This question has sparked widespread and within the legal community as legal frameworks struggle to adjust to AI. While South Africa and Australia answered in the affirmative, finding that AI passes the inventor test, the U.S. District Court for the Eastern District of Virginia disagrees.

These decisions can be traced back to a professor at the University of Surrey, Dr. Ryan Abbott. To advocate for AI to be granted inventorship rights, Abbott spearheaded the . Here, he filed patents for inventions generated by Dr. Stephen Thaler’s “DABUS”, an AI machine that was quite literally invented to invent. South Africa and Australia are just two of seventeen jurisdictions where Abbott and Thaler filed these patents in the hopes of granting inventorship rights for DABUS.

U.S. Rules Against AI as an Inventor

The United States Patent and Trademark Office (USPTO) originally denied Thaler & Abbot’s patent application in 2019, a decision which Thaler and Abbott described as “” The ruling was made on the basis that “no natural person is identified as an inventor.” USPTO supported this finding by citing cases like (“MČčłæ-±Ê±ôČčČÔłŠ°ì”) and (“Beech Aircraft”) where the Federal Circuit concluded that inventors could only be natural persons.

In the recent 2021 decision, Justice Leonie Brinkema found that the issue of whether AI can be an inventor turns on the plain meaning of the statutory term “individual.” This term is referenced explicitly in the U.S. and appears in the ’s definition of “inventor” to mean: “the individual, or, if a joint invention, the individuals collectively who invented or discovered the subject matter of the invention.”

The U.S. Supreme Court previously conducted a statutory construction analysis of the term “individual” in (“MŽÇłóČčłŸ±đ»ć”). They ultimately concluded that the ordinary meaning of “individual” referred to a “natural person.” While Congress may intend a different meaning of the term, there must be at least “some indication” of their doing so. Although Mohamad interpreted Congress’ use of the term “individual” in the Torture Victim Protection Act, Justice Brinkema found that the Supreme Court’s analysis remains applicable as the Patent Act does not define the term individual and similarly uses the term as a noun. Therefore, she concluded that since AI is not a natural person, nor normally referred to as an individual, it cannot be an inventor under the Patent Act.

Justice Brinkema also referenced Max-Planck and Beech Aircraft to support her conclusion: “... the unequivocal statements from the Federal Circuit that “inventors must be natural persons” and “only natural persons can be inventors” support the plain meaning of “individual” in the Patent Act as referring only to a natural person and not to an artificial intelligence machine.”

Finally, Justice Brinkema rejected the notion that the court should be the arena to “encourage innovation” and “promote disclosure of information and commercialization of new technologies” through granting patents for AI-generated inventions. Such policy considerations do not override a statute’s plain language. Rather, incentives to create more artificial intelligence machines and other policy matters are problems for Congress to address.

The Future of AI as an Inventor

Abbott is at the and in the . In a comment for , he noted that “this decision would prohibit protection for AI-generated inventions and it diverges from the findings of the Federal Court of Australia.” Specifically, the found that while only a human or other legal person may be an “owner,” it is a fallacy to argue from this that an inventor may only be a human. In defining inventor, Justice Beach found that the court cannot merely resort to “old millennium usages of [the word inventor]” and must recognize the “evolving nature of patentable inventions and their creators.” As such, he found it possible that AI could be an inventor.

As AI grows more ubiquitous, governments will have to intervene and create new legislation that explicitly considers AI and other novel technologies. Otherwise, as noted by Justice Brinkema, courts may be left to make these decisions without proper authority.

The post U.S. Court Rules Artificial Intelligence Cannot be an Inventor (Again) appeared first on IPOsgoode.

Photo by from

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

On July 30, the Supreme Court of Canada released their much-anticipated judgement in [91ŃÇÉ«]. The unanimous decision, written by Justice Abella, endorses several past Supreme Court judgements including and . Perhaps one of the most important copyright decisions since the 2012 ‘’ cases, 91ŃÇÉ« reflects the Supreme Court’s intention to develop Canadian copyright law in a way that maintains a balance between users’ and creators’ rights.

Background

Historically, Canadian educational institutions negotiated licence agreements with copyright collectives Access Copyright and Copibec to fulfill their copying needs within the collectives’ repertoires. In 2010, Access Copyright sought the Copyright Board’s approval for a new proposed tariff for post-secondary education institutions of a flat fee of $45 per full-time university student and $35 per full-time college student per year. This was a drastic increase from the fees stipulated in the 1994 to 2010 licence agreement between Access Copyright and post-secondary institutions. On December 23, 2010, the Copyright Board granted Access Copyright an interim tariff at the rate of $3.38 per full-time student and $0.10 per page for course packs, receiving . In anticipation of the upcoming academic session in July of 2011, 91ŃÇÉ« chose to “opt out” of Access Copyright’s licensing agreement and rely on alternative means, particularly the “educational purpose” under the , to continue reproducing copyrighted works for their students. Like with most educational and library institutions, 91ŃÇÉ« published internal “Fair Dealing Guidelines” that interpret section 29 to help 91ŃÇÉ« faculty and staff comply with the law. Access Copyright subsequently sued for copyright infringement. 91ŃÇÉ« then counterclaimed and sought a declaration that its Fair Dealing Guidelines complied with section 29 of the Act.

In 2017, ruled in favour of Access Copyright in all regards, claiming that the interim tariff is mandatory and that 91ŃÇɫ’s Fair Dealing Guidelines and its actual practices are not fair under section 29. In 2020, the reversed the lower court’s decision on the tariff issue, finding that tariffs set by the Copyright Board are only applicable to those voluntarily under a licence with Access Copyright and therefore not mandatory. However, on the fair dealing issue, the Federal Court of Appeal found that the lower court did not make any “palpable and overriding errors” in conducting their fair dealing analysis. 

Issues at Appeal

The Supreme Court appeal considered two issues: 1) is the tariff mandatory? and 2) if the tariff is mandatory, are 91ŃÇɫ’s Fair Dealing Guidelines “fair” such that their activities may be covered by section 29 fair dealing?

Access Copyright’s Non-Mandatory Interim Tariff

The Supreme Court upheld the Federal Court of Appeal’s reasoning on the tariffs issue, agreeing that the interim tariff is not mandatory and thus not enforceable against 91ŃÇÉ«. They affirmed that users are free to pursue alternative methods to lawfully copy works, such as acquiring transactional or site licences or relying on section 29 fair dealing. In their reasons, they drew heavily upon arguments made by Professor Ariel Katz at the University of Toronto Faculty of Law, who asserted that where a user makes an unauthorized use, the appropriate remedy is an action for infringement—one that Access Copyright lacks standing to initiate.

Considering the Ultimate User in Fair Dealing Analyses

Although the Court deemed it inappropriate to rule on fair dealing, given that this is not a copyright infringement suit, Justice Abella nonetheless provided helpful obiter on fair dealing in Canada. Namely, she clarified that the reasoning of both the Federal Court and Federal Court of Appeal on the fair dealing issue is not endorsed. Both lower courts erred in their evaluation of the purpose of the work, by only considering the institutional perspective. As Justice Abella discussed in multiple past decisions, including Alberta, the end-user perspective must also be considered when assessing the fairness of a dealing. In this case, but for the students, there would be no copying. Therefore, the judgement must consider the students’ perspective. The institutional purpose is not completely irrelevant, but it must be interpreted in light of the end-user. Here, Justice Abella found that educational institutions have no “ulterior or commercial purpose” when copying for their students’ benefit under fair dealing, even if the institutions benefit financially by saving funds. As the first discussion of the educational purpose of fair dealing since it was introduced during the , the Supreme Court clarifies that the appropriate way to assess an educational institution’s fair dealing practices is to determine whether those practices facilitate their students’ educational purposes in a fair manner, maintaining the balance between users’ and creators’ rights.

91ŃÇÉ« adds to a growing list of copyright jurisprudence by the Supreme Court, many of which were spearheaded by the . This latest decision delivers several wins to the users’ rights community, particularly through confirming that users always have the choice to rely on section 29 fair dealing when working with copyright-protected materials. Educators and librarians across the country can breathe a sigh of relief that they may continue to lawfully offer their services, many of which rely on fair dealing, to the benefit of their students and patrons.

The post A Win for Users’ Rights: Supreme Court Finds Access Copyright Tariff Not Mandatory and End-User Perspective Must be Considered in Fair Dealing Analyses appeared first on IPOsgoode.

Photo by ()

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

Ìę

M. Imtiaz Karamat is an IP Osgoode Alumnus and Licensed Lawyer in Ontario.

The COVID-19 pandemic has drastically changed our day-to-day lives with new public health guidelines and restrictions that impact everything, from how we work to how we move around. In a further attempt to curb the spread of COVID-19, several countries are considering implementing forms of vaccine-based identification as a pre-requisite for accessing certain services or facilitating travel. These so-called “vaccine passports” are a form of proof of vaccination—one which many worry may constitute a serious violation of privacy, introducing more harm than good. As cases of the delta variant of COVID-19 rise, Canada and its provinces must decide whether the potential benefits of these passports warrant their implementation.

The Vaccine Passport Issue

While Canadians can prove their vaccination status in many ways, vaccine passports and offer a consistent, verified means for individuals to prove their vaccination status. At first glance, vaccine passports do not appear drastically different from the immunization record cards most children receive during school. However, unlike traditional immunization records, these passports may have more profound consequences when combined with policies that restrict access to only those who are vaccinated.

Vaccine passports are being considered as a tool to limit the spread of COVID-19 infection by providing an easy method to verify the vaccination status of individuals before allowing them access to certain services and locations. Those in favour of the passports argue that vaccinated individuals have a significantly decreased risk of becoming infected with the COVID-19 virus and transmitting the infection to others. Therefore, they should be allowed to use a vaccine passport to exclusively access services and perform activities that unvaccinated individuals may be barred from.

The implementation of a domestic vaccine passport system has garnered significant debate in Canada. Although vaccine passports may have a serious and legitimate health purpose, officials must carefully consider their intrusion of individuals’ privacy and civil liberties before taking action. A recent by Federal, Provincial, and Territorial Privacy Commissioners (the Commissioners), highlighted that “a vaccine passport presumes that individuals will be required or requested to disclose personal health information – their vaccine/immunity status – in exchange for goods, services and/or access to certain premises or locations.” The disclosure of such sensitive information presents significant privacy risks and governments must develop and implement vaccine passports in compliance with applicable privacy laws and continuously assess the necessity, effectiveness, and proportionality of vaccine passports to justify their use. With such a high threshold, governing bodies are questioning whether enforcing a vaccine passport system is the correct course of action that will yield the most benefit. Ìę

Even with the Commissioners’ guidance, with mandatory vaccine passports, fearing that they will not only intrude privacy but further perpetuate inequalities. The idea of what may be considered a infringement on individual rights has also garnered significant debate. Such debates have led to , especially against the backdrop of the threat of a potential fourth wave of COVID-19 in Canada.

Federal Response

On July 13, 2021, Prime Minister Justin Trudeau that the federal government will create an “internationally accepted proof of vaccination” to enable international travel, while provinces may create their own domestic vaccine passport regimes pursuant to their jurisdictional authority. , his government plans to work with the international community to ensure that fully vaccinated Canadians are recognized globally as such. He also will look to vaccines certified by the World Health Organization (WHO) to determine which would qualify for a vaccine passport. See the list of WHO-certified vaccines .

To this end, on August 11, the Immigration Minister Marco Mendicino the pan-Canada vaccine passport program for international travel. According to Mendicino, the certificate will be the same across all provinces and will contain information on the individual’s COVID-19 vaccination history, the date they received the vaccine, the type of vaccine administered, and the location of administration. The passport will be available to all citizens, permanent residents, and temporary residents living in Canada who are fully vaccinated. The passport is set to be implemented early this fall.

Intergovernmental Affairs Minister Dominic LeBlanc added that although the federal passport is intended to enable international travel amongst Canadians, the federal government would be willing to work with provinces who so wish to use the passport as a domestic tool.

Provinces Diverge

The lack of strong federal oversight for implementing a domestic vaccine passport system gives the provinces the flexibility to decide based on their own internal policies. This has resulted in divergent views with the various governing bodies arriving at different conclusions on the matter.

The Government of Manitoba has already begun for residents who have two doses of the vaccine and are considered fully immunized. The province’s current public health orders allow fully immunized individuals to access certain services and enable businesses to ask for proof of immunization to ensure compliance. This proof of immunization may take the form of the Manitoba Digital Immunization Card (or its physical counterpart), which contains the first and last names of the cardholder and a QR code that can be scanned by others using the Manitoba Immunization Card app to display the cardholder’s immunization status. Apart from the above information, the card is stated to not provide any other health information.

Although Quebec was only entertaining the idea of its own vaccine passport system, Premier Legault on August 5^th, 2021 that the provinces’ recent surge in new COVID-19 cases now makes it necessary to implement a province-wide passport system by September. The Government of Quebec has that access to certain non-essential services in places with high capacity and a high rate of contact, such as gyms and restaurants, will be restricted using vaccine passports. To access these areas, clients will need to be vaccinated and have a QR code to prove it. Government officials are currently testing smart phone applications that will display (for clients) and identify (for businesses) the QR codes. Those without a smart phone may print their QR code or request a paper version by mail. To ensure privacy, Quebec Health Minister Christian DubĂ© has said that the app used to identify clients’ QR codes is solely intended for reading purposes and does not collect any data.

Meanwhile, other provinces have strongly opposed the use of domestic vaccine passports. The government of Saskatchewan has firmly rejected the use of such a system, with Premier Scott Moe and the CEO of the Saskatchewan Health Authority, Scott Livingstone, that requesting proof of immunization may violate the province’s privacy laws, including the provinces’ Health Information Protection Act. The Premier of Alberta agrees with this notion, that a passport program within the province would “
in principle contravene the Health Information Act and also possibly the Freedom of Information and Protection of Privacy Act.” A spokesperson for the premier also on August 5 that Alberta will not “be supporting the use of the government of Canada’s international travel credential for uses within Alberta’s borders.”

The Government of Ontario initially took a strong stance against implementing a vaccine passport program, with Premier Doug Ford and Chief Medical Officer of Health Dr. Kieran Moore both the idea. However,

Businesses seeking to collect proof of vaccination information in provinces that do not have passport programs are left to navigate potential privacy pitfalls while developing their own passport system. Although the Commissioners say in their that proceeding under newly enacted public health laws that are specifically developed for vaccine passports would be easier, they suggest that businesses may implement a passport system under existing privacy legislation. Businesses outside of Quebec may find sufficient legal authority to collect vaccination information if they receive the individual’s consent. However, this consent must meet several conditions that may vary with the context of the business, including:

• Consent must be voluntary, meaningful, and based on clear language that describes the purpose to be achieved;
• The information must be necessary for the purpose;
• The purpose must be appropriate to a reasonable person in view of the circumstances; and
• Consent cannot be required as a condition of service.

Looking Forward

As countries across the globe rush to implement their versions of a vaccine passport system, vaccine passports may soon become the norm. Although Trudeau has remained firm that provinces may decide their domestic use of vaccine passports, Canadians in any province who wish to travel abroad will find it difficult to evade the vaccine passport program. Whether vaccine passports truly meet the threshold of necessity for their infringement on civil liberties remains up for debate. However, given their impending ubiquity, it is important that government agencies look to privacy experts like the Commissioners and heed their warnings when developing their own policies. While the COVID-19 pandemic has significantly disrupted our lives, our responses to the pandemic need not be unnecessarily harmful.

The post Phone, Wallet, Keys
Vaccine Passport? Canada’s Response to the Vaccine Passport Debate appeared first on IPOsgoode.

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

Ìę

Whether or not you’re a biker, you’re likely familiar with the Harley-Davidson brand. Considered the , Harley-Davidson claims to sell more than just bikes—they sell a lifestyle. As the brand is strongly interested in maintaining its status symbol, it is diligent in protecting its iconic trademark.

On June 17, 2021, the in favour of Harley-Davidson, awarding $13,000 in damages and $23,000 in costs. The brand successfully enforced their trademarks against who offered custom-built electric bicycles under the name “Harley Davidson Willie G Edition.” These bikes incorporated Harley-Davidson’s motorcycle parts and their famous “Bar and Shield” logo.

The Federal Court determined Harley-Davidson established a remediable violation of its trademark rights. In doing so, the Court analyzed three issues: a) infringement under ; b) passing off under ; and c) a likely depreciation of goodwill under .

Section 20(1)(a) and (b) of the Trademarks Act considers the right of the trademark owner to be infringed by any person who sells, distributes, advertises, manufactures, imports, or exports any goods or services in association with a confusing trademark. The Court easily found that Varzari’s advertisement of “Harley Davidson Willie G Edition” bikes and use of “Bar and Shield” logos on said bikes are likely to cause confusion with the Harley-Davidson marks for the “casual consumer somewhat in a hurry.” To come to this conclusion, the Court looked at factors including the marks’ distinctiveness, length of use, nature of the goods and trade, and degree of resemblance.

Notably, the Federal Court noted that the resale of trademarked goods lawfully acquired is not, by itself, prohibited under the Trademarks Act. However, Varzari’s actions went beyond lawfully purchasing and reselling genuine Harley-Davidson motorcycle parts. Altering and incorporating these parts into a new good, the “Harley Davidson Willie G Edition” bikes, in a way that bears the trademark suggests an unauthorized association of the bikes with Harley-Davidson. Though the Court was quick to note that “not every incorporation of a trademarked good into a new good will result in the sale of the new good being a sale in association with the trademark,” it nonetheless was satisfied that Varzari engaged in infringing activities.

With regard to passing off and a likely depreciation of goodwill under sections 7(b) and 22 of the Trademarks Act, respectively, the Federal Court found that Harley-Davidson successfully established the requisite elements of both claims.

The common law tort of passing off, codified in section 7(b), prohibits a person from directing public attention to their goods, services, or business in a manner likely to cause confusion with another’s goods, services, or business. In addition to the arguments made to demonstrate infringement, Harley-Davidson successfully relied on Varzari’s use of a particular shade of orange. The Federal Court noted that the define a trademark as “a sign or combination of signs that is used or proposed to be used by a person for the purpose of distinguishing or so as to distinguish their goods and services from those of others.” As “signs” may include colours, the Court found that Harley-Davidson satisfied the requirement of a valid and enforceable unregistered trademark with respect to the so-called “iconic” shade of orange used by Varzari.

To establish depreciation of goodwill, the claimant use, goodwill, linkage, and damage. The Federal Court quickly was able to show Harley-Davidson established these factors with respect to its trademarks. Varzari’s use of the marks would give purchasers notice of the association with Harley-Davidson, Harley-Davidson has sufficient brand recognition to have significant goodwill capable of being depreciated, it is highly likely consumers will link Varzari’s use of the trademarks and the goodwill of Harley-Davidson, and Varzari’s use is likely to lower the value of goodwill attached to Harley-Davidson’s trademarks, by misrepresenting an association.

Harley-Davidson is known for fiercely protecting its trademarks. It has sued , popular clothing retailers like and , and even local for using its famous trademarks without permission. In 2018, the brand collected against a Michigan-based T-shirt designer for selling over 100 different infringing designs online.

The company is a good example of a brand that understands the value of maintaining distinctive trademarks. , much of Harley-Davidson’s success is in its name—whether motorcycles or licensed apparel, consumers tend to purchase Harley-Davidson for what the brand stands for, rather than for the quality or other features it offers. It makes sense that Harley-Davidson of dollars to protect itself against any possible infringement.

The post Harley-Davidson Wins Yet Another Trademark Infringement Suit appeared first on IPOsgoode.

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

Ìę

May 21 was a historic day for copyright fanatics around the country. Not only did the Supreme Court of Canada hear the much-anticipated appeal, an important case on the nature of copyright collective licensing and educational fair dealing, but it was also the Honourable Rosalie Silberman Abella’s final hearing as a Supreme Court Justice.

During her 17 years on the highest court in Canada, Justice Abella was instrumental in advancing users’ rights in Canadian copyright law, particularly helping develop Canada’s fair dealing jurisprudence. She wrote reasons for several landmark copyright decisions, even delivering judgements in four out of the five 2012 “” cases. Some of her most notable copyright holdings include , , and .

In Alberta, Justice Abella wrote for the 5-4 majority, performing a rigorous analysis of the fair dealing test as laid out in The decision interpreted fair dealing for the purpose of private study. Justice Abella, for the majority, found that the correct way to interpret the purpose of a dealing is to consider the perspective of the end-user, in this case, students. When teachers photocopy short excerpts of works to distribute to students as part of class instruction, their dealings qualify as fair dealing for the purpose of facilitating students’ private study.

In SOCAN, Justice Abella once again took the pen to deliver the judgements of the unanimous court. Like Alberta, the case concerned the proper interpretation of fair dealing, this time for the purpose of research. Looking through the perspective of the ultimate user, music stores providing short previews of music may be considered fair dealing for the purpose of research by enabling consumers to determine what they wish to purchase. The Court emphasized that upholding users’ rights was “central to developing a robustly cultured and intellectual public domain.”

In Keatley, Justice Abella affirmed the importance of balancing creators’ rights with users’ rights, claiming that all provisions of the Copyright Act must be interpreted with this balance in mind “so that the Copyright Act continues to further the public interest.” In the decision, the Supreme Court interpreted section 12 of the Copyright Act, which deals with Crown copyright. Though they ultimately found the Crown had copyright, they clarified that Crown copyright has a narrow scope and is limited to situations where the Crown took a substantial role in the creation or dissemination of the work.Ìę

Users’ rights are still a growing concept in Canadian copyright law. Though they were first introduced in the , through duplicating the fair dealing section 2(1)(i) of the U.K.’s , users’ rights did not gain the same consideration as creators’ rights until the early 2000s following the decision in . Here, the Supreme Court affirmed that copyright is “a balance between promoting the public interest in the encouragement and dissemination of works of the arts and intellect and obtaining a just reward for the creator.”

Justice Abella’s decisions in Alberta, SOCAN, and Keatley provide guidance on interpreting the fair dealing provisions in section 29 of the Copyright Act; they are to be given a large and liberal interpretation and should be considered not as mere exceptions but as users’ rights. According to Justice Abella, the fair dealing component of Canada’s copyright law is “,” symbolizing the importance of the users’ rights framework in balance with creators’ rights.

When Justice Abella was appointed to the SCC in 2004, section 29 did not include the purposes of education, satire, and parody. These were introduced during the to the Act and have yet to be interpreted by the Supreme Court.

One of the major issues on appeal in 91ŃÇÉ« is how to properly interpret the educational purpose of fair dealing. The copyright collective Access Copyright argues that 91ŃÇɫ’s copying of works to create course packs is to alleviate financial burdens on the university. In contrast, 91ŃÇÉ« argues that their copying falls under fair dealing since it is to facilitate the education of their students, as the ultimate users. Given the jurisprudence, it seems likely the Supreme Court will rule in favour of 91ŃÇÉ«, at least on the fair dealing issue.

Although a decision for 91ŃÇÉ« has yet to be released, it is quite fitting that possibly the last decision Justice Abella will pen for the Supreme Court is on a field she has transformed over the past two decades. It is fair to say the Canadian copyright community, especially advocates of users’ rights, will sorely miss Justice Abella on the bench.

The post The Fairest of Them All: Justice Abella’s Legacy in Canadian Copyright Law appeared first on IPOsgoode.