This semester, I had the opportunity to participate in Osgoode’s Intellectual Property (IP) and Technology Law Intensive Program. The program involves a 10-week placement as a legal intern to gain real-world experience in IP law. I had the opportunity to be placed at the Canadian Intellectual Property Office (CIPO). CIPO is a special operating agency of Innovation, Science, and Economic Development Canada (ISED) and is responsible for the administration of intellectual property in Canada.

As a student, I worked with the Policy, International Affairs, and Research Office (PIRO), which is part of the Corporate Strategies and Services Branch (CSS) at CIPO. PIRO provides advice and guidance on policy, regulatory, international, and economic issues to CIPO’s Executive Office and the Deputy Minister and Minister of ISED. PIRO is divided into three teams: Policy and Regulatory Affairs Office (PRAO), International Relations Office (IRO) and the Economic Research and Strategic Analysis Unit. If you didn’t already notice – yes, the federal government has an affinity for acronyms; I learned this on day one of my placement!

My main role was to conduct research to support the PIRO team. I researched intellectual property trends in free trade agreements and identified areas where negotiations are focused. While my main focus was on trade agreements which Canada is party to – including Canada-United States-Mexico Agreement (CUSMA), the Comprehensive and Progressive Agreement for Trans-Pacific Partnership (CPTPP), and Comprehensive Economic and Trade Agreement (CETA) – I also learned about the negotiations and IP standards set in other regions of the world by other agreements such as the Regional Comprehensive Economic Partnership (RCEP) and the recent African Continental Free Trade Area (AfCFTA).

My research was also related to meetings that I attended throughout the semester, where I was not only exposed to various areas in international intellectual property law but also to issues the Canadian government is facing regarding implementation of recent trade agreements. For example, I had the opportunity to learn about the process CIPO is taking to implement patent term adjustment obligations as required under Article 20.90 of the CUSMA. It was fascinating to sit-in on discussions of the most current issues that the office is facing as well as being introduced to topics that would never be discussed in the classroom.

I further had the opportunity to attend various meetings on behalf of CIPO’s PIRO team. This includes those held by the Intellectual Property Centre of Expertise (IPCE), an organization established as part of Canada’s national IP strategy in order to provide IP advice and educational support across the federal government. Discussions included considerations that need to be taken when conducting research and the role of federal servants in federal research as dictated by the Public Servants Inventions Act (PSIA). Not
only was this an opportunity to learn about a career of IP in the public sector, but I was also given hands-on experience on how to create effective memoranda when communicating information to the chief executive officer – something that is done regularly as a CIPO analyst.

Working as a student at CIPO has been an incomparable experience. Not only was the work unique, but it was a great skill-building challenge to work independently in areas where I am inexperienced – especially in the remote environment. I want to thank my supervisors, Shawn Tippins and Zorn Pink, who provided me with numerous opportunities to engage with the department. In addition to what I learned from the work, I have gained valuable mentors and lasting relationships. Although I wasn’t able to meet them in person, the team provided a warm and welcoming environment where I felt comfortable asking questions and participating in discussions. I look forward to applying the skills I’ve learned into my career and hope future students will take advantage of this opportunity as well.

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Background

In 1949, C.W. Scott-Giles created an illustration called . It was published in the U.K. as part of Dorothy L. Sayers’ translation of Dante’s Inferno, the first part of the epic poem, Divine Comedy. Seventy-two years later, Scott-Giles’ granddaughter, Jocelyn Bundy, noticed that “” to Scott-Giles’ illustration was being used in the popular grunge-rock band Nirvana’s and brought a in the United States for damages covering decades of sales.

A Brief Overview

The issue in this case surrounded what one might call, excuse the pun, Territorial Pissings. Namely, it highlights the complexities in determining whether a foreign work is protected under U.S. copyright law, a particularly confusing subject for foreign works published before 1978.

that the work, as created by a British citizen and published in the U.K., is protected as a foreign work under U.S. copyright law. Relying on (Twin Books), Bundy argued, “a foreign publication of a foreign work, before January 1, 1978, without notice of United States copyright, did not put the foreign work into the public domain in the U.S.”

The , among other things, that Bundy erred in application of Twin Books, because it does not apply to works which have been published in the U.S. They brought evidence of U.S. publications of the translated work, which lacked both registration and copyright notice in Scott-Giles’ name. Drawing on Twin Books, they argued, “a publication of a work in the United States without the statutory notice of copyright fell into the public domain,” as per the U.S. Copyright Act of 1909. If you’re understandably confused by the myriad of copyright laws surrounding this issue, .

There was Something (else) in the Way of Bundy’s success. The defendants moved to dismiss the complaint altogether on forum non conveniens, arguing that the U.K. is a more appropriate jurisdiction for the proceeding because, among other things, the plaintiff is a British citizen, the copyright is governed by U.K. law, and key witnesses to the case reside in the U.K.

The Outcome

On October 21, 2021, , stating, “Given that one of the core disputes in this case concerns ownership of the copyright in the Illustration, which is governed by U.K. law, the U.K. likely has a stronger interest, on balance, in this case.” The order was given under various conditions, including the defendants must agree to submit themselves to the jurisdiction of the U.K. if the action is filed by Bundy in the U.K. and must satisfy a judgement given in the U.K. The defendants were given to file their decision regarding acceptance of the conditions of the order.

While Bundy’s lawyers are disappointed with the decision, it looks like further litigation is In Bloom. They’re considering their options to move forward, including a or . Given the complex set of facts regarding ownership in this case, Bundy will likely need to prove Scott-Giles’ ownership of the illustration in any future litigation, which won’t be easy. Not only is her now deceased grandfather unable to testify, but the defendants have found ample evidence to disprove ownership. This includes correspondence between Scott-Giles and Sayers showing that Sayers engaged Scott-Giles to produce the illustrations, agreed to pay him for his work, and Sayers drew the originals of the drawings credited to Scott-Giles, engaging him largely because of his skill in inking the pencil drawings. If Bundy decides to refile the suit in the U.K., she will need to strengthen her claims to ownership of the illustration.

An Age-Old Debate

Lengthy copyright terms have been regularly debated. We’ve all heard that extended removal of works from the public domain can really Drain You of creativity, especially in the copyright world where present creativity is inspired by past works. In 2009, economist that the optimal copyright term is 15 years – far from the author’s life + 70 years in the U.S. (and soon Canada). Bundy v Nirvana L.L.C. highlights further questions: Should successors of authors benefit from works they did not put any skill, labour, or judgment into? Should copyright be treated like land or personal possessions? Should the decades of uncontroversial use have any effect on copyrights? “The granddaughter of the creator of a 72-year-old illustration is suing Nirvana over a 32-year-old t-shirt, because copyright law makes sense.

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Top Row: Madelaine Lynch, Richard Du, Androu Waheeb Bottom Row: Nikita Munjal, Sarah Raja, Tiffany Wang

IP Osgoode is pleased to announce the new team of student editors for the Intellectual Property Journal (IPJ). Returning this year are Madelaine Lynch and Nikita Munjal. New student editors are Richard Du, Sarah Raja, Androu Waheeb, and Tiffany Wang.

The IPJ is Canada’s leading peer-reviewed journal with a focus on IP law related areas such as patents, trademarks, copyright, designs, trade secrets and competitive torts. Leading the IPJ’s editorial team is Editor-in-Chief, Pina D’Agostino, Associate Professor at Osgoode Hall Law School and IP Osgoode’s founder and director; Deputy Editor Dr. Aviv Gaon, Assistant Professor at IDC Herzliya; and Senior Editor Ryan Wong.

The IPJ’s editorial board consists of Prof. David Vaver, Hon. Justice Roger T. Hughes, Daniel Bereskin, Prof. Ikechi Mgbeoji, and Hon. Justice Marshall Rothstein. Prof. Bita Amani and Prof. Saptarishi Bandopadhyay are the book review editors.

The IPJ editorial team wishes to thank Prof. David Vaver, IPJ’s founder, for his mentorship and unrelenting support.�� The IPJ’s continued success is made possible by the contributions from its panel of expert reviewers.��

IPJ accepts article submissions on an ongoing basis. If you’re interested in submitting an article to the IPJ, please email us at ipjsubmissions@gmail.com.

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The artist has obtained trademarks for various works. Although artists typically don’t use trademark law to protect their art, Banksy opted for this form of legal protection as it allowed the artist to remain anonymous. By contrast, artists’ traditional route, copyright, requires them to reveal their identity when claiming infringement. Trademarks can also be renewed indefinitely, while copyright protection is limited in time. Banksy’s disdain for copyright is well known and even depicted in his work, . ��

This strategy of protection, however, took a turn in 2019, when Full Colour Black, a greeting card business, challenged Banksy’s right to trademark the , also called The Flower Thrower. The Flower Thrower was first seen as a mural in Bethlehem in 2005. In 2014, Banksy’s authentication bureau, Pest Control, successfully obtained the EU trademark over the image as a “” for various goods and services, including printed matter, clothing, and textiles. Five years later, in 2019, Full Colour Black challenged the registration of The Flower Thrower trademark. Full Colour Black argued that Banksy acquired the trademark in bad faith.

For a trademark to remain valid, its holder must , meaning in relation to the goods or services for which it is registered. Rights-holders do not need to show use for an from the registration date to rely upon its protection. After this period, however, the rights-holder must show use to maintain protection for their mark. Banksy is known to abstain from creating works for commercial use and did not do so until 2019, after the challenge from the greeting card business arose. At this time, Banksy created an online store accompanied by a where they sold products with the trademarked image to fulfill the trademark requirement.

In September 2020, the EUIPO Cancellation Division agreed with Full Colour Black and . The panel stated that, “,” and that opening the shop as an attempt to save the trademark only after it was challenged was “.” Banksy and their lawyer both showed this by publicly stating that the shop was solely intended to fulfill the trademark requirements.

Looking at the artist’s intention in commercializing their goods, rather than assessing simply whether the trademark is being used commercially, may leave ambiguity in the law regarding what is required of artists. Is proof of a good faith intention to use the trademark required to defend it against a challenge? If the artist had not explicitly stated that their intention in creating the store was to fulfill trademark requirements, would the trademark be valid? These questions are definitely running through not only Banksy’s mind, but the minds of all trademark-seeking artists out there.

The decision also raises issues of the relationship between copyright and trademarks. Can artists who create works traditionally protected under copyright seek trademark protection if they can show some intention to commercialize the works? Will this lead to the perpetual monopolization of works that were intended to have limited protection under copyright law? At this stage, all we know is that Banksy’s entire portfolio of trademarked works may be at risk of losing its IP protection. Eager fans or entrepreneurs may use this decision to capitalize on Banksy’s famous images. This decision may even be the perfect opportunity to push Banksy out of anonymity to pursue copyright infringement actions. This two-year legal battle does teach us one thing for sure – copyright may not be for losers after all.

Sarah Raja is a JD Candidate at Osgoode Hall Law School. She is a IPilogue contributing editor and was a fellow with the IP Innovation Clinic.

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In September 2020, Cub Club Investment LLC (CCI), the company of Katrina Parrot, an African American businesswoman, in Waco, Texas against Apple for copyright infringement and trade dress infringement, for copying her racially diverse Emojis without a licence or her consent. In July 2013, CCI registered the copyright to its diverse set of emojis with the US Copyright Office. In 2014, Ms. Parrot launched the application iDiversicons®, which allowed users to select emojis of five skin tones. Later in 2014, Ms. Parrot began discussions with two senior members of Apple about introducing the idea of diverse emojis into Apple products, which included how to develop and improve the emojis. These discussions ended when Apple decided to create their own diverse emojis. They were released on Apple systems on April 9, 2015, after which iDiversicons® experienced a decrease in sales.

The potential success of CCI’s copyright infringement lawsuit is likely quite low. cannot protect facts, concepts, ideas, or methods of operation. Instead, it is used to protect the way that these things are expressed. This means that the idea of creating racially diversified emojis cannot be protected. CCI’s argument would then turn to the expression of this idea – however this argument will face its own challenges.

Emojis depict an actual thing; whether it be a person, object, or symbol, these things are well-known and have certain distinguishing features. For example, to create a realistic thumbs-up, there will be the commonalities of a clenched fist and an upwards facing thumb no matter who or which platform depicts it. There are only so many variations of the thumbs-up shape and design by which emojis can distinguish themselves. The in different platforms – Apple, Google, Samsung, etc. – illustrates this concept. This means that protecting the use of a generic ‘thumbs up’ emoji will be difficult unless the two are virtually identical – and in , it does not look like they are. There are variations in colour, shading, and shape between the emojis of iDiversicons® and Apple.

The also states that, “Apple’s actions also significantly harm innovation and America’s progress in diversity and inclusion… The significance of Apple’s wrongdoing is amplified by the fact that Apple’s willful actions target the creative works of the very community CCI seeks to support and include through iDiversicons® emoji.” It is surprising that Apple, as a company who has committed to working on and improving their initiatives, did not address the numerous letters to Apple, asking for recognition of CCI, ���پ�������������DzԲ�®, and Ms. Parrot’s role in the development of the diverse emoji. It will be interesting to see how the court, and hopefully Apple themselves, respond to this claim.

Sarah Raja is a JD Candidate at Osgoode Hall Law School. She is a IPilogue contributing editor and was a fellow with the IP Innovation Clinic.

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Top 10 Most Read Blogs of 2020

COPYRIGHT LAW

CUSMA Implementation

On July 1, 2020, the (CUSMA) officially came into force, replacing the North American Free Trade Agreement (NAFTA). Signed in 2018, the desired effect of CUSMA is to preserve existing trade relations between the three North American countries, and to introduce modernized provisions that address 21st-century trade issues. In particular, the builds upon the legal framework of standards in North America for the protection and enforcement of IP rights.��

Regarding copyright and related rights, Canada is increasing the duration of its term for general copyright protection from 50 to 70 years following the life of the author. Canada will have a two-and-a-half-year transition period to realize this new measure. Additionally, the term of protection for performances and sound recordings will also increase from 70 to 75 years plus life. CUSMA will also increase protection for Rights Management Information (RMI), also known as digital watermarks. While Canada already imposes criminal remedies for altering or removing Technological Protection Measures (TPMs, or digital locks), the Agreement creates new criminal remedies for circumventing RMI. Organizations will have to be mindful when implementing these new provisions to ensure that their practices align with CUSMA’s new obligations.

Canadian Copyright Case Law

91��ɫ v The Canadian Copyright Licensing Agency, 2020 FCA 77

On April 22, 2020, the regarding a dispute between 91��ɫ (“91��ɫ”) and The Canadian Copyright Licensing Agency (“Access Copyright”), holding that the tariffs set against 91��ɫ by the Copyright Board are not mandatory, but dismissed 91��ɫ’s counterclaim regarding the fair dealing guidelines. Access Copyright had sued 91��ɫ for non-payment of tariffs, arguing that they are mandatory and enforceable against anyone who infringes upon a copyright owner’s exclusive rights. Following this decision, both parties filed for leave to appeal the FCA decision to the Supreme Court of Canada.

Tariffs
The FCA held that the tariffs set by the Copyright Board are not mandatory. Because 91��ɫ opted out of the tariffs in 2010, they are not enforceable against 91��ɫ. On this issue, the FCA stated, “Acts of infringement do not turn infringers into licensees so as to make them liable for the payment of royalties. Infringers are subject to an action for infringement and liability for damages but only at the instance of the copyright owner, its assignee or exclusive licensee.”

Fair Dealing
91��ɫ argued that it was not accountable for any tariffs associated with the reproduction of materials because they met their “” and therefore constituted fair dealing pursuant to section 29 of . On this issue, the FCA found that the Federal Court made no palpable error in its analysis, concluding that even though copying followed the guidelines, this did not necessarily make it a fair dealing.

Continuing into 2021
On October 15, 2020, the Supreme Court of Canada granted leave to appeal. This eagerly anticipated decision will affect many of Canada’s educational institutions who opted out of paying tariffs and have also followed the Fair Dealing Guidelines discussed in this decision. Further, a Supreme Court decision in 91��ɫ’s favour will surely cause businesses who rely on similar tariffs to rethink their business model.

Wiseau Studio, LLC et al. v. Harper et al., 2020 ONSC 2504

On April 23, 2020, Justice Paul Schabas’ released his decision in the case of . Filmmaker Tommy Wiseau brought a claim against the defendants, alleging that their documentary, Room Full of Spoons, about Wiseau’s film, The Room, breached his copyright. In his reasons, Justice Schabas provides artists in Canada with an authoritative statement defining documentaries an allowable purpose under the Copyright Act’s fair dealing provisions, “to the extent that a documentary uses copyrighted material for the purposes of criticism, review or news reporting.”

The decision affirms fair dealing as a user’s right, as opposed to a defense to the copyright infringement alleged by the plaintiff, solidifying the balancing of rights and freedoms as a core purpose of the Canadian Copyright Act. In addressing the Copyright Act’s fair dealing provisions, the Court offers useful guidance to documentary filmmakers wishing to stay on-side with section 29 through an analysis of the factors outlined in . A more in-depth discussion can be found . As well, Justice Schabas’ reasons address the Copyright Act’s moral rights provisions, fundamentally finding that criticism or negative tones alone will not trigger a breach of an author’s right to the integrity of a work.

Entertainment Software Association v. Society of Composers, Authors and Music Publishers of Canada 2020 FCA 100 & CMRRA-SODRAC Inc. v. Apple Canada Inc., 2020 FCA 101

On June 5, 2020, the Federal Court of Appeal released two decisions (2020 FCA 100 and 2020 FCA 101) which ruled on the applicability of the “making available right” (“MAR”) under s. s.2.4(1.1) of the Copyright Act. The FCA found that songwriters are not entitled to royalties when music is first posted online, but only after it has been downloaded. This decision overturns a 2017 ruling from the Copyright Board, which found that composers and songwriters are entitled to two royalties: first when it is made available under a streaming platform such as Apple Music or Spotify, and second when the song is downloaded or streamed.

By way of background, The Society of Composers, Authors and Music Publishers of Canada (“SOCAN”) administers the right to “communicate” musical works on behalf of copyright owners. It filed with the Copyright Board proposed tariffs for certain years for the communication to the public by telecommunication of works in its repertoire through online music services including Apple Music and Spotify. These tariffs are available when a musical work is “communicated.”

After SOCAN had filed its proposed tariffs, the Copyright Act was amended to include the MAR Provision, which reads as follows:

For the purposes of this Act, communication of a work or other subject-matter to the public by telecommunication includes making it available to the public by telecommunication in a way that allows a member of the public to have access to it from a place and at a time individually chosen by that member of the public.

This raised the question of whether the mere making available of a work on a server for the purpose of later streaming or download by the public was a “communication” for which a tariff was payable. In 2017, the Copyright Board concluded on the basis of expert witnesses that the double royalty scheme is available.

Stratas J, writing for the FCA, overturned this conclusion and stated that the Copyright Board "skewed its analysis in favour of one particular result" and relied on "leaps of reasoning" that are incompatible with the precedent set out in the Supreme Court of Canada’s (SCC) 2012 Entertainment Software Association v. Society of Composers, Authors and Music Publishers of Canada decision. In that decision, the SCC concluded that transmission over the Internet of a musical work that results in a download of that work is not a communication.

PATENT LAW��

The Impact of COVID-19 Legislation on the Patent Act and Patentee Rights

(“An Act respecting certain measures in response to COVID-19”) received Royal Assent on March 25, 2020.�� Included in this bill was the addition of section 19.4 to the which significantly changed the rights of patent owners this year. For instance, while section 19.4 allowed the to authorize the government’s use of previously patented inventions to respond to a public health emergency, the Commissioner’s new powers permitted authorization to be granted to other entities as well. In addition, there was no requirement for applicants (be they the government or otherwise) to inform the patentee in advance of applying for authorization to use its patent. This meant that patentees received no notice if an applicant applied to use its intellectual property. Instead, patentees only received notice if the Commissioner granted authorization to the applicant following their submission. Moreover, section 19.4 precluded patentees to an express right of appeal of the Commissioner’s authorization. Instead, patentees were left to rely on section 19.4(8) of the Act and had to apply to the Federal Court to prevent the government (or any applicant) from “making, constructing, using or selling the patented invention in a manner that [was] inconsistent with the authorization.”

While patentees seemingly received little benefit from the Patent Act's amendments mentioned above, the legislative changes offered some positive developments for patent owners. For example, pursuant to s.19.4(5), holders of the patent are compensated for government use, “taking into account the economic value of ‘the authorization and the extent to which they make, construct, use and sell the patented invention.’” Additionally, as of September 30, 2020, the Commissioner can no longer award the government with any authorizations, which effectively serves as an imposed limit on the Commissioner’s powers. While COVID-19 may arguably be captured by other provisions of the Patent Act (cf. s. 19 or s. 21), s. 19.4 clarifies the boundaries of government uses of patents for public health emergencies.��

CIPO Issues New Guidance Document After Federal Court Rejects Problem-Solution Approach to Claim Construction

Following the 2020 Federal Court decision in , CIPO released a new to clarify patentable subject matter under the Patent Act. The court, and CIPO, endorsed the purposive construction approach to constructing claims set out in 2000 by the SCC in and . The new guidelines cover the framework to be followed by patent examiners while identifying certain elements of patent claims as essential. CIPO’s earlier pointed at undertaking claim analysis, which involved identifying the “proposed problem to the disclosed solution.” The Federal Court in Choueifaty clarified this problem-solution test as incorrect for claim construction.

The Federal Court held that a correct approach looks at the entirety of the specification and presumes an element as essential unless demonstrated to the contrary. Purposive construction attempts to give effect to the intentions of the applicant in determining the scope of the claimed monopoly.

This is particularly important for computer-implemented inventions. CIPO, in the , clarified that an algorithm that improves the functioning of the computer would constitute a single invention and is patentable subject-matter. However, the mere use of a computer to execute an algorithm remains nonpatentable subject-matter under subsection 27(8) of the . This update has brought much needed clarity to the subject matter eligibility issues in computer-related patents.

TRADEMARK LAW

Claims to Official Marks not a Complete Defence to an Infringement Claim��

In February 2020, the Federal Court of Appeal upheld the Federal Court’s decision in , finding that public authorities cannot rely on relating to official marks as a complete defence against an infringement claim. At its most basic level, official marks allow public authorities to , even those that may not otherwise be registered as regular trademarks. Quality Program Services Inc. (QPS) brought a Federal Court claim against the Ministry of Energy (MOE) for infringing their “EMPOWER ME” trademark related to energy awareness, conservation, and efficiency services. The MOE had launched a website with the mark “emPOWERme” to educate Ontario residents about the province’s electricity system. In response to QPS’s claim, the MOE sought protection and public recognition of its mark as an official mark pursuant to which states that “no person shall adopt in connection with a business, as a trademark or otherwise, any mark consisting of, or so nearly resembling as to be likely to be mistaken for… any badge, crest, emblem or mark…adopted and used by any public authority, in Canada as an official mark for goods or services.”

However, the Federal Court was not persuaded that s. 9 provided the MOE complete immunity from an infringement claim. Instead, it was recognized that the infringement rights of a trademark holder, such as QPS under , could not be ignored simply because a public authority has been given public notice of its adoption and use of an official mark, especially when that mark follows a registered trademark which could cause confusion between the two marks, as was the case here. The Federal Court of Appeal further that “a public authority that chooses to use a mark that is confusing to a registered trademark does so at its peril.” As a result of this case, we get more clarity and limitations to the confusing and all-encompassing world of official marks. While it is clear that official marks following an existing trademark do not automatically strike down an infringement claim, the official mark and the preceding trademark must be similar in some way to set off a trademark confusion analysis.

Lack of Use is Insufficient for Opposing a Trademark Application

In , the Federal Court affirmed the Registrar’s decision to reject Pentastar Transport Ltd’s opposition to Fiat Chrysler Automobiles (FCA) US’s trademark application for Pentastar. Pentastar Transport Ltd owns a registered mark Pentastar for its oil and gas services, whereas FCA US applied to register Pentastar for its vehicle engines. Pentastar’s ground of opposition is that FCA US did not possess a genuine intention to use Pentastar for its engines, which contravened s. 30(e) of the old Trade-Marks Act. As summarized��, “opposition proceedings involve a two stage inquiry. First, the opponent bears an evidential burden to establish that the facts alleged to support the issue exist. If established, then the applicant bears a legal burden to show that its application does not contravene the provisions of the Act as alleged.” The Court upheld the Registrar’s factual finding that Pentastar did not adduce sufficient evidence as the factual ground of its opposition. The Court also agreed with the Registrar that “use” and “intended to use” were not synonymous. In this case, this ruling entails that even though FCA US had not started using Pentastar as a trademark on its engines, it did not follow that FCA US had no intention to use it in the future. In fact, there was circumstantial evidence (as summarized��) indicating that FCA US indeed harbored the intention to use Pentastar as a mark for its engines.

United States Supreme Court Developments

In April 2020, the United States Supreme Court decided the case . The Court determined that even an innocent trademark infringer could lose its profits and that wilful infringement is not a pre-condition to a profits award. The Court came to this determination by interpreting which does not mention the condition of wilful infringement. Fossil was liable for $6.7 million in profits to Romag, for using counterfeit Romag fasteners in its manufacturing of leather goods.

In June 2020, the Court in held that a term styled “generic.com” is a generic name for a class of goods or services only if the term has that meaning to consumers. Booking.com sought to register a mark with the USPTO but was denied because “Booking.com” was not a generic name to consumers. Therefore, the term was not held to be generic. The USPTO analyzed the terms “Booking” and “.com” separately. This decision suggests that domain names may need to be marketed to consumers as such to be trademarked.

Trademark Law and Sports in 2020

With all its troubles, 2020 has also been an eventful year for trademark lawyers in sports. In February, a Maryland-based nonprofit Game Plan����against Lebron James and his commercial associates, including Nike, ESPN, and Take-Two Interactive. Game Plan claims that Lebron and his associates had encroached upon its trademark rights by unauthorized use of the registered slogan “I am more than an athlete” to make profits. In April 2020, Michael Jordan����in China that had dragged on for eight years. China’s highest court ruled in favor of Jordan against a Chinese company which had been marketing its sports products under the brand name Qiaodan - a Chinese transliteration of Jordan - since the 1980s.

In September, soccer superstar Leo Messi’s legal team����Europe’s highest court that Messi should be granted the exclusive right to the brand name Messi. Other similar names, such as “Massi,” should be disallowed for commercial purposes to avoid confusing the consumers. Lastly, although the Washington Football Team (formerly, Washington Redskins) changed its name in 2020, it now runs into��. As it turns out, many alternative team names have already been registered by a trademark squatter Martin McCaulay. Washington fans may need to wish for the new year that their team will receive a new name that neither infracts trademark law nor carries racist connotations.

Fashion Trends Followed by Brand Owners throughout the Pandemic��

As it is said, every crisis brings new opportunities. While some members of the general public may have doctor-recommended masks in the early months of the pandemic, they have become a trend for upcoming years. As a result of this trend, big luxury brands tapped into this unchartered territory just after the���� in July. Luxury fashion companies are now monetizing their brand value through this����i.e., face masks and shields, which have become the new reality and necessity of everyday life. Fashion brands like����have already filed applications for their trademarks in classes 9 and 10 with the USPTO and other countries for “Protective” and “Respiratory Masks.” In September,����for its uniquely styled��Toile Monogram print for its��Face Shield, filed for��“protective face shields; protective masks; protective chin shields; [and] protective gloves” (class 9), and “face masks for medical use; Surgical masks; protective face shields for medical use; protective chin shields for medical use; [and] gloves for medical use” (class 10).����

On the other hand, , Nike, and����masks also lead the charts of most searched and purchased masks.��Small and high street brands are attempting to claim proprietary rights in these trademark classes because of the long-term monetary potential. The new fashion ornament brings in value, and the brand owners wish to benefit from damages in infringement and counterfeits cases. Counterfeits are also escalating on e-commerce portals, such as��. A Chinese company has filed a trademark infringement suit for its brand����in the Illinois state. Furthermore, on December 14, 2020 the����announced an initiative to accept expediated examination requests for trademark applications for COVID-19 related goods and services, which include sanitary masks and other things. In view of this, we can predict an����from such luxury and burgeoning fashion brands.����

Bricks and Mortar Presence No Longer Necessary to Establish Use of a Trademark

In the past, the Federal Court of Canada has been unclear as to the fate of travel-related services that do not have a physical presence in Canada, but seek to maintain their Canadian trademark registration through regular use. However, following the Federal Court of Appeal’s decision in , that fate has been clarified in favour of travel-related services. Since 2014, Miller Thompson has tried to expunge Hilton’s WALDORF ASTORIA trademark given that it did not offer physical WALDORF ASTORIA hotel-related services in Canada. As such, Miller Thomson commenced proceedings under s.45 of the Trademarks Act, which would require Hilton to show use of its WALDORF ASTORIA trademark during the three years prior to the proceedings, known as the Relevant Period.

But, on September 9, 2020, the Court of Appeal upheld the Federal Court’s decision that Hilton had demonstrated use of their WALDORF ASTORIA trademark during the Relevant Period. Among other evidence presented by Hilton, during the Relevant Period, Canadians could see the WALDORF ASTORIA trademark when visiting their website and could book reservations in several ways, including directly on the site. As well, Canadians generated $50 million in revenue for Hilton as a result of their stays at WALDORF ASTORIA hotels outside of Canada. Thus, the Court of Appeal summed up the as follows: “so long as consumers, purchasers, or members of the public in Canada receive a material benefit from the activity at issue, it is a service.” This means that online reservations and payment services for later stays outside of Canada are included under the meaning of “hotel services.” Furthermore, a brick and mortar hotel is no longer absolutely necessary to establish use. In fact, in the Court of Appeal’s conclusion, it stated that “the requirements for ‘use’ under section 45 of the Act must adapt to accord with 21st century commercial practices.” For other trademark owners facing the same issue as Hilton, the Federal Court of Appeal provided guidance on how to make a , including website metrics showing that Canadians access their services online and subsequently purchase services as a consequence of their mark being displayed.

Trademark Modernization Act of 2020 Passed

On December 21, 2020, Congress passed the . This bill was enacted to amend the 1946 Trademark Act and authorized third parties "." The bill also introduced a����that would allow any party to petition for the expungement of a registered trademark that is not commercially active. The goal of these amendments was to reduce the number of “” that were on the register despite not being in use, allowing a more productive, competitive commercial trademark market. These amendments are also speculated to affect the longevity of trademark registrations as trademarks become increasingly vulnerable to cancellation. The Trademark Modernization Act of 2020 will certainly continue to generate more discussion and result in changing practices in Canada.

Giuseppina (Pina) D’Agostino is��the Founder & Director of IP Osgoode, the IP Intensive Program, and the IP 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:

Copyright:��Meghan Carlin, Emily Xiang, Joaquin Arias, Sarah Raja,��Saumia Ganeshamoorthy

Patents:��Dan Choi, Gurbir Sidhu,��Khristoff Browning, Jin Xu,��Madelaine Lynch

Trademarks:��Adele Zhang, Aishwerya Kansal,��Jingcai Ying, Eloise Somera, Lauren Chan

Bonnie Hassanzadeh, Nikita Munjal, Sebastian Beck-Watt, and Alessia Monastero

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