Sebastian Beck-Watt Archives - IPOsgoode

2020 IP Year In Review

ccraig — Fri, 29 Jan 2021 00:09:19 +0000

As we settle into 2021, it is important to remember and reflect on everything that 2020 brought about in copyright, patent, and trademark law. 2020 was an unprecedented year that shifted the way we interact online, and exposed many of the inequities within our society. We want to thank our readers for keeping up with these changes and continuing to support the IPilogue. Please take a look below at the Top 10 Most Read Blogs of 2020 and a digest of the most notable IP developments of 2020.

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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IP Year in Review 2018 – A Milestone Year for IP Osgoode and Ground-breaking Changes in the Canadian IP landscape

ccraig — Thu, 31 Jan 2019 13:00:09 +0000

As we settle into 2019, we look forward to topping the successes of the last year! Ten years ago IP Osgoode, Osgoode’s flagship Intellectual Property Law and Technology Program, was launched with the dream of creating a vibrant community to engage in balanced and objective research, and offer new and unexplored viewpoints to public policy discussions which are inclusive of the opinions and interests of a broad range of stakeholders. On the special occasion of IP Osgoode’s 10th anniversary we thank all those who had a hand in making our dream a reality and building IP Osgoode to be one of the top IP and technology programs in the world. A community is only as strong as its members. Thank you to all our members for supporting us, we could not have done it without you. Here’s to another 10 years for creativity and innovation!

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

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

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

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

Just Laugh It Off: Trademark Parody and the Expansion of User Rights

ccraig — Wed, 09 Aug 2017 18:27:31 +0000

I was invited to attend the Intellectual Property section’s IP Day 2017 and Judges’ Dinner, on May 11, 2017 in Ottawa. It was an honour to be invited as the winner of the Intellectual Property Law student essay contest for my paper “Just Laugh It Off: Trademark Parody and the Expansion of User Rights”, a research paper I originally wrote as part of Osgoode’s .

IP Day was a phenomenal experience, especially as a student having the opportunity to meet leaders in the IP field and many of the judges before whom IP cases often come. I was especially excited to attend the Judges’ Dinner, which honoured Justice Roger T. Hughes. The CBA’s Intellectual Property section organised a fantastic event and I certainly hope to attend many more times in the future.

“Just Laugh It Off: Trademark Parody and the Expansion of User Rights” will appear in the upcoming issue of the . The introduction to the paper is excerpted below.

In Canada, the concept of fair dealing has been described as a “user’s right,”[1] as have the other exceptions in the Copyright Act [2]. In CCH Canadian Ltd v Law Society of Upper Canada, the Supreme Court of Canada explained that a non-restrictive interpretation of these rights is integral to maintaining a proper balance “between the rights of a copyright owner and users’ interests.”[3] Previously, the Court recognised that such a balance is a fundamental element of copyright law, stating in �ճ�é�� v Galerie d'Art du Petit Champlain inc that there 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.”[4] Indeed, this balance has been a feature of copyright cases decided after �ճ�é�� and CCH.[5] Thus, the conceptualization of the intellectual property rights in copyright operate within the context of the competing interests of creators/owners of works and those third parties who wish to use the works.

The idea of balance between owners of intellectual property and the public’s interests in using that property is not restricted to copyright. The Supreme Court has said that the “patent system is based on a ‘bargain’ … the inventor is granted exclusive rights in a new and useful invention for a limited period in exchange for disclosure of the invention so that society can benefit from this knowledge.”[6] Copyright and patent law offer a trade-off of sorts between the monopolies they grant and the public interest in using the fruits of those monopolies in some way. Of course, there is tension between creators/owners and users because of this balancing act. This struggle led the Federal Court of Appeal to cite the nineteenth-century British case Hanfstaengl v Newnes[7] with approval:

The protection of authors, whether of inventions, works of art, or of literary compositions, is the object to be attained by all patent and copyright laws … On the other hand, care must always be taken not to allow them to be made instruments of oppression and extortion.[8]

Intellectual property law, then, must take note of those who use what it protects and should not extend beyond its prescribed boundaries.

We therefore have a tense balance and a bargain in intellectual property law. Fair dealing is an example of both legislation and courts accounting for this fact. What is conspicuously absent from the law, however, is any express acknowledgement of user rights in trademark law. Trademarks are intellectual property, even if they are “something of an anomaly,”[9] and they are often dealt with by third parties. Trademarks depicted by non-owners might appear in a number of ways, such as in paintings of a university football team,[10] on union literature criticising an employer,[11] or even parodying a canned luncheon meat in a puppet film.[12] Yet, the law of trademarks does not explicitly recognise these dealings or uses as fair (or at least potentially fair) – there is no set of fair dealing provisions for research, parody, criticism, or news reporting[13] in the Trade-marks Act.[14] The absence of such provisions in the trademark realm is indicative of a lack of balance between the public interest and intellectual property owners’ rights. There is the potential for owners to attempt to extend their rights beyond “the purpose of distinguishing or so as to distinguish goods or services.”[15] As Professor David Vaver has noted, maintaining a strong public domain benefits competition, innovation, consumer markets, and the public interest. Intellectual property protection must therefore be carefully circumscribed and should not extend beyond its specified limits.[16] The lack of circumscription for trademarks invites overreach (the potential oppression and extortion mentioned in Hanfstaengl), including in the area of free expression, and the lack of acknowledgement of users creates imbalance. Consequently, it is time that Canadian trademark law recognise a form of fair dealing.

Sebastian Beck-Watt is Senior Editor of the IPilogue and a graduate of Osgoode Hall Law School.

[1] CCH Canadian Ltd v Law Society of Upper Canada, 2004 SCC 13, [2004] 1 SCR 339, at para 48 [CCH].

[2] RSC 1985, c C-42 [Copyright Act].

[3] CCH, ibid. at [48]

[4] �ճ�é�� v Galerie d'Art du Petit Champlain inc, 2002 SCC 34, [2002] 2 SCR 336, at para 30 [�ճ�é��].

[5] David Vaver, “Copyright Defenses as User Rights” (2013) 60:4 J.Copyright Soc'y USA 661, at 669.

[6] Teva Canada Ltd v Pfizer Canada Inc, 2012 SCC 60, [2012] 3 SCR 625, at para 32.

[7] [1894] 3 Ch 109 (CA), at 128.

[8] Canadian Assn of Broadcasters v Society of Composers, Authors and Music Publishers of Canada, [1994] FCJ No 1540, 58 CPR (3d) 190 (FCA), at para 13.

[9] Mattel, Inc v 3894207 Canada Inc, 2006 SCC 22, [2006] 1 SCR 772, at para 21 [Mattel].

[10] The University of Alabama Board of Trustees v New Life Art, Inc, Daniel A Moore, 683 F3d 1266, 1269–70 (11th Cir 2012) [Moore].

[11] Cie générale des établissements Michelin - Michelin & Cie v. CAW – Canada, [1997] 2 FC 306, [1996] FCJ No. 1685 (FCT) [Michelin].

[12] Hormel Foods Corp v Jim Henson Prods, 73 F3d 497 (2d Cir 1996) [Hormel].

[13] Copyright Act, supra note 2, s 29-29.2.

[14] RSC 1985, c T-13 [TM Act].

[15] TM Act, supra note 14, s 2(a).

[16] David Vaver, Intellectual Property Law, 2d ed (Toronto: Irwin, 2011) at 23 [Vaver, IP Law].

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IP Intensive- In the Broadcasting Business - A Semester Interning at the CBC

ccraig — Thu, 19 Jan 2017 18:01:31 +0000

While I never did manage to “accidentally” bump into Peter Mansbridge in the halls or make it onto TV, I would say I still had a great experience as an intern in the ’s Law Department. My time with our national broadcaster as part of Osgoode’s was not only invaluable legal experience, it was also thoroughly enjoyable. As an intern, I had the opportunity to see and work on the wide range of legal issues dealt with by in-house counsel. Working with both the business and media law departments, I was involved in dealing with intellectual property, contracts, regulations, contests, advertising, social media, and advertising, to name a few.

The placement certainly gave me an appreciation for the role played by in-house lawyers at a large and complex organisation like CBC. The Law Department deals with so much more than just intellectual property matters and has to balance the business and journalistic interests of the corporation with a myriad of legal issues. CBC’s role as the national public broadcaster also means that in-house counsel must engage with a variety of stakeholder and corporate interests, very high internal and ethical standards, and the corporation’s public role and duties (not to mention the provisions set out in the ).

Especially in the age of the 24-hour news cycle and rapidly breaking stories, in-house counsel has to be available and ready with answers in short order. The media lawyers vet stories across diverse platforms, from the news on to shows like and . Issues range from privacy to defamation and are never the same in two productions.

It is easy to forget that CBC is more than just television, radio, and a website – it is a (Crown) corporation too. As a result, the business lawyers play an important role in both what Canadians see from CBC and what goes on behind the scenes. My work with them alone included issues with advertising and product placement, copyright and fair dealing, contracts, and contests – and they do a lot more than that.

One of the most important takeaways from watching this is how important it is for lawyers in this type of role to ditch the legalese for more comprehensible and digestible legal advice. On the business side, dealing with departments ranging from digital to marketing, and on the media side dealing with journalists and producers, it is essential to be able to communicate clearly about the legal issues. That also means that they have a lot of competing, or at least different, interests to consider when making decisions. What might be a good journalistic move is not always a good legal one, and vice-versa. So watching discussions between the Law Department and other CBC units really gave me an appreciation for how the practice of law involves many more factors than the law itself. Like it or not, law is a business.

Something else that really struck me is how much social media features in the legal issues of an organisation like CBC (and no doubt many others today). On both the business and media side, I spent time doing research related to CBC’s presence on and use of sites like Facebook, Twitter, and Instagram. The online world provides a whole host of new legal issues, many of which legislation has yet to catch up with.

The potential benefits of social media, such as broad dissemination of stories, public outreach, and increased advertising come with many potential pitfalls, like privacy issues and . Maybe it is not so surprising, then, how often the Law Department is faced with related questions. To me, it certainly seems as if these sorts of considerations will play a major role in law practice, both on-house and elsewhere, for the foreseeable future.

My time at CBC was undoubtedly the most valuable experience I have had during law school. Not only was it thoroughly enjoyable, it was also phenomenal practical legal experience. I was able to improve my legal skills, such as drafting and research, while learning how IP (and other) law differs in and out of the classroom. My placement was also a reminder that the law stretches far beyond Bay Street into the arts, entertainment, journalism, and so much more.

It was a pleasure and a privilege to spend a semester at CBC and I am grateful for the entire legal team for the experience.

Sebastian Beck-Watt is Senior Editor of the IPilogue and a JD Candidate at Osgoode Hall Law School and was enrolled in Osgoode’s Intellectual Property Law Intensive Program. As part of the program requirements, students were asked to write a reflective blog on their internship experience.

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Fair Dealing: What Can Be (Fairly) Criticized?

ccraig — Fri, 11 Nov 2016 20:18:34 +0000

“A picture is worth a thousand words.” That remark might be trite, especially in the era of selfies and Instagram, but a book is more than just words and a photograph is more than just ink– the sum of those parts will have meaning or will depict something beyond any constituent elements. When such a work is protected by copyright, navigating how to deal fairly with it is particularly challenging. In the case of criticism or review,[1] what can be criticized or reviewed? Can you merely copy a work in order to criticize the work itself, as in traditional literary criticism, or can you sometimes copy a work to criticize or review its subject, as when using a photo (even one from a photojournalist) for a news story? If copyright existed in the Bible, could you use extracts from it to criticize Christianity or Judaism?[2] would say yes, but in Canada, there is no clear answer. Nevertheless, the large and liberal interpretation given to users’ rights in this country,[3] considered in conjunction with jurisprudence from the U.K. and U.S., suggests that yes, fair dealing can extend to the subject of a work.

The Supreme Court of Canada confirmed that the fair dealing “allowable purposes” are not to be interpreted restrictively and Canada chose not to confine “criticism or review” to works or performances, as is done elsewhere.[4] The heading should thus be able to cover criticism of anything or anybody, including the subject of the work, at least assuming the fair dealing factors are considered (such as whether there is a non-infringing alternative).[5] This interpretation is consistent with decisions from the U.K. When L. Ron Hubbard sued the author of a book criticizing Scientology – using excerpts of many of Hubbard’s own works – Lord Denning stated that under fair dealing the author “is entitled to criticise not only the literary style, but also the doctrine or philosophy … expounded in the books.”[6] Thus, criticism is not interpreted restrictively by the British court, which allows criticism of the subject to come under fair dealing. Decades after Hubbard, Lord Justice Walker confirmed that “‘Criticism or review’ and ‘reporting current events’ are expressions of wide and indefinite scope” and under fair dealing can include criticism of the ideas in, and implications of, a work.[7]

Treatment of fair use in the U.S.[8] also offers some guidance as to how the exception could extend to the subject of a work. American caselaw indicates that where a work is largely factual and its author has little creative control, it may be used fairly. For instance, in a case where the subject of a photograph was a mobster who was part of an ongoing sentencing, that was enough for the photo to fall under the enumerated fair use category of “news reporting.”[9] The same was true of video of riots in Los Angeles.[10] The courts have also said, though, that where the work is more creative, the factual nature may not be enough.[11] Perhaps even more tellingly, the use of a photo of a person to criticize him, his appearance, and his dealings was held to be fair use for educational and criticism purposes, even though the criticism was very clearly not of the work. The subject of the work was considered in determining whether an initial fair use category would apply. Fair use was not precluded simply because the work was used for its subject rather than as a work.[12]

Even where criticism or other use of the subject may be fair from a purpose point of view, the balance of fairness can be tipped by other factors. In the US the lack of a creative process in the original is an important factor.[13] Most importantly, though, in both the US and U.K., competition with the original work is a weighty factor. Therefore, even works of genuine criticism[14] or ones using factual originals will not be considered as fair uses where they harm the market of the original.[15] According to CCH, this is of course a factor to be considered in Canada as well.[16]

A “work consists, not only of the … style, but also of the thoughts underlying it.”[17] You should be able to fairly copy and criticise those thoughts and even more in your own work – just tread carefully if your copies might compete with the original. Reproduction of a work may be fair, but stealing its customers or usurping its market probably will not be.

Sebastian Beck-Watt is Senior Editor of the IPilogue and a JD Candidate at Osgoode Hall Law School. Sebastian is currently enrolled in Osgoode’s Intellectual Property Law Intensive Program. As part of the program requirements, students were asked to write a blog on a topic of their choice.

[1] , RSC 1985, c C-42, s 29.1.

[2] Hubbard v Vosper, [1972] 2 QB 84 at 89 (CA) [Hubbard].

[3] , 2004 SCC 13, [2004] 1 SCR 339 at para 54 [CCH].

[4] Ibid.

[5] D Vaver, Intellectual Property Law, 2d ed (Toronto: Irwin Law, 2011) at 238.

[6] Hubbard, supra note 2 at 94.

[7] Pro Sieben Media AG v Carlton Television Ltd, [1998] EWCA Civ 2001 at 614 [Pro Sieben].

[8] .

[9]�� , 491 F.Supp 2d 177 (D Mass 2007) at 185 [Fitzgerald].

[10] , 942 F Supp 1265 (CD Cal 1996).

[11] Fitzgerald, supra note 9 at 188.

[12] , No 14-14525 (11th Cir 2015).

[13] , No 1:2013cv07153 - Document 71 (SDNY 2015) at 18-19 [NJMG].

[14] Pro Sieben, supra note 7 at 613.

[15] NJMG, supra note 13 at 23-24.

[16] CCH, supra note 3 at para 59.

[17] Hubbard, supra note 2 at 94.

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A Look Back on the Development of Software IP Law

ccraig — Thu, 18 Aug 2016 14:39:16 +0000

Aviv Gaon on Mr. David L. Hayes’ opening session presentation at the 20th Annual BCLT/BTLJ Symposium, Berkeley, California

Setting the Stage for the Future

Last April, I had the pleasure of participating in the 20^th annual and Berkeley Technology Law Journal Symposium. The symposium was focused on the past, present, and future of software intellectual property (“IP”) from a theoretical as well as a practical perspective in the aftermath of the US Supreme Court decision in (2014) and the denial of Google’s petition for certiorari in the Oracle case.[1] The symposium also generated remarkable discussions that called attention to contemporary IP technology industry dilemmas. In a way, the future development of IP law (as the Cheshire Cat states in Alice in Wonderland) ‘depends a good deal on where [we] want to get to.’

Technological Advancements: A Look-Back

In his presentation, , a partner at and leading IP expert, described changes in IP law due to technological advancements over the past several decades.

In the first part of his presentation, Mr. Hayes laid out the relevant technological developments between the 1960s and the end of the millennium’s first decade. The first innovative landmark goes back to the mainframe era, with the release of IBM’s first transistor in 1959. In the 1970s, Digital Equipment Corporation launched its PDP 11 minicomputers. The 1980s was the mini PC decade, and in 1993, the Mosaic web browser initiated the Internet revolution. The millennium saw the rise of and However, the most recent milestone in our current decade can be attributed to Google’s and Apple’s operating systems, which have expedited the development of cellphone and tablet applications.

Divide and Conquer: Patents, Copyright, and Trade Secrets

While the above-noted advancements have significantly impacted how society uses technology, the law has not responded to every change in kind. Indeed, changes in law often lag behind changes in society and technological development. In the following paragraphs, I will provide a bird's-eye view of the developments of software protection in three different dimensions: Patents, Copyright, and Trade-Secrets.

Patents

Mr. Hayes described the rise and fall of patents as a protection mechanism, tracing it from the Freeman-Walter-Abele Test – synthesized from the three US Supreme Court cases (1972), (1978), and (1981)��– to the 1994 the Federal Circuit decision that developed the Useful, Concrete, and Tangible Test. In Bilski (2008), the Court rejected both the Freeman-Walter-Abele Test and the Useful, Concrete, and Tangible Test, adopting instead the Machine or Transformation Test. However, just two years later in (2010), the US Supreme Court rejected the Machine or Transformation Test as the sole test of process patent eligibility, holding the test to be ‘a useful and important clue, an investigative tool, for determining whether some claimed inventions are processes under §101.’ The Court held the claims unpatentable because they were directed toward the abstract idea of hedging risk. The latest milestone in the patent saga has been the well-known case of (2014). In Alice, the US Supreme Court established The Two-Step Test. Consequently, as Mr. Hayes explained, there has been a near complete collapse of business method patents and a substantial decrease in other patents directed at computer-implemented innovations.[2]

Copyright

Computer programs and copyright protection have never been considered a good match. In the first stages of computer software development in the 1960s and 1970s, IP law did not offer protection for software. In 1974, the US Congress decided to establish the Commission on New Technological Uses of Copyrighted Works (CONTU). After years of deliberation, CONTU concluded that computer programs are indeed forms of expression and should be accorded the same rights as other works of expression, subsequently leading to the . Following this, the Third Circuit Court decided in the case of . (1983) to extend copyright protection to operating systems and application programs, even if fixed in source code or embodied in ROM only. According to (1982), both source code and object would henceforth be protected. In these decisions, the courts acknowledged that a computer program is not only the code itself but also the product of the codes.

The difficulties of distinguishing between the idea and the expression in computer software led to uncertainty in the outcome of copyright infringement cases. Thus in (1992), the Second Circuit Court stepped in and implemented a more reliable analytical framework, the Abstraction-Filtration-Comparison Test. In ., the US Federal Court reaffirmed this test.

Trade Secret Protection

According to Mr. Hayes, trade secret protection was important during the mainframe era (the 1960s), since at the time software was rarely distributed in source code form. However, in the PC era (the 1990s), the importance of trade secret protection was diminished. Mr. Hayes provides two reasons for the trade secret decline: the rise of copyright protection and the Internet revolution, which made it relatively easy to view the functional coding behind webpages.[3] The decrease of trade secret protection began to level out with the rise of cloud computing company in 1999. The advent of at the beginning of 1999 also heralded multiplayer games like World of Warcraft (2004) and programs like Microsoft Office365 (2011) that contributed to the rise of trade secret protection.[4] Until the 2014 decision in , the use of trade secret protection in the software industry remained fairly constant. Mr. Hayes opined that the US Supreme Court decision in Alice might enhance the importance of trade secret protection in the future, mainly due to the diminished possibility of patent protection.

Mr. Hayes ended his presentation by synthesizing seven key characteristics of software that will affect the type of IP protection appropriate in the foreseeable future:

Software is inherently functional. Though it requires creativity, the goal is a functional outcome. Creativity is considered a disadvantage for computer programs, and in most cases, programmers combine efforts to create the simplest, easy, and straightforward program.
Software embodies multiple types of creativity. It may contain traditional copyrightable expression (as in the case of a game), line-by-line code, non-literal internal elements (such data abstractions, schemas, ), and external interfaces (such as APIs, input formats, GUI); all of which can be embodied in one program.
Software evolution is often incremental. There is a limited record of prior art that often exists only in other source code, making it difficult to determine where patent protection is merited. Protection of object-oriented incremental changes in the code may not be imperative because of their small size and frequent reuse of code; in this case, innovation may be avoided. An efficient design is the simplest one.
Software is increasingly short-lived. Mainframe software generally lasted 10 to 20 years; PC software could last six months to two years, and today’s mobile applications have an effective lifetime of a few weeks.
Software development methodology has evolved. In the mainframe era, small development teams, usually employed by a hardware vendor like IBM, worked over an extended period of time to create complicated programs. Now, large enterprise development teams can develop incremental improvements in software multiple times per day.
Software exists in many different markets. There are small, discrete markets for mainframe software, medium-sized markets for enterprise software, mass markets for consumer software, and essentially infinite markets for mobile applications. Each of these markets has unique characteristics driving different types of IP needs over different durations.
Software has many distribution and use architectures. These strongly influence the type of IP protection that may be appropriate for a particular business model. Software can be on-site, client/server, cloud computing (private/public), SaaS/ASP/on-demand, grid computing, or involve other forms of distributed computing technologies such as peer-to-peer connections (with or without authorization) and mobile computing – all with their own intended distribution and life-cycle characteristics.

The conference’s main theme pondered the question: ‘What comes next?’ What is going to be the next test or idea that the courts will adopt? While the industry craves simple answers and reasonable legal method, the complexity of such tests, along with never-ending technological developments, leave the courts playing catch-up and implementing difficult and sometimes contradictory tests, and in the midst of this legal maze is the legal community trying to foresee the future in an unstable environment.

I posit that we are heading towards a more flexible era. In the future, the technology itself may set the rules of the legal ‘game’ and fix the boundaries. The legal role in this future may well remain in the outskirts of the technology realm with the courts restricting their judicial review to the reasonableness standard and deferring to the expert opinions of engineers and software developers.[5]

Aviv Gaon is a Ph.D. candidate at Osgoode Hall Law School. His research explores whether AI creations can have a claim to copyright protection. The author is grateful to Paul Blizzard, JD candidate at Osgoode Hall Law School and a Professional Engineer, for helpful comments and suggestions for this article.

[1] It should be noted that on May 26, only one month after the conference concluded, a federal jury decided for Google against Oracle claiming that Google Android system did not infringe Oracle copyright Java API’s since Google’s use is considered a “fair-use”.

[2] The main difficulty in Alice relates to the requirement that the software will add something extra, embodying the concept of incentive. As explained further here, software must be simple in order to be useful. ��’s innovative arguments make it much harder to produce applicable candidates for patent protection that are both useful software and also encompass ‘something extra’.

[3] While some software languages such as JavaScript are interpreted by the browser and thus visible, much of the code running on the server itself is still under trade secret protection, and thus not viewable by the user.

[4] It’s easier to protect cloud-based programs since large portions of the code (the trade secret candidate) exist on secure severs rather than on end users’ computers (as in traditional software). Hence, the common method of reverse engineering (the main loopholes of trade secret protection) is much harder to apply.

[5] In recent decades, courts have taken a very intrusive approach; they examine the technology thoroughly, scrutinizing each component to decide whether the technology meets creativity requirements. This is very different from the legal approach in administrative procedures, for example, where courts only seek to decide whether the decision or claim at hand is reasonable. Courts do not interfere with reasonable decisions, leaving the matter for government agencies. Another example comes from torts claim, where courts rely on the opinion of experts (though in a different way, and to a different extent, than in administrative appeals).

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Fashionable Rip-Offs: Independent Artists Accuse Fashion Giant Zara of Copying Their Work

ccraig — Mon, 15 Aug 2016 21:59:19 +0000

A lot of fashion seems to look the same; such is the nature of trends and functionality. Sometimes the similarities go much further. Fashion (among ) is no stranger to it copied other designers’ styles. The company is in that spotlight again: this time thanks to that it blatantly ripped off several independent artists’ designs, without any acknowledgement of their work.

The case that has gotten the most publicity is that of Los Angeles-based illustrator , though others have come forward citing similar suspicions of copying, including of Toronto and of New 91��ɫ. Kurtz created to consolidate the comparisons of the artists’ work and Zara’s alleged copies. His site shows the artist’s designs and the Zara version, much as Bassen did in an Instagram .

According to Bassen’s Instagram account, having been alerted to the similarities between her pieces and Zara’s, Bassen reached out to Zara’s parent company Inditex to seek compensation for the use of her designs. The retailer denied that there had been any copying and stated that her worked sufficient to be associated with her, noting that their websites’ traffic was very large and that Bassen was an independent artist who few would recognize. As Bassen , she is taking legal action against Zara, and is willing to go to trial if necessary. Nevertheless, she that for an independent artist to take on a retailer of that size, the costs alone can be prohibitive, regardless of the legal merit of the case.

But what of the legal merit? Any claim made by Bassen and other artists will rely on their work having copyright and on Zara having infringed on its rights by copying a substantial part of their work. They will also have to overcome possible objections, including Zara’s assertion of indistinctiveness and lack of recognition (though the latter as we will see is fairly irrelevant).

Based on the company’s response, as posted on Bassen’s , Zara does not appear to fully the copyright issue in its exchange with Bassen. Indeed, it seems to associate distinctiveness and recognisability with ownership rather than delving into what actually has copyright. Assuming Bassen’s and other artists’ works are not themselves copied, they certainly look like they are artistic works created with a degree of (the Canadian originality standard). Assuming this is the case, their fame has nothing to do with their copyrightability. A second issue is whether Zara infringed copyright by copying a of the works. A cursory glance of some of the demonstrates at least some level literal copying and thus prima facie infringement.

The analysis cannot stop there. The case is very much being tried in the and conclusions are being drawn based solely on the similarities between the artists’ and Zara’s pieces. This ignores the complexities of copyright.

Zara’s arguments (at least as presented thus far) are not helpful in coming to a legal conclusion, though the distinctiveness issue must be considered. As points out, whether the public can associate the works with the artist is a matter of trademark law, not copyright law. Zara cannot make use of the argument that people do not know who Bassen is, and to make such an argument is disingenuous. The tactic seems to be more one of discouraging legal action than one of proper legal argument.

Here, however, the artists are not seeking a monopoly over a simple image or common artistic element. At least some of the are and by and large do not represent the only way to portray something. Furthermore, where the designs also contain phrases and other added characteristics (such as Bassen’s eraser with “Erase You”), it is even more difficult to suggest that you were merely employing a common image. For example, the silhouette of palm trees might be common stock, but the same silhouette with “” superimposed is considerably more original. In order to succeed on these grounds, Zara would have to show that giving the works copyright would monopolize the depiction of certain subject matter. Looking at for instance, though, it is easy to imagine many other ways in which Zara could have chosen to depict their version.

Where Zara does appear to make a valid copyright argument is in charging indistinctiveness. Firstly, if there is insufficient originality in the pieces, there is no copyright to begin with. Alternatively, if the works are such that the idea they express (say, a ) can only be expressed in one or a small number of ways, the merger doctrine can prevent the article from gaining copyright protection. In , it was held that a jeweled bee pin could only be bejeweled in so many ways, and so it would not have copyright. The idea of course is that an artist cannot have an unfair monopoly over pins that look like bees. Zara is certainly not prevented from selling a pin shaped like a cloud.

An interesting question remains open as well: whether jewelry is a useful article. This is important because, per , the aesthetic features of the design (or the visual configuration) of a useful article (“an article that has a utilitarian function”) is not protected where the article is produced in a quantity of more than 50. Therefore, if Bassen’s pins were produced in such a quantity, and they are found to be a useful article, the only protection would come from registration under the .

In the most recent decision in Canada, Pyrrha Design Inc. v. 23735 Saskatchewan Ltd.,[1] the motions judge found jewelry to be “clearly” a useful article in deciding if there was a genuine issue to be tried. However, the Federal Court of Appeal found that determination not to be correct in law and ordered that the case proceed to trial for adjudication on the merits. The case was later settled, so there has been no judicial determination as yet as to whether jewelry would fall under the Industrial Design Act. While it is clear that articles to be worn are useful, policy must prevent such an argument being used to appropriate artists’ creativity merely because their medium happens to be “useful” in some ways. While basic clothing certainly serves a utilitarian function, it would not make sense to extend that definition to almost exclusively artistic wearables like jewelry (admittedly, items like watches present more of a definitional challenge). To do so would undervalue the artistic value of artists who work in wearable mediums compared to those who, say, paint on canvas.

It is not uncommon for companies like Zara and Forever 21 to face . In 2011, it was estimated that for stealing and passing off other artists’ work (many were much more famous than small independent artists, such as Diane von Furstenberg). It had lost none of those cases. Given the financial resources of companies like these, it is easier for them to out of court, which often means they do not have to admit guilt. Combined with the complexities of applying copyright (or any other intellectual property laws) to fashion, it is not surprising that rip-offs by big retailers exist.

Whether a case like this goes to trial is hard to predict, though the imbalance in financial resources means going to court would be very burdensome for the plaintiffs. Were it to get that far, however, Zara would be hard-pressed to show that it did not copy some of its designs from independent artists. Being faced with having to make actual legal arguments, a copyright analysis demonstrates that Zara would find it challenging to assert the absence of copyright in the original works or the applicability of the merger doctrine (or, for that matter, that trade-mark principles apply to a copyright case).

Sebastian Beck-Watt is the IPilogue’s Content Editor and a JD Candidate at Osgoode Hall Law School.

[1] Pyrrha Design Inc v 623735 Saskatchewan Ltd (cob SpareParts), 2004 FCA 423, [2004] FCJ No 2084.

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This is Why You Have an Editor: Politics, Plagiarism, and Copyright

ccraig — Wed, 27 Jul 2016 15:44:24 +0000

The inescapable world of U.S. politics, especially in an election year, consistently offers much legal debate. Somewhat less often, politicians and their entourages accidentally wade into the domain of intellectual property law. Politicians have famously gotten themselves into by using musical works (though, without strong in the U.S., it is typically legally sufficient that a politician just obtain a licence from a songwriter’s association). Political speeches have a long in copyright law. However, have raised another copyright issue in the political arena: .

Melania Trump’s apparent plagiarism of a Michelle Obama speech is by no means a rarity in politics. Politicians, like so many other prominent and , have a of copying without attribution, from student papers (which, as so many students are repeatedly warned, is grounds for expulsion) to public speeches. Though widely-publicized, did this plagiarism amount to actual copyright infringement? Political fallout aside, can this type of copying be seen in the same light as, for instance, ?

The relevant textual comparison can be found in the New 91��ɫ Times article .

While the speeches undoubtedly bear a fairly striking resemblance, it is not unheard of for politicians of all stripes to use . Much as some argue there are only to the stories we tell, there are certain themes most, if not all, politicians employ in their speeches. Indeed, it becomes very difficult to determine what is merely inspired by or what makes use of common elements, as can be seen in the complicated cases of , and what is actual copying. It is useful, then, to examine the issue from a legal perspective, rather than a purely sensational or popular one. It is also worth considering what the absence of moral rights in the U.S. means in this situation.

Blatant Plagiarism?

Not necessarily. Cases like this one are more likely to be tried in the than in a court of law. The standard for copyright infringement is considerably than mere similarities easily picked up on by observers and media. The original speech itself undoubtedly has copyright (as an original literary and dramatic work). Where political speeches especially can complicate the analysis is in the and in elements.

Political narratives tend to hit on several major themes over and over again. For example, the story of the self-made man who rose up to run for President has endured from the times of Presidents born in to recent recounting of politicians’ “” . Therefore, in a copyright context, these themes and stories would not be protected – they are the common stock of political narrative. Returning to Ms. Trump and Ms. Obama’s speeches, the ideas of hard work, respect, and following your dreams are arguably unprotectable as stock elements for many political figures.

Nevertheless, the expression of those ideas remains copyright-. Had Ms. Trump, then, merely borrowed these run-of-the-mill ideas for her speech, it seems unlikely anyone would even have noticed. It is in her expressive copying, however, that there is evidence of plagiarism. Like a song that copies lyrics in addition to a common pop melody, the likelihood of infringement increases when literal and expressive copying intermingle. Indeed, the question becomes not whether there was copying, but whether what was copied was a of the original work.

Since the copying was more or less (i.e. literal copying), we must consider how much was taken and how important it was. Here is where we can see why this case has become such a . Ms. Trump did not just crib political talking points from Ms. Obama. She appeared to appropriate parts of her life story. And while facts and history are not protectable, even for , passing off a person’s history as your own is seen as much more than borrowing their ideas. At the very least, it is easy to see how this story was a substantial part of the original speech. That the copying barely disguised the original language only makes the infringement more obvious.

Moral Rights: What If?

Because Canadian copyright includes moral rights, we might ask what role they could play in such an instance. It is easy to imagine that, given their political differences, Ms. Obama would be especially displeased with Ms. Trump’s copying of her personal story. The Copyright Act gives authors of integrity, attribution, and association in their work. There is no comparable provision in the U.S. If there were, musical artists there might frequently claim moral rights infringement where their work is used to the “” by its association with a cause (Copyright Act, s. 28.2(1)(b)) such as a politician with whom they disagree.

In Canada, Ms. Obama could both demand attribution for the use of her work in Ms. Trump’s speech and assert that her moral rights were infringed via the use of her work in association with a political movement with which she must certainly disagree. Of course, the concern about prejudice to her honour and reputation must be in the circumstance, though given the divisive nature of U.S. politics today, that belief would certainly seem reasonable.

Borrow Responsibly

There are undoubtedly many political lessons to be learned from Ms. Trump’s speech. Beyond the public fallout though, an examination of the issue from the perspective of copyright law is informative. It is clear that politicians are unlikely to infringe when they trot out reusable themes and archetypes – the stuff of politics for centuries. Where they will run into trouble is when they borrow from personal narratives, and more obviously, when they copy the actual expression – almost word-for-word – of those stories. Further, it becomes evident that the absence of moral rights in U.S. copyright law make it difficult for authors of many types to prevent the association of their works with causes they do not themselves support. This plagiarism scandal will likely remain in the political realm, but it is worth noting that that arena is no less immune from copyright protections than any other.

Sebastian Beck-Watt is the IPilogue’s Content Editor and a JD Candidate at Osgoode Hall Law School.

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The Artificial Intelligence Revolution

ccraig — Thu, 02 Jun 2016 13:48:24 +0000

A few thoughts on Prof. Jean-Gabriel Castel’s talk, Fully Autonomous Artificial Super-Intelligence: Is it a threat to the human race or a blessing? How can it be controlled?

Introduction

Before they died, my parents told me stories of how the world once was … They remembered a green world, vast and beautiful. Filled with laughter and hope for the future. But it's a world I never knew… On August 29, 1997, Skynet woke up. It decided all humanity was a threat to its existence. It used our own bombs against us. Three billion people died in the nuclear fire. Survivors called it Judgement Day. – Terminator Genisys (2015, dir. Alan Taylor).

On March 22, Prof. , gave a fascinating lecture organized by the , which challenged current perspectives about artificial intelligence (AI) and raised several well-considered reservations and concerns regarding the future. Indeed, at first blush, the AI discussion may seem more at home in a science fiction novel or Terminator film script. However, the picture that Prof. Castel paints is unambiguous: the AI future is real and imminent.

The Three Stages of Development

Prof. Castel argues that there are three stages of AI development. In the first stage, AI has the ability to encode knowledge and perform several human functions. We are in this stage at present, as AI has not reached the capacity to do everything that humans can do. The most sophisticated AI can process information and calculate chess moves (see competitions), for example, but no AI can reach behind the scope of the code supplied by the programmer, and no AI can replace human reason.

AI will reach the second stage of development when it reaches the cognitive level of humans in all domains. The computational capacity of the human brain is currently estimated in the range of 10¹⁸ computations per second; between 2007 and 2015, computers’ speed grew at a rate of 82 percent per year, and at this rate, . In the second stage, AI will have the same degree of autonomy and intelligence as human beings, and what they learn may be passed to all AI worldwide.

The third and final stage, as Prof. Castel argues, will begin when AI becomes ‘super-intelligent’. At that point, AI will possess an intellect greatly exceeding that of humans, eventually surpassing the performance of humans in all domains. Prof. Castel fears that when AI reaches this stage, it will become invincible. AI will be able to reprogram itself and rewrite and improve its software over and over again at a computer’s speed, protecting itself against any attempt to harm or hinder development by humans. At this stage, the evolved AI will be the strongest entities on the face of the Earth.

The Legal Aspects of the Future of AI

In the coming decades, humanity will be forced to address new social issues induced by scientific progress. It is reasonable to assume that these changes will affect social interactions and, subsequently, the development of legal norms. As James Boyle , ‘Both the definition of legal persons and the rights accorded to those persons have changed over time … Progress may have been gradual, intermittent or savagely resisted by force. There may have been back-sliding. but, in the end the phrase “all men” actually came to mean all men, and women too.’ Indeed, when .

In his lecture, Prof. Castel addressed a few of the difficulties we might face in the AI revolution. An interesting question raised by his lecture is whether we can attribute human rights to AI. Can we teach AI to feel? To develop compassion for other humans (or AI)? Or to express empathy and moral goodness?

The debate regarding the personhood of non-humans is well-trodden ground: the notion of considering non-humans for legal rights goes back to the Middle Ages, when churches were subject to legal rights and animals were held accountable for their ‘criminal’ behaviour. Considering AI to have legal personhood might imply that a similar status ought to be granted to other subjects, such as animals. However, I believe that there are many differences between my envision AI and animals. For example, the second and the third generations of AI expect to possess significantly higher cognitive abilities than animals.

AI Copyright

Assuming that AI can gain legal rights, the question of whether AI could (or should) be regarded as an author under the normative standards in copyright law will have to be addressed by the legal system. This question will generate several sub-questions specifically ‘who’ will own copyright and to ‘what’ content. The ‘who’ question shall explore the normative standard of authorship in the ongoing struggle between an author’s right and the public domain. The ‘what’ will ignite the originality debate and prompt a discussion of the standard of creation for granting legal protection to a particular work.

The originality standard involves a mix of different legal norms, reflecting differences between states. The originality debate is composed of two main factions: supporters of the ‘sweat of the brow’ criteria on the one hand, generally represented by Lockean labour theory; and those supporting creativity-oriented criteria on the other, as developed by the US Supreme Court (developed in . The concept of originality in Canada has shifted from the traditional ‘sweat of the brow’ standard toward that of ‘skill and judgement.’ The Supreme Court of Canada determined in the landmark that the work ‘must be more than a mere copy of another work.’ However, the work does not need to be creative ‘in the sense of being novel or unique.’

Originality will serve as an important ‘valve’ for copyright protection for AI. In a complex future, we must adopt a mechanism that ensures that only worthy creations are given copyright protection. If we give rights to AI, we must ensure that the balance between the public domain and AI rights will not change unexpectedly. From a normative perspective, I believe that the copyright bar should be decided on merit and not on conceptual beliefs that deny AI any legal rights. For this reason, I offer to raise the bar and adopt a creativity-originality standard. This may serve the AI debate both by shaping a new standard for originality that is reflective of advancements in technology and, as part of a , will serve as a mechanism for establishing copyright for AI.

Concluding Remarks

AI development can affect every aspect of human life. However, as Prof. Castel stated, no country’s legal system has yet expressed concern with the consequences of the possible evolution of AI to super intelligence. Faced with a choice between the radical prevention of all AI research, versus increasing international collaboration to develop both legal and scientific solutions, Prof. Castel expressed an inclination toward the latter.

He believes (and I agree) that, as history has shown us, we cannot prevent technological advancement, so we should find ways to avert the perilous implications of such advancement ahead of time. Humanity can benefit greatly from the AI era by building a joint project to research AI technology. The recent examples of the and the have shown that when humanity combines knowledge and experience, significant achievements occur.

Prof. Castel also suggested that one possible approach to prevent the danger posed by AI is to limit what AI can do. Isaac Asimov’s three laws can be programmed into AI,[1] and human ethics and moral values could be incorporated as well. However, what will happen when AI finds that laws and ethics contradict one another? It might resolve the contradiction by adopting its own laws and ethics. Moreover, in the AI super-intelligence future (and even in the second stage of AI development) AI can take over many human jobs, causing the unemployment rate to sharply rise. However, as the Industrial Revolution has taught us, human labor forces can adapt to change. We might even grow to develop a different economy where humans do not need to work – a world where humans can pursue their desires and dreams more fully and maybe, in the words of Star Trek, ‘boldly go where no one has gone before’.

Aviv Gaon is a PhD candidate at Osgoode Hall Law School. His research explores the question of whether AI creation deserves to be protected by copyright law and, subsequently, to address the current legal discussion considering the standard of copyright protection.

[1] A robot may not injure a human being or, through inaction, allow a human being to come to harm; a robot must obey orders given it by human beings except where such orders would conflict with the First Law; a robot must protect its own existence as long as such protection does not conflict with the First or Second Law.

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More Money, More Problems: The Science, the Law, and the Fight over CRISPR Patents

ccraig — Thu, 14 Apr 2016 15:37:00 +0000

From Lab Bench to Court Bench: The Science, the Law, and the CRISPR Patent Dispute

Whenever a new technology has the potential to be ground-breaking and extremely valuable, there are bound to be disputes about invention and ownership. From to the , scientists and inventors are often driven into competition and conflict. Recently, one such conflict has arisen over one of the biggest of the Twentieth Century.

Clustered regularly interspaced palindromic repeats () are a molecular system whose harnessing is transforming the science, with important applications in medicine, biotechnology and other areas. By repurposing the natural biological system, scientists are able to target and make precise changes to specific strands of DNA at a more cost-efficient and faster rate than ever before. While CRISPR has spurred the development of a host of new technologies, there has been significant controversy over who actually owns the “invention.” A winner-takes-all dispute over the technology’s patent rights is in full swing between the Broad Institute and the University of California, Berkeley, and the spoils are plenty.

Serendipity and bacterial immunity

First discovered in Japan in , CRISPR was subsequently shown to be an adaptive system used by bacteria to defend against viral infection. Francisco Mojica identified these repeating sequences of DNA in 1993, while working as a graduate student in Santa Pola, Spain. Mojica isolated CRISPR loci in over forty different microbes and identified their key features.

Just as Mojica was publishing his paper, Gilles Vergnaud—at the time, a geneticist for the French ministry of defence—was also completing research illuminating the function of the CRISPR system. Vergnaud found that the CRISPR locus often contained new spacers similar to those in prophages in bacterial genomes. It was Vergnaud and his colleagues who first hypothesized that CRISPRs serve as a defence mechanism for viral infection.

Subsequent work by researchers such as Philippe Horvath and Rodolphe Barrangou, working in the dairy industry to identify bacteria in yogurt and cheese production, developed our understanding of the cas9 protein. A by Marrifini and Sontheimer, two researchers then at Northwestern contributed to identifying DNA as the target of CRISPR. These researchers were also the first to predict that CRISPR could be used for genome editing.

, which involved scientists working in industries as diverse as defence and food processing, predated the work done by the Berkeley’s , and of the Broad Institute. These varied fields which led to the development of the CRISPR-Cas9 system are telling of the wide impact the CRISPR system could have.

Not your average scientific debate

It is not surprising that arguments arose over the ownership of rights to CRISPR-based inventions which contributing to . “Cancer-fighting” and are attention-grabbing phrases, and the implications and value of the science are both . For instance, there has been much debate over the to allow a research team to engage in germ line editing of human embryos. The —usually infrequently interested in complex scientific discussions—is attune to the importance of the and the stakes.

So, what is the problem? The problem is that two major academic and scientific institutions, along with their scientists, cannot agree about the patents for CRISPR technology.

Big league players

The debate is more an institutional one than one between competing scientists. At the highest level, it is and the who are fighting a patent (and ) war over CRISPR. At issue are patents filed by Broad’s Zhang and Berkeley’s Doudna. Whoever owns the technology can expect a windfall in .

The researchers

In 2012, Doudna et al. published that elaborated on the mechanism used by the associated CRISPR system to insert breaks in target DNA. In this publication they discussed the possibility of applying the CRISPR-Cas9 system to genome editing in eukaryotic cells. However, as confirmed by , a biologist at 91��ɫ, this paper described only the possibility of using CRISPR Cas9 for genome editing in eukaryotic cells and in that paper, the authors did not in fact do genome editing in eukaryotic cells.

Zhang et al. appear to have been first utilizing the CRISPR system to accomplish genome editing in mammalian cells. Soon after, George Church, a leading geneticist from Harvard, ��published that outlined possible applications of CRISPR in editing human cells. that, while Doudna and Zhang were instrumental in the application of CRISPR technology, the gene-editing project was a collaborative effort. However, aside from this anecdotal evidence, it is not clear that this was the case.

The patents

The Berkeley application was filed on March 15, 2013 by Doudna and . Zhang filed his application seven months later on October 15, 2013. Zhang expedited the review of his application (under a “”), which would otherwise as conflicting with the earlier one. He was in April 2014.

In addition to determining who filed first, there are further questions concerning the scope of the patent claims in question. As New 91��ɫ Law School’s notes, Doudna’s initial application “”, while Zhang’s “.” Although Doudna’s initial filing may not have conflicted directly with Zhang’s, her , because—her lawyers argue—the application covered gene-editing in mammalian (including human) cells.

Science goes to court

In April 2015, Doudna (Berkeley) took the issue of the competing patents to the and, in early January of this year, . An interference proceeding is used to assist in the determination of priority: “.”

Administrative Patent Judge Deborah Katz, who declared the interference, now refers the matter to the Board of Patent Appeals and Interferences, which will consider evidence from both parties (such as laboratory notes and publications from both parties) in order to determine dates of invention. Today, the United States has a “” patent system, but at the time Doudna filed her patent application, it was “first to invent,” so the interference proceedings will go forward on that basis.

The decision of the panel will determine who, if anyone, owns , based on . This interference has lessened the possibility of a The panel can decline to award the patent to either party.

Moreover, the decision may be appealed to the US Court of Appeals for the Federal Circuit. Recently, for the interference proceedings, though the patent board trial judge has yet to rule on them. So, while the dispute may have moved from the lab to the courts, it is far from over for the institutions or their scientists.

Big money anxiety

Though the Broad Institute has made the technology to the research community, a lot of money remains at stake in the control of these patents, especially for founded to develop the technology. Interference proceedings are , making them unusual for academic institutions. While the technology is , commercialization is another matter altogether.

The commercial applications of this technology mean that more than just academic institutions are taking notice. As , CRISPR-related companies are already making significant investments in the technology. For instance, (founded by both Zhang and Doudna) has planned a $100 million IPO. Other biologics firms, such as CRISPR Therapeutics, Intellia and Caribou Biosciences (which has raised nearly $90 million) are partnering with large pharmaceutical companies.

All of this raises questions about the benefits and drawbacks regarding the ownership of science, especially when there may be so much to be gained for peoples’ health. Researchers and start-ups alike appear to have every intention of of the technology, but the uncertainty engendered by the does little to advance the science.

CRISPR clearly has the potential to be a game-changing medical technology, but clearly even ground-breaking discoveries have to wade through the legal muck sometimes.

Recent updates

The Patent Trial and Appeal Board on several motions on March 17, from both Berkeley and Broad. Broad will be able to argue that there was no interference because of the specificity of its patents as to eukaryotic cells, while Berkeley will not be able to argue malfeasance on Zhang's part at this time but will be allowed to argue for a reworded count. These early rulings are not determinative and serve to show how unpredictable the outcome is at this stage.

Sebastian Beck-Watt and Daniel Quainoo are IPilogue Editors and JD Candidates at Osgoode Hall Law School.

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