International Conference: The Legacy of CCH Canadian Ltd. v. LSUC and the Future of Copyright Law

Co-hosted by IP Osgoode and the Centre on September 19-20, 2025, this collaborative international conference was co-organized by Professors (IP Osgoode's Director and Academic Director of the ); (Associate Professor and Chair in Law, Intellectual Property, and the Digital Marketplace, and Director of the ); (Distinguished University Professor Emerita at the University of Windsor Faculty of Law); and (Associate Professor at the University of Toronto Faculty of Law).

The full agenda for this packed two-day conference is available , complete with links to speaker bios, paper abstracts, and video recordings of the panel presentations.

The IP Osgoode Speaks series invites leading scholars and professionals working in the field of IP law and technology to present their current projects, works-in-progress, and recent publications to the IP Osgoode community, in person and online.

Book Launch: Intellectual Property Futures: Exploring the Global Landscape of IP Law and Policy (Ottawa UP)

On February 5, 2026, IP Osgoode was proud to host the book launch for this important new collection on , featuring discussion with the editors (, , and ) and presentations from chapter authors ( and ). Stay tuned for a forthcoming write-up of the event in the IPilogue! 

Copyright, Openness, and Inequities: Licensing African Datasets

3 October 2024

Speaker: , founder of the and Assistant Professor at the University of Pretoria, South Africa. She is an Africa correspondent at , associate editor of South African Intellectual Property Law Journal, and the author of several articles on intellectual property and information justice issues in Africa.

Professor Okorie's presentation identified inequities in existing open licenses for African datasets and proposed guiding principles for an alternative approach.

Additional comments were offered by 91ŃÇɫ’s Professor , an IP Osgoode Affiliated Researcher and Ontario Research Chair in Governing AI.

A Zoom video of this hybrid event is available .

The Dabus Story: Can an AI be an Inventor?

22 Nov 2023

Speakers: Professor Ryan Abbott, University of Surrey School of Law, is leading the international litigation to establish whether DABUS, an AI, can be designated as an inventor under IP law.

Professor Abbott was joined in this panel discussion by Professor and IP Osgoode Director , and leading Canadian lawyers and (Bereskinn & Parr LLP).

Discussants: Osgoode graduate students (who was also the organizer of the event), Luna Xiaolu Li and Shadi Nasseri.

A Zoom video of this hybrid event is available .

Finding the Right Balance between Control and Access in a Developing Country Context—IP Law and Policy Making in Africa

12 Oct 2024

Speaker: is the Director of the IP Unit and the iNtaka Centre for Law & Technology at the University of Cape Town, South Africa. He serves on the Open Science Advisory Board for South Africa’s Department of Science and Innovation and has led numerous development and innovation oriented research and capacity building projects, most notably the Open African Innovation Research network ().

This presentation highlighted some of the key considerations for IP law and policymakers in Africa as they seek to modernize and contextualize colonial-era IP laws in the quest to promote innovation and development.

A Zoom recording of the session is available .   

Reframing Copyright’s Key Exclusive Rights in the Age of Access: Lessons from SOCAN v. ESA (SCC 2022)

13 Sept 2023

Dr. Cheryl Foong was a Visiting Scholar at Osgoode Hall Law School in fall 2023. She is a Senior Lecturer in the Faculty of Business and Law at Curtin University in Australia, and an expert on copyright law and dissemination technologies. Her work was cited with approval by the Supreme Court of Canada in the ground-breaking case of 2022 SCC 30, which was the focus of her presentation.

Dr. Foong's parsed the reasoning of the Supreme Court of Canada, commending its efforts to avoid the overlap and duplication of copyright's exclusive rights while also querying the future role and relevance of the reproduction right.

A Zoom recording of this hybrid presentation is available .

Balancing Freedom of Expression, Copyright, and Trademark Rights: Art of Science?

31 August 2022

Speaker: Dan Bereskin is a founding partner of Bereskin & Parr LLP and serves as a mediator and arbitrator for a variety of intellectual property disputes.

The scope of copyright and trademark rights has expanded judicially for decades. A direct consequence is court decisions that arguably impact adversely on freedom of expression guaranteed by the Charter of Rights and Freedoms. In this lecture, Dan Bereskin discussed how a balance between these competing rights may be achieved, either judicially, by remedial legislation, or both.

Toronto IP Scholars' W-I-P Workshops

In 2023, IP Osgoode hosted the inaugural Toronto IP Scholars' Works-in-Progress Workshop.

This workshop series offers an opportunity for locally-based IP scholars, whether established or emerging, to present draft papers and workshop their work-in-progress with other colleagues and experts in the field.

If you have a current project you would like to workshop, please contact us at iposgoode@osgoode.yorku.ca.

The post Past Events Archive appeared first on IPOsgoode.

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

I recently attended the Copyright Society of the USA’s event, , which featured IP Osgoode’s own Professor David Vaver alongside Professor Ysolde Gendreau from the University of Montreal in a discussion regarding the Supreme Court of Canada’s recent decision in The unanimous decision written by Rowe J. clarified provisions of the , ruling that the Act only requires users to pay one royalty fee to stream works online as opposed to the two fees proposed by . You can read more about the decision in my summary published on the last week.

After brief introductions, the two speakers began by providing necessary context for the recent decision, including Parliament’s intentions behind the 2012 amendments to the Copyright Act. Prof. Gendreau first highlighted the three main copyrights enshrined in the Act’s : the right to produce or reproduce a work, to perform a work in public, and to publish the work. Section 3 includes several subsections which list various “examples” or “actions” encompassed within these rights – the relationships between the main rights and the subsections, Prof. Gendreau highlighted, were key questions before the court. The speakers also discussed a previous SCC decision that interpreted for the first time back in 2012; in a narrow 5-4 majority, held that the act of downloading a work did not amount to “communicating” said work to the public by telecommunication under section 3(1)(f) (para 4). Furthermore, “making available” is not a separate and compensable right, but rather part of the communication right encompassed within 3(1)(f).

Profs. Vaver and Gendreau briefly touched upon the use of international laws and treaties in interpreting domestic legislation, cautioning against cases of the “tail wagging the dog” in statutory interpretation. They emphasized the importance of interpreting domestic statute first, and international law () is a useful but secondary factor that provides context.

Interestingly, the speakers differed in their opinions about who the Copyright Act ultimately protects. While Prof. Vaver believed that the Act seeks to balance the rights of end users with original authors, Prof. Gendreau was of the belief that the ŽĄłŠłÙ’s protections lean towards the side of author. However, both noted that the SOCAN v ESA decision appears to freeze copyright as it is when the new technology is introduced, rather than growing alongside the subsequent adoption and growth. They both found that the SCC decision made a firm distinction between the acts of downloading and streaming, where in reality the line is blurred by a user’s ability to bookmark and cache online content.

What are your thoughts on the recent SOCAN v ESA decision? IP Osgoode invites you to share your thoughts in the comments section below.

The post Notes on CSUSA’s Breaking News Series: Supreme Court of Canada Rules on “Making Available” appeared first on IPOsgoode.

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

On July 15, 2022, the Supreme Court of Canada (“SCC”) released its for the case Society of Composers, Authors and Music Publishers of Canada (“SOCAN”) v. Entertainment Software Association (“ESA”). The unanimous decision written by Justice Rowe clarified provisions of the Ìę(the “AłŠłÙ”), ruling that the Act only requires users to pay one royalty fee to stream works online as opposed to the two fees proposed by .

Judicial History

In 2012, Parliament amended the Copyright Act to align copyright legislation with the , which Canada signed in 1997. Among the changes was the addition of section which was meant to clarify subsection Ìędefining “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.”

As the central authority for the approval of tariffs, the held proceedings to determine the amount of royalties to be paid, receiving submissions from various groups on how to interpret the new sections of the Copyright Act. , a music licensing organization representing over 175,000 music creators, publishers and visual artists, argued that s. 2.4(1.1) required royalties to be paid whenever a copyrighted work was posted on the Internet for public access. The Copyright Board concurred, deeming that the act of making works available was in itself a separately protected and compensable activity. In effect, there would be two payable royalties: one for when the provider makes the work available online, and another for when a user actually streams or downloads a work.

The Federal Court of Appeal the Copyright Board’s decision, concluding that Parliament did not intend to introduce the two-royalties system for users accessing works online.

Key Takeaways

Although differing in the exact standard of review for the Copyright Board’s decision, the SCC unanimously dismissed SOCAN and Music Canada’s appeal. The SCC found that the Copyright Board and SOCAN’s interpretation of the Copyright Act’s new sections undermined the purpose of the Act itself. As per the principle of , “distributing functionally equivalent works through old or new technology should engage the same copyright interests [
] what matters is what the user receives, not how the user receives it” absent parliamentary intent to the contrary. Section 2.4(1.1) merely clarifies that a work is “communicated” when it is made available or uploaded – as , streaming begins when the work was made available online and continues throughout to the end user’s accessing of the work. Thus, section 2.4(1.1) does not entitle authors to an additional “making available” royalty for making the work available online. It is merely part of the public performance right enshrined in section 3(1)(f).

The SCC also addressed two non-copyright specific issues relevant to the larger practice of law in Canada. Firstly, the SCC recognized a under to apply for instances of concurrent first instance jurisdiction, which allows both administrative bodies and courts to have this first instance jurisdiction over a legal issue in a statute (). Secondly, the Court reiterated the role international treaties play in statutory interpretation. Although WIPO’s Copyright Treaty is relevant to the statutory interpretation of the Act, it cannot “overwhelm clear legislative intent” (). The SCC found that the Copyright Board erred by privileging the Copyright Treaty and Canada’s signatory obligations over the domestic Copyright Act in its interpretation.

The Copyright Society of the USA will host a , breaking down the decision and exploring its broader implications for all stakeholders in the arenas of licensing, collective administration, and enforcement. The event features IP Osgoode’s own Professor David Vaver alongside Professor Ysolde Gendreau from the University of Montreal. It will be taking place virtually on Wednesday, August 3, 2022, at 12pm EST. Details and registration information can be found

Further reading:

Breakdown of SOCAN v ESA’s administrative law related holdings:

US Government’s Making Available Study:

The post SOCAN v ESA: Royalties in the Age of Streaming appeared first on IPOsgoode.

Photo by from

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

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

Background

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

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

Issues at Appeal

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

Access Copyright’s Non-Mandatory Interim Tariff

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

Considering the Ultimate User in Fair Dealing Analyses

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

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

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

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

Ìę

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

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

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

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

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

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

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

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

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

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

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

Photo Credit: Prof Pina D'Agostino

Prof Giuseppina 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. She is also very proud of her new book!

Ìę

I am excited to share that I just published a collection on Artificial Intelligence (AI) and the law, Leading Legal Disruption: Artificial Intelligence and a Toolkit for Lawyers and the Law (Thomson Reuters 2021). Co-edited with Dr. Aviv Gaon and Carole Piovesan, the book provides a provocative analysis on the emerging terrain of AI and how it interrogates various areas of the law. The book, that features a foreword from the Hon. Marshall Rothstein (formerly of the Supreme Court of Canada), is an international collaboration of thought leaders in AI, with contributors from Canada, the USA, Europe and Israel. Issues discussed include intellectual property, privacy, contract law, regulation, governance, ethics, business and more. Importantly, such issues merit a toolkit of practical and international perspectives as they are increasingly complex and ajurisdictional. ÌęÌę

In many ways this book is also a reflection of Osgoode’s strengths in AI. My co-editors, Dr. Aviv Gaon, Director at IDC Herzliya of Experiential Programs, is a PhD graduate (class of 2019) publishing several other books on AI and emerging technology, and Carole Piovesan (class of 2009) has co-founded her own firm, INQ Law. ÌęI am myself an LL. B graduate from Osgoode (class of 1999), eventually returned as faculty to found and run IP Osgoode and I am currently co-chairing the 91ŃÇÉ« AI & Society Task Force, among many other initiatives in this space.

I am particularly thankful to the Osgoode JD students who provided helpful research assistance: Elif Babaoglu, Daniel Joseph, Joseph Simile, Rachel Marcus, Christopher Tsuji, and Julianna Felendzer.

I am most grateful for the enthusiastic endorsements by Prof David Vaver (Professor of Intellectual Property Law, Osgoode; Emeritus Professor of Intellectual Property & Information Technology Law, University of Oxford), Prof Jane Ginsburg (Morton L. Janklow Professor of Literary and Artistic Property Law, Columbia University School of Law), Justice Michael Manson (Federal Court of Canada), and Dan Bereskin (Partner, Bereskin & Parr LLP) all which can be read on the back cover.

They say you can’t judge a book by its cover, but I particularly like this one, inspired by an AI and suggestive of our youth, our future ultimately grappling with AI and other emerging technology, that will iterate in every generation.

I look forward to hearing from you on your thoughts on the book (and the cover!). You may order your copyÌęhere.

The post Leading Legal Disruption: Artificial Intelligence and A Toolkit for Lawyers and the Law appeared first on IPOsgoode.

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

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

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

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

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

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

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

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

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

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

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

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

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

[i] at para 63.

[ii] Ibid. at para 25.

[iii] Ibid. at para 43

[iv] Ibid. at para 52.

[v] Ibid. at para 62.

[vi] Ibid. at paras 63-64.

[vii] Ibid. at para 68.

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

The post Don’t Tread on Me (or My ISP): Rogers v Voltage Pictures appeared first on IPOsgoode.

Per the Federal Court’s decision in ,Ìęthe Promise Doctrine holds that if a patent application promised a particular utility, it was necessary to prove that function in order to acquire the patent. Furthermore, in the absence of any promised utility, proving even a miniscule amount of utility is enough to be found patentable. Since patents are deemed invalid if there is an insufficiency of utility under s. 2 of the patent act's definition of 'invention' and per paragraph 46 of , the effect of the Promise Doctrine was to substantially raise the bar for applicants that alleged benefits to their inventions by denying patent protections for those who failed to meet the stated promises.

In court, the series of decisions and appeals in the AstraZeneca Canada Inc v Apotex Inc suit focused on whether the Promise Doctrine should be used to find AstraZeneca’s ‘653 patent – pertaining to optically pure salts of the (-) enantiomer of omeprazole, esomeprazole – invalid because the patent promised more utility than it could deliver.

At the , Justice Rennie found two alleged utilities: using esomeprazole as a proton-pump inhibitor (effectively reducing stomach acidity) and having superior pharmokinetic and metabolic characteristics so that its therapeutic profile in clients would be more stable. By applying the Promise Doctrine, the ‘653 patent was found invalid for not meeting the utility requirement of of the Patent Act for the alleged superior therapeutic profile, despite the utility of esomeprazole being proven as a proton pump inhibitor. At the , the judgment of the lower court and the applicability of the Promise Doctrine were affirmed.

However, the decision from the SCC demonstrated that the Promise Doctrine and the analyses of the lower courts run contrary to the form of the Patent Act by conflating the requirements set out in s. 2 and s. 27.3. demands there be some useful aspect of a creation for it to be regarded as an invention at law. If some usefulness is present, the invention must be disclosed as specified in of the Act in its patent application. In , Dickson J clarified that the usefulness standard set out in s. 2 of the Patent Act acts as a “condition precedent to an invention” whereas s. 27.3 merely sets out disclosure requirements that are to be interpreted independently of s. 2. So, the Promise Doctrine goes against the independent interpretation of these two sections of the Act by demanding that the utility requirement set out in s. 2 be fulfilled or predicted at the time of filing, or otherwise find the invention pre-condition for patentability vitiated.

The SCC noted that the Promise Doctrine is also at odds with the Act where multiple utility promises are made. Under the Doctrine, all utility promises would have to be satisfied for the usefulness threshold in s. 2 to be met. However, the opinion of the SCC is that any single use “that is demonstrated or soundly predicted by the filing date” would be adequate to satisfy the demands of s. 2. Requiring all utility promises to be met, would be “unfair” and can lead to “otherwise useful invention[s] to be deprived of patent protection” simply because some promises were not demonstrated or predicted.

Given the highly experimental and sometimes tangential nature of innovation, a lack of protection for inventions that have managed to achieve some, but not all, of the promised utilities highlights the the Promise Doctrine appears to have on research and development. Citing the work of , and , , the SCC found that “inventions are like a many-faceted prism: multiple claims
 covering all facets are allowed in the same patent if a single general inventive concept links them.”

Considering a multiplicity of promises is especially important in pharmaceutical development and organic syntheses where broad, overarching concepts like an improved therapeutic profile may be anticipated, but not proven in full. The possibility of off-target therapeutic effects or side-effects can make an exacting prediction of utility difficult and, under the Promise Doctrine, may bar legal protection. After all, as the SCC established in ., “the patent regime has a dual purpose – to incentivise [creation] and to encourage inventors to publicly disclose [their knowledge] for society’s benefit.” If the bar for acquiring a patent is set too high, some inventors may get cold feet.

Dominic Cerilli is the IPilogue content editor and social media coordinator as well as a JD candidate at Osgoode Hall Law School.

The post Broken Promises: Utility Standards and Patent Applications in Canada appeared first on IPOsgoode.

The citation is for "his eminent service as a jurist, notably on the Supreme Court of Canada, and for his dedication to legal education."

We can attest to both.

During his term on the Court, Marshall Rothstein was its leader in intellectual property matters - not to mention the many other fields where he demonstrated his expertise and interest. His retirement in 2015 was marked by the publication of a festschrift last year co-edited by two of his former law clerks Ivo Entchev and Lisa M. Kelly, Judicious Restraint: The Life and Law of Justice Marshall E. Rothstein (Lexis/Nexis). Many leading academics and lawyers wrote of the contributions Marshall Rothstein had made to Canadian law which will continue to dominate it for many years to come.

Marshall Rothstein has had a long connection with legal education since well before he was appointed to the Federal Court. He is a founding member of the IP Osgoode Advisory Board where he continues to offer his guidance and assistance in advancing IP awareness and knowledge in the legal community. He is a regular lecturer for the IP Intensive program and speaker for IP Osgoode's numerous events and Speaks Series. We were particularly delighted when he accepted an appointment as Distinguished Visiting Professor at Osgoode Hall Law School in 2016. His boundless energy and generosity in mentoring our students will continue to inspire the next generation of IP thinkers and practitioners.

Many congratulations from us all at IP Osgoode for an honour well-deserved.

David Vaver is a Professor of Intellectual Property Law at Osgoode Hall Law School and an IP Osgoode Advisory Board member.

The post Congratulations to the Hon. Marshall Rothstein on His Appointment as a Companion of the #OrderofCanada! appeared first on IPOsgoode.

Ìęeditor Ìęoriginally reported on this case back in a September Ìęon the SCC’s decision to grant leave to appeal. The case arose out of the Board’s Ìęto collect royalties on these aforementioned ephemeral copies. The Ìędisagreed on tech neutrality grounds, arguing that under those principles royalties should not be charged for incidental copies since payments are already made for the use of the original content in final broadcasts. The Board, finding for , relied on the SCC’s decision in , which determined that because incidental copies add value to a final broadcast they should attract separate royalties. Furthermore, the SCC in Bishop narrowly interpreted the Ìę(the “Act”) to conclude that incidental copies made in the process of creating a broadcast were not part of the broadcast right itself.

At the FCA, CBC argued that Bishop was no longer good law. As Ìęby some commentators on the case,ÌęCBC argued that the SCC inÌęfundamentally changed the law through its statements about tech neutrality. The Court however decided that neutrality did not override the language of the Act that gives owners of music works the exclusive right of reproduction. The FCA said in Ìęthat nothing in ESA “would authorize the Board to create a category of reproduction or copies which, by their association with broadcasting, would cease to be protected by the Act. ESA did not explicitly, or by necessary implication, overrule Bishop v Stevens.” The Court further stated that since the majority’s reasoning in ESA did not rely on or refer to technological neutrality the case did not provide guidance on applying the principle to the situation at hand.

The importance of this appeal has been discussed by many members of the IP world. One commentatorÌę that the greatest danger in this case is that the SCC could potentially “roll back its finding that technological neutrality is a foundational principle within the law.” Additionally, if the SCC rules that all copies, incidental or not, are copies under the ActÌęthere is “the very real possibility of payment demands for the myriad of copies that occur through modern technologies.” In this world of digital copies and Internet file sharing, accessing digital goods could potentially become an expensive task.

Although a webcast of the oral arguments was not available at the time of the writing this post, the parties’ Ìęare – and prove to be interesting reads. CBC Ìęthat SODRAC is the first copyright holder to “attempt to monetize broadcast-incidental copies
[which is] a subversion of the purpose of the Copyright Act in an attempt to generate economic rents through a layer licensing scheme.” CBC contends that the layered licensing scheme at question was upheld by the Court through a fundamental error of law, “namely the rejection of technological neutrality as a guiding principle in the interpretation and application of the Copyright Act.” CBC asserts in its factum that this layered approach to licensing is “impermissible double-dipping that violates technological neutrality.” It is also interesting to note one of CBC’s requests that if the SCC decides that a licence is indeed required for incidental copies then the royalty should be reduced to a nominal amount “to reflect the fact that broadcast-incidental copies do not have independent economic value.” This request seems to reflect the reality that incidental copies tend to be a part of the production process in creating content, and are not necessarily “valuable” items on their own.

The SODRAC Ìęon the other hand contends that CBC is attempting “to reverse decades of settled law” and does not mince words in its opening paragraphs:

This appeal amounts to an attempt by CBC to persuade this Court, through a misuse of the principle of technological neutrality, to upset the existing statutory balance in relation to broadcast-incidental copies and to substitute its own policy preferences for those of Parliament, enabling CBC to escape liability for copies it is making and deriving benefits from, and that it has been making and paying for, for decades.

It is also fascinating (and sort of juicy!) to scan through the SODRAC factum and see a couple portions crossed out, specifically the paragraph describing how CBC has made tape and digital broadcast-incidental copies over the years for its programs.

An attendee of the hearingÌęÌęon the opening stages of the appeal, saying that it did not start well for the CBC with the SCC being “clearly skeptical” of its arguments. In discussing technological neutrality however, one of the intervenors () suggested that a test should be established for when a copy should be treated as a copy under the Act. CIPPIC’s fear is that in this digital world that constantly uses ephemeral copying to function, literally interpreting the right to reproduction would give copyright owners control over everybody else’s access to digital content – which is not realistic.

It has been Ìęthat this caseÌęmay “serve to reinforce the importance of the technological neutrality principle and confirm that in the digital world, not ever copy is a copy for the purposes of the Copyright Act.”ÌęI agree with this position. Although SODRAC relies on the established law, the law must keep up with our ever-changing (and technologically advanced) world. It is simply impractical to suggest every copy is a copy under the Act when the way we access and store digital information heavily relies on ephemeral copying. To charge royalties on the digital content used in the production process before the final (valuable) broadcast is made seems to be an inappropriate cash-grab and abuse of copyright owners’ powers. However, the conclusion that the law may lend itself to could be completely different, and unfortunately we can never predict with certainty how the bench will sway. I guess we will just have to sit on the couch and find something else to watch until the final result is ready for the air.

Jaimie Franks is an IPilogue Editor and a JD Candidate at Osgoode Hall Law School.

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