At the beginning of March 2010, Greenpeace Germany and others unsuccessfully challenged a patent on a method of increasing milk supply in cattle. Cattle can be made to produce larger amounts of milk when they are genetically modified to express a particular gene sequence (European Patent EP 1330552 granted in January 2007).(1) Greenpeace Germany and others argued that the patent should be revoked on the basis that the invention causes excessive suffering of the genetically altered animals without any substantial benefit to man and beast. Accordingly it would be in contradiction to the European Patent Convention requirement that where the commercial exploitation of the invention would be contrary to public order or morality, the invention is not patentable.

A three member committee including patent examiners and a lawyer were not convinced of Greenpeace Germany’s arguments. There is no question that the genetic modification of the food we eat is a highly controversial subject and I am not entirely sure where I stand on the issue, however, the patent office seems to be a highly inappropriate forum for staging a debate on whether commercial exploitation of that invention would in some way be immoral.

The European Patent Convention is in line with Article 27.2 of TRIPs which states that member states may exclude particular inventions from patentability in order to protect “ordre public or morality.” Canada’s Patent Act does not contain such a provision and I think this is for good reason. Patent examiners are simply not equipped to deal with moral and public policy concerns. Secondly, assessing and rejecting a patent application on the basis of morality undermines the patent system’s basic goals of rewarding and encouraging innovation.

According to a recent study, as of 2009, more than 80% of patent examiners had fewer than three years of experience at the US Patent Office. Less than 10% had ten or more years of experience.(2) There must be some value in experience as the US government is looking to hire back experienced patent examiners in order to deal with a growing backlog of pending patent applications. In addition to high turnover and low levels of experience, patent examiners usually, if not always, have technical training and little training in weighing morality or policy concerns. The novelty, obviousness and utility of a particular invention are not as precise and easy to determine as they at first appear. The addition of an even less precise criterion would be alarming to say the least. To state the obvious, biotechnology is particularly fraught with policy concerns including women’s rights (in the case of assisted human reproduction for example), environmental concerns (such as preserving biodiversity) and human rights (is it immoral that commercial exploitation would benefit only the rich?) to name only a few. How can a patent examiner possibly be equipped to consider these concerns when presented with an invention of biotechnology for example? In addition, what is “immoral” today could be highly desirable in the not too distant future. The patent office should stay away from these sorts of public policy debates.

Additionally, the goals of the patent system of rewarding and encouraging innovation seem to be best served by evaluating patent applications according to the usual criteria with no inquiry into morality. Progress occurs incrementally. New ideas are built upon existing knowledge. Who is to say that a particularly repulsive invention cannot be modified into a more socially acceptable and useful application? Thus innovation is served by putting as much information into the public domain. Whether or not the commercial exploitation of something would be immoral or against public order is irrelevant to whether that invention is innovative. Legislatures, courts and the marketplace are the appropriate fora for these types of debates.

References:
1. http://www.epo.org/topics/news/2010/20100303.html
2. http://www.patentlyo.com/patent/2010/02/patent-examiner-experience-levels.html

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In his article, “Some Realism about Indigenism”, Professor Michael Davis argues that TRIPs “is the biggest disaster faced by the Third World since the end of the territorial-based colonial era.” In the context of protecting traditional knowledge, he argues that TRIPs and Western IP regimes will not benefit the “owners” of this information because the concerns do not match what IP systems can do and they shouldn’t even try. He argues that TRIPs should be repealed although he does at least admit that is unlikely to occur. Davis makes convincing arguments that IP protections are incompatible with the goals of protecting traditional knowledge, but is it an answer to simply repeal TRIPs?

Davis begins by identifying five different goals of “indigenism,” gathered mainly from the literature. They are 1. ownership and control of cultural information; 2. ability to exploit and profit from the use by others of that information; 3. promotion and encouragement of cultural information; 4. protection and preservation of bio-cultural information, including biodiversity; and 5. protection and preservation of cultural artifacts. As an example of Davis’ critiques, with respect to the ownership and control of cultural information, Davis’ critique is that IP regimes are in place to serve as an efficient means of commercializing information. IP owners exercise ownership and control in order to make a profit, either by pay for use or licensing, but indigenism doesn’t want so much to commercialize this information as to assert ownership and control in order to protect it.

I think all of these goals can be boiled down to the single concern that the more powerful countries should not be permitted to commercialize and profit from the products of traditional knowledge. There is something morally wrong about this practice but is the situation as bleak as Davis suggests? He seems to suggest that as long as countries are forced to join TRIPs, the poverty will only increase. I would hazard to say that this view reflects a bit of a stereotype about those living in developing countries. For example, Davis says “After all, if the indigenous were advanced societies, they would have all sorts of institutional devices to preserve and protect their heritage” (at 818). Perhaps “advanced societies” is a term of art in a particular field of study – I am truly not sure - but it strikes me as rather harsh and stereotypical. Yes there is extreme poverty and copyright issues for example are not at the forefront of people’s minds. I would argue those issues are not so much at the forefront of most Canadians’ minds either. My point is that there is rich culture and great potential in addition to, and building from, traditional knowledge. They too are interested in access to new technologies and the growth of culture. Of course, TRIPs will not make developing countries rich overnight, but it seems as if it might be a partial answer.

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From the moment I became a graduate student, the emphasis was on generating data in order to publish a paper, submitting an abstract to a scientific meeting (which was hopefully somewhere exotic!) or adding data to my faculty supervisor’s research grant application. We were given orientation regarding the student union, the local pub and our health plan as examples but nothing regarding our IP rights. I remember being mildly surprised when we had a manuscript accepted and had to sign all our rights away. Not knowing any better at the time, I didn’t question it. Even if I had questioned this assignment of rights, there would be little I could have done. After all, in order to gain a reputation in science and get a good post-doctoral position and eventually a faculty position, the publication record is the main assessment factor. Furthermore, in order for faculty supervisors to obtain research funding from agencies such CIHR and NSERC, a strong publication record is vital.

Aside from building a reputation and getting research dollars, there is little commercial value in most publications that come out of a scientific research lab. To increase the commercialization of research coming out of universities, there would have to be a change in the emphasis. While publications are important, it will preclude the granting of a patent of anything of commercial value contained within a particular publication. Thus it is important that graduate students (as well as their faculty advisors) are educated regarding the different areas of IP, especially patents. For example, most of my colleagues at the time did not even contemplate a patent and appeared to be of the view that a patent was somehow out of reach. While this education might decrease "missed opportunities to patent", there is the increased potential for exploitation of grad students. A MSc takes about two years to complete while a PhD in sciences takes about 4-5 years. Thus it is possible to have multiple students working on a project that leads to a patent. Conflicts can arise when determining who to include on the patent application. It is understandably difficult for a student to hear that she might have no commercial interest in a patent involving work to which she contributed 60 hours a week over a few years, and for which she received little pay. Grad students need to be aware of their IP rights to avoid these sorts of issues.

Several years ago when I entered into graduate studies, I didn’t even know what IP was and the words certainly wouldn’t have even caught my interest. In the unlikely event that I had done law school first and then my degrees in science, I would have had a completely different outlook. Would this knowledge have changed how I developed my research project? I was lucky enough to be in a lab where I had significant input regarding the development of my research and while I may not have been successful, I might have approached my project slightly differently with a goal of obtaining a patent for my work as well. On the other hand, I might well have decided that innovation was better served by making my IP freely available to all researchers. Regardless, surely the individuals generating IP need to have at least a basic understanding of their rights. I think it is essential for students to possess the knowledge to perhaps prevent “missed opportunities” to commercialize their work, possibly prevent themselves from being exploited by their supervisors and the university and even to simply assess the costs and benefits of commercialization of their IP in the first place. One way to do this is to include some IP classes during the first few weeks of every graduate program. Considering the interesting IP questions I have received upon visiting my former department, this would be a welcome idea. Grad students play a vital part in developing an “innovation culture” and need to be considered and educated in any scheme designed to increase the commercialization of their research.

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One of the leading Supreme Court of Canada cases regarding famous marks is the Mattel case [2]. The makers of Barbie dolls and accessories opposed the TM application for registration of “BARBIE’s and design” by the owners of a “bar-and-grill” type restaurant named Barbie’s. If in the opposition proceedings the applicant could prove that there was no likelihood of confusion between the applicant’s mark and the opposing party’s mark, the applicant was entitled to registration. The Mattel case, therefore, involved an analysis of s. 6 of the Trade-marks Act and the potential impact the status as a famous mark has on the determination of likelihood of confusion.

S. 6(5) lists out the relevant factors for determining whether TMs are confusing and instructs the court or registrar to consider “all the surrounding circumstances” including a list of five factors (a) through (e). The court concluded that in considering confusion the totality of circumstances dictates the weight to attach to each consideration. Fame of the mark is but one consideration which could have more or less weight depending on the other circumstances. After considering the factors in s. 6(5), the court turned to an analysis of the other surrounding circumstances including the fame of the mark as well as the absence of any actual confusion and concluded that the TM Registrar had not been unreasonable in the weighing of considerations and dismissed Mattel’s appeal.

Given the undeniable widespread fame of the Barbie mark, no matter what people might say about the impossible body dimensions and empty-headed blonde image, it is surprising that this fame was not enough for the court to grant extra protection. After all, as a casual consumer somewhat in a hurry, I might hear Barbie’s restaurant and think it was a Barbie doll-themed restaurant, especially in a culture where licensing of brands for use on everything from clothes to toys to restaurants is commonplace.

It was accepted in the Barbie case, that one of the purposes of 1953 amendments to TM legislation was to give, and indeed did give, greater protection to famous marks. Certainly there does seem to be something unfair about the fame of a mark being able to transcend other factors in the confusion analysis, but if fame is but one factor, in what manner do famous marks receive the broader ambit of protection? One important fact was that the Barbie TM was only famous in the limited field of dolls and accessories. In Mattel, the court specifically mentioned Virgin Enterprises as being an example of a famous TM which has been used in connection with an almost limitless diversity of wares and services but because such an example was not before the court, no pronouncement was made. A quick search of the CIPO TM database reveals Virgin has registered TMs for such diverse wares and services including soft-drinks, mobile phones and telecommunication services, transportation of goods and passengers by air, road, rail and sea and the arrangement of such travel, wines and entertainment services. If fame in a limited field is not sufficient, then surely fame in such a broad variety of wares and services would surely provide justification to attribute a lot of weight to the fame of this mark just as the Israel Office did.

While I might agree Virgin should be granted extra protection from a legal perspective, it is important to ask whether such a result would be a good thing from a policy perspective. The owners of famous marks have invested very large amounts of time and money into developing the reputation and goodwill in their brands and should be entitled to greater protection. One of the underlying principles of TM law, however, is to protect TM owners from unfair competition. It seems unlikely that the businessman who names his candle business Virgin candles because the candles are made from olive oil could be said to be unfair competition to Virgin Enterprises. It seems more unfair to preclude small-scale business owners from using a TM which has a similar name to a famous mark, especially where the TM lends itself to their particular products and services.

[1] See http://blog.ipfactor.co.il/2007/11/10/david-loses-virgin-to-goliath/ for brief comment.

[2] Mattel, Inc. v. 3894207 Canada Inc., [2006] 1 SCR 772.

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In that case, Ms. Thomas, a mother of two, was sued by six record
companies for allegedly sharing 1702 songs on Kazaa. As reported by
Joshua Freed (), she has been ordered to pay $222000 in
damages for copyright infringement of 24 songs. Many of the other 26000
actions initiated by the record companies have each settled for only a few
thousand dollars. The lead lawyer in the case hopes that this will send a
message to people that downloading and distributing music is wrong. In my
view it seems to send the message that if you try to stand up to large
corporations, you are going to be liable for a lot more than a few
thousand dollars. This has the potential effect of deterring anyone from
standing up to record companies even in cases where the copyright
infringement is defensible, as in cases of fair use. For example, budding
musicians and school classes benefit from being able to access music but
would likely lack the money or courage to go up against the music
industry. If the goal of copyright is indeed to promote knowledge and
learning, then this is a bad decision.

The lawyer’s statement also suggests that they were seeking more than
just compensation here, that they were actively seeking to give a message
of deterrence. I agree that there was copyright infringement but the
amount of damages seems completely out of proportion with the crime given
that her copying was likely just for personal enjoyment. Assume for a
moment that many more of these cases were to go to court. Given that the
copyright law allows for $750-30000 per infringement with up to $150000
where the infringement was willful, the music industry has the potential
to be awarded a lot of money from individuals (as discussed by Joshua
Freed in “Music giants vow more suits over downloading”
(). One could argue that this would never happen on the
grounds that most cases will settle before ever getting to court, but it
does increase the possibility that the record companies will ask for
higher valued settlements now because of this dangerous precedent.

Finally, as Michael Geist argues (“Music industry needs innovation not
intervention” available at ), artists and consumers are
responding to the new digital reality and so should the music industry.
Many artists are selling their music directly online (Led Zeppelin and
Radiohead for example). There are also websites now that allow you to
purchase songs. With new technology any business must evolve, including
the music industry. For example, any music company that had continued to
exclusively produce vinyl records would have lost a lot of money to those
companies selling music on CD. Furthermore, in his blog
(), Michael Geist questions whether the more recent
loss of sales revenue can even be attributed to illegal downloading. To
increase their sales revenue, the music industry needs to adopt some new
ideas.

After the US case involving Napster in 2001, it seems clear that the free
sharing of music files on peer-to-peer file sharing networks is copyright
infringement. By making unauthorized copies of music available to a large
group of people for free, Ms. Thomas was indeed infringing copyright and
should be liable for the damages. However, how long should record
companies be able to use individuals as scapegoats for their loss of sales
revenue? At what point should courts say enough is enough and tell record
companies that they need to modernize their business models? The number
of people downloading songs on these websites is apparently growing, not
shrinking. That is an awful lot of lawsuits.

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