Prof. Gordon began by tracing the concept of users’ rights back to the American jurist Wesley Hohfeld’s notion of rights and privileges. For Hohfeld rights and duties were correlated concepts – that is the possession of a right by one party could impose a duty to honour that right on another party. Claim rights, as they are often called, are such rights – they impose duties to the rights holder onto others. Liberty rights on the other hand are rights that do not impose obligations, they simply entail freedom on the part of the rights holder. Prof. Gordon went on to explain that whether we define users’ rights as claim rights or liberty rights has important implications. If users’ rights are liberty rights – for example people are free to copy works in the public domain – there are no obligations on others to facilitate such rights. If, on the other hand, users’ rights impose obligations on others we could say that not only are people free to copy works in the public domain, but also that others are prohibited from locking up public domain works through the abuse of paywalls or digital rights management tools. If we conceptualize users’ rights as claim rights, as I believe Prof. Gordon was suggesting, we end up with a stronger conception of what user’s rights entail.

Daniel Bereskin, QC, speaking from an academic perspective, noted some of the ways diminished conceptions of users’ rights with respect to trademarks could lead to problematic situations. Mr. Bereskin noted that without balance between the rights of creators and users’ the objective of preventing depreciation of goodwill could be overtaken by the objective of protecting market share. Mr. Bereskin also shared some thoughts on proof of harm in trademark cases and how sometimes proof of harm is presumed, instead of proven, once likelihood of confusion is established. Mr. Bereskin highlighted the importance of assessing the impact of the harm done by an infringing use of a mark, particularly where injunctive relief is sought. Because injunctions are a form of equitable relief granted in extraordinary cases, a court considering whether or not to issue an injunction should look to the effect an injunction may have on values of competition and free speech.

In the field of patents, Prof. Shamnad Basheer made reference to the Indian IP doctrine of “working the patent” that allows for compulsory licensing of a patent that is not being “worked for the public good” by the patent-holder. Prof. Basheer explained that, starting three years from the date of grant, the patent holder must submit statements to the patent office of how it is “working the patent.” If, from these statements, the patent office is not satisfied that the patent holder is sufficiently “working” the patent it may grant a compulsory license in the patent to a third-party. The link between this doctrine and users’ rights is readily apparent. Recognition by the patent office of the public’s stake in scientific innovation suggests that users may have potential rights to innovations that benefit the public good. For more on the application of this doctrine see the Indian case of Natco Pharma Ltd. v Bayer Corporation, which was referenced by Prof. Basheer during his presentation, as well as on his IP blog, .

The author would like to thank all the speakers, volunteers, and co-ordinators who made “Intellectual Property: Fuel for the Fire of Genius or Shelf Life of a Banana” a reality, as well as Prof. Vaver for his ongoing contribution to the field of Intellectual Property law.

Stephen Cooley is an IPilogue Editor and a JD Candidate at Osgoode Hall Law School.

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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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This Special Issue seeks articles that focus on any doctrinal, policy, regulatory or theoretical aspect of Intellectual Property in the New Technological Age. Authors are invited to reflect upon the evolving relationship between IP law and new technologies in light of established and emerging stakeholder interests—and the public interest in general. Possible topics include, but are not limited to: the changing role of IP in our culture/society/marketplace; the pursuit of ‘technological neutrality’ in IP law; sites of tension between copyright norms and new digital services; patentability and gene or bio-technologies; trademarks, territoriality and the online marketplace; end-user and intermediary liabilities and remedies; emerging IP management and enforcement strategies; the expansion/contraction of user rights and defences in respect of new technological tools.

Submission

Manuscripts should be submitted online at by and . Once you are registered, . Manuscripts can be submitted until the deadline. Papers will be published continuously (as soon as accepted) and will be listed together on the special issue website. Research articles, review articles as well as communications are invited. For planned papers, a title and short abstract (about 100 words) can be sent to the Editorial Office for announcement on this website.

Submitted manuscripts should not have been published previously, nor be under consideration for publication elsewhere (except conference proceedings papers). All manuscripts are refereed through a peer-review process. A guide for authors and other relevant information for submission of manuscripts is available on the page. is an international peer-reviewed Open Access quarterly journal published by .

Please visit the page before submitting a manuscript. The for publication in this journal is 300 CHF (Swiss Francs). English correction and/or formatting fees of 250 CHF (Swiss Francs) will be charged in certain cases for those articles accepted for publication that require extensive additional formatting and/or English corrections.

Carys J. Craig is the Associate Dean, Research & Institutional Relations and an Associate Professor at Osgoode Hall Law School.  She is the guest editor for this LAWS special issue.

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