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Prof. Pina D’Agostino is the Founder and Director of IP Osgoode, the IP Intensive Program, and the IP Innovation Clinic, the Founder and Editor-in-Chief of the IPilogue, the Deputy Editor of the Intellectual Property Journal, and an Associate Professor at Osgoode Hall Law School. This article features contributions from Ryan Wong (IP Osgoode & IP Innovation Clinic Alumnus), Sabrina Macklai (IPilogue Senior Editor), Tianchu Gao (IPilogue Writer), and Ashley Moniz (IPilogue Managing Editor).

2021 was an exciting year for the IPilogue. Our hard-working students and community members published more than twice as many articles than in 2020 and the most articles in a calendar year since 2011. This sharp increase helped us stay up to date with some of the biggest topics shaking up intellectual property: from , to ; and from growing investments in and , to IP registrars around the world grappling with whether to acknowledge Ìęas an inventor or artist. This article summarizes the top developments reported on our blog and in patents, trademarks, and copyright law in 2021. For a review of Privacy legislation in Canada, check out .

Top 10 Most Read IPilogue Articles Published in 2021

1. by Sabrina Macklai & Emily Chow
2. by Prof. David Vaver
3. by Claire Wortsman
4. By Claire Wortsman
5. by Natalie Bravo
6. by Prof. Giuseppina D’Agostino
7. by Bonnie Hassanzadeh
8. By Meena Alnajar
9. by Prof. David Vaver
10. by Bonnie Hassanzadeh

Introducing the College of Patent Agents & Trademark Agents

On , the came into force. The Act established the (‘’), an independent public interest regulator of patent and trademark agents in Canada. The purpose of the College is “to enhance the public’s ability to secure the rights provided under the and the .” The College’s responsibilities include maintaining professional competencies and ethics, issuing licences, collecting fees, and administering certification exams. This development marks a key milestone for the profession and for Canada’s . Though still in its infancy, the College has been criticized for and its , which may impose an additional fee on lawyer agents. It remains to be seen how influential the College is on the profession as it is expected to be fully operational within the next two years.

Patents

Overbreadth as an Independent Ground of Invalidity

On July 28, 2021, the Federal Court of Appeal confirmed overbreadth as a standalone attack on patent validity: . In this case, the appellants argued that there is no statutory basis for overbreadth as a ground for invalidity. The Federal Court of Appeal disagreed and found that overbreadth can be supported by a combination of sections 27(3) and 27(4) of the Patent Act. Case law has often overlapped overbreadth with other grounds of invalidity such as obviousness, anticipation, and inutility.Ìę

First Time Interpreting Patent Agent Privilege

Similar to solicitor-client privilege, patent agent privilege was introduced by section 16.1 of the Patent Act on June 24, 2016. The first case on patent agent privilege was decided this year: In this decision, the Federal Court provided some helpful commentary and analysis on the application and limitations of patent agent privilege.Ìę

Patent Prosecution History Now Admissible as Evidence

In 2018, section 53.1 of the Patent Act was added to make patent prosecution history admissible as evidence in patent proceedings. This was a significant development as the Supreme Court of Canada had expressly rejected the idea and stated that admitting patent prosecution history “would undermine the public notice function of the claims, and increase uncertainty as well as fuelling the already overheated engines of patent litigation” (Free World Trust v Électro SantĂ© Inc., 2000 SCC 66 at para. 66). Three subsequent Federal Court of Appeal decisions developed this provision further: ; ; and .Ìę

Continued Debates over AI as an Inventor

Around the world, patent registrars grappled with patent applications that credit artificial intelligence software as the inventor. Dr. Stephen Thaler’s “DABUS” (Device for Autonomous Bootstrapping of Unified Sentience) applied for patents around the world for its interlocking food containers. DABUS was granted patents in Australia and South Africa, with . In line with the and the , the disagreed, stating that absent express intention from Congress, the term “individual” in their statutory definition of “inventor” . The Supreme Court of Canada last considered the definition of "inventor" in 2002, but has yet to consider whether it would include non-human entities.

Trademark Law

Parody in Trademarks is No Joke

In , the Federal Court reaffirmed that parody is not a defence against trademark violation. Unlike the 2020 decision ), where the Federal Court failed to find the marks confusing, Justice McHaffie held there was a likelihood of confusion and passing off. This was based partly on the similarity of the trademarks and the overlap of the goods (both offering baked goods). However, even if the nature of the parties’ trades differ, trademark owners may still find recourse against spoofed versions of their marks through claiming depreciation of goodwill under section 22 of the . Here, the Court found goodwill in Subway’s trademarks, which was damaged by the nature of Budway’s products, as contrary to Subway’s “healthy and active” lifestyle promotion. With damages amounting to $40,000, it is clear the courts are unamused by parody in trademarks.

The Road Less Travelled Cannot be Trademarked

Like most countries, Canada bars the registration of “clearly descriptive” trademarks to prevent applicants from monopolizing words that merely describe the goods or services at hand. For this reason, marks consisting of are typically unregistrable. In , the Federal Court clarified when such marks might be protected. Hidden Bench and Locust Lane are two wineries operating on the same little road, “Locust Lane”. Although the Federal Court agreed that Hidden Bench met the threshold for a valid common law trademark over “Locust Lane”, they ultimately held that the mark, as clearly describing the goods and services’ place of origin, lacked both inherent and acquired distinctiveness. Therefore, Hidden Bench could not establish the necessary goodwill for a passing off claim. Only descriptive marks that have acquired a “secondary meaning” through use may warrant protection.

CIPO Addresses the Application Backlog

While filing trademarks is important for brand protection, the examination stage can take . In May, the Canadian Intellectual Property Office (CIPO) new measures to address the application backlog. Trademark owners may now file requests to expedite their examination where the registration of their mark is necessary for special circumstances such as if a Canadian court action involving the mark is expected or underway or if the goods or services are aimed at preventing, diagnosing, treating, or curing COVID-19. If accepted, the examination will take place within two weeks. The examination is also automatically expedited by approximately 6-10 months when the goods and services in the application are listed in CIPO’s . Though it is too early to assess the effect of these changes on mitigating the “”, the backlog of CIPO’s unexamined trademark applications appears to have as of December 13, 2021.

Push to Register Non-French Trademarks for Use in Quebec

Among the controversies associated with Quebec’s proposed Bill 96, , the bill stipulates new requirements for trademark owners operating in Quebec. Currently, under Quebec’s French-language laws, both registered and unregistered (i.e., common law) trademarks recognized under the may appear on public signs, posters, and commercial advertising in Quebec, in languages exclusively other than French. If enacted, Bill 96 would permit only registered non-French trademarks to appear on public signage, provided there is no corresponding registered French version of the mark. The Coalition Avenir Quebec government tabled Bill 96 on May 13, 2021, and Quebec’s National Assembly last examined it on December 10. Some iteration of the bill will likely become law by the end of this year. But even if it fails to pass, businesses relying on common law trademarks would be wise to try to register them, given the many that registration provides.Ìę

Copyright Law

In 2021, the Federal Court and Federal Court of Appeal heard 57 copyright infringement proceedings, approximately of all IP-related litigations at these levels.

Developments in Fair Dealing

The Copyright Act’s section 29 fair dealing provision, which allows for certain uses of copyright-protected materials, remained a central issue. affirmed that fair dealing for the purpose of news reporting (section 29.2 of the Act) must provide attribution, mentioning both the source and the name of the author. An indirect reference to the author accessible through “minimum research” is insufficient. As such, the Federal Court of Appeal rejected Trend Hunter’s argument that hyperlinking to the source article where Stross was credited was sufficient to meet the second requirement. The Court also declined to find fair dealing under s. 29 more broadly, considering that Trend Hunter’s dealing was commercial in nature, reproduced Stross’ work in its entirety, and that alternatives were available.

Fair dealing was once again at issue in , where the Federal Court held that the Conservative Party’s use of the CBC’s news footage of Liberal Party Leader and Prime Minister Justin Trudeau during their 2019 election campaign did not infringe CBC’s copyright. The court undertook a large and liberal interpretation of fair dealing, finding that the Conservative Party’s use of CBC footage was for the purpose of criticism under s. 29.1.

91ŃÇÉ« achieved a in the copyright tariff dispute with the Canadian Copyright Licensing Agency (“Access Copyright”) in In a unanimous decision, the Supreme Court ruled that the interim tariff approved by the Copyright Board is not mandatory. Users can choose whether to accept licences or pursue alternative methods to lawfully copy works. Notably, this marked Justice Rosalie Abella’s final decision before her retirement from the Supreme Court of Canada. Throughout her tenure, and her judgement here provided helpful obiter regarding fair dealing as integral to users’ rights.

Even Fake Facts are Not Copyrightable

involves the alleged copyright infringement of the famous true-crime story The Black Donnellys. The book had always been presented and accepted as “.” The Federal Court ruled that “an author who publishes what is said to be a nonfiction historical account cannot later claim the account is actually fictional to avoid the principle that there is no copyright in facts.” Given today’s popularity of the phrase “based on a true story”, this ruling is a that there is no copyright in facts, even if they are later found to be untrue.

Copyright in Evolving Content Transmission

In , the Federal Court found the defendant liable for copyright infringement in its provision of pre-loaded set-top boxes and internet protocol television (IPTV) services and awarded the plaintiff nearly $30 million in damages. These services made copyrighted works owned by the plaintiff available to the public without the plaintiff’s permission. This decision marks the first time The court dealt with a similar issue in ). As IPTV is growing increasingly popular across the globe, its poses a challenge in Canada.

Availability of Reverse Class Actions for Copyright Infringement Claims

The first of its kind in Canada, the Federal Court of Appeal in affirmed that reverse class actions may be pursued in connection with copyright infringement claims. Though the matter was sent back to the Federal Court for further consideration, this judgement may encourage and enable mass copyright enforcement in the future, especially in our digital age where copyright infringement is more commonplace.

Public Consultations Ahead of 2022’s Copyright Reform

As part of the (CUSMA), which came into force on July 1, 2020, Canada has until the end of 2022 to implement numerous changes to their domestic copyright laws; most notably, extending the general term of copyright protection from . In light of the upcoming legislative amendments, the Government of Canada hosted three public copyright consultations in 2021:

• ;
• ; and

With the consultations now closed, it will be interesting to see how Canadian copyright laws will change in 2022 to accord not only with international obligations but our ever evolving digital world and public attitudes surrounding copyright laws.

The post 2021 IP Year in Review appeared first on IPOsgoode.

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Emily Prieur is an IPilogue Writer and a 3L JD Candidate at Queen’s University Faculty of Law. This article was originally written as part of the IPilogue’s annual Year in Review but has instead been published as a standalone article.

2021 was a transformational year for Canadian privacy legislation. Following the changes made to the , several provinces amended their privacy legislation to protect their constituents’ interests. The private sector may be less welcoming to changes in many provinces which expose companies to . On the flip side, these proposed legislative changes will strengthen the privacy of Canadians in their everyday lives.

Provincial Legislative Changes

Quebec’s Bill 64 Passes Royal AssentÌę

The most significant development in privacy legislation is Quebec’s , An Act to modernize legislative provisions as regards the protection of personal information, which received royal assent on September 22, 2021. This legislation is significant because of its effects on the private sector. Starting September 2022, private sector organizations must inform the privacy regulator following any breach to compromised personal information that presents a “serious risk of injury” to affected individuals. To determine if there was a serious risk of injury to affected individuals, the province turns to the factors outlined in the “real risk of serious harm” section of the Federal Personal Information Protection and Electronic Documents Act (“PIPEDA”). As , the gradual implementation of Bill 64 allows organizations the opportunity to update their processes and procedures to ensure compliance before September 2022. The Quebec legislation also takes inspiration from the European Union's General Data Protection Regulation (“G¶Ù±Êžé”), which has been touted as the “” privacy regime because of its strict privacy standards and its partiality towards consumers.

The omnibus bill included such as changes to company websites, assignment of a Privacy Officer, completion of Privacy Impact Assessments, and requirements for consent, individual rights, and automated decision making. To date, the analysis of the legislation compares the provisions to the European GDPR.

Companies operating in Quebec are now required to publish their company privacy policies on their websites. Such privacy policies must describe how companies plan to use personal information.

In the event of privacy infringements that violate individuals’ private information, individuals will now have recourse through administrative monetary penalties, penal offenses, and private rights of action.

Finally, similarly to the GDPR, Quebec introduced consent requirements for collecting personal information, including express consent before using sensitive information and parental consent for minors under the age of 14.Ìę

Ontario Welcomes Consultations and Proposes Changes

Under the leadership of Patricia Kosseim, the Office of the Privacy Commissioner pursued their goal of passing an equivalent piece of legislation in 2021. In response to an op-ed piece that argued against provincial legislation in fear of redundancy and duplication, Kosseim recently regarding the potential for new provincial legislation to “fill in the gaps” of what Federal privacy legislation cannot accomplish.

In keeping with Kosseim’s motivation to strengthen privacy laws in Ontario, the Government of Ontario released a along with calls for consultation in June 2021. The White Paper, titled “Modernizing Privacy in Ontario,” set out several proposals the Ministry is considering to strengthen privacy protection for Ontarians. To strengthen such protections, the Ministry has proposed making privacy a fundamental right in Ontario. Ontario has also included suggestions to protect youth privacy online, regulate automated decision-making, and require more informed consent and data transparency from private corporations.

The Ministry allowed the public to provide comments and feedback until August 2021. The Office of the Privacy Commissioner applauded the provincial government for taking a “” with its proposal.

BC’s PIPA Committee Releases their Final Report

The British Columbia Legislative Assembly also created a special committee to review the British Columbia (“PIPA BC”) in February 2020. The objective of this committee was to publish a report proposing amendments to PIPA BC, which the committee completed in December of 2021. In the , the committee suggested aligning PIPA BC with PIPEDA and Europe’s GDPR. Like the recently passed Quebec legislation, the committee also suggested mandatory breach notifications if a breach surpasses the “real risk of significant harm” threshold as established in PIPEDA. The committee also recommended broadening the definition of personal information to address the potential issue of de-identification. Finally, the committee proposed that the Office of the Information Privacy Commissioner have greater enforcement powers.

Federal Legislative Changes

The Federal Office of the Privacy Commissioner (“°ż±Ê°ä”) did not introduce any new legislation in 2021. The Office was engaged in issues surrounding as well privacy issues resulting from the COVID-19 pandemic, including privacy with respect to and the rise in reliance on video teleconferencing platforms like Zoom and Microsoft Teams. The Canadian OPC, along with privacy authorities in Australia, Gibraltar, Hong Kong SAR, China, Switzerland, and the United Kingdom, to the videoconferencing companies regarding their rapid expansion during the pandemic to query and confirm that these technology companies were using appropriate privacy safeguards. The letter led to a series of video calls between the signatories and representatives from the companies. Finally, the signatories and suggestions to improve privacy going forward. Among the suggestions were the implementation of end-to-end encryption, the identification of secondary use data (as well as an opt-out system), and the option for users to choose where their data is stored.

Conclusion

New and amended privacy legislation continues to develop in Canada and worldwide.ÌęFollow the IPilogue and subscribe to our newsletter, the IPIGRAM, for any important legislative changes that emerge in 2022.

The post A Look Back at Canada's Privacy Legislation in 2021 appeared first on IPOsgoode.

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.Ìę

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

91ŃÇÉ« v The Canadian Copyright Licensing Agency, 2020 FCA 77

On April 22, 2020, the regarding a dispute between 91ŃÇÉ« (“91ŃÇɫ”) and The Canadian Copyright Licensing Agency (“Access Copyright”), holding that the tariffs set against 91ŃÇÉ« by the Copyright Board are not mandatory, but dismissed 91ŃÇɫ’s counterclaim regarding the fair dealing guidelines. Access Copyright had sued 91ŃÇÉ« 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 91ŃÇÉ« opted out of the tariffs in 2010, they are not enforceable against 91ŃÇÉ«. 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
91ŃÇÉ« 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 91ŃÇɫ’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 LAWÌę

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.Ìę 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.Ìę

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 ClaimÌę

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 summarizedÌę, “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 summarizedÌę) 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 PlanÌęÌęagainst 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 JordanÌęÌęin 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 teamÌęÌęEurope’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 intoÌę. 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 PandemicÌę

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 theÌęÌę in July. Luxury fashion companies are now monetizing their brand value through thisÌęÌęi.e., face masks and shields, which have become the new reality and necessity of everyday life. Fashion brands likeÌęÌęhave already filed applications for their trademarks in classes 9 and 10 with the USPTO and other countries for “Protective” and “Respiratory Masks.” In September,ÌęÌęfor its uniquely styledÌęToile Monogram print for itsÌęFace Shield, filed forÌę“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).ÌęÌę

On the other hand, , Nike, andÌęÌęmasks also lead the charts of most searched and purchased masks.ÌęSmall 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 asÌę. A Chinese company has filed a trademark infringement suit for its brandÌęÌęin the Illinois state. Furthermore, on December 14, 2020 theÌęÌęannounced 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 anÌęÌęfrom such luxury and burgeoning fashion brands.ÌęÌę

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 aÌęÌęthat 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 isÌęthe 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:ÌęMeghan Carlin, Emily Xiang, Joaquin Arias, Sarah Raja,ÌęSaumia Ganeshamoorthy

Patents:ÌęDan Choi, Gurbir Sidhu,ÌęKhristoff Browning, Jin Xu,ÌęMadelaine Lynch

Trademarks:ÌęAdele Zhang, Aishwerya Kansal,ÌęJingcai Ying, Eloise Somera, Lauren Chan

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

The post 2020 IP Year In Review appeared first on IPOsgoode.

TRANS-PACIFIC PARTNERSHIP

The TPP has various domestic and global for IP, including providing stronger criminal penalties in all three areas of protection. After more than five years of secretive negotiation, the TPP was published on November 5, 2015, and Canada it on February 4, 2016 in Auckland, N.Z.

Two major copyright obligations are included in the : First, Article 18.63 will extend copyright term protection to life of the author + 70 years (from life of the author + 50 years) or to 70 years after publication or creation, in the case of corporate owned works. Second, Article 18.69 compels signatories to escalate digital rights management protection provisions. Patent law may see reform in the shape of term extension, through Articles 18.46 (“Patent Term Adjustment for Patent Office Delays”), and 18.48 (“Patent Term Adjustment for Unreasonable Curtailment”). Possible legislative changes to trademark law include the allowance of scent marks, and provisions that strengthen protection for “well-known” marks.

For Canada, the TPP has not come without controversy. on the TPP and there seems to be little .

COPYRIGHT

2015 was marked by a few—but very important—developments in copyright law, particularly in the music industry.

The 2015 federal budget brought in one of the most significant developments in Canadian copyright law. Just before leaving office, the Conservative government amended the Copyright Act by extending copyright term protection for sound recordings and performances from 50 to 70 years. While the music industry welcomed this extension, legal experts were left unsatisfied, finding few benefits to theÌęamendment.

Conversely, the "Happy Birthday" surely left at least one music label unsatisfied. On September 4^th, U.S. Federal judge George King held that Warner/Chappell does not own copyright over the ubiquitous birthdayÌęsong,Ìęas the copyright registration obtained in 1935 only covered the piano arrangements based on the melody (which entered the public domain in 1949), not the lyrics themselves. A between the parties was later reached on December 9^th. Though details have yet to be released, it appears the song will fallÌęinto the public domain once the settlement is finalized.

AnotherÌęcontroversial development in music-related copyright law this year was the American “Blurred Lines” . The case, opposing the Marvin Gaye estate and Robin Thicke and Pharrell, ended with a federal jury ruling that the song “Blurred Lines” did indeed infringe Gaye’s family copyright in the song “Got to Give It Up” (see IPilogue coverage ). By establishing that a rhythmic feel can compriseÌęthe “substantial similarity” criteria, this ruling sets a very important precedent for determining the line between inspiration and copyright infringement in music industry. Many the chilling effect it could have on potential creations in pop music and on musical creativity as a whole. Pharrell and Thicke’s legal team have filed an , so this saga is to be continued.

This year,Ìęthe Supreme Court of Canada (“SCC”) provided some guidance concerningÌęthe principle of technological neutrality, applying it to incidental copies made and used to facilitate broadcasting.ÌęIn the landmark decision , the SCC determined that suchÌęcopies’ use was irrelevant, and that as long as CBC made copies, it had to pay royalties.ÌęTechnological neutrality is a topic that for better or for worse has been hotly debated over the last few years and it seems that the SCC’s ruling in SODRAC has set the course for continued controversy over its meaning and application.

On another technological note, the U.S. Second Circuit Court, in , ruled that Google Books was indeed legal, re-establishing the limits of fair use. Judge Pierre Leval, who had developed a back in 1990, determined that Google Books’ display of limited text was not infringing, stating that the“purpose of the copying is highly transformative.” Judge Leval also reiterated the importance of fair use as a tool designed “to stimulate activity and progress in the arts for the intellectual enrichment of the public.” It is yet unclear what effect this decision will have on fair use and the balance of interests between authors and the public interest. The Authors Guild has officially to the Supreme Court of the United States (“SCOTUS”)

PATENTS

Canada

In two separate cases involving Eli Lily and Mylan Pharmaceuticals, the Federal Court applied its reformulated test for finding promises in patents. The contrast in decisions provides guidance as to what constitutes a promise and how important this determination is to patent law. In the ,Ìęthe Federal Court emphasized that a promise must be “clear and unambiguous” if it is to be the standard to which the utility of the invention described is to be measured against. A promise will not be found in references to potential advantages and/or avoidance disadvantages resulting from use of the invention. Justice de Montigny determined that Eli Lilly’s patent for the new use of a drug to treat erectile dysfunction promised only a treatment for erectile dysfunction. There was no clear and unambiguous promise for the absence of side effects or benefits of oral treatment to the drug.

A month later in theÌę, the Federal Court invalidated the patent in question for non-utility, focusing on “ambitious and explicit statements throughout the Patent”. The patent included the statements which were considered clear promises such as “
the product can be administered with clinically insignificant side effects” and “
the contraindication once believed necessary for a product containing a PDE5 inhibitor is unnecessary
”.

The Federal Court of Appeal released a judgement in July upholding an award of more than C$180 million in damages and interest for Apotex’s infringement of Merck’s Canadian lovastatin patent. In theÌę, the Court held that availability of a non-infringing alternative (NIA) is relevant under Canadian law—however, Apotex could not and would not have used such an alternative. The Court determined that since Apotex would have had to move its manufacturing back to Canada from China in order to produce non-infringing lovastatin, a process likely to take several weeks, it would not have been able to replace any of the infringing sales at the time each sale was made. Ultimately, the Court concluded that Apotex did not meet its burden to show it could have and would have replaced the infringing sales with its NIA.

, which includes legislation aimed at improving Canada’s IP framework by protecting confidential communication between inventors and their IP agents, received Royal Assent in June 2015. C-59 includes amendments to theÌęPatent ActÌęwhich provide clients with a statutory privilege for confidential communications with their patent and trademark agents. The privilege protects against the forced disclosure of these communications during any form of litigation. C-59’s privilege Ìętake effect in June 2016. C-59 also includes changes toÌęPatent ActÌęwhich provide the Canadian Intellectual Property Office (“CIPO”) with the authority to grant extension of time limits in unforeseen circumstances and make regulations respecting the correction of obvious errors.

United States

Early in 2015, SCOTUS issued a significant decision about standard of review inÌę. The court held that when reviewing a district court’s findings of fact made in the construction of patent claims, the appellate court must apply “clear error”, not “de novo”. It will be interesting to see how this case affects Canadian appellate courts which have historically viewed claim construction as a question of law, giving no deference to factual findings of trial judges. This year, the Federal Court of Appeal released itsÌę for a prohibition application involving Bayer and Cobalt which confirmed that under current Canadian jurisprudence, correctness is the proper standard of review for claim construction. The court concluded there were no grounds to set aside the application judge's construction. The Federal Court of Appeal went further, offering SCOTUSÌęguidance on the proper standard of review for future claim construction cases. It suggested that, since courts typically read a patent through the "eyes of an expert", it should apply the more deferential standard of palpable and overriding error where claim construction is based on expert evidence.

InÌę, SCOTUS ruled that a defendant's belief that a patent is invalid is not a defence to an induced infringement claim. The court stated that infringement and validity are separate matters, and although precedent established that liability for induced infringement required knowledge, that knowledge requirement does not extend to patent validity. Justice Kennedy, writing for the majority, stated that permitting a defence of good-faith belief in invalidity “would conflate the issues of infringement and validity.” Since patents are presumed valid, such a defence would significantly weaken the force of that presumption.

InÌę, SCOTUS declared that a contract for post-patent royalties was unlawful because it continued the patent monopoly beyond the 20 year patent period. At the time of patent expiration, an unrestricted right to make and use the article passes to the public. In following theprecedent inÌęBrulotte v. ThysÌę(1964), the Court emphasized the care it has placed on declining to enforce laws and contracts that restrict free public access to expired patents as well as unpatentable inventions.

Australia

In October, the High Court of Australia inÌę, unanimously held that an isolated nucleic acid coding for a BRCA1 protein, having specific variations indicative of susceptibility to breast and ovarian cancer, was not a “patentable invention”. of Australia’sÌęPatent Act 1990Ìęrequires that an invention be “a manner of manufacture” in order to be patentable. The High Court stated that, although the invention was the result of human action, the essential element of the product was the existence of information stored within relevant gene sequences. Allowing this invention to be patentable would extend the concept of manner of manufacture, considered to be inappropriate for judicial determination. The High Court's ruling is consistent with the 2103 American ruling that isolated DNA was non-patentable subject matter.

TRADEMARKS

2015 saw a number of significant developments in trademark law, as the field was shaped by both legislative changes, and significant judicial decisions. ’s proposed IP changes add a to Canada’s Trade-marks Act similar to those proposed for the Patent Act. The proposal makes communications between clients and their trademark agents privileged if such communication is (1) between the client and the agent; (2) intended to be confidential; and (3) made for the purpose of seeking or giving advice.

In 2015 began accepting trademark applications using the system. Nice Classifications standardize how wares and services are described on trademark applications, streamlining trademark searches on an international level. The adoption of the system will hopefully help Canadian businesses select the appropriate classifications for their goods and services and more easily find potentially confusing marks owned by competitors in their industries in various jurisdictions. However, the system will not become obligatory until the are adopted. There is no known timetable for the ratification of these treaties.

2015 saw several important trademark cases decided in North America and Europe. Significant publicity surrounded the NFL’s Washington Redskins’ trademarks. Six of the Washington team’s trademarks by the United States Patent and Trademark Office (USPTO) in June, 2014 because they were deemed disparaging to Native Americans. In July 2015, in , a US District Court upheld the earlier USPTO decision, ruling that the trademarks are ineligible for federal trademark protection under the Lanham Act because they are disparaging. The case is not over however, as the football team filed an in October 2015.

A case in the United Kingdom, , came down to whether a trademark could be registered for a chocolate-covered wafer. Specifically, the case examined whether a KitKat’s shape could be said to have a distinctive character because, at the relevant date, a significant proportion of the relevant class of persons recognize the trademark and associate it with the applicant’s product. Nestle did not convince the European court that its product had a distinctive character. The case will now go back to a UK court for a final decision.

Closer to home, there were two significant cigarette-related decisions at the Canadian Federal Court level. First, the Federal Court of Appeal upheld the principle that a single colour on a product or its packaging is capable of being a trademark. In , Justice Gauthier affirmed the single colour registration of a trademark, and ruled that such a trademark is valid if its application properly depicts how the colour is to be applied to the object. Then, the Federal Court, in , ruled that Imperial Tobacco was entitled to elect an accounting of Philip Morris’ profits related to its infringement of Marlboro’s trademark in Canada. Justice de Montigny held that an accounting of profits is a remedy provided for by the Trade-Marks Act (as are damages).

In QuĂ©bec, in , the QuĂ©bec Court of Appeal upheld the lower court’s decision allowing non-French trademarks to be displayed in signs and advertising (provided no equivalent French trademark is registered). In short, non-French signage does not require an accompanying French descriptor of the business. The case arose initially due to the actions of the Office quĂ©bĂ©cois de la langue française requiring businesses to add French descriptors to their English trademarks.

Other important developments in 2015 include the Federal Court of Appeal decision in The Court held that the Trade-Marks Act requires a judge to consider fresh evidence on appeals relating to trade-mark applications. As a result, the case was returned to the Federal Court for all of the issues raised on appeal. Finally, in , the Supreme Court of British Columbia ruled that a passing-off action can only succeed against a person who uses the trade-mark of a competitor as a keyword (in internet searches) where the owner can show that it causes or is likely to cause confusion, as the “first impression” does not arise from the initial keyword.

IP OSGOODE IN 2015

Events

2015 was also a busy year for IP Osgoode. As part of our IP Osgoode Speaks series, we were fortunate to have from Queensland University of Technology, Faculty of Law in Toronto around the time of the conclusion of negotiations on the Trans-Pacific Partnership Agreement (TPP). In a very timely manner, Prof. Matthew Rimmer accepted our invitation to speak at Osgoode just three days after the negotiations were concluded. Prof. Rimmer provided a and provocative overview of some of the chapters in the highly secretive agreement that he discussed will impact the creative industries and internet freedom.

We also welcomed , National Technology Officer at Microsoft Canada, who dazzled the audience with his on some of the technology megatrends reshaping our world and how these trends have created a new frame of reference for decision makers and the impacts of this transformation from a cybersecurity perspective. This event was a co-hosted by IP Osgoode and the Jack & Mae Nathanson Centre of Transnational Human Rights, Crime and Security, with funding from the Harry Arthurs Collaborative Research Grant.

In anticipation and celebration of the Pan AM/Parapan Am Games 2015 in Toronto, Canada, the IPilogue published a series of blogs focused on some of the IP issues related to big sporting events, such as ambush marketing, broadcasting rights, and disparaging trademarks.

We continued to provide students with first-rate and relevant experiential learning opportunities in IP law and technology through IP Osgoode’s blog, the IPilogue, the Innovation Clinic, and Osgoode’s IP Intensive Program.

Coming Soon

The end of 2015 was heralded by our announcement of some of the exciting events taking place at the beginning of 2016. On February 3-5, 2016, IP Osgoode and the Copyright and the International Trade Policy Branch of the will host a hackathon. The will be a multi-day event with teams composed of members from each of the different stakeholder groups such as creators, policy makers, law and computer science students, legal professionals, representatives from archival institutions, collective societies and libraries. The hackathon will use Design Thinking, a user-centric design process pioneered by Stanford's , to tackle the issues and inefficiencies with the current orphan works licensing regime and generate new solutions for an online orphan works licensing portal that addresses the needs of different stakeholders.

Hot off the heels of the SCC’s decision in CBC v. SODRAC, Osgoode Hall Law School and the University of Toronto, Faculty of Law will co-host a symposium on Februrary 25, 2016 at Osgoode. The symposium entitled “UNPACK SODRAC: Technological Change and Copyright Tariffs after CBC v SODRAC (SCC 2015)”, will feature a keynote speech from The Honourable Mr. Marshall Rothstein, who was newly appointed as a Distinguished Visiting Professor at Osgoode. Leading scholars and practitioners in the field will unpack the SODRAC ruling and its significance for the future of copyright law in Canada.

We will continue to provide up to date coverage of IP news and events, as well as announcement of all our events activities on the IPilogue so please check out our website iposgoode.ca, subscribe to our weekly e-newsletter, the IPIGRAM, follow us on Twitter (@IPilogue), and connect with us on Facebook and LinkedIn.

Top 10 most read IPilogue articles of 2015

With contributions from Quin Gilbert-Walters,ÌęSebastian Beck-Watt, and Elena Iosef on Trademarks, Aicha Tohry and Jordan Fine on Copyright, andÌęJustin Philpott andÌęCorey McClary on Patents.

The post IP Year in Review 2015: A Look Back on the IP Stories That Will Shape 2016 appeared first on IPOsgoode.

2013 ushered in renewed changes to the intellectual property law terrain in Canada and around the world. ÌęNew treaties were formed, legislation was proposed, and cases were decided that will surely have an impact on how scholars view the field and how the law is practised.

Patents

2013 was a busy year for patent law on both the domestic and international fronts.

Following the landmark “Viagra” decision in 2012, Canadian courts continued to develop and clarify the patent law doctrine of sufficient disclosure. Ìę2013 also saw a number of contentious issues brought before the courts. In particular, these issues included the treatment of selection patents, what constitutes sufficient disclosure, and a clarification of the “promise of the patent” utility analysis. ÌęSome of these matters were explored in two important cases from the Federal Court and the Federal Court of Appeal ( and , respectively), where the courts clarified the “promise of the patent” doctrine (for an in-depth analysis of those two cases see and ). ÌęIn addition, the Federal Court of Appeal explored the controversial doctrine of sound prediction in , a rare non-pharmaceutical appellate level patent case. loosened the requirements for sufficient disclosure in sound prediction and rejected the premise that the doctrine only applied to certain areas of technology.

2013 also saw the largest ever patent infringement damage award in Canadian history.Ìę In , the court awarded Merck over $119 million in damages, plus interest, for Apotex’s infringement of Merck’s patent for the anti-cholesterol drug lovastatin. This case is perhaps a signal that patent litigation will continue to be a very important area of focus in the Canadian legal and business sectors.

In the US, the prominent legal battles involving patents owned by Apple continued to rage on, with the United States Court of Appeals for the Federal Circuit rendered by the International Trade Commission in relation to key features of the modern smartphone (i.e. multi-touch functionality and a method of determining if a touch is a “finger touch”).

In the controversial debate around the patent eligibility of isolated gene sequences, the US Supreme Court issued a in the long running Myriad Genetics case that reversed the lower court’s decision and . This decision contrasts with other countries’ approach (such as ) and sets a precedent that will undoubtedly have future .

Canadian patent laws were also the focus of international attention in 2013 due to their influence on transnational trade. In May, a from the Office of the United States Trade Representative (USTR) about Canadian patent laws. This was followed by launched by the pharmaceutical company Eli Lilly, which alleged that Canada breached NAFTA by allowing its courts to invalidate two of its patents. These incidents led to the much anticipated between Canada and the European Union in October. Although the full text of the agreement has not yet been completed and ratified, there are that the agreement is expected to have on Canadian patent law: (1) the addition of up to two years of patent restoration for innovative pharmaceuticals, and; (2) the granting of a “right of appeal” for innovative pharmaceutical companies under the Patented Medicines (Notice of Compliance) Regulations, which is a right that is currently only available for patent challenges from a generic pharmaceutical company. This agreement contains some changes to Canadian patent law, and although the ultimate impact of CETA on intellectual property laws in Canada remain to be seen, the impact will one.

Last, but certainly not least, in a rare landmark patent decision from the developing world, the a pharmaceutical patent owned by Novartis that had been widely upheld internationally. This over the status of intellectual property protection in India and other developing countries, representing a concern for the future of the pharmaceutical industry in these types of economies.

Trade-marks

The past year showcased the importance of the Internet, social media, and global branding in the field of trade-marks. Long viewed as an area of intellectual property limited by its territorial focus, developments in trade-mark law both in Canada and abroad emphasized the importance of global integration for trade-mark value and protection.

Canada continued to revise its Trade-Marks Act, with a new draft of the legislation (formerly Bill C-56, see IPilogue coverage ) fast-tracked after Parliament reconvened in late 2013. The new draft (now ) contained provisions meant to bring Canada in line with multilateral anti-counterfeit agreements, and standardized some Canadian trade-mark terminology in an attempt to harmonize the Canadian lingo with terms in use abroad (owners of marks will soon trade in “goods” instead of “wares”, although the distinctive Canadian hyphen in “trade-mark” will remain).

Canada is likely to further integrate its trade with Europe through the Comprehensive Economic and Trade Agreement (), which will require modifications to protections for Geographical Indications (GIs). The increased protection this will afford to GIs may allow for protections for marks which are confusing with marks currently registered in Canada, leading to for Canadian owners.

In Europe, the European Union stopped plain packaging legislation similar to the anti-tobacco regime in Australia, claiming the regulation of packaging fell outside the scope of the Tobacco Products Directive (TPD). However, health concerns continued to drive revisions to packaging, meaning that the plain packaging debate is likely .

In the broader world of marketing and brand management, many Canadian brands went through important changes, with Research In Motion to the more recognizable brand of Blackberry, in order to “consolidate to a single brand identity.” The Internet and social media sites like Twitter continued to influence public perception of brands, though some firms were than others at making use of new media.

Copyright

November of 2013 marked the one-year anniversary of the amendments to the Copyright Act. The passing of the Copyright Modernization Act created significant debate among the many copyright stakeholders, including academics, lawyers, and students who, in addition to beginning in-depth analysis of the new legislation, continued to marvel over the significance of the copyright pentalogy.

2013 was also a year when American copyright law aligned with Canadian copyright law in a US case where, Leonard, an American Photographer, was successful in his copyright . ÌęThe US District Court found that the licence agreement for use of Leonard’s photographs was limited to printed publications, and did not implicitly grant Stemtech the right to use the works on their website. This decision was consistent with the earlier Supreme Court of Canada’s decision in .

Perhaps the most troubling case for visual artists in 2013 was the “resolution” of theÌę, which questioned whether a property owner’s interests could prevent an artist from invoking their moral rights. In the case of 5pointz, that meant white washing the walls of a building complex that featured over 20 years of accumulated graffiti in advance of a planned demolition of the building to make way for multi-million dollar residential development. This case illustrated the limited role of moral rights in the US. By refusing to grant an injunction against the demolition of the 5pointz complex, the court gave a firm signal of their unwillingness to accept the argument that the destruction constituted damage to an artist’s reputation.

Ongoing issues concerned the copyright challenges presented by the evolving digital sphere. Here the presentation at Osgoode by , the President of Random House Publishing, highlighted some concerns for the future of the printed book in the digital world of copyright.

Moreover, in defending claims of copyright infringement with respect to its Google Library Project will illuminate the future of the printed page and its transition into the digital world. In the District Court for the Southern District of New 91ŃÇÉ«, Google adopted a fair-use defence, and obtained a favourable decision which found that the scanning and making available of snippets of over 20 million books to users without the authors’ authorization was not copyright infringement.

Even without precedential value in the Canadian court system, this case may provide groups with stronger arguments for future fair dealing claims associated with education and/or research attempting to align these with . Also, Google’s actions are sure to affect Canadian authors in some way since some of the scanned works are likely to have Canadian authors attached to them.

IP Osgoode in 2013

While the IP landscape bubbled with activity, so did IP Osgoode. Ìę2013 marked IP Osgoode’s fifth anniversary. During this milestone year, with the help of IP Osgoode staff and an army of eager students, the , the , and the at Osgoode Hall Law School continued with great success due in part to a number of exciting new collaborations. The IP Intensive program offered three new placements, The Canadian Broadcasting Corporation, Apotex Inc., and Cobalt Pharmaceuticals Company. We look forward to the fall of 2014, where we hope to forge new partnerships and add to the diverse array of placement organizations for the IP Intensive program. Now in its third year of operation, IP Osgoode’s Innovation Clinic in enjoying great success as it continues to expand its pro bono services and clientele base. Through IP Osgoode’s recent partnership with 91ŃÇɫ’s , we hope to further extend our networks within 91ŃÇÉ« and the Greater Toronto Area.

As part of our IP Osgoode Speaker Series, we were pleased to feature the Honourable Justice Marshall Rothstein of the Supreme Court of Canada to discuss the and Douglas Pepper, the President of Random House Publishing, to discuss the . IP Osgoode also co-sponsored a visit from as a Genest Global Faculty and invited Professor Nabhan to teach a seminar course entitled “International and Comparative Copyright Law” for the fall term. ÌęIP Osgoode also spearheaded the creation of a new seminar course called “Commercializing IP” and welcomed Ed Fan and Loreto Grimaldi as course instructors for the winter 2014 term. In keeping with IP Osgoode’s mission to increase cross-disciplinary collaborations with faculties and organizations across 91ŃÇÉ«, Canada, and around the world, this new seminar course is open to students from both Osgoode and the at 91ŃÇÉ«.

IP Osgoode hosted two ground-breaking events in 2013. ÌęÌęThe first conference, entitled “”, was co-hosted with the . This full day conference focused on the various roles of student researchers in commercializing intellectual property and the policies adopted by various organizations and institutions with respect to intellectual property ownership and knowledge mobilization. ÌęOntario Assistant Deputy Minister Bill Mantel and Sylvain Laporte, CIPO’s CEO, provided the keynote speeches.

IP Osgoode’s second notable event in 2013 was a full-day symposium entitled “”, which featured a number of esteemed speakers and explored the ’s novel UGC provision.

As 2014 unfolds, IP Osgoode aims to continue to drive a leadership role in the intellectual property law debates. We hope to hear from you and that will join us in this journey.

Top 10 most read IPilogue articles of 2013

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With contributions from on Patents, on Trade-marks, and on Copyright.

The post 2013 IP Year in Review: To Go Where No One Has Gone Before appeared first on IPOsgoode.