Summary – Intellectual & Industrial Property, Prof. Gold, Fall 2014
Introduction – Debate on the Importance and Impact of IP ........................................................................................ 4
A. Creativity, Innovation and Theory ............................................................................................................................... 4
B. Social Context .............................................................................................................................................................. 6
i) Creativity, Innovation and Geography ..................................................................................................................... 6
ii) Laws and Norms ...................................................................................................................................................... 7
iii) Defining the Right and Extracting Value ................................................................................................................ 8
C. Comparative Law, Legal Transplants and History ..................................................................................................... 10
i) Comparative Law .................................................................................................................................................... 10
ii) Legal Transplants .................................................................................................................................................. 11
iii) History .................................................................................................................................................................. 11
II. Trade Secrets ................................................................................................................................................................. 12
III. Patents .......................................................................................................................................................................... 12
A. Patentable Subject Matter ........................................................................................................................................... 13
i) Product of Nature ................................................................................................................................................... 13
ii) Law of Nature ........................................................................................................................................................ 13
iii) Abstract Idea ......................................................................................................................................................... 13
B. Utility.......................................................................................................................................................................... 14
C. Novelty ....................................................................................................................................................................... 15
i) Obviousness ............................................................................................................................................................ 15
D. Construction ............................................................................................................................................................. 17
E. Infringement .............................................................................................................................................................. 17
F. Exceptions ................................................................................................................................................................... 18
i) Research ................................................................................................................................................................. 18
ii) Statutory Exemption - Bolar ................................................................................................................................. 19
iii) Linkage Regulations ............................................................................................................................................ 19
IV. Copyright ..................................................................................................................................................................... 20
A. Attracting Copyright .................................................................................................................................................. 20
i) Idea vs Expression .................................................................................................................................................. 20
ii) Fixation .................................................................................................................................................................. 20
iii) Originality............................................................................................................................................................. 21
iv) Predictability ......................................................................................................................................................... 21
B. Infringement ............................................................................................................................................................... 21
i) Reproduction ........................................................................................................................................................... 21
ii) Communication to Public ...................................................................................................................................... 22
iii) Substantial Part .................................................................................................................................................... 22
iv) Authorization ......................................................................................................................................................... 22
C. Other ........................................................................................................................................................................... 23
i) Joint Authorship ...................................................................................................................................................... 23
ii) Assignment and Licenses ....................................................................................................................................... 23
D. Defences ..................................................................................................................................................................... 23
i) Common Carrier ..................................................................................................................................................... 23
ii) Fair Dealing .......................................................................................................................................................... 24
E. Moral Rights ............................................................................................................................................................... 25
V. Passing-Off and Trade-Marks ..................................................................................................................................... 25
A. Passing-Off ................................................................................................................................................................. 26
B. Eligible Marks ............................................................................................................................................................ 26
C. Use .............................................................................................................................................................................. 27
D. Confusion and Dilution .............................................................................................................................................. 28
VI. Protecting Place ........................................................................................................................................................... 30
A. Geographical Indications ............................................................................................................................................ 30
B. Traditional Knowledge ............................................................................................................................................... 31
I.
Area of Law
Trade Secrets
Patents
Patentable Subject-Matter
Utility
Novelty
Obviousness
Construction
Infringement
Exceptions
Patent Procedure
Copyright
Attracting Copyright
Infringement
Defences
Cases
Statute
Merck Frost
Myriad (SCOTUS) (product of nature),
Harvard College (SCC); Alice Corp
(SCOTUS) (abstract idea); Amazon
(FCA) (open-door approach)
Brenner (SCOTUS) (research); In re
Fisher (FC) (research); Apotex v
Wellcome (SCC) (sound prediction); Bell
Helicopter (FCA) (disclosure + sound
prediction); Sanofi v Apotex (FCA)
(disclosure + “unexpected benefit);
Synthon (mistake in prior patent)
KSR (SCOTUS) (obvious to try; rejects
TSM); BMS (US Fed CA) (obvious to try
– pharma); Apotex v Sanofi (SCC –
Plavix I) (obvious to try = self-evident);
Sanofi v Apotex (Plavix II) (FCA) (same)
Whirlpool (SCC) (purposive
construction); Kirin-Amgen (UKHL)
(purposive); Warner-Jenkinson
(SCOTUS) (equivalents); See also
Amazon
Monsanto (SCC) (“use”); Limelight
(SCOTUS) (use/inducement)
Madey v Duke (US Fed CA) (narrow research); Apotex v Merck (FCA) (broad
– research, bolar); Merck v Integra
(SCOTUS) (bolar – necessity/FDA
application);
Linkage Regulations;
CCH (SCC) (originality = skill &
judgment); Baker v Selden (UK) (idea v
expression); Nichols v Universal (USA)
(idea v expression); FWS Joint Sports
(FC) (predictability)
Théberge (SCC) (fixation/reproduction);
Rogers v SOCAN (SCC) (communication
to public); CCH (SCC)
(authorization/secondary infringement)
contra Morehouse (AUS); Substantial
part: Nichols (USA); Robinson v Cinar
(SCC); Euro-Excellence (SCC)
SOCAN (SCC) (common carrier extends
to “caches”); CCH (SCC) (fair
dealing); Alberta v Access Copyright
(SCC) (fair dealing – private study);
SOCAN v Bell (SCC) (music “previews”
Patent Act, s 2 “invention”; 27 (components of
application); 27(8) (no patent for scientific
principle/abstract theorem)
Patent Act, s 2 “invention”;
See also Gold & Shortt on Promise of the Patent
Patent Act, s 28.3 (obviousness), 48.1(1) (reexamination – filing prior art)
Patent Act, ss 42 (exclusive rights); 46 (fees to
maintain patent); 53(1) (invalid if allegation is
untrue or deliberately misleading); 54 (jurisdiction
of courts); 55 (liability for infringement); 60(1)
(impeachment)
55.2(6) (research exception preserved); 55.2(1)
(bolar)
Patent Act, s 48.1(1) (request for re-examination)
Copyright Act, s 2 “architectural work”, “artistic
work”, “choreographic work”, “cinematographic
work”, “collective work”, “compilation”,
“computer program”, “dramatic work”, “literary
work”, “musical work”, “work”
Copyright Act, ss 3(1) (scope of copyright); 6-11.1
(term); 13 (ownership/assignment/license); 15(1)15(1.1) (performer’s copyright), 18(1) (sound
recording rights); 21(1) (broadcaster’s rights); 23
(copyright term – performance); 24 (copyright
ownership – performance/recording/broadcast);
3(1.1) (communication to public – fixation); 27
(infringement generally); 27.1 (parallel importation
of books); 34 (infringement proceedings); 35
(liability for infringement); 38 (seizure); 38.1
(statutory damages); 39 (injunction only where def
unaware); 41-41.1 (DRMs)
Copyright Act, s 31.1 (common carrier); 29 (fair
dealing – general); 29.1 (criticism or review); 29.2
(news); 29.21 (non-commercial UGC –
“remixing”); 29.22 (reproduction for private
purposes); 29.23 (time-shifting); 29.24 (backup
are fair dealing)
Other
Trademarks
Passing Off
Eligible Marks
Neugebauer (FC) (joint authorship –
contribution not intention); Robertson v
Thomson (SCC) (licenses);
Euroexcellence (SCC) (exclusive license
= property); Snow v Eaton Centre (ON)
(moral rights); Théberge (SCC) (moral
rights)
Ciba-Geigy (SCC) (elements; eyes of
end-user); Reddaway v Banham (UK)
(descriptive term can acquire secondary
meaning); Kirkbi (SCC) (elements)
Kirkbi (functionality requirement); Ass’n
of Architects (ON) (official marks); JTI
MacDonald (FC) (distinguishing guise)
Use
Homeaway.com; Syntex v Apotex
Confusion/Dilution
Veuve Clicquot (confusion); Masterpiece
(confusion); Starbucks v Wolfe (USA)
(dilution)
Other
GIs
TK
copies); 29.3 (requirement of no motive of gain);
29.4-29.7 (education); 30 (collections for schools);
30.02 (digital reproduction by schools); 30.04 (use
of works available on internet by schools); 30.130.2 (libraries, archives, museums); 30.3
(photocopiers); 30.6-30.63 (computer programs);
30.7 (incidental inclusion); 30.71 (temporary
reproduction for tech purposes); 30.8 (ephemeral
recordings); 32 (disabilities); 80 (copying for
private use)
See also Ariel Katz on fair dealing.
Copyright Act, s 2.7 (exclusive license); 13(4)
(assignment & license possible); 13(6) (assignment
of right of action); 13(7) (exclusive license); 14
(limited posthumous term for assignment of
copyright other than by will); 16
(assignment/license of performer’s rights); 17
(authorizing embodiment of performance in
cinematographic work); 25 (assignment/licensing
of performance, recording, broadcast); 14.1-14.2
(moral rights); 17.1-17.2 (performer’s moral
rights); 28.1-28.2 (moral rights infringement)
Trade-marks Act, s 7(b)
Trade-marks Act, s 2 (definitions); 12 (ineligible
marks); 13 (distinguishing guise); 23(1)
(certification mark); 18(1) (reasons for invalidity of
registration);
Trade-Mark Act, s 4 (def: use); 18(2) (not invalid
simply b/c evidence of distinctiveness not
presented, if in use); 45(3) (effect of non-use) 19
(exclusive right to use)
Trade-Mark Act, s 6(2) (confusion); 19 (exclusive
right to use canada-wide), 20(1) (confusion w/
registered mark), 22(1) (dilution – depreciating
value of goodwill)
Trade-marks Act, ss 2, 7(d) (GIs ineligible for
registration), 23 (certification mark)
Other: Lisbon Agreement for the Protection of
Appellations of Origin and their International
Registration, arts 3, 5, 7
OAU, Declaration and Draft Model Law by the
OAU/STRC Task Force on Community Rights and
Access to Biological Resources
Nagoya Protocol, arts 5-7, 12, 15-16
Int’l Treaty on Plant Genetic Resources for Food
and Agriculture, arts 3, 9-13
I.
Introduction – Debate on the Importance and Impact of IP
Question 1: Patents result in the death of people in the developing world due to the inability to access existing medicines.
PROP
OPP
- in some poorer countries, they lack capacity to
- Pharmaceuticals cost a lot b/c of R&D. Many drugs
produce pharmaceuticals
have failed. Need new generations of drugs. How else to
promote innovation? Public funding not currently adequate.
- are reliant on imports from countries that
produce
- Other factors: lack of infrastructure (refrigeration at the
border), corruption.
- still only reaching a subset of those who need
drugs
- Pharmaceutical companies have tried to reduce costs.
Eg. GSK and Merck discounted their HPV vaccines.
- prices being charged are too high. Lower rates
by companies are never as low as true competition.
- US program – PEPFOR – emergency program for
getting antiretrovirals to ppl in Africa at almost no cost.
- Problems: combinations of drugs needed for
HIV are made by different companies – negotiations
- TRIPS – Countries are allowed to use compulsory
take time.
licensing – finding a licensee who has to pay patent holder,
but usually at a reduced price. Same for parallel imports.
- Newer HIV/AIDS drugs still not accessible.
- Trying to protect inventors but also reduce prices
- Drug companies don’t develop for poor
countries b/c they can’t afford them.
Susan K. Sell, “TRIPS and the Access to Medicines Campaign” (2001) 20 Wis Int’l LJ 481
- TRIPS – Agreement on Trade Related Aspects of Intellectual Property Rights – extended property rights globally,
reduced policy-making autonomy in IP
- Controversial – benefitted large, powerful corporations
- Private sector IP activists initially acted separately from each other and gov’t; later formed alliances around trade
issue and sought gov’t help
- US used coercive economic diplomacy to pressure other countries into adopting stricter IP policies
- Private sector framed IP as “property rights” rather than “grants of privilege” or “monopolies”
- USA has been most aggressive in seeking enforcement of TRIPS, acceleration of deadlines
- Social costs only became apparent after adoption – then it created new agents to oppose it
- These groups are limiting the type of governance/expansion that TRIPS’ architects had in mind
- Access to medicines campaign started in USA w/ Nader et al, gathered the NGO community, galvanized by US
trade pressure on SA and Thailand in face of HIV/AIDS.
- Companies responded by initiatives to slash AIDS prices for select African countries
- Ability of generic manufacturers to sell the drugs for $1/day increased political pressure
- Activists have succeeded in linking public health issues to trade and IP; US has not fulfilled promises/expectations
when developing countries agreed to TRIPS.
- Activists need to adopt some of the tactics of the private sector advocates.
A. Creativity, Innovation and Theory
D.B. Resnik, “A Pluralistic Account of Intellectual Property”
- Summarizes major theoretical approaches to IP
- Defines property: three-place relationship btwn thing, person and society
- Property systems reflect economy, society’s needs
- IP laws allow exclusive control of things that are non-exclusive
- Theoretical approaches can help explain the optimal balance of public and private control of information
- Considers major objections to each, shortcomings eg. privacy approach can’t account for protecting IP in the
public sphere; utilitarianism doesn’t account for general fairness concerns
- Advocates for a pluralistic approach – recognizing that values conflict and are incommensurate, should prioritize
values which are appropriate for circumstances/goals of a particular IP regime eg. utility for patents, but not for
privacy issues. IP is highly diverse
Theory
Characteristics
Labour /
- Natural rights are basis of legal rights – only justification for restricting rights is natural rights
Libertarian
of others, not social goals
Theory (Locke)
- We acquire property by mixing our labour with the object – “desert”. But must leave enough for
others to create.
- Unclear if he would have applied this to intellectual labour
- Problem – degree of protection doesn’t correspond to amount of labour (copyright, patent
“novelty” requirement)
-
Privacy
-
Personhood
(Kant/Hegel) 
Marx
-
Utilitarianism
(Bentham, Mill)
Liberal justice
theory
(Nussbaum,
Rawls)
-
Some say intellectual labour is “pure labour”, others say it necessarily builds on what came
before
Modern view is libertarianism – Nozick – should be protected if you created something no one
else would have created, but can’t stop someone else from independently creating same thing.
Actions that promote the greatest happiness are moral (broad sense of life satisfaction)
Problem: how to calculate. Do we substitute ideology for evidence?
Hard to justify individual rights or trade secrets/confidential information under this model
In US, tends to take economic/entrepreneurial perspective
Not generally used to justify property right (b/c a lot of IP is public); problem justifying
corporate rights
But IP can protect privacy – trade secret, confidential information
Creation with our bodies is expression of our will. Fundamental to self-responsibility.
Property enables freedom
Underlies European IP law – that IP must protect the link btwn creator and object, not there to
be abused.
Works well for creations highly linked to the self eg. art; less well for collaborative efforts, or
explaining reasons for granting/denying IP other than self-expression (eg. originality)
Rawls: adopt the rule that helps the least well-off person in society – property is justifiable, but
can be limited if it does not serve its goals
Concern about inequalities of access
Predominant in CML countries; but is a compromise position that may not satisfy many
Also Marxist theory – that all property is immoral
Question 3: IP laws are more likely to hinder than facilitate the development of new technologies such as web-based
technologies, synthetic biology or 3D printing.
PROP
OPP
- Technologies are early stage – period of high growth, combining
- Patents are means of sharing cuttingideas. Negotiating licenses takes time. IP law is for mature industries
edge information
where innovation is incremental, the players all know who each other
- Most advancements rely on prior
are and have established relationships.
knowledge
- In 1970s, software wasn’t protected at all. In 1980s, was only
- Some people are inhibited, but not to
protected by copyright. Only later by patents. Studies show there was
great extent
great leapfrogging in 70s and 80s. It was only when the industry
- If ppl could not protect their
stabilized, became a paradigm that could be built on, that IP laws
innovation, innovation would break
might facilitate innovation.
down.
- Most patents don’t really describe in a useful way
- IP law can help developing countries
- Patent trolls!
by disseminating information
- Alternative to patents  copyright
- Problem is bad people, not patents
Michael Weinberg, What’s the Deal with Copyright and 3D Printing? (Institute for Public Knowledge, 2013), pp. 5-19
- Many ppl/designers assume that they can prevent ppl from printing their designs through copyright
- In fact, they will often not have copyright in the object at all – if it is a useful object (no artistic elements), it will
be patentable, not copyrightable
- Most industrial design is not subject to copyright
- They MAY have copyright in artistic elements of an object (eg. a carving or image), but it must be “severable”
from the useful purpose of the object
- Designers may have copyright in the file itself if a creative process was involved in making it (rather than merely
scanning an object) but it is not infringement to use that to make a 3D printout if there is no copyright in the object
Ass’n for Mol. Path v Myriad Genetics, Inc (2013) 569 US XXX (SCOTUS)
FACTS: MG isolated two genes associated with increased risk for breast cancer, BRCA1 and BRCA2, using well-known
scientific methods (so no method patent). Myriad applied for and obtained patents on these isolated sections of DNA, as
well as on cDNA of the genes (an artificial molecule consisting of only portions of DNA that code for amino acids).
Plaintiffs are challenging the patent.
ISSUE: Are the isolated nucleotide sequences patentable? (NO) Is the cDNA patentable? (YES)
ANALYSIS: Despite the work involved in discovering the genes, the isolated DNA sequences are not patentable. They
occur naturally in nature. Discusses need for balancing incentivizing innovation w/ blocking flow of information which
might lead to invention – law of nature exception protects the “basic tools” of science. However, the cDNA is patentable.
Though it duplicates what is found in nature, it is not itself naturally occurring.
COMMENTS: This was end-product of a worldwide collaboration – knowledge would certainly have existed w/o patent.
Was a departure from previous decisions on patentable subject matter, but may be an attempt to restrain patent law.\
- IP law not just about the work – there’s also a requirement of novelty/innovation not met b/c was in nature
- Would companies respond by trying to keep genetic information secret?  but would need to convince doctors
that information was reliable, and a lot of the basic research is done by publicly funded scientists.
CCH Canadian Ltd. v LSUC, [2004] 1 SCR 339
FACTS: The LSUC had a large library, with photocopiers. It also ran a photocopy service where it would mail copies of
cases, pages in books, etc. to lawyers. Legal publishers sued, claimed it infringed their copyright in the headnotes.
ISSUE: Which works are sufficiently “original” to be copyrightable?
ANALYSIS: Test for originality – more than a mere copy – must involve exercise of skill and judgment – but need not be a
creative work. The “sweat of the brow” approach, which permits copyright so long as there is some work involved in
producing a work, inappropriately extends copyright to facts and ideas. There is no copyright in a judicial decision, as the
publisher has only formatted it and added information such as date, names of parties. There is copyright in the headnote,
because the person who wrote it exercised skill and judgment.
Authorization: Great Library didn’t authorize, had no actual knowledge of infringement (contra Australian crt in
Morehouse). This pushes the onus too far onto society, infringes user’s rights.
CONCLUSION: The Law Society does not infringe copyright when a single copy of a reported decision, case summary,
statute, regulation or limited selection of text from a treatise is made by the Great Library in accordance with its access
policy.
COMMENT: There is an access to justice argument here – need for rural/remote lawyers to access materials.
Debate about what level of originality is required in copyright – is it “creative spark”? (USA).
Kirkbi AG v Ritvik Holdings Inc, [2005] 3 SCR 302
FACTS: K’s patents on LEGO bricks expired. R began manufacturing and selling similar bricks using the design. K
claimed it had a common-law trademark on the geometrical arrangement of studs on the top of a LEGO brick, sued R for
“passing-off”
ISSUE: Does K have a valid trademark? (NO)
ANALYSIS: Discusses “functionality” doctrine in trademark law. If a mark is a component of the product’s function,
rather than merely serving to show its distinctiveness, it is not a valid trademark. Do not want to extend trademark
protection to the product itself – would give a monopoly in the product. Functionality doctrine also extends to unregistered
marks, which have same criteria as registered marks.
Components of Passing Off: 1. Goodwill/reputation in respect of the distinctiveness of the product – cannot be solely
attached to the technique or processes used to create the product; 2. Misrepresentation creating confusion; 3. Damages
- K hasn’t met first criterion b/c alleged distinctiveness is wrt processes/techniques which are now common
COMMENTS: K had initially applied to register a trademark but was denied it. Part of broad trend at SCC of preventing
ppl from asserting one IP right in guise of another. Eg. Théberge (moral rights in guise of copyright – not allowed);
EuroExcellence (trademark in guise of copyright).
B. Social Context
i)
-
-
Creativity, Innovation and Geography
Some places are understood as being more “creative” in a variety of ways
Historically: Alexandria; Florence; Venice
Modern: Silicon Valley; Vancouver; Montreal
Why?
o Density of creative class
o Educational institutions
o Favourable laws/legal framework that allows risk-taking
o Other: bilingualism, cultural diversity, political instability, connections
Some of these can be influenced by gov’t more than others
o Top-down model vs bottom-up model
Effect of intermediaries: eg. characteristics of IT industry (secrecy vs sharing)
IP plays a role in “codification” of knowledge – but doesn’t cover everything. Some kinds of knowledge are hard
to acquire (eg. law), so don’t need protection. IP incentivizes companies in “upper ground” to go to underground
and middle ground to codify knowledge. But doesn’t explain all the other conditions of creativity.
IP doesn’t tell us about spontaneous structures created out of pure desire to create.
Does the Internet lead to need to harmonize IP? Or maintain its diversity?
Anupam Chander, “How Law Made Silicon Valley” (forthcoming) Emory Law J
- The legal environment played a key role in enabling the rise of American internet companies
- Major legal innovations: limited intermediary liability for tort/statutory/copyright violations; changes in copyright
law; permissive privacy law
- Eg. copyright regime based on notice-and-takedown, rather than on requiring companies to police what their users
post online; fair use exceptions; creation of “safe harbors”
- Not result of a conscious policy agenda, but rather both Congress and courts favouring norms of free speech,
innovation, and correcting each others’ mistakes.
- Contrast to European and Asian environment, which have imposed more intermediary liability and have limited or
no “fair use” exceptions. This has limited the ability of companies to innovate there.
Kevin Stolarick & Richard Florida, “Creativity, Connections and Innovation” (2006) pp. 1799-1815
- Study of how density of creative industry jobs fuels innovation in Montreal
- Focuses more on presence of a creative class (people, jobs) and less on institutions, features of the city
Patrick Cohendet, David Grandadam & Laurent Simon, “The Anatomy of the Creative City” (2010) 17 Industry
and Innovation 91
- Looks at ethnography of creative organizations and how they interact with the city
- Finds creativity depends on a rich middleground, between the upperground of large, creative firms and institutions
and the underground of individual, independent artists
- Linkages in the form of performance spaces, places to interact, etc.
- Each level supports the other – underground may provide employees and ideas to upper ground, while
upperground may finance showcases, eg.
ii) Laws and Norms
Law’s impact on the ground varies
The rule may be largely irrelevant eg. Australia – no one enforces gene patents
Law is just a form of norm that happens to be enforced or not enforced by state
Examples of norms and IP: recording industry tried to change norms around music downloading. That didn’t work,
but fear and costs of getting caught did, combined with changes in industry which allowed sales of individual
songs. Neither change required changes in IP law.
Robert C. Ellickson, “Of Coase and Cattle: Dispute Resolution Among Neighbors in Shasta County” (1986) 38 Stan.
L. Rev. 623, pages 624-629, 640- 643, 657-687
- Law and society analysis of cattlemen’s disputes in Shasta County
- Refutes aspects of the Coase theorem: formal law is irrelevant to the disputes; most disputes are resolved according
to informal norms without resort to litigation. Most ppl are ignorant of the law.
- Enabled by emphasis on neighborliness, long-term relations. Was most effective between those who were most
“socialized” into the community; those who were not were more likely to ignore the norms or to invoke formal law
Disputes might be resolved by self-help (gossip, shooting animals), or appeal to public authority but rarely through
monetary compensation.
- HOWEVER a threat to change the rules did have an impact on behaviour – was a common negotiating tactic
- Emphasis on “balancing accounts” in the long-run – cattlemen expected to both give and get
- Transaction costs for formal resolution were high.
Neil MacCormick, “Norms, Institutions, and Institutional Facts” (1998) 17 Law and Philosophy 301, pages 303-316
- Discussion of “norms” vs “rules”, wrt example of queues
- Norms are informal, obeyed typically without reference to any authority; typically implicit, unstated
- Norms may vary from place to place, or from person to person, but they sufficiently dictate what “ought” to be
done in a situation.
- Some people will regularly transgress a norm, and most people will transgress from time to time.
- Norms become rules when there is a person in authority to apply them
- In these cases, the rules may become explicit – and they tend to become more formalized
- There can also be implicit rules – those that are not stated but can be derived from the authority’s decisions
- Norms and creative communities – sharing explicit knowledge; sharing by doing, acquiring tacit knowledge.
Giada Di Stefano, Andrew A. King & Gianmario Verona, “Kitchen Confidential? Norms for the use of Transferred
Knowledge in Gourmet Cuisine” (2013) Strat. Mgmnt. J., pages 1-7, 21-22.
- Study of role of norms in knowledge transfer among gourmet chefs
- Traditional hypothesis was that norms encouraging knowledge transfer by creator facilitate sharing
- S, K & V argue that norms governing recipient’s use of knowledge tend to be determinative. The norms are
situated in context, and conformance assessment mediates – considers factors such as reputation of the recipient,
whether they are in competition with the transferor, and whether they are highly visible
-
- Norms are not adequate substitute for regimes such as IP
COMMENTS:
- Why share knowledge? (factors)
o Expect other person will follow norms
o Visibility in small community
o Degree of competition with other person
o Reputation – what do they risk losing?
o Long-term, interdependent relationships
o You want other ppl to share w/ you
o Norm of sharing
o Recognition
o To be more effective
- Law may encourage or discourage sharing
o Eg. patent law incentivizes sharing as little as possible
o CA reluctant to enforce non-compete clauses
-
iii) Defining the Right and Extracting Value
Why do we protect certain intellectual works?
History: for 18th and first half of 19th century, it was the quantity of mental labour that mattered.
o In 19th century, that became the quality of mental labour – about protecting the uniqueness, the human
input that changes the object.
These reasons dictate what can be protected by IP.
Eg. gene patents – in AU, they said it can be patented so long as it is different from nature. In USA they found that
you cannot protect a product of nature since it is pre-existing.
AU thinks of the claim as a physical object, while in USA it is the info/knowledge
How do we understand the non-physical aspect?
(1) Creativity at the Heart of IP?
Brad Sherman & Lionel Bently, Making of Modern Intellectual Property Law: The British Experience, 1760-1911
(Cambridge: Cambridge University Press; 1999), chapter 7
- Development of categories of IP is historically contingent, dependent on subject matter to be protected
- Early on, perpetual copyright proponents sought to distinguish it from temporary patents on basis of amount of
mental labour. Literary works were “pure”, required substantial mental labour. Most things – “utensils” – were
impure, and no intangible property right was justified. In between were machines. B/C their material components
formed a significant part of value, and less mental labour was involved, they were seen as a lesser category. Were
not as easy to copy.
- Arguments shifted in late 19th century w/ debate about abolishing patents, copyright.
- Inventions no longer seen as “created” by individual inventor. Were rather “discovered”. As result, a patent
granted monopoly on something which was out there. Justification was that they were the first to communicate it.
Invention as “discovered” vs copyright as “created”.
- This impacted scope of infringement. B/C books and art were individualized, infringement required actual
copying. Was less clear for patents – and could infringe unintentionally, b/c it was possible to independently
develop the same thing.
- Creative labour as “common denominator” uniting IP law
Michel Vivant, “Autre Regard…” (2005) 15 Propriétés intellectuelles 225
- for droit d’auteur to retain its legitimacy, need to avoid characterizing it as useless objects b/c that implies
excluding protection of any “technical” work
- jurist must examine the object as it is and not how he imagines it, distinguish what is from what should be
- law must be allowed to evolve with the object
Euro-Excellence Inc. v Kraft Canada Inc. [2007] 3 S.C.R. 20, paras 4-13, 58-64, 72-75, 80-83, 85-95, 99-105
FACTS: KCI, subsidiary of manufacturer, was exclusive distributor of Cote d’Or and Toblerone chocolate bars in Canada.
EE imported genuine chocolate bars it legally bought in Europe. KCI’s parent company registered the logos as copyrighted
and sought to stop EE from importing bars on grounds of copyright infringement. KCI had a license to use the logo.
ISSUE: Was this secondary infringement? (NO)
ANALYSIS:
Rothstein (concurring):
- Copyright attaches to anything involving exercise of “skill and judgment”  can include logos, labels. This is
made explicit in Copyright Act
- Therefore, copyright and trademark law can overlap.
Bastarache (majority):
- Purposive interpretation of Act; finds that exclusive license gives rights even against the copyright holder
- Copyright extends only to legitimate interests of the creator
- Each type of IP has its “normative” core
o Purpose of trademark law is to protect commercial interests
o Copyright protects economic gains from an exercise of skill and judgment
o If trademark does not protect the commercial interest at issue, copyright law should not be extended
beyond its “natural sphere” to do so
- Copyright is meant to protect the sale of the copyrighted work itself; where it is incidental to a consumer good, the
appropriate protection is trademark law. Test is what is the consumer buying?
- The logos on the chocolate bar are incidental. The consumer is buying the chocolate. To the extent that they
identify the product’s origins, have recognition and goodwill, those are concerns for trademark.
COMMENTS: Issue about scope of rights that an exclusive licensee has – concludes that exclusive licensee is effectively
the copyright holder and can sue.
(2) Extracting Value
Kevin G. Rivette & David Kline, “Discovering New Value in Intellectual Property” (2000) 78 Harv. Bus. Rev. 54
- Executives should pay attention to patents as a business asset and strategic tool
- Patents can be used not only to protect products but also to protect business methods, to reduce costs by using
them as a bargaining chip in supply deals with other companies, to enhance competitiveness, to corner the market.
- Eg. can create a patent “cluster” around a product to prevent copying, or prevent a new product from entering the
market by patenting necessary components
- Companies that undertake R&D or M&A w/o doing patent due diligence are taking risks; may even be breach of
fiduciary duty
- Examples of companies acquiring other companies for patents to enhance their competitive position
E. Richard Gold & Julia Carbone, “Myriad Genetics: In the eye of a policy storm” (2010) 12:4 Genetics in Medicine
- Since late 80s, storm about wisdom, ethics and economics of human gene patents brewing
- Two concerns: 1. Commercial rights over components of human body. 2. Stifling research.
- Even if patent provides monopoly, there are laws, business practices and institutions affect how they exercise that
right
- So Myriad did not sue researchers both b/c of business practice and b/c in Myriad’s interests.
- Conflict w/ scientific community, who were concerned about researchers’ ability to study genes, develop better
tests. Myriad did not communicate its policies wrt researchers very well.
- Conflict w/ medical community, b/c of direct-to-consumer marketing.
- Conflict w/ patient groups about privacy of genetic information and genetic discrimination
- Policy makers in USA were concerned, but bills to restrict did not pass
- In Canada, fragmented jurisdiction led to fragmented response + issues of privatization and public health care
o Prov gov’ts concerned about Myriad’s commercialization strategy, losing control over testing
o Concern that Myriad’s methodology was not most cost-effective way of diagnosing (similar objections in
EU)
o Response was to ignore the patents, esp. when Myriad played hardball and threatened infringement
lawsuits
- In EU, 1998 Directive had required genes be patentable, but some countries eg. France had strong moral
opposition to this, introduced compulsory licensing provisions and other rules frustrating Myriad’s business model.
Fragmented jurisdiction – patents at both EU and nat’l level; health at nat’l level
- In Australia, similar split jurisdiction; forced partnership due to patent infringement lawsuit – local partner chose
not to enforce patents b/c of its own position in market for other tests
- Lack of institutional mechanisms to gather necessary knowledge about effects of patents on biotechnological
innovation – need for expert evidence
- Politics and ideology played important role, interest groups had an impact
- In EU, didn’t want to submit to will of US company, debate about role of market, biotech competition, resentment
of EU researchers being excluded.
(3) Open Innovation
Yochai Benkler, “Coase’s Penguin, or, Linux and The Nature of the Firm” (2002) 112 Yale LJ 369, 371-384, 399-407,
423-426, 434-446
-
Describes a third model of production, distinct from markets and firms. For some purposes, it can be superior at
organizing creative resources.
- Factors affecting success of peer production: 1. Modularity – project must be divisible into smaller parts; 2.
Granularity – those parts must be small enough (and variable in size) for ppl w/ low motivation to devote small
amounts of time; 3. Must be an effective, low-cost way of integrating components esp. to defend from incompetent
or malicious contributions (role of defending against appropriation/copyright, eg)
- Some similarities to academia, but this is non-economic
- Peer production model exists when it is more efficient than market exchange or hierarchy; it is more efficient b/c
information is non-rival; input costs are low; ppl know their own capabilities and motivations; and communication
costs are low
- Why create? Pleasure + indirect appropriation (reputation; skills development benefits firms; consulting Ks)
- Incentive problem can be overcome if individual contributions are small enough – about modularity, granularity
- Most free-riding not actually a threat, in a sufficiently large project. But problems may include:
o Failure of integration – feeling that effort was wasted
o Unilateral appropriation – either commercialization, or taking too much control of the project. Law may
affect this, create an “allocation problem”
- eg. Wikipedia – works in peer review model, whole system has checks and balances, management structure
- Strong IP laws may actually harm peer production, by increasing the costs of the information input
- IP has systematic inefficiencies as mechanism for encouraging public provisioning of information
- IP has no place in peer production – only harms
Rochelle Cooper Dreyfuss, “Does IP Need IP? Accommodating Intellectual Production Outside the Intellectual
Property Paradigm” (2010) 31 Cardozo Law Review 1437, pp. 1439-1473
- Agrees that IP not always necessary to incentivize intellectual production
- IP laws stopped free riders in industrial revolution, but in 19 th and 20th century innovations in iron industry, science
spread through norms of openness.
- Describes many different communities in which norms, other benefits allow innovation w/o IP (eg. fashion)
- Does open innovation depend on IP in some form? Eg. software programmers get salaries from companies
supported by IP rights; trademarks play big role in fashion
- Social structures of non-IP only work in some domains; some open innovation requires strong leaders with
extensive training; requires focus & may work better before an industry fully matures
- Technological change can disrupt norms, business strategies
- Open systems have benefits (lower prices, lower transaction costs) BUT may not be durable. Norms can break
down. Abolishing IP laws would not necessarily lead to optimal production (eg. too much peer production of
questionable value, or not enough production in some areas)
- Abolishing IP could incentivize secrecy, restrictive contracts, etc. result in exploiting knowledge workers
- Need better identification of areas where non-IP is effective – eg. user innovation – where value of public
accessibility outweighs IP incentive to innovate (esp. where the creator has other incentives besides IP)
- How to make open innovation and IP work together?
o Might deny IP protection to incremental advances (granularity) see eg. KSR;
o Might protect right to attribution – that is important to many ppl!
o Expand experimental use defence (post-Madey v Duke); making open source “public” for prior art
o Accumulation of “viral licenses” and attribution rights can create a problem
- Criticism of Benkler – will create friction btwn open and closed systems b/c eventually someone could
commercialize a product that came from an open system through IP
- Eg. concern that ppl would patent aspects of Linux, so they set up a foundation that would patent a bunch of things
that could then threaten anybody that wants to impose IP
- Eg. IBM encourages peer production as training for employees, but their core business strategy involves IP
- Will never get rid of IP – need it as backdrop. Non-IP assumes existence of IP. Need ways to make mixed IP/nonIP system work.
C. Comparative Law, Legal Transplants and History
i) Comparative Law
Promise of the Patent Doctrine – Two Views:
 1. Invention must meet objective standard of utility; 2. Invention must do what inventor says it does
 Gold thinks there is no objective utility to an object. Patent holder has to tell you. The use is whatever the skilled reader
would say is the use, object can’t speak for itself.
Comparative Law Approaches:
1. Specific – do they have this law/rule (wrt utility) in that jurisdiction?
- Pros: helps judges interpret a similar statute; works well in systems that are already similar; don’t need as much
knowledge of other system
- Cons: narrow; can miss things; takes things out of context.
2. Generalized – look at functioning of the utility rule as a separate criterion, ignore the rest of patent law (eg.). Is the result
in different jurisdictions the same?
- Pros: recognizes that it is the same rule, even w/ different label; provides constraints for the judge
- Cons: only look at the law that labels itself utility; need slightly more knowledge of system
3. Holistic approach – what are the rules accomplishing in whole of patent law? Do they do the same thing through
obviousness, utility, enablement or something else?
- In USA, eg. they use enablement. Canada puts it within utility. CML and CVL may arrive at same place by
different routes – very transsystemic!
- Cons: need a good understanding of foreign systems to do this.
E. Richard Gold & Michael Shortt, “Promise of the Patent in Canada and Around the World” (forthcoming 2014)
30 CIPR, ss 3, 5.3-7
- Canadian “promise of the patent” concept has been controversial
- Rule is that if a patent makes an explicit promise of utility, it will be invalid if its utility for that purpose was not
known on the day it was granted. Even if it has some other utility.
- In fact, it is similar to doctrines applied in USA, EU, UK
- Need for robust comparative analysis – don’t look just at doctrines w/ same name, but how they interact
- USA: utility threshold tends to be low, evidentiary rules discourage contesting here. But enablement requirement
is robust.
- EU: doctrines of “industrial applicability” and “inventive step” operate here. The “inventive step” must be the
solution to the technical problem.
ii) Legal Transplants
Jean-Frederic Morin and E. Richard Gold, “An Integrated Model of Legal Transplantation” (forthcoming 2015)
Int’l Stud Q, Intro, Theoretical Framework, Results and Discussion
- Seeks to explain why countries adopt IP rules which do not align with their interests
- Multiple mechanisms: coercion; contractualization; regulatory competition; socialization (ppl coming to US to
study learn importance of IP)
- The mechanisms are not independent – they interact. Coercion may motivate signing treaties. Regional
competition may induce neighbouring countries to introduce similar rules. Elites may be socialized to accept the
new rules.
Laura J. Murray, S. Tina Piper & Kirsty Robertson, Putting Intellectual Property in Its Place: Rights Discourses,
Creative Labor and the Everyday (Oxford: Oxford University Press, 2014), Ch 2
- Critique of adoption in Canada of American copyright discourse and solutions
- Eg. RiP deals mostly w/ American arguments and law – doesn’t consider fair dealing, etc.
- Arguments about free expression ignore aspects like fair compensation for labour
- Creative Commons licenses originated in US private-ordering/property context – very legalistic solution that has
had limited success in Canada, difficulty accounting for Canadian moral rights and copyright collectives,
different ideas of “free speech”, different structures of artistic/cultural industries and view of art as a heritage
matter rather than a commodity.
- Oppositions btwn different artists’ advocacy groups – one favouring broad fair dealing/remixing, the other
favouring significant copyright protection
- Problem of Aboriginal cultural appropriation – mostly dealt with through non-legal processes
iii) History
Ariel Katz, “Fair Use 2.0 The Rebirth of Fair Dealing in Canada” in The Copyright Pentalogy, Michael Geist, ed.
- History of the law of fair-dealing and copyright
- Argues that Canadian interpretation of fair-dealing doctrine as narrow, exhaustive in legislation was incorrect.
Broader American approach was more appropriate.
- Recent judgment in CCH was simply restoring the correct interpretation.
- Copyright was not historically understood to apply to non-commercial use, or there was no incentive to sue. Only
under 1911 Copyright Act did “reproduction” become the standard.
- Fair-dealing is a nebulous concept difficult to describe exhaustively. It had already existed at CML by 1911, and
continued to exist in American CML until 1976 when was enacted in statute.
- Lack of explicit intent to abrogate CML right.
- Major argument: fair dealing should be an open list. You can’t specify everything that might be fair.
E. Richard Gold & Michael Shortt, “Promise of the Patent in Canada and Around the World” (forthcoming 2014)
30 CIPR, ss 4
- In UK law, promise of patent rule originated as doctrine of “deception of the Crown”. Patents were discretionary
monopolies, issued based on promises of utility. Deceiving the Crown (by not fulfilling the promises) invalidated
the patent.
- As UK moved to a non-discretionary patent system, the rule remained.
- In Canadian law, as early as 1947 the courts were applying a standard higher than that of a “scintilla of utility”
How/should history matter?
- Is Parliament’s original intention still relevant when things have changed?
- What intent are we looking for?
- Danger of both history and comparative arguments is deciding what to take or not take. You can structure the
question to get the answer you want.
II. Trade Secrets
Merck Frost Ltd v Canada (Health), 2012 SCC 3, paras 103-117
FACTS: A third party applied for ATIP disclosure of documents submitted for drug approval. Health Canada released
some of the documents, and then contacted MF regarding the disclosure of others. Deciding that MF’s submissions did not
respond to the grounds for disclosing the documents, Health Canada released most of the remaining documents, some with
redaction. MF sought JR. Access act includes exceptions for trade secrets and confidential info (separate)
HISTORY: Fed Crt: Overturned Health Canada decision.
FCA: Appeal granted.
ISSUE: Were the documents at issue “trade secrets”? (NO)
ANALYSIS: Majority (Cromwell): The Access to Information act does not define “trade secret”; it has a technical
definition, though no comprehensive definition in CML or CVL. Trade secret “is a subset of confidential commercial
information” – only the broader category is subject to the public interest override.
Adopts Health Canada definition:
1. Process, method, compound that is secret (in absolute or relative sense)
2. Is treated as though it is secret (“reasonable steps”, depending on its value)
3. Has industrial or commercial application
4. Possessor has a legitimate interest in secrecy (worthy of legal protection)
Confidential info may include, eg. personal information w/o primarily economic value.
Does not need to adopt definitions of “trade secrets” from other context such as NAFTA, TRIPS and Security of
Information Act – the contexts are different.
COMMENTS: What creates confidentiality?
- Contracts
- Industry norms
- Circumstance
Pros of trade secrets: Can apply to a wide range of things; no need for legal advice/services; can be perpetual; propertylike – can go after not only person you had a contract w/ but anyone they shared the information with and information can
only be used for specified purposes. Effective in some industries eg. food.
Cons: You need to keep it secret, which can make it hard to develop and implement, or to sell. If someone else
independently discovers it, they can use it and tell anyone. Social cost – can’t build on previous knowledge.
III. Patents
Patent law deals with scientific technology and practical knowledge. Not expressive things like art. Did not actually arise as
response to problems w/ trade secrets. But it fills some of the gaps.
Major characteristics:
- Must be an “invention”  a “new and useful art, process, machine”
- Must file application
- Not a scientific principle
- Time-limited right – 20 years (22 if there are regulatory delays)
- Can exclude independent discoveries as well
A. Patentable Subject Matter
Two major approaches
“closed door”
“open door”
- Assumes unpatentable unless shown otherwise
- Assumes patentable unless Parliament has told us it
based on what was accepted in the past.
ought not to be
- Conservative approach, deference to legislature.
- Need a reason why knowledge ought not to be
patented. In Europe, you can’t patent things that are
- Eg. Harvard College – SCC refused a patent on a
against public order or morality, and it must be
mouse genetically engineered to be susceptible to
technical. US lacks this.
cancer.
Canada v. Amazon.com [2011] FCA 328, paras 4-12, 27-44, 49-69
FACTS: Amazon attempted to patent “one-click” shopping. The patent application referred to a system for communicating
between the customer’s computer and the merchant’s, storing customer information by means of cookies. The Patent
Commissioner refused on the basis that it was not an “art” or a “process” within definition of “invention”.
HISTORY: FC: allowed appeal, ordered re-examination with direction that claims constitute patentable subject matter.
FCA: Appeal allowed, orders re-examination in manner consistent w/ FCA reasons.
ANALYSIS: Describes patent as a “bargain” btwn inventor and public. The inventor gets exclusive rights for a limited
time, in exchange for public disclosure of the invention. Commissioner must look beyond surface of the application to the
actual subject matter and interpret it purposively.
Defining patentable subject matter:
- Art: “i) it must not be a disembodied idea but have a method of practical application; ii) it must be a new and
inventive method of applying skill and knowledge; and iii) it must have a commercially useful result”
- should not rely too heavily on “tag words” or construe them narrowly. Eg. must be “scientific or technological in
nature”; must not be a “Business method”
- Rejects requirement that it be “Technological” (in any event, this is technology)
- Business methods may be patentable. Test is not whether they have practical application. Is about novelty, whether
they are an abstract idea or not.
- “Physicality requirement” may include technology – need not have an effect on a concrete object,
COMMENTS: Example of “open-door approach”. Pockets of limitations from established case law are narrow – no
categorical exclusion of business methods.
Three historically recognized limitations – however, if it is changed a little so it doesn’t fall into this category, you can
patent it. Crt has claimed it isn’t there to judge the social utility of inventions. However, this has opened the door to
patenting almost anything, so SCC has started to broaden those limitations.
i) Product of Nature
Ass’n for Molecular Pathology v Myriad Genetics Inc (2013) SCOTUS, pp. 2-7, 10-18
FACTS: Above.
ISSUE: Is a gene “patentable subject matter”? (NO)
ANALYSIS: Refers to long-standing prohibition on patenting “products of nature”, so as not to tie up the use of basic
scientific tools. The process of discovery is not sufficient – there has to be some sort of change to the naturally occurring
substance. Isolating the gene is insufficient. The Myriad patents are merely on the information contained in the gene.
cDNA is artificially created and does not exist in nature. It is therefore patentable, even though it copies the sequence of
genes found in nature.
Myriad’s patents on applications of the knowledge are undisputed.
Diamond v. Chakrabarty (1980) 447 U.S. 303, 100 S. Ct. 2204, pp. 2205-2208, 2210-2212  patent on bacteria that ate oil
(didn’t work very well). Patentable b/c they inserted a few genes that made it different than in nature.
ii) Law of Nature
iii) Abstract Idea
Alice Corp v CLS Bank Int’l (2014) SCOTUS pp. 1-3, 5-16
FACTS: AC patented a method of mitigating settlement risk. An intermediary would manage “shadow” accounts using a
computer program. CLS challenged this.
ISSUE: Is this patentable subject matter? (NO)
ANALYSIS: “Abstract idea” exception is designed to prevent patents from stifling innovation. Abstract ideas are not
limited to fundamental laws of nature, but can include general concepts/ideas of human creation, such as hedging
(economic behaviour). In this case, intermediated settlement is an abstract idea. A patent directed at an abstract idea is
invalid if it only implements that idea through generic methods, in this case through generic/conventional computer use.
There must be some improvement to the computer, or to other technology. Stating an abstract idea and directing users to
“apply it using a computer” is not eligible for a patent.
In this case, the steps have practical value but were being used before in other ways.
Diamond v. Diehr (1981) 450 U.S. 175, 101 S. Ct 1048, pp. 1052-1058, 1059-1060  computer program that calculated
when rubber in a mold was perfectly cured. Court said practical applications of mathematics are patentable.
B. Utility
Difficult to define
USA: “specific, significant and credible” use
EU: “industrial application”
Canada: no definition. No technical requirement to say what utility is, but if you do say it does something, it must
do what it says it does.
- Who decides? Hypothetical person skilled in the art, who discerns the utility from reading the patent.
Brenner v Manson (1966) 383 U.S. 519, 86 S. Ct. 1033, pp. 1034-1035, 1039-1042
FACTS: Competing patent claims on a chemical process for creating a steroid compound. There was no known use for this
compound, though research was being conducted on the use of similar compounds to inhibit tumours in mice.
ISSUE: What is the standard for “usefulness”?
ANALYSIS: Crt decides the only utility of this compound is to conduct further research to determine if it does that.
The Court disagrees with the claimants two asserted standards:
 “usefulness” should be defined only wrt whether the process does what it is intended to do and is not detrimental to the
public interest.
 “usefulness” may include where scientific research shows potential usefulness of a homologous compound
Describes the patent system as a quid pro quo – the inventor must contribute something that is useful. Granting a patent
could actually impede innovation and discovery of uses for the compound. “[A] patent is not a reward for the search, but
compensation for its successful conclusion”. Rules are clear that a compound with no known utility cannot be patented;
therefore, the process that yields the compound cannot be patented either.
RATIO: A patent must be useful today, not be a starting point for research.
In re Fisher 421 F.3d 1365 (CAFC, 2005), pp. 1367-1368, 1369-1376
FACTS: Fisher applied for patents on ESTs (nucleotide sequences) in the maize genome. The function of the genes was
unknown. Only use was as probe to find same genes.
ISSUE: Does this meet the utility requirement? (NO)
ANALYSIS: Utility must be specific and substantial. In this case, the only uses proposed were generic – they were no
different than the uses for any other EST. In addition, their only function was as an object of “use-testing” – using them to
conduct further research on the genes in an attempt to determine their function. This is not a substantial use, therefore they
are unpatentable.
COMMENT: You can patent something that is used for conducting research on other things (eg. a microscope)
Enablement?
- not required in Canada – just need to demonstrate it works OR that you have a credible prediction that it will work.
Apotex v Wellcome Foundation Ltd [2002] 4 SCR 153, paras 5-21, 51-66, 69-72, 76-84
FACTS: Wellcome Foundation filed a patent for AZT, an older, known compound that it had discovered a new use for:
inhibiting spread of HIV. At the time the patent was filed, no clinical trials had been conducted in humans but the
compound had been tested in vitro on mouse cells by Glaxo/Wellcome and in vitro on human T-cells and the HIV virus by
the US NIH.
ISSUE: Is the utility requirement met? (YES)
ANALYSIS: Uses the standard of “sound prediction”. An invention need not, at the time of filing for a patent, be
absolutely proven to do what is claimed. The public interest of early disclosure supports permitting patents where the
scientific evidence is more than mere speculation. The standard of proof required is different, and less, than that required to
obtain drug approval – that is a different purpose than a patent.
Rejects “after-the-fact” proof of utility – this would reward speculation and deep pockets, rather than research that is useful
to the public. On the other hand, if an invention is subsequently proven to have no utility, the patent may be invalidated.
RESULT: Invention is patentable.
Bell Helicopter Textron Canada v Eurocopter, 2013 FCA paras 6-13, 129-162
FACTS: Eurocopter developed a kind of helicopter landing gear that reduced a certain problem, “ground resonance
instability”. Bell Helicopter developed a similar kind, Eurocopter sued for patent infringement. At time of filing patent,
Eurocopter had not conducted any flight tests of the landing gear on a real helicopter – had only mathematical models and
predictions. They’d researched the front, but not the back landing gear.
ISSUE: Does “sound prediction” doctrine apply to mechanical inventions? (YES)
ANALYSIS: Sound prediction requires (1) a factual basis for the prediction; (2) an articulate and sound line of reasoning
-
from which the desired result can be inferred from the factual basis; and (3) proper disclosure. The utility of the invention
need not be demonstrated through real-life testing. In the case of some aspects of the patent, the calculations and models
disclosed were sufficient for a skilled person to understand the utility of the claim. However, in the case of one aspect, this
information was not disclosed and therefore that claim is invalid.
Sanofi-Aventis v Apotex, 2013 FCA, paras 8-12, 34-54, 63-71
FACTS: S-A held a patent on a pharmaceutical compound that was included in a previous patent including more
compounds. Had evidence of treating blood clots in animals, but not humans.
HISTORY: Apotex previously sought to invalidate patent after patent was upheld under Linkage Regulations
“impeachment” proceeding. This was a full trial. Trial judge found it invalid – obviousness & lacked utility based on
evidence provided (hadn’t disclosed some tests).
ISSUE: Requirement to attest to utility in patent application; criteria for utility of a “selection” patent.
ANALYSIS: Appeal allowed. A patent application need not disclose the uses of an invention, so long as some “mere
scintilla” of utility is evident to a person skilled in the field.
For a patent which selects a compound from a previous patent, it must show a new and unexpected advantage (or absence
of disadvantages) from using this compound as opposed to the ones in the original to satisfy the utility requirement. The
advantages need not be included in the claimed utility of the original patent – eg. they can use compound in animals, when
earlier patent referred to human use.
RATIO: 1. Disclosure of use is not necessary so long as it can be discerned; 2. Selection patent requires new & unexpected
advantage (see this case again under obviousness)
COMMENTS: This case came up twice because the first time was under “linkage” regulations (getting authorization to
sell a generic drug) and the second an infringement suit.
-
-
C. Novelty
Also called “anticipation” – is there a single, publicly available source that describes the invention and enables it –
what is called in Canada “sufficiency of disclosure” – could a person skilled in the art build or do that thing?
Examples of sources: document; scientific article; demonstration or presentation at a conference; previous patent
(even if filing not yet made public).
What if there was a mistake in the prior patent?  Synthon
o Prior patent described the drug, explained how to make it but made a mistake
o They filed a second patent setting out correct method
o Court rules that a skilled reader would know that if the stated method didn’t work, there were a limited
number of alternatives that could be tried.
o Small mistakes don’t prevent anticipation.
Reason: so you can’t patent something we already have
i) Obviousness
Patent Act, ss 28.3, 48.1(1): Patent must not be for something that would be “obvious” to a person “skilled in the
art” (In USA: “non-obviousness”; in EU: “inventive step”)
- Came later than the novelty test – requirement of a “creative spark” – similar to the threshold issue in copyright
- This test can be rather subjective!
KSR International Co. v. Teleflex Inc. (2007) 550 U.S. 398, 127 S. Ct. 1727, pp. 1735-1737, 1739-1745 (SCOTUS)
FACTS: KSR created an adjustable gas pedal for car on a fixed pivot using electronic sensors. Teleflex claimed it
violated its patent on the combination of an adjustable pedal with computerized sensors. KSR said had only added
electronic sensor to a mechanical pedal they already built for Ford.
Prior patents: 1. Adjustable pedal; 2. Attaching sensors. NO PATENTS for attaching sensors in that specific location.
HISTORY: CA relied on TSM: “teaching, suggestion, motivation” test – would the prior art motivate or suggest to
combine in this way? Did prior patent suggest to combine these elements?
ISSUE: Is the patent obvious? (YES)
ANALYSIS:
- Test for obviousness: would it be obvious to a person of ordinary skill in the art, considering the market context
and the prior art? (different from TSM, which doesn’t consider market context)
- Obvious patents should not be allowed because they grant a monopoly on something already in the field of
knowledge
- In the case of combinations of elements/patents that were already known, must ask whether the result was
predictable, whether the prior art supported such a combination as possible.
- Just b/c normal tinkering might not have worked doesn’t make it non-obvious, if it was obvious to attempt.
- In this case, the patent is not sufficiently distinct from the prior patents. There were a limited number of solutions
to the market demand at the time, and T achieved it by simply combining known elements.
-
RATIO: Test: would is be obvious to a person of ordinary skill in the art, considering the market context and prior art?
COMMENTS: CA is concerned with predictability; SCOTUS thought this was too narrow.
Bristol-Myers Squibb Company v. Teva Pharmaceuticals USA (2014) File Number 2013-1306 (CAFC), Part II, pages
7-20 (US Fed CA, Fed Circ)
FACTS: Prior art disclosed anti-viral effects of 2’-CDG, an organic molecule. BMS researched and filed a patent on a
very similar molecule which didn’t have toxic effects, after tinkering w/ the molecule. It was novel b/c the molecule was
not previously described.
ISSUE: Is the patented molecule obvious? (YES)
ANALYSIS: Obviousness requires assessing (1) the “level of ordinary skill in the pertinent art,” (2) the “scope and
content of the prior art.” (3) the “differences between the prior art and the claims at issue,” and (4) “secondary
considerations” of nonobviousness such as “commercial success, long-felt but unsolved needs, failure of others, etc.”
In this case, the differences were minor. The variation had already been identified as a target for research.
The fact that the molecule had unexpected benefits may weigh in favour of non-obviousness, but is not determinative,
especially if the expected benefits would be sufficient to justify research. Unexpected benefits carry more weight when
they are different in kind and not simply in degree, as they were here.
“market demand/success” may be a factor, but here there was not a great market demand for the molecule as there were
other similar treatments available by the time its anti-Hep B properties were discovered.
RATIO: “Obvious to try” test – “good reason to believe”
COMMENTS: this would be non-obvious under TSM test, b/c there is nothing suggesting to try this. This case threw out
TSM case for pharma as well – they had previously thought that unexpected benefits were sufficient. Problem: most drug
research is based on some known effects of a molecule – but it takes a lot of money to prove efficacy and to make it nontoxic. Yet if standards are too low, companies will patent slight modifications to existing drugs to maintain the monopoly.
Apotex Inc. v Sanofi-Synthelabo Canada Inc. [2008] 3 S.C.R. 265, paras 3-6, 51, 55-71, 84-92 (Plavix I)
FACTS: S held patent on a class of 250,000 compounds to inhibit platelet aggregation, including a racemate (a pair of
compounds). Challenge is to a “selection” patent on a compound used as an anti-coagulant drug. The compound is an
isomer of the racemate (one half of a compound with left/right handed structures). Previous patent had identified this
molecule, but not which one worked. Notice of Compliance proceeding.
HISTORY: FC: Racemate was well-known; general benefits of separating left/right was known at time and techniques
were known.
ISSUE: Is the selection obvious? (NO)
ANALYSIS: Test for obviousness (adopting KSR and English cases)
(1) (a) Identify the notional “person skilled in the art”;
(b) Identify the relevant common general knowledge of that person;
(2)
Identify the inventive concept of the claim in question or if that cannot readily be done, construe it;
(3)
Identify what, if any, differences exist between the matter cited as forming part of the “state of the art” and
the inventive concept of the claim or the claim as construed;
(4) Viewed without any knowledge of the alleged invention as claimed, do those differences constitute steps which
would have been obvious to the person skilled in the art or do they require any degree of invention? [Emphasis
added.]
- debate about “obvious to try” test. The test is recognized in the US and the UK. However, it must not be too broad or it
will discourage innovation. Adopts “obvious to try” test as appropriate in certain fields. Here it means it must be “selfevident” it would work (instead of US “good reason to believe”)
- should ask how likely it was that the subsequent invention, if tried, would have positive effects. Might consider state of
the prior art – was it self-evident to try?; how much work/testing was actually required to achieve the invention; whether a
skilled person would have required some trial and error.
- here, the invention was not self-evident. First, there was no way that a person skilled in the art would have known which
of five known methods of separating a racemate into its isomers would work. Second, S invested years and millions of
dollars in research developing the racemate before discovering that the isomer was non-toxic and active. Beneficial
properties of the isomer, or properties that distinguished it from other compounds in the class, were not self-evident from
the prior patent.
RATIO: To be obvious, it must be “self-evident” that a particular change would work.
Sanofi-Aventis v Apotex, [2013] FCA 186, paras 72-82 (Plavix II)
FACTS: Challenge to same patent as in Apotex (above) SCC decision. Full trial – impeachment.
HISTORY: FC: Each step was well-taught, compound was well-known; there was clear motivation to separate b/c FDA
rules was going to require that  obvious.
ANALYSIS: Essentially repeating reasoning of SCC – focus was on the unknown properties of the compound. Because
they were unknown, research had to be conducted, it was non-obvious. Though the methods for separating were known, it
would not mean someone would try it. Wasn’t self-evident from the beginning.
D. Construction
This determines the scope of what the patent’s claims cover (both independent and dependent claims).
Three approaches to construction:
- Narrow/literal. Every word is literal, given equal weight. Every required element must be present in the allegedly
infringing device or act.
- “Inventive concept” or “spirit of the invention”. What was the inventor trying to convey? Not bounded by the
words.
- In between – will take words seriously, but not always literally. There is some interpretive flexibility.
Every system is somewhere in the middle ground, but from different extremes.
USA: starts w/ literal “all elements” rule. Expands w/ “doctrine of equivalents”.
- Rule 1: List every element. Compare invention as described to infringing object.
- Rule 2: Equivalents – would, at date of infringement, someone with skill in the art recognize element as equivalent.
Eg. 89 degree angle vs 90 degree angle.
- Rule 3: Patent prosecution estoppel. If you gave up a claim through interactions w/ Patent Office, you can’t get it
back through doctrine of equivalents.
- Rule 4 (or 3(a)): If you gave up the claim for reasons irrelevant to patentability, you can get it back.
- Doctrine of equivalents expands scope of patent over time.
Canada/England: will interpret patent in same way as contract or statute – purposively/contextually, as of publication date.
- Patent doesn’t change over time, subsequent technological progress doesn’t expand patent.
- How would skilled person in context of application, w/ general knowledge, interpret these claims?
- Interpret the claims on their own. Utility, obviousness are to be determined after construing the claims.
- Distinguishes “essential” and “non-essential” elements.
European: “Spirit of the invention” – can lead to very expansive claims.
Whirlpool Corp v Camco Inc, 2000 SCC, paras 4-5, 14, 17-19, 42-50, 54-56
FACTS: Whirlpool filed and obtained a series of patents for variations on a dual action agitator in a washing machine. C
alleged that the third patent, ‘734, was encompassed by an earlier patent referring to “vanes” and not specifying whether
the vanes were to be rigid or flexible, as they were in the third patent.
ISSUE: Did the second patent’s reference to “vanes” include flexible vanes? (NO)
ANALYSIS: Patents should be construed purposively, considering that claims are directed at another person skilled in the
field, not at lawyers who seek to narrowly construe language literally and legalistically. This method of interpretation
applies at both the stage of validity and of infringement. Must determine what the essential elements of a patent would be,
based on how a person skilled in the art would read it.
In this case, at time the patent was published/issued, it would likely have been read as referring to rigid vanes. Diagram
appended to patent is not determinative b/c it shows only “preferred” use of invention, but it clearly shows rigid vanes.
RATIO: Purposive interpretation of patents, from perspective of person skilled in the art; “essential elements” test.
Kirin-Amgen Inc v Hoechst Marion Roussel Ltd, [2004] UKHL 46, paras 32-35
ANALYSIS: Purposive construction is not an inquiry into the subjective intent of the inventor, but rather about how an
objective, reasonable person (the intended audience) would read the patent. It is not about what the words literally mean.
This person is skilled in the art. Words may have a different meaning depending on the intended audience. This does not
necessarily mean extending the scope of claims. However, should not be referring to the patent file.
RATIO: Objective “reasonable person” standard for interpreting patent.
COMMENTS: UK lacks “essential elements” rule – they look at the whole. Otherwise same test.
Warner-Jenkinson Company Inc v Hilton Davis Chemical Co (1997) 520 US 17, 117 S Ct 1040, pp. 1045-1049, 1056
FACTS: HD holds patent on a dye filtration process. W-J uses similar but not identical process. HD files claim for
infringement.
ANALYSIS: Doctrine of “equivalents” holds that where an infringer’s use substitutes equivalent elements for
elements of the patent, they still infringe. Defendant claimed this doctrine inappropriately expands scope of the patent
claim. Court disagrees. Though substituted element may not literally fall within the patent claim, it is still protected.
Congress has not legislated away the doctrine. Doctrine applies only where there is substitution of a component of the
invention with an equivalent, not to the invention as a whole. Inquiry is into the individual elements of the invention.
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E. Infringement
Infringement occurs when you have done everything set out in the patent, however construed
If you must do 4 things in patent, you don’t infringe if you only do 3
Usually prohibition is you can’t make it – very clear
Patent Act, sections 42, 46, 53(1), 54, 55, 60(1)
Monsanto Canada Inc. v. Schmeiser, [2004] 1 S.C.R. 902, paras 30-58
FACTS: Monsanto held a patent on an artificial gene in canola plants for resistance to the herbicide Roundup. S et al
were found to be growing canola containing the gene without a license. They didn’t use Roundup, were just in possession
of the plant. “Possession” is not on prohibited list in the Act.
ISSUE: Was growing the plants “use”? (YES)
ANALYSIS: Test for use: did the defendant’s activity deprive the inventor in whole or in part, directly or indirectly, of
full enjoyment of the monopoly conferred by law?
- Patentee is entitled to commercial benefit of the invention
- Use of a patented component in an unpatented structure or whole (eg. a plant is unpatentable) can constitute use
- Possession can be sufficient to found use, eg. if there was a utility to having it as a safeguard
- Possession in commercial circumstances gives rise to rebuttable presumption of “use”
- Proof of intention to infringe is not necessary
- M gets no damages b/c no profits
Limelight Networks, Inc. v. Akamai Technologies, Inc., (2014) 572 U.S. XXX, pages 1-2, Part II: pages 4-7
(SCOTUS)
FACTS: A was licensee of a method patent for delivering electronic information on a “content delivery network”. L used
a method that was essentially similar, except that one step – “tagging” – was performed by its customers and not it.
HISTORY: CA – the whole package constituted infringement.
ISSUE: Does this constitute infringement? (NO)
ANALYSIS: L did not perform all the steps itself, therefore it did not directly infringe. It did not “induce” infringement
since the customers were not directly infringing – they were only performing one step. Wants to limit potential scope of
inducement liability, as it could potentially open to doors to infringement where only one component of a patent is used.
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F. Exceptions
Even if what you did technically falls within the patent claim, there are still defences (like “fair dealing” in
copyright)
Not explicitly in Act – are imported by s 55.2 – preserves rights which existed at CML
i) Research
Early cases recognized a right to do the infringing act for purposes of research, to see if they could do the same
thing. Eg. a generic drug company figuring out how to make a drug to be ready when it comes off patent.
- Exception dates to 19th century – Justice Storey recognized patents don’t cover work done for philosophical or
personal reasons (“idle curiosity”); non-commercial investigation.
o Led to expectation that academic researchers were exempt from patent law
- But…
Madey v. Duke University, 307 F.3d 1351 (CAFC, 2002), pp. 1352-1353, 1360-1363
FACTS: M was a researcher at Duke who had invented a free-electron laser used in research while working at Stanford.
He held the patents on it. Was removed as lab director (b/c incompetence) but remained as prof. He quit, Duke continued
to use his lab equipment. He sued for infringement.
ISSUE: Can Duke claim the experimental use defence? (NO)
ANALYSIS:
- burden of proof of “experimental use” defence is on the defendant
- it is a narrow defence – limited to actions performed ‘‘for amusement, to satisfy idle curiosity, or for strictly
philosophical inquiry.’’
- “Further, use does not qualify for the experimental use defense when it is undertaken in the ‘‘guise of scientific
inquiry’’ but has ‘‘definite, cognizable, and not insubstantial commercial purposes.’’”
- “Similarly, our precedent does not immunize any conduct that is in keeping with the alleged infringer’s
legitimate business, regardless of commercial implications.”
- Ie. even if a university is conducting non-commercial research, since research is its “business”, that does not fall
in the defence
COMMENTS: No one had really sued a university for this for a long time, b/c their research on your patent actually
improves its value AND it’s not economically worthwhile b/c there’s little money to collect. It’s also difficult to discover.
Example of norms + interests.
- Canada had research exception from time of compulsory licensing regime
- In EU, research exception varies btwn states
Apotex v Merck [2006] FCA 323, paras 7, 105-113
FACTS: Merck held patent on a class of compounds. Apotex allegedly infringed by conducting experiments with it.
ISSUE: Does this fall within fair dealing/experimental use exception? (YES)
ANALYSIS:
-
-
Rejects the narrower American test from Madey, which ignores whether the use is profitable
Exception does not only apply to grant of compulsory licenses
There’s no necessary distinction btwn commercial and non-commercial – its about what is being done. Doesn’t
distinguish research “on” from research “with”
- “In my analysis, all that is required is that the infringing product was made merely by way of bona fide
experiment, and not with the intention of selling and making use of the product in the commercial market.”
- Still finds the use in this case was done out of curiosity, so it fits in the US test
COMMENTS: This is closer to the European approach.
ii) Statutory Exemption - Bolar
Patent Act, section 55.2(1)
55.2 (1) It is not an infringement of a patent for any person to make, construct, use or sell the patented invention solely
for uses reasonably related to the development and submission of information required under any law of Canada, a
province or a country other than Canada that regulates the manufacture, construction, use or sale of any product.
- Eg. Generic company wants to sell drug as soon as patent expires, but needs to show product is safe and they can
make it, show bio-equivalence
- Change was introduced in US law in response to SCOTUS decision in Bolar finding no such exception existed
- Canadian exception is broader – not limited to pharma, though all the cases are from pharma, and not limited to
federal gov’t.
Merck KGAA v. Integra Lifesciences I, Ltd. (2005) 545 U.S. 193, 125 S. Ct. 2372, pp. 2376-2379, 2380-2384 (SCOTUS)
FACTS: Integra had patented certain molecules. A researcher at Scripps Institute found new pathway to prevent cancer,
identified a family of drugs, published research paper and contracted w/ Merck for funding to investigate further. Integra
alleged infringement. Defendants claimed it fell into “safe harbour” provision protecting research conducted for purposes of
filing to the FDA, though no drug application was ultimately submitted and some of the research wasn’t necessary for FDA
approval.
ISSUE: Does the exception apply? (YES)
ANALYSIS: (Reversing CA): The provision should not be so narrowly construed as to prevent research from being
protected. Preclinical research is valuable, of interest to the FDA, but will not always be fruitful. Research involves trial and
error; compound may ultimately be dangerous or ineffective, not worth an application. So long as there is “a reasonable
basis for believing that the experiments will produce ‘the types of information that are relevant’ to an [FDA application]”,
and they have a “reasonable intention” of filing, they are protected. (“reasonably necessary” standard). FDA can also
request information beyond the bare minimum.
Apotex v Merck [2006] FCA 323, paras 98-103
FACTS: See above.
ISSUE: Does A’s actions fall within scope of s 55.2(1) exception? (YES)
ANALYSIS: This section of the Act exempts production or use of an invention for purpose of development and submission
of information required under any law of Canada or province or another country regulating that product.
This is not limited to uses prior to market entry necessary to obtain an NOC (Notice of Compliance). Drafting and
legislative purpose is broader eg. to facilitate rapid entry of generics onto market following expiry of patent. The section
balances rights of patentees and the public.
iii) Linkage Regulations
In pharma, b/c of regulatory step needed to get on the market, you can’t just manufacture the drug and wait for
infringement lawsuit
- Health Canada not allowed to approve drug, even if safe, if there is patent on it
- You can allege non-infringement or invalidity of patent. Will then go to crt in a regulatory proceeding, on
affidavits. Pharma company must show generic’s allegations are not likely to be upheld.
- Even if crt decides patent is invalid, pharma can still sue for infringement, but there will be a full trial and there
may be a different result.
- Patent holder incentivized to drag it out, to keep generic off the market.
[Health Canada, Guidance Document: Patented Medicines (Notice of Compliance) Regulations (2012), sections 3.2-3.4]
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Hon. Roger Hughes, Notice of Compliance (NOC) Proceedings in Canada, pp. 1-6
- NOC procedure replaced earlier compulsory licensing regime
- It provides a regime by which a generic drug company can avoid having to conduct clinical trials of its own
product by demonstrating bioequivalence with a drug that has already been approved
- Often, a competitor may apply for a molecule that is a slight variation from one that is patented, or may have a
slight variation in other components of the drug than the medicinal ingredient, such as the stabilizers, delivery
-
-
system, etc.
First party applies to list a patent (usually the “brand” pharma company).
Second party – the generic company – filing an Abbreviated New Drug Submission (ANDS) for a drug relating to
a patented medicine serves a “notice of allegation” on the first party stating either it will wait until patent has
expired to seek approval; that patent is invalid; that listing party is not owner of the patent; that patent will not be
infringed; or that patent has expired
There is then a summary process for dealing with allegations of validity and infringement, but it is not res judicata
– doesn’t replace traditional validity/infringement litigation
Patentee can seek a 24-month injunction against the generic while the NOC proceedings are underway
IV. Copyright
-
-
Like patent law, has distinctions impossible to justify in the abstract
Subject matter of copyright law is a “work”
Categories:
o “artistic work” – anything involving ‘images’ or ‘words’ in creative sense
o “literary work” – need if be a certain quality, or are words sufficient?
o Performances, broadcasts, play
The rules apply differently depending on the type of work.
A. Attracting Copyright
i) Idea vs Expression
Copyright is limited through the idea/expression dichotomy.
Problem: things like software, where there are only so many ways to make something work.
o Key is where can choices be made
Baker v Selden (1879) 101 US 99
FACTS: S published an instruction book on a unique bookkeeping system. B sold account books which were similar, but
not exactly the same as the ones S produced. S claimed his copyright in the instruction book gave him the right to the
system.
ISSUE: a) Does S have copyright in the ledger design? (NO) b) Does S have a right to the system? (NO)
ANALYSIS: Copyright extends only to the text of the book. It does not extend to uses to which the book may be put. The
instruction book is the work, not the system itself. An author puts ideas into the world for the purpose of their being used
and shared. Restricting use of the system is the proper subject of a patent.
Where the system requires a particular design or diagram – here, the ledger book – the copyright cannot extend to that
design. The tables were the result of following the steps set out in the book.
Nichols v Universal Pictures Corp (1930) 45 F 2d 119
FACTS: N alleged Universal infringed her copyright in a play by producing a movie with broadly similar plot elements,
though different in some key respects. Same: Jewish and Irish families; kids fall in love and get married; each couple has
a child; initial fighting btwn the fathers and final reconciliation.
ISSUE: What amount of similarity constitutes infringement?
ANALYSIS: Distinguishes between the ideas, broadly defined, and the specific expression. A copy need not be exactly
the same to infringe – for example, it may copy some scenes, dialogue, etc. – but must copy a substantial part. When the
alleged infringement relates to plot, the elements must not be defined so abstractly that they fall into the public domain.
The alleged similarities are sufficiently broad that they constitute stock characters, which can’t be copyrighted. The
outline of the plot could appear in any number of plays, without being the same. No infringement.
COMMENTS: At a certain level of abstraction, these works could be Romeo & Juliet or Westside Story – he’s saying
that abstraction is too high. The key is the level of detail.
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ii) Fixation
- Dramatic works have to be “fixed” in a material form
- Act is otherwise silent on fixation
- Both majority and dissent in Theberge agree that fixtaion is essential element of copyright protection
Theberge v Galerie d’Art du Petit Champlain Inc, [2002] 2 SCR 335 paras 1-2, 24-28, 30-41, 82-87, 112-116, 145-154
FACTS: T assigned rights, by contract, to a publisher to produce reproductions on paper, in a limited number, of his art.
Several galleries who purchased the posters used a chemical process to transfer the images to a canvas. This did not
increase the number of reproductions. T sued.
ISSUE: Was this infringement? (NO)
ANALYSIS:
Binnie (Majority): T is attempting to assert economic interests in the guise of a moral right. Must guard against
expansion of copyright. Owner of the physical object has right to do with it as he pleases. Idea that “fixation” – ie. any
change to the substrate – violates copyright is overbroad. Need for bright line rule, maintaining balance of rights.
Gonthier (dissenting): Act of “fixation” is the infringing act. By transferring the image, they created a new reproduction
by “fixing” it to a new surface. Reproduction simply means “rematerializing”, doesn’t require increase in # of copies.
iii) Originality
Another attempt at old idea of “uniqueness” – contribution of creative artist
Not talking about qualitatively creative work – can be mundane
So long as it is your own work, it is protected. Vs. w/ patents, you are still infringing if you independently invent
the object
- Need for a “spark” of creativity – can’t just be manual labour.
- Feist – is a compilation of phonebooks infringement? Crt says that the original phonebook didn’t have copyright,
b/c there are only few logical ways to present phonebook data. A subset of the phonebook might have creativity eg.
Chinese-Americans.
CCH Canadian Ltd. v. Law Society of Upper Canada, [2004] 1 S.C.R. 339, paras. 1-2, 14-36
FACTS: Legal publishers sued LSUC for copyright infringement on basis of photocopy-request service and self-service
photocopiers at Osgoode Hall Library.
ISSUE: Do works at issue qualify as original? (YES)
ANALYSIS: Copyright Act requires a work to be “original”. There have historically been two branches interpreting this.
One is the “sweat of the brow” approach, which simply requires a work to be more than a mere copy of the original. The
second is the “creativity” requirement, which usually required a work to be novel or unique. The first approach is
overbroad; it could extend to copyright in ideas or facts. The second is too narrow, and imposes requirements similar to
patent law.
 “originality” means the “exercise of skill and judgment”. Changes must be more than trivial; there must be decisions
made, multiple avenues which could have been pursued.
Application: editing a judgment is standard, not creative or original. But headnotes, summaries and keyword choices are
creative enough, even if almost anybody else would have made the same choice.
RESULT: Publishers have copyright in all of the claimed works. However, wrt the published judicial decisions, they do not
have copyright in the text of the decisions but only in the arrangement of them together with the headnote, etc.
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iv) Predictability
FWS Joint Sports Claimants v Canada (Copyright Board) (1991) 36 C.P.R. (3d) 483, paras 1, 9-10
ISSUE: Rebroadcasting of American television signals – is there copyright in a sports game? (NO)
ANALYSIS: Though there is copyright in the uniforms, in the coaches’ playbooks, and in a television program
broadcasting a game, the game itself cannot be an object of copyright b/c it is too unpredictable. Things do not unfold as
planned, unlike a dance. Playbooks, advance planning are not the same as a script. It doesn’t all need to be fixed, but the
sequence of events has been determined. Things like the rules, the size of the field are an idea and not expression.
B. Infringement
Copyright Act, ss 27, 27.1, 34, 35, 38, 38.1, 39, 41, 41.1
27(1): Primary infringement
27(2): Secondary infringement (relating to copies someone else made)
27(2.3)(2.4): Internet services which infringe
27.1: Parallel importation of books
34: Remedies/proceedings
35: Damages
38: Right to recover/seize infringing copies/plates
38.1: Statutory damages
39: Injunction only remedy where defendant not aware of copyright in work.
41-41.1: Digital locks – prohibition on circumventing
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i) Reproduction
Copyright allows you to prevent anyone from reproducing your work in substantial part
“substantial” may mean the whole work, w/ modifications, or only a piece, but identically. Different from patents,
where you must copy more or less the whole thing.
This can be tricky – eg. changing rhythm and harmony of a piece of music.
- Copyright is the right to prevent reproduction
- Reproduction = new copy. In Théberge, technology didn’t create a new copy.
- France has different rule – new rematerialization of the work is a copy.
Theberge v Galerie d’Art du Petit Champlain Inc. [2002] 2 S.C.R. 336, paras. 42-52, 136-158
ANALYSIS:
Majority: Criteria for “reproduction” depends mainly on whether the number of copies increased. Analogy to right to cut
out a picture from a magazine, eg.
Minority: Criteria for reproduction is a “non-original fixation”. Need this b/c Copyright Act encompasses copying of a
substantial part rather than the whole. Because the transfer process caused a new “fixation”, it was a reproduction.
ii) Communication to Public
Rogers Communications Inc. v. SOCAN, [2012] 2 S.C.R. 283, paras 1, 3-5, 27-40, 53-56
FACTS: Dispute btwn music composers/publishers collective and online music streaming services.
ISSUE: Does a streaming service constitute “communication to the public”? (YES)
ANALYSIS: The analysis should not focus narrowly on the technology or business model used. Principled approach to
copyright should not depend on whether a traditional “broadcast” model was used or a “pull” request-based model. The
streaming services clearly anticipated that the songs would be delivered in a serial manner to the public. Should not focus on
whether they were transmitted in a single act or a series of acts. Distinguishes CCH – in that case, the library still controlled
access.
iii) Substantial Part
- Idea/expression dichotomy can make it difficult to assess what is “substantial” in some cases
- See also Nichols
- Substantial part could mean non-literal translation of entire piece, or literal/non-literal copying of minor piece
Robinson v Cinar, 2013 SCC 73, paras 25-28, 33-47; 48-55; 70-71, 76-80, 85-87
FACTS: R developed a concept for a children’s television show, Robinson curiosité, based on his own life experiences and
the story of Robinson Crusoe. Developed storyboards, images, character descriptions, storylines. He pitched it to several
production companies, but it was never produced. Several yrs later sees a similar children’s show, Robinson Sucroe,
produced by some of the companies he pitched to. Show was also based on Robinson Crusoe, had some similar imagery but
also substantial differences such as presence of other human characters.
HISTORY: Trial judge found infringement, awarded damages. Appeal modified damages.
ISSUE: Was there infringement? (YES) What were the damages?
ANALYSIS:
Infringement:
- Emphasizes balancing protection of authors against need for a vibrant public domain
- Cinar proposed a three-step “abstraction-filtration” test (lower crt used it). Crt rejects as inappropriate for works
such as a TV show – should not just compare elements, but look at the whole. May work for computer software.
- Trial judge did not find similarity only in elements which are generic, or drawn from the novel, but in personalities
and designs of characters, and the island.
- Infringement is based on substantiality in plaintiff’s work, not defendant’s
Experts:
- Expert evidence is admissible if necessary
- Should not look only to whether lay audience would perceive similarities, as sometimes these may only be
apparent to expert. Eg. classical music
- Here, b/c audience was children and b/c the works are different mediums, expert evidence was necessary
Damages:
- Damages for soundtrack can be awarded, b/c they are causally linked to the infringement of the show itself, even
though the soundtrack was an original work. Would not have made these profits standing alone.
- Disgorgement of profits cannot be ordered solidarily b/c it is intended not to compensate but to prevent unjust
enrichment.
COMMENTS: When does inspiration become copying? In some fields – eg. computer programming – some things are
common usage, everybody would solve problem in same way. Gold doesn’t like the rule in this case – it isn’t predictable
enough.
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iv) Authorization
Direct infringement: doing the act of reproduction
Indirect: authorizing someone else to do it
Issue: what is authorization?
-
Morehouse (AUSTRALIA): photocopiers in a library is facilitating, b/c you know some ppl will copy in an
infringing way. SCC comes to opposite conclusion.
CCH Canadian Ltd v LSUC, [2004] 1 SCR 339, paras 37-46
FACTS: See above.
ISSUE: Is the provision of photocopiers in a library “authorizing” infringement? (NO)
ANALYSIS: Person who provides equipment should be presumed to only be authorizing its use in accordance with the
law. Presumption can be rebutted if there is proof of control over persons using the equipment eg. employees. Here, the use
of the photocopiers was not controlled. Specific approval or encouraging infringement is needed to find authorization.
C. Other
i) Joint Authorship
How much work qualifies?
In USA, intention plays a critical role – on basis of practice in the field or explicit agreement. Allows parties to
determine the relationship.
o “work for hire” doctrine – if you hire someone to do the work, the copyright goes to you. That’s implied.
o So for movies, they designate one person as the “copyright holder”
- Canada – two lines of cases. 1 involved Sarah McLachlan working w/ musician in her band on some songs. Crt
found intention was that she would be sole author.
Neugebauer v Labieniec (2009) 75 C.P.R. (4th) 364, 349 F.T.R. 53, paras 2-3, 9-28, 35-52
FACTS: N contracted w/ L, a journalist, to record N’s memoirs for L to transcribe. They later agreed to write a book based
on his memoirs. She organized the stories, filled in holes. He claimed sole authorship, said that was intention.
ISSUE: Was L an “editor” or an “author”? (Author)
ANALYSIS:
- L did more than transcribe and edit a narrative – the recollections he gave her were disorganized, were not enough
for a book
- She conducted independent research, created events to fill gaps in the narrative, and shaped the narrative
- Also finds parties conducted themselves as co-authors
- “Joint authorship” means contributing to an indivisible whole, where each person’s contribution is sufficient to
attract copyright protection.
- Improper to import intention test into Canadian law. She was presented on several occasions as joint author,
acknowledged as such. Test is objective, based on quality and amount of involvement in the work.
COMMENTS: In Canada, you can inadvertently wind up in joint authorship situation. So you may have to agree, in
advance, to assign your copyright.
-
ii) Assignment and Licenses
Copyright Act, s 13 – exclusive licenses must be in writing
License: Grants a right to use
o Bare license: I will not sue you for making copies
o Sole license: I will not sue you and won’t give anyone else the right to make copies.
o Exclusive license: I will not sue you, won’t give anyone else right, and I won’t use it.
- Issue in Kraft: is an exclusive license a property right?
o YES (for copyright, not patents)
- Assignment: can be for a region, or for a time period. May do virtually the same thing as a license, although this is
a property right.
o May matter where copyright holders sells the copyright and you lose your license; or if you license from
an entity that might go bankrupt.
Robertson v Thomson Corp. [2006] 2 S.C.R. 363, paras. 6-17, 54-58
FACTS: R brought class action on behalf of freelance writers who had contributed to the Globe. R’s freelance contract did
not deal with copyright. Globe had reproduced her articles in various electronic databases without additional consent.
ISSUE: Is including the articles in a database within the Globe’s copyright in the newspaper? (NO)
ANALYSIS: Notes that it is possible that there may be an implied license given to the Globe. Only an exclusive licence
need be in writing.
-
D. Defences
i) Common Carrier
Copyright Act, section 31.1
- We know some amount of infringement will occur over an ISP network
-
Sometimes you have implied license to download, but there is also piracy
Canada establishes a “safe harbour” for ISPs
Act of providing the Internet pipeline is insufficient to constitute infringement
Where there is no selection of information (content neutrality) and no knowledge of content, there is no liability
ISP could be liable if it hosted an infringing website, or advertised infringing sites, or preferentially treated certain
websites over others
USA: “notice and takedown” – you have to block websites if you are notified of infringement.
SOCAN v Canadian Ass’n of Internet Providers, [2004] SCR 427
FACTS: SOCAN sued ISPs for copyright infringement on basis that violating material passed through their networks and
ISPs created “caches”.
ISSUE: Does this fall within the “telecommunications” (intermediary) exception? (YES)
ANALYSIS: Some tech discussion – when transmitting information from a host server to the user, an ISP may create
“caches” of information on its servers to improve efficiency on the network. These exist only briefly.
Legislative objective of protecting those who merely act as conduits/intermediaries and are neutral as to the content. The
ISP cannot practically assess all the data passing on its network.
Location of server not determinative. Host server not necessarily liable, b/c cannot be aware of everything hosted on their
servers. Generally person who posts a musical work is the one who communicates it.
Authorization: same as CCH. If vast amount of non-violating material is available to users, must not assume that users
will violate. Knowledge of possible use to infringe is not enough.
-
ii) Fair Dealing
Canada historically had “fair use”, but name changed to “fair dealing” w/ statutes
Fair dealing: must fall within categories AND it must be fair
Fair Use: Use just must be fair, though categories may be prima facie fair.
This defence applies to actions that would otherwise be an infringement.
Certain types of uses typically fall within fair dealing
Traditional interpretation in Canada:
o Primary purpose of copyright is to protect authors; any exception is to be read restrictively
o When statute says research or private study, you should read the words narrowly b/c it is an exception to a
right
CCH interpretation: fair dealing is the user’s right. Should be read broadly.
Recent amendments to the Act have broadened the scope of activities
CCH
ANALYSIS: Fair dealing is a user’s right. Should consider six factors in assessing whether it is fair:
- purpose of dealing
- character of dealing
- amount – more than insubstantial [but must be infringement in first place]; number of copies
- nature of the work
- alternatives to the dealing
- effect on the work
Not all factors will apply in each case.
Application to the Facts: considers the library’s Access Policy – will only make single copies, users must disclose purpose
of request – and unreasonableness of alternatives. Finds the policy amounts to fair dealing. “Research” is defined broadly.
COMMENTS: This case broadened our thinking about fair dealing, following a long line of restrictive interpretations.
SOCAN v Bell Canada, [2012] 2 SCR 326
FACTS: SOCAN applied to Copyright Board for tariffs on use of “previews” in music downloading services. Users could
preview 30-90 sec clips of songs at degraded quality.
ISSUE: Is this fair dealing? (YES)
ANALYSIS: “Research” should be read widely, not be confined to creating new things. Shouldn’t just import
American law. “Research” includes purpose of disseminating works – discovering what you want to buy. Not just about
creating new knowledge. Should consider character of dealing from perspective of consumer – for them, was noncommercial. Was enabling he purchase of music, not competing with the work. Amount of dealing is assessed by
individual uses, not in the aggregate. There is no reasonable alternative.
RATIO: “Research” is broad category, not confined to creating new knowledge.
Alberta v Access Copyright, [2012] 2 SCR 345
FACTS: Access Copyright applied to Copyright Board for tariffs/royalties when teachers in elementary and secondary
schools photocopy excerpts from textbooks as complement to main textbooks. Found that the copying was mostly short.
HISTORY: Copyright Board found the photocopying was infringement. FCA upheld.
ISSUE: Is is fair dealing? (YES)
ANALYSIS: Purpose: Teacher does not have a distinct purpose from students. “Private study” doesn’t require work in
isolation – is about learning as an internal activity. Earlier cases simply prohibited the copier from hiding an ulterior
motive behind user’s purpose. In this case, teacher has no ulterior (commercial) motive.
Amount: Amounts were small relative to the whole work, though they were large in total b/c multiple copies made.
Alternatives: no realistic alternatives, b/c schools already own copies of books. Most likely outcome, w/o the dealing, is
that the works would not be used, b/c the amounts copied are relatively small, they are supplemental. Too costly to buy
copies for everyone.
Effect on work: Lack of evidence of detrimental effect on textbook market caused by copying.
COMMENTS: Education is now listed as a fair dealing exception.
See also Katz (history):
Broader concept of infringement (Robinson) is enabled by broader fair dealing exception
E. Moral Rights
Copyright Act, ss 14.1, 14.2, 17.1, 17.2, 28.1, 28.2
- Major distinction btwn CVL and CML
- CML sees copyright as an economic right based on benefitting from copies
- In Europe, the right is droit d’auteur – a Hegelian approach based on the author’s attachment to their work beyond
mere economic interest
- US law doesn’t really recognize moral rights
- Canada is halfway in btwn – separating copyright and moral right, though same duration.
- You cannot sell or assign your moral rights – but you can waive them
- Moral rights used to apply to traditional literature, art – now includes performances, other activities
- Moral rights include:
o Protection against modifications that injure author or creator’s reputation. Presumed for
paintings/sculptures, not assumed for literary works. (Snow v Eaton Centre)
o Attribution (or anonymity)
o Right not to be associated w/ a cause you don’t want to be associated with
- Providing a waiver to your employer doesn’t protect others or future purchasers – this can create economic
uncertainty. And person who gets the waiver can’t enforce moral rights.
Snow v Eaton Centre, (1982) 70 CP (2d) 105
FACTS: Eaton Centre purchased a sculpture of geese from Snow. Put ribbons on it. Snow alleges this violates his moral
rights, is prejudicial to his reputation.
ISSUE: Is the artistic integrity of the work violated? (YES) Is that prejudicial? (YES)
ANALYSIS:
- Shouldn’t treat it like a libel action
- Opinion of prejudice has a certain subjectivity; it is shared by others in his field
- Concludes ribbons distort or modify the work
Theberge v Galerie d’Art du Petit Champlain, [2002] 2 SCR 336 paras 11-23, 117-123
FACTS: Above
ISSUE: Does transfer process violate moral rights? (NO)
ANALYSIS:
Binnie (Majority): Moral rights are non-assignable, distinct from copyright, arising from civilian tradition. He claims there
is a distortion, but economic rights should not be read so broadly as to encompass moral rights. The non-attribution claim is
a moral rights issue. He is asserting moral right in guise of economic right. As the remedy he claims (seizure before
judgment) is not available for moral rights, rejects.
Gonthier (Minority): Moral rights are extra-patrimonial, not assignable. not relevant.
V. Passing-Off and Trade-Marks
-
Subject matter of trademark: a distinctive sign that has visual/auditive/scent element that serves the purpose of
identifying the source/origin
Unregistered mark can use protection of tort of passing off
A registered mark benefits from trademark protection
A. Passing-Off
CML tort, incorporated in Trademark Act, s 7(b)
Can be plead through provincial CML/CCQ, or in fed crt
Passing off: prevents other ppl from using a symbol to indicate a source other than the true origin
Doesn’t require registration, but does require that the sign not have become generic
Test:
o Can you demonstrate that your sign has associated goodwill pointing to a source?
o Is the person you’re complaining about misrepresenting to the consumer? (DECEIT)
o Can you show harm, actual or likely?
- Will be better able to show misrepresentation when mark is strongly associated w/ you.
- Passing off has two elements – protecting brand and protecting the consumer. No intent element.
Ciba-Geigy Canada v Apotex, [1992] 3 SCR 120, pp. 124-125, 131-141
FACTS: Respondents are generic drug companies who sold a generic version of C-G’s drug. The generic had similar shape
and colour to the brand version. Pharmacists were allowed to substitute one for the other. C-G brought passing-off action.
ISSUE: In the pharmaceutical sector, is “confusion” assessed in the eyes of end consumer or only in the eyes of doctors,
dentists, pharmacists and the like? (ALL)
ANALYSIS: Gonthier J:
- Passing-off has 3 elements: goodwill; deceit; actual or potential damage
- Protects proprietary interest of the manufacturer in the “brand”
- Passing-off is unfair competition – is deceitful, takes another’s work
- Passing-off also described as a form of consumer protection – if consumer wants a certain product, may use certain
characteristics eg packaging to identify it
- In other industries, the end user – and not just the retailer – are considered in the confusion analysis. Makes sense
to do same for pharma.
Frank Reddaway v George Banham, [1896] AC 199, pp. 200-201, 207-215
FACTS: R manufactured “Camel Hair Belting”, which was actually made of camel hair though many people in the trade
did not know that and associated the name w/ his products. B began manufacturing belting made of camel hair and selling it
under that name. R brought action for passing off. Court of Appeal rejected claim on basis that “camel hair belting” is
descriptive.
ISSUE: Can there still be deception if the name is descriptive? (YES)
ANALYSIS: Lord Herschell:
- Though the name is descriptive, it had acquired a secondary meaning in the trade, referring to R’s product. Not
generic.
- Use of the name cannot be forbidden, but neither can others have complete freedom
- There is presumption of deception unless you have a good reason for it
- If the name is used, they must attempt to distinguish their product from R’s
See also Reckitt v Borden
FACTS: Plaintiff sold lemon juice in a lemon-shaped container. Defendant started doing the same.
ANALYSIS: You can’t trademark lemon juice but there was a secondary meaning in the UK regarding a lemon-shaped
container. Fact that there were some differences btwn the containers was not enough to prevent confusion.
-
B. Eligible Marks
Trade-marks Act, sections 2 (definitions), 12, 13(1), 23(1), 18(1)
Types of marks
1. Commercial mark: most common
2. Certification marks (fair trade, water from a specific site, coffee from a region, dolphin-friendly): actual mark-holder isn’t
destined to use it, it polices use by licensing out
3. Official marks: controversial, they allow public institution to get a mark without needing to pass normal test or register.
However you can’t use mark already in use to create official mark. Public institution can get away w/ infringement,
diminish value of other ppl’s marks. May cause actual confusion.
Assn. of Architects (Ontario) v. Assn. of Architectural Technologists (Ontario (2002) 19 C.P.R. (4th) 417, paras 1-2, 67, 9, 47-52, 57-73
FACTS: AATO proclaimed “Architectural Technician” and “Architectural Technologist” as official marks. The AAO
disputes this.
ISSUE: Is AATO a “public authority”? (NO)
ANALYSIS:
Test for “Public authority:
1. Public benefit
2. Governmental control
3. Profit is for public, not private benefit
- AATO doesn’t meet governmental control test. Though constituted by private act of legislature, gov’t lacks
ongoing control over its decision-making.
- Distinguished from a self-regulating professional body such as AAO.
- Broad interpretation of “gov’t control” would be unfair, b/c official marks can have significant impact on others.
- Meets public benefit test b/c it sets standards, controls access to designations. Even though there is some private
benefit to its members, that doesn’t negate public benefit.
JTI Macdonald TM Corp v. Imperial Tobacco Products Limited, 2013 FC 608, paras 26-28, 31-37
FACTS: Imperial registered the colour orange applied to visible surface of packaging as a trademark. Board concluded it
was a trademark, not a distinguishing guise. JTI disputes this.
ISSUE: Is is a distinguishing guise?
ANALYSIS:
- Where a colour is claimed as covering whole of three-dimensional object, it is not a distinguishing guise unless it
is part of mode of wrapping or packaging
- Board reasonably interpreted the “visible surface” as defining scope of mark’s application, not part of mark itself
- Colour alone can be a trademark, even if applied to packaging. Need not be applied to good itself.
- Colour here is not an element – there, it could be distinguishing guise – it is the trademark (the whole)
- Colour + other three-dimensional elements = distinguishing guise
COMMENTS: The distinction btwn “distinguishing guise” and “trademark” is confusing, so there is proposal to do away
with it.
Bill C-56, s 7
- proposal to change definition of “certification mark”
- repeal definition of “wares” or “package”
- repeal definition of “distinguishing guise”
- spells “Trade-mark” same way as USA
- general simplification
C. Use
Trade-mark Act, sections 2, 4 (definition of use), 18, 45(3) (expunged for non-use in 3 yr period)
- Use is both component of infringement and condition of validity for trademark
- Michelin Tires: use is construed narrowly for goods – was it used to indicate the origin of the good or service?;
Homeaway.com: for service, “use” is construed broadly.
- Different definitions of “use” for goods and services
- Holders of marks must control use or risk mark becoming generic
Homeaway.com Inc v Hrdlicka (“Homeaway.com”), 2012 FC 1467, paras 10-31
FACTS: Homeaway.com was American company, cessionary of VRBO.com’s rights. The trademark “VRBO” (vacation
rental by owner) was displayed on VRBO’s website, which was hosted in the United States.
ISSUE: Does displaying a trademark on a website accessed in Canada but hosted abroad constitute “use” in Canada?
(YES)
ANALYSIS: Should avoid an overly restrictive or narrow interpretation of jurisdiction. “Real and substantial connection”
test applies. Canada has a significant interest in information that enters the country, the mark was displayed on Canadian
computer screens. Use is the foundation of trade-mark rights – not registration. Registration only confirms the right.
Finds use is established.
Syntex Inc. v. Apotex Inc., [1984] 2 F.C. 1012, paras 2, 4-5, 8-12
FACTS: S manufactures Naprosyn, a brand-name drug. Apotex developed generic version, distributed flyer/order form
advertising the generic to hospitals and retail pharmacists in which they used the name Naprosyn to compare the drugs.
Motion to dismiss – no prima facie case.
ISSUE: Is this “use…in association with wares” under s 4(1)? (NOT LIKELY)
ANALYSIS:
- “Use” under s 4(1) must be in association with wares
- It is used if it is “marked on the wares themselves or on the packages”
- The flyer is not a ware or the package, even if it is an offer
- It is not “so associated with the wares that notice of the association is then given”
D. Confusion and Dilution
S 19: using mark in association with an identical good or one in the same category is literal breach. No need to prove
reputation in the market, confusion. Can get damages, injuction, seizure, equitable remedies
S 20: non-literal infringement. Can’t assume consumers will be confused – must bring evidence like passing off, but don’t
need to prove mark is distinctive or that you have good will b/c it is registered. But fame matters to assessing strength of
mark. (Veuve Clicquot)
Veuve Clicquot Ponsardin v Boutique Cliquot Ltée [2006] 1 SCR 824
Facts

VCP has made high-end champagne since early 19th c.; BCL runs women’s wear shops in QC

VCP seeks to stop BCL from using trade-name Cliquot (even spelled differently) and to have these TMs expunged
from Register
Issue: does BCL’s use of Cliquot create source confusion amongst consumers contrary to s. 20 of the Trade-marks Act?
Holding (Binnie, for the Court): no  Boutiques Cliquot Ltée

VCP deserves protection from free-riders and those who create confusion or depreciate value of good will

This case is about “famous” TMs, which transcend a circumscribed field of wares, services, and businesses

Onus is on VCP to prove likelihood of confusion on a balance of probabilities

The “purpose of trade-marks is to function as a symbol of the source and quality of wares and services, to distinguish
those of the merchant from those of another, and thereby to prevent ‘confusion’ in the marketplace”

“Confusion” to be understood particularly as a belief that the goods are manufactured, sold, leased, or hired by the
same person

“The test to be applied is a matter of first impression in the mind of a casual consumer somewhat in a hurry”

Fame presupposes that mark transcends at least to some degree the wares with which it is traditionally associated;
VCP’s name crates an “aura of luxury”

Whether VCP’s fame extends into other domains is a matter of evidence, not assertion – to be assessed amongst other
factors

Factors to consider include those enumerated in Act s. 6(5), which will take varying importance depending on
circumstance

Inherent distinctiveness: VCP has acquired strong secondary meaning; BCL’s marks are not famous

Duration of use: VCP for over 100 years; BCL since 1995

Nature of wares: no evidence shows consumers associate VCP with mid-priced women’s clothing – but question here
is likelihood

Nature of trade: different channels of trade/distribution

Degree of resemblance: goods need not be identical, but “same idea” must be conveyed to somewhat-hurried
consumer; mark protected not as isolated object but as indicator of source; value of a mark is this indication

So: VCP’s broad association with “luxury goods” does not create confusion with mid-priced women’s clothing
Ratio

“Undoubtedly fame (or strength) is a circumstance of great importance because of the hold of famous marks
on the public mind”

“Confusion” to be understood particularly as a belief that the goods are manufactured, sold, leased, or hired
by the same person

“The test to be applied is a matter of first impression in the mind of a casual consumer somewhat in a hurry”

Factors to consider include those enumerated in Act s. 6(5), which will take varying importance depending on
circumstance: inherent distinctiveness; duration of use; nature of wares; nature of trade; degree of
resemblance
Notes: this test would be different for a non-routine product – and arguably should be different for VCP itself
Masterpiece Inc v Alavida Lifestyles Inc [2011] 2 SCR 387
FACTS: Two companies operate retirement homes in different parts of he country. Both used word “Masterpiece” to
describe their work.
ISSUE: Does this cause confusion? (YES)
ANALYSIS Trademark Act gives right to use mark Canada-wide so different regions doesn’t matter. The test is first
impressions of the hurried consumer, not the one who does further research. So fact that retirement homes are typically
something you would research a lot doesn’t mean
S 22: Dilution
- In France, proprietary interest is more strongly protected. Fact of association is sufficient to find fault, if it has
effect on your brand image that’s interference w/ property right
-
Is trademark supposed to protect consumer or the company’s asset?
In CML, we focus on consumer’s mind, still do confusion analysis when assessing dilution even following US
change
Act, s. 22(1): No person shall use a trade-mark registered by another person in a manner that is likely to have the effect of
depreciating the value of the goodwill…







Courts have struggled with this notion, because the language is nonsensical – how do you
“depreciate” the value of goodwill?
Here, we’re moving away from the “pointer” idea to “goodwill” as a priority
 You can devalue the symbol, but you can’t “depreciate” the goodwill
 Until SCC got involved, the criterion was dilution of the distinctiveness of the mark
(making the “pointer function” of the symbol weaker: Pink Panther)
 We’re now moving more towards an American-style priority on reputation
 Usually, a company has a reputation within a particular industry – so you want to
protect them from their competitors within this industry; as long as there was no
consumer confusion, the law didn’t care
 Now that mega-brand-names have transcended particular fields, we’re more concerned
with dilution  only the big brand names can effectively use s. 22(1)
 Somewhat contradictory that we’re willing to protect brands’ “spillover” into other
fields, when we ask them initially to identify the fields in which they want protection
“Use” is still key
 Putting a mark on your website is not “use”
 Putting it on a poster, and then selling the poster, is more questionable
4 requirements
 Use of the mark, even if not competitive
 Mark sufficiently well-known so as significant goodwill
 Mark used in a way likely to have an effect on goodwill (can get a pre-emptive
injunction)
 This use will likely disparage goodwill
Unclear what happens in the case of intentional dilution; unclear what happens if new product
raises the value
The definition of “goodwill” is unclear; reliance on s. 22(1) is almost a last-ditch, desperate
measure
US courts tend to be pushing the importance of goodwill and reputation
Starbucks Corp v Wolfe’s Borough Coffee (2013) 735 F 3d 198
FACTS: Black Bear Coffee, a small east-coast coffee roaster, produced “Mister Charbucks Coffee”. Starbucks claimed
this diluted their trademark.
HISTORY: District Court found no dilution. (this case has a LONG procedural history of appeals and remands)
ANALYSIS:
- Dilution protection is meant to protect against uses which are not sufficiently similar to cause confusion (eg.
where mark used for a different product) which reduce the distinctiveness of the brand
o Prevents “blurring or dilution by tarnishment”
o Standard is “likelihood of dilution”, not “actual dilution”
- Factors to assess:
o Similarity: crt finds marks are minimally similar
o Distinctiveness: Starbucks mark is distinctive
o Recognition: Starbucks mark is famous
o Exclusivity: Starbucks mark is exclusive
o Intent to associate: Black Bear deliberately intended to associate w/ Starbucks – local nickname – but
this does not lead to presumption of actual association
o Actual association: not found
- Weighing the factors, the court finds no dilution
“the ultimate question is whether the Charbucks Marks are likely to cause an association arising from their similarity to
the Starbucks Marks, which impairs the Starbucks Marks’ ability to identify the source of Starbucks products in a unique
way.”
COMMENTS: Ppl are not confused, but it does take away from feeling of brand and mental association. Starbucks lost
b/c two brands were “minimally similar”.

No exception in trade-mark law for public purposes, art, protest, etc. – it’s up to the court to decide; instead of a
specific provision, courts tend to employ a fairly narrow definition of “use” (eg. Michelin)
What are the exceptions to the right?

Good faith use of personal name (e.g., Ronald Ebenezer McDonald can operate a hamburger restaurant under Ronald E.
McDonald, but not McDonalds)

Resales: (national and international) exhaustion of trademark following initial transfer
Interaction with other IP

Intersection of trade-marks and patent
o
Reckitt: Should yellow, lemon-shaped bottles have been protected by a patent rather than by passingoff/trade-mark? (this is the general problem with distinguishing guises)
o
Kirkbi: Can association between a shape and a brand created during period of patent exclusivity give rise
to trade-mark?
VI. Protecting Place
A. Geographical Indications
Indicate the region where something came from, and the qualities of that region
Distinct from “geographic identifier” – which is just about a place (eg. Made in Japan)
Can protect type of product w/o name of place
Typically involves things that have been refined or processed locally in some way
Based on idea of “terroir” – that land is so linked with the product that the product cannot be made anywhere else
Was a development of 19th century France (Gold thinks it’s BS, mythology)
Science doesn’t support this
What does it protect?
o Against dilution – can’t be used for other products
o Against genericization
o Distinct: against imitation/usurpation – even when no confusion or dilution, when it’s clear it is not that
product (“kind”; “type”; “imitation”) it’s prohibited.
- Idea is that it is inherently misleading to use the word.
- Typically an element of gov’t quality control (as opposed to certification marks, which are private and available to
anyone who meets the requirements)
- Mostly a European concept – they are trying to export the concept to rest of world, but USA is resisting.
- Problem for developing countries: while it pushes up the price by creating artificial scarcity, it depends on
mythology of the place already existing.
- Expanding these categories too much distorts the market, becomes a competition law issue.
Trade-marks Act, ss 2, 7(d), 23
- 2: Definition of “geographical origin”
- 7(d): Prohibition of misleading as to geographical origin
- 23: certification marks
Lisbon Agreement for the Protection of Appellations of Origins, arts 3, 5, 7
- Art 3: protection against any usurpation or imitation, even if true origin indicated
- Art 5: Int’l Bureau responsible for registration
- Art 7: registration, fee
Justin Hughes, “Champagne, Feta, and Bourbon: The Spirited Debate about Geographical Indications” (2006) 300
Hastings LJ 299
- Geographical indications intended to protect a) indication of source b) some non-geographical characteristic of
the product or c) evocative meaning of word
- EU is arguing for a combination of (a) and (b) based on “terroir” concept – that there is something unique about
the place which influences the product such that the product cannot truly be made anywhere else. This is used to
justify “returning” names that have become genericized in the New World, eg.
- Two models for protecting place: (a) French “appellations d’origine controlees”, which have strict controls not
only of place but of technique or (b) American certification/collective marks in which gov’t does not control
means of production
-
-
-
Critiques idea of “terroir”
o Existence of convincing imitations suggests average consumer can’t identify effect of “terroir”
o Terroir likely to vary within a region or over time eg. different cows or grapes used
o Soil/production conditions may be effectively imitated elsewhere
“terroir” idea can’t effectively justify the strong GI protection EU is asking for
Developing countries not likely to benefit from GI protection b/c most valuable names are from EU/North
America
Have succeeded in using ordinary trademark/certification mark law to protect origins. B/C value comes from
marketing, campaigns are needed anyway – most of this has been done by companies in OECD countries such as
Starbucks.
Developing country products often don’t qualify for GI protection b/c they are processed in developed world
B. Traditional Knowledge
Question 2: IP regimes are sensitive to the cultural and social practices and reputations of indigenous peoples.
PROP
OPP
- Int’l law: UN Declaration of Human Rights in 1948
- Some coverage in IP law, but not universal,
– IP is considered a fundamental human right of all
require a lot of effort and money.
peoples. Declaration on the Rights of Indigenous Peoples
- These are not positive rights – only to prevent
(4 countries voted against it – Canada, USA, Aus, NZ)
someone from doing something very bad.
- Canadian protections – s. 35 of Constitution Act,
- Traditional IP law doesn’t protect dances, songs 1982.
not considered “original” under copyright.
- Existing mechanisms:
- Reliant on political/consumer pressure and
goodwill
- Use of Trademark Act to prevent reproduction
- Using TK as “prior art” (eg. turmeric)
- They get no remuneration from use of music, or
patenting a component of turmeric
- Trademark law prohibiting “disparaging” trademarks
(eg. Redskins)
- Some new regimes are proposed to protect it, but
there is resistance from countries like USA who want
- Don’t need legal solution to every problem. Too
a “second wave” of colonization of knowledge.
much law can limit expression.
- TK is a new form of IP right, coming mostly from developing countries where majority population is indigenous
- What is TK?
o Body of knowledge/skills
 Traditional cultural practices/expressions (music, dance)
 Medicinal knowledge
 Shamans
o Some similarity to GIs – tie btwn practices and particular culture. Knowledge only makes sense in its
context. Eg. native headdresses
o About protecting the object in its context – not just as a dance, or a plant, or a symbol
- Growing out of recognition of vast exploitation of Aboriginal cultures
- Distinct from protection of plant genetic resources (eg. Convention on Biological Diversity)
Offensive Protection:
- Why isn’t it protected now?
o Often fails at specific level, though it is type of thing covered by IP law
 Too old
 Not fixed
o May get some protection through certification marks, but not full scope
o Temporal limits on protection
- Justification: knowledge has commercial or economic value, other ppl are free-riding on it. + need incentive to
preserve this knowledge (just like patents, copyright are incentive to innovate)
- Internal problem: seeking commercial value is inconsistent w/ some of the justifications for protection. Could just
use trade secrets.
- External problem: serious reduction in public domain, esp. if perpetual term.
- IP not necessarily best mechanism for compensating culture loss in the past, or preserving culture within your
community and preventing outsiders from misusing it. Defamation may be a more appropriate claim.
- If justification is that it only makes sense in context, maybe it is an intangible kind of knowledge that’s hard to
acquire (like law – refer back to readings on place!) Does it really need protection, if hard to codify?
- Communities may have more immediate concerns than IP
- Cultural knowledge sometimes doesn’t have much value – eg. links btwn plants and disease – a lot of research is
needed to prove that, turn the compound into something useful. Much of the research directly involving communities is
done by primary researchers, academics and not pharma companies. It may be years before there is any commercial
value to it.
- Can create an “anti-commons” problem – too many ppl having veto power (eg. Brazil plant research case)
- Gold is opposed to applying different standards to TK than for other kinds of IP
Defensive Protection:
- Ways of preventing other ppl from acquiring IP rights over TK
o Databases of TK serving as “prior art” for patent applications
o These have their own costs
Organization of African Unity, Declaration and Draft Model Law by the OAU/STRC Task Force
- African law governing use of biological resources
- Providing for treaty, national laws
- Objects to WTO promoting commercialization, privatization of resources
- Requires those studying local biology, or taking samples to have prior, informed consent on specific terms,
payment of royalties for commercial use
Nagoya Protocol on Access to Genetic Resources, arts 5-7, 12, 15-16
- States must provide for fair and equitable sharing of benefits arising from use/commercialization of resources with
states of origin
- Prior informed consent required for access to genetic resources and to traditional knowledge associated w/ genetic
resources
- Must take indigenous/local law/protocols into consideration, measures for informing users of traditional
knowledge of their obligations, protect their continuing right to use the knowledge/resource
- Must ensure compliance w/ legislation
International Treaty on Plant Genetic Resources for Food and Agriculture, arts 3, 9-13
- Covers plant resources used for food/agriculture purposes
- Affirms farmer’s rights to protection of traditional knowledge, participation in decision-making
- Establishes multilateral system of benefit-sharing, which includes:
o Sharing of genetic resources for research, conservation, breeding
o Recipients not to claim IP rights or other rights which limit facilitated access
o Benefits to be shared through exchange of information, transfer of technology, capacity-building, sharing
monetary benefits of commercialization
Munzer & Raustiala, “The Uneasy Case for Intellectual Property Rights in Traditional Knowledge” (2009) 27
Cardozo Arts & Ent LJ 37, pp. 38-43, 46-80
- Addresses arguments for offensive TK protection through lens of property theories
- Movement for TK protection is related to global expansion of IP rights
- Defensive protection is more justifiable – preventing outsiders from acquiring rights in TK, eg. by recognizing it as
“prior art”
- However, offensive protection is difficult to justify as it would change the nature of int’l IP law, limit the public
domain, esp. b/c it is difficult to make a principled distinction btwn Indigenous groups and others
- Common problems:
o Labour/desert theory: Lack of link btwn modern group and ancestors
o Firstness: same problem. Also, most innovation results from mixing.
o Stewardship: problem of indigenous exceptionalism.
o Stability: TK protection creates less stability.
o Moral right of community: “personhood” argument. Moral rights are chiefly non-economic, and many
forms of TK (eg. plants) don’t reflect community’s personhood
o Incentives to innovate: TK mostly old; if there is current innovation, will usually attract IP protection.
o Incentives to commercialize: Much TK lacks commercial value, treated more like trade secret.
o Unjust enrichment: Problem of law/morality distinction. All innovation is incremental, indigenous
exceptionalism problem.
o Confusion/dilution: TK not sufficiently precise or well-known to borrow from trademark law in this
respect.
Tania Bubela & Richard Gold, “Introduction: Indigenous Rights and Traditional Knwledge in Genetic Resources
and Traditional Knowledge
- Analyzes int’l law regimes for protection of genetic resources: Nagoya Protocol, Int’l Treaty on Plant Genetic
Resources
- Property model not well suited to protecting knowledge systems, as opposed to discrete pieces of knowledge. Yet
-
int’l law has focused on this model.
Property model also creates other problems – uncertainty, etc.
Suggests that a liability (no consent requirement but royalties), contractual (through controlling access), or
defensive model may work. Examples abroad of incorporation of TK into regulatory regimes, eg.