ip# wendy#adams# table&of&contents...
TRANSCRIPT
IP Wendy Adams
TABLE OF CONTENTS
CHAPTER 1: INTRODUCTION TO INTELLECTUAL PROPERTY: PHILOSOPHIES, POLICIES AND HISTORY ........ 4 I. INTELLECTUAL PROPERTY DESCRIBED (P.1) .................................................................................................................................................. 4 II. JUSTIFYING INTELLECTUAL PROPERTY (P.4) ................................................................................................................................................. 5 III. THEORIES OF INTELLECTUAL PROPERTY (P.8) ............................................................................................................................................ 5 IV. CANADIAN COURTS & THE PHILOSOPHY OF INTELLECTUAL PROPERTY (P.27) .................................................................................... 5
CHAPTER 2: COPYRIGHT – INTRODUCTION AND FOUNDATIONAL CONCEPTS .......................................................... 5 I. INTRODUCTION (P.33) à NEEDS FORMATTING ............................................................................................................................................. 5
Statute: Copyright Act, s.5(1) à what qualifies, general? ..................................................................................................................................................... 6 Statute: Copyright Act, s.2 à enumerated list of types of works ....................................................................................................................................... 6 Statute: Copyright Act, s.3(1) à what are the rights of a copyright holder? ................................................................................................................ 6 Statute: Copyright Act, s.14.1 àMoral rights ............................................................................................................................................................................. 6
1. Common and Civil Law Traditions on Copyright (p.40) ................................................................................................................... 7 2. Copyright Philosophy and the Idea of Balance (p.42) ....................................................................................................................... 7
II. FOUNDATIONAL CONCEPTS: EXPRESSION, FIXATION, ORIGINALITY, WORK (P.44) ............................................................................... 7 1. Ideas Versus Expression (p.44) .................................................................................................................................................................... 7 2. Fixation (p.48) .................................................................................................................................................................................................... 8 3. Originality (p. 52) .............................................................................................................................................................................................. 8
Case: CCH v. Law Society of Upper Canada [2004] à ............................................................................................................................................................ 9 Case: Kilvington Brothers Ltd. v. Goldberg à ........................................................................................................................................................................ 11
4. Work (p.85) ........................................................................................................................................................................................................ 12 a) Literary Works (p.88) ......................................................................................................................................................................................................................... 12 b) Dramatic Works (p.95) ...................................................................................................................................................................................................................... 13 c) Musical Works (p.99) .......................................................................................................................................................................................................................... 13 d) Artistic Works (p.102) ....................................................................................................................................................................................................................... 14
III. AUTHORSHIP AND OWNERSHIP ..................................................................................................................................................................... 17 IV. ASSIGNMENT AND LICENSING OF COPYRIGHT ............................................................................................................................................ 18 V. TERMS OF PROTECTION (P.149) .................................................................................................................................................................... 18
Statute: Copyright Act, s.6 à term of copyright protection .............................................................................................................................................. 18 VI. INFRINGEMENT & DEFENCES – GENERAL (P.150) ................................................................................................................................... 18 1. General Aspects ................................................................................................................................................................................................. 19
Statute: Copyright Act, s.27 à general infringement provisions .................................................................................................................................... 19 Statute: Copyright Act, s .2 à “infringing definition ............................................................................................................................................................. 19 Statute: Copyright Act, s.3 à economic rights (again) ........................................................................................................................................................ 19
2. Reproduction (p. 154) .................................................................................................................................................................................... 20 3. Publication (p. 166) ........................................................................................................................................................................................ 21 4. Communication to the Public / Public performance (p. 166) ...................................................................................................... 21
Statute: Copyright Act, s.2 à definition of “performance” ................................................................................................................................................ 21 Statute: Copyright Act, s.2.4 à exception for telecommunication undertakings .................................................................................................... 22
5. Adaption and Translation (p. 173) .......................................................................................................................................................... 22 Case: Roberton v Lewis [1976] US (p.177) .............................................................................................................................................................................. 22
6. Mechanical Reproduction (p. 177) ........................................................................................................................................................... 23 Statute: Copyright Act, s.3(1)(d) ................................................................................................................................................................................................... 23
7. Public Exhibition (p. 178) ............................................................................................................................................................................ 23 Statute: Copyright Act, s.3(1)(g) .................................................................................................................................................................................................... 23
8. Rental (p. 179) .................................................................................................................................................................................................. 23 Statute: Copyright Act, s.3(1)(h),(i) ............................................................................................................................................................................................. 23 Statute: Copyright Act, s.2.5 ............................................................................................................................................................................................................. 23
9. Authorisation (p. 179) ................................................................................................................................................................................... 24 10. Parallel importation (p. 188) .................................................................................................................................................................. 25 11. Moral rights (p.190) .................................................................................................................................................................................... 25
Statute: Copyright Act, s.14 à moral rights ............................................................................................................................................................................. 25 Statute: Copyright Act, s.28.1 à moral rights infringement, generally ........................................................................................................................ 25 Statute: Copyright Act, s.28.2 à nature of the moral right of intregrity ..................................................................................................................... 26 Statute: Copyright Act, s.35, 38.1 & 42 à remedies for infringement .......................................................................................................................... 26 Case: Snow v. Eaton Centre ............................................................................................................................................................................................................. 28
Case: Prise de parole v. Guerin ...................................................................................................................................................................................................... 29 Case: Robinson v. Films Cinar ........................................................................................................................................................................................................ 29
12. Secondary infringement (p.199) ............................................................................................................................................................ 29 Statute: Copyright Act, s.27(2) à secondary infringement .............................................................................................................................................. 29
13. Principle Defences (p.204) ........................................................................................................................................................................ 31 Statute: Copyright Act, s.39 à ignorance of a copyright ................................................................................................................................................... 32
14. Statutory Defences (p. 212) ...................................................................................................................................................................... 32 Statute: Copyright Act, s.29+ à Fair Dealing (research/private study/criticism/review/news-‐reporting) .............................................. 32 Case: Michelin & Cie v CAW-‐Canada [1997] FC (p.227) à parody, copryight and freedom of expression ................................................ 34 Case: St-‐Hubert v. Syndicat St-‐Hubert Drummondville [1986] (p.231) ...................................................................................................................... 34 Case: Canadian Tire v. Union [1985] (p.232) .......................................................................................................................................................................... 35 Case: Lion Laboratories v. Evans [1985] UK (p.235 ............................................................................................................................................................ 35 Case: R. v James Lorimer [1984] FC (p.232) ........................................................................................................................................................................... 35
CHAPTER 4: TRADE-‐MARKS ....................................................................................................................................................... 36 I. INTRODUCTION (P. 317) .................................................................................................................................................................................. 36 1. Origin .................................................................................................................................................................................................................... 36 2. Purpose & Theory of Protecting Trade-‐Marks (p. 323) .................................................................................................................. 37
II. OBJECT OF THE PROTECTION (P. 329) – THE MARK ................................................................................................................................ 38 Statute: Trade-‐Mark Act, s.2 (“trade-‐mark”) ............................................................................................................................................................................ 38 Case: Playboy v. Germain .................................................................................................................................................................................................................. 39
III. REGISTRABLE MARKS ..................................................................................................................................................................................... 40 1. Section 12 Overview (p. 342) ...................................................................................................................................................................... 40
Statute: Trade-‐Mark Act, s. 12 à registrability ...................................................................................................................................................................... 40 2. Primarily Merely a Name or Surname and Section 12(1)(a) (p. 344) ..................................................................................... 40
Case: Standard Oil v. Canada (Registrar) [1968] .................................................................................................................................................................... 41 3. Clearly Descriptive and Deceptively Misdescriptive Trade-‐Marks and section 12(1)(b) (p. 351) ............................... 42
Case: A. Lassonde v. Canada [2000] (p. 355) ........................................................................................................................................................................... 42 Case: Rideout Wines v. Vins Brights [1986] (p. 356) ........................................................................................................................................................... 43 Case: S.C.Johnson & Son v. Marketing International [1979] (p.357) ............................................................................................................................. 43 Case: Jordan & Ste. Michelle Cellars v. T.G. Bright [1984] (p. 360) ................................................................................................................................ 43 Case: Reed Stenhouse v. Canada [1992] (p. 361) ................................................................................................................................................................... 44 Case: Kellogg v. Canada [1939] (p. 361) ..................................................................................................................................................................................... 44 Case: Pizza Pizza v. Canada [1989] (p. 362) ............................................................................................................................................................................. 44
4. Name in Any Language of Ware or Service and Section 12(1)(c) .............................................................................................. 45 Statute: Trade-‐Mark Act, s.12(1)(c) ............................................................................................................................................................................................. 45 Case: Canadian Shredded Wheat v. Kellogg .............................................................................................................................................................................. 46 Case: Linoleum Manufacturing v. Nairn ..................................................................................................................................................................................... 46
5. Confusion and Section 12(1)(d) (p.307) ................................................................................................................................................ 46 Statute: Trade-‐Mark Act, s.12(1)(d) ............................................................................................................................................................................................ 46 Statute: Trade-‐Mark Act, s.6(2) à Definition of confusion ............................................................................................................................................... 47 Statute: Trade-‐Mark Act, s.15(2) à Registration of confusing marks .......................................................................................................................... 47 Statute: Trade-‐Mark Act, s.6(5) à What to be considered ................................................................................................................................................ 47
a) Strength of the mark ............................................................................................................................................................................................................................ 48 b) The Length of Use ................................................................................................................................................................................................................................. 49 c) The Type of Merchandise and Service ......................................................................................................................................................................................... 49 d) The nature of commerce ................................................................................................................................................................................................................... 49 e) Degree of resemblance ....................................................................................................................................................................................................................... 50 Statute: Trade-‐Mark Act, s.32(2) à restricting registration to defined territorial area ...................................................................................... 50 Statute: Trade-‐Mark Act, s.21(1) à concurrent use of confusing marks .................................................................................................................... 50 Case: United Artists Pictures v. Pink Panther Beauty ........................................................................................................................................................... 52 Case: Mattel v. 3894207 Canada Inc. [2006] ............................................................................................................................................................................ 53
IV. DISTINCTIVENESS ............................................................................................................................................................................................. 54 1. Trademark Distinctiveness Requirement (p. 452) ............................................................................................................................ 54
Statute: Trade-‐Mark Act, s.2 “distinctive” ................................................................................................................................................................................. 54 Case: Bojangles’ International LLC v. Bojangles Café Ltd. .................................................................................................................................................. 55
2. Acquired Distinctiveness (p. 461) ............................................................................................................................................................. 55 3. Loss of distinctiveness (p.463) ................................................................................................................................................................... 56
Case: Breck’s case ................................................................................................................................................................................................................................. 57 Case: Bousquet v. Barmish ............................................................................................................................................................................................................... 57 Case: Heintzman v 751056 Ontario Ltd ..................................................................................................................................................................................... 58 Case: Aladdin Industries (Thermos case) (p. 471) ................................................................................................................................................................ 58
V. USE OF A MARK (P. 474) ................................................................................................................................................................................ 59 Statute: Trade-‐Mark Act, s.2 “use” ................................................................................................................................................................................................ 59
Statute: Trade-‐Mark Act, s.4 “use” ................................................................................................................................................................................................ 59 Case: Promafil Canada Ltée v Munsingwear Inc [1992] ...................................................................................................................................................... 61
VI. REGISTRATION .................................................................................................................................................................................................. 61 VII. LICENSES AND ASSIGNMENTS ....................................................................................................................................................................... 61 VIII. INFRINGEMENT (P. 498) .............................................................................................................................................................................. 61 1. Infringement Of Registered Marks ........................................................................................................................................................... 61 a) “Right to Use” and “Use” for Purposes of Infringement ....................................................................................................................................................... 61 b) Section 19 (p. 500) ............................................................................................................................................................................................................................... 62 Statute: Trade-‐Mark Act, s.19 – infringement of identical marks ................................................................................................................................... 62 Case: Mr. Submarine v. Amandista Invetments [1987] (p. 501) re : s.19 .................................................................................................................... 62
c) Section 20 (p. 503) ............................................................................................................................................................................................................................... 62 Statute: Trade-‐Mark Act, s.20 à infringement with confusing trade-‐mark .............................................................................................................. 62 Statute: Trade-‐Mark Act, s.6(2) ...................................................................................................................................................................................................... 63 Statute: Trade-‐Mark Act, s.6(5) ...................................................................................................................................................................................................... 63 Case: Mr. Submarine v. Amandista Invetments [1987] (p. 501) re : s.20 .................................................................................................................... 63 Case: A&W v. McDonalds [2005] FC – “reverse confusion” .............................................................................................................................................. 64 Case: Hurlburt Co. v. Hurlburt Shoe Co (p. 510) à s.20 exception using name in good faith ............................................................................ 64
d) Section 22 (p. 512) ............................................................................................................................................................................................................................... 65 Statute: Trade-‐Mark Act, s.22(1) à depreciation of good will ........................................................................................................................................ 65 Statute: Trade-‐Mark Act, s.4 à “use” .......................................................................................................................................................................................... 66 Case: Veuve Clicquot Ponsardin v. Boutiques Cliquot [2006] SCC à depreciation of goodwill ........................................................................ 67 Case: Clairol International v. Thomas Supply [1968] ........................................................................................................................................................... 68
e) Parallel Importation ............................................................................................................................................................................................................................ 69 2. Infringment Of Any Mark ............................................................................................................................................................................. 70 a) Common Law .......................................................................................................................................................................................................................................... 70 b) Section 7 ................................................................................................................................................................................................................................................... 70 Statute: Trade-‐Mark Act, s.7 à infringement of any mark ................................................................................................................................................ 70 Competition Act, s.52(1) à S.7(d) often invoked in conjunction with 52(1) of Competition Act .................................................................... 72 Criminal Code ss. 408-‐410 à “Also potentially relevant” .................................................................................................................................................. 73
3. Defences ............................................................................................................................................................................................................... 73 4. Remedies .............................................................................................................................................................................................................. 74
IX. FOREIGN MARKS ............................................................................................................................................................................................... 74 X. DOMAIN NAMES AND INTERNET-‐BASED INFRINGEMENT ......................................................................................................................... 74
CHAPTER 5: PATENTS .................................................................................................................................................................. 74 I. INTRODUCTION (P. 643) .................................................................................................................................................................................. 74 II. OBJECT OF THE PROTECTION (P. 651) ......................................................................................................................................................... 75
Statute: Patent Act, s.2 à “invention” ......................................................................................................................................................................................... 75 Statute: Patent Act, s.32 “improvement doesn’t convey right to original invention” ............................................................................................. 75
1. Subject Matter (p. 653) ................................................................................................................................................................................. 75 a) Excluded Subject Matter .................................................................................................................................................................................................................... 75 Statute: Patent Act, s.27(8) à not-‐patentable scientific principle/abstract theorum .......................................................................................... 76
b) Computer Programs and Business Methods (p. 660) ........................................................................................................................................................... 77 Case: Amazon v. Canada “one-‐click ordering” [??] FC …SCCà patentability of computer-‐based business method? .............................. 77
c) Life Forms (p. 671) ............................................................................................................................................................................................................................... 78 Case: Diamond Chakrabart [1980] US (p.673) ........................................................................................................................................................................ 78 Case: Re: Abitibi Co [1982] Patent Commissioner à yeast ............................................................................................................................................... 79 Case: Pioneer Hi-‐Bred v. Canada [1986] (p.672) à cross-‐bred plants ........................................................................................................................ 79 Case: Harvard College v. Canada [2002] SCC (p.676) à mouse ...................................................................................................................................... 80 Case: Mosanto Canada v Schmeiser [2004] SCC (p. 697) à use of patented seed .................................................................................................. 81
d) New Use of Known Compound ....................................................................................................................................................................................................... 83 Case: Shell Oil v. Canada [1982] SCC à new use of a known compound can = patentable subject matter ................................................. 83
e) Selection Patents ................................................................................................................................................................................................................................... 84 Case: Apotex Inc. v. Sanofi-‐Synthelabo [2008] à selection patent test ....................................................................................................................... 84
2. Novelty .................................................................................................................................................................................................................. 84 Statute: Patent Act, s.28.2(1) à “Novelty” ................................................................................................................................................................................ 85 Statute: Patent Act, s.28.1(1) ........................................................................................................................................................................................................... 85 Case: Reeves Brothers Inc. v. Toronto Quilting & Embroidery ........................................................................................................................................ 86 Case: Apotex Inc. v. Sanofi-‐Synthelabo à Anticipation/lack of novelty test ............................................................................................................. 87
3. Utility .................................................................................................................................................................................................................... 88 a) Sound Prediction ................................................................................................................................................................................................................................... 88 Case: Apotex v. Wellcome[2002] SCC (p.728) à Sound prediction test ...................................................................................................................... 89
4. Non-‐Obviousness .............................................................................................................................................................................................. 89 Statute: Patent Act, s.28.3 à “non-‐obviousness” ................................................................................................................................................................... 90
III. APPLICATION ..................................................................................................................................................................................................... 91 IV. TERM OF PROTECTION (P. 767) ................................................................................................................................................................... 91
Statute: Patent Act, s.44-‐45 à term of protection ................................................................................................................................................................. 91 Statute: Patent Act, s.55 à infringement and scope of liability ..................................................................................................................................... 92 Statute: Patent Act, s.20(15) à no claim for good faith infringement during patent secrecy .......................................................................... 92
V. INFRINGEMENT, DEFENCES, AND REMEDIES (P. 769) .............................................................................................................................. 93 1. Infringement ...................................................................................................................................................................................................... 93
Statute: Patent Act, s.42 à patentee gets exclusive right to… ......................................................................................................................................... 93 Statute: Patent Act, s.43(2) à presumption of validity of patent once granted ....................................................................................................... 93
a) Claims Construction (p. 773) ........................................................................................................................................................................................................... 94 Whirlpool v Camco [2000] SCC (p.774) à infringement: principles of claims construction and essential elements ............................. 94
b) Essential elements and the doctrine of equivalents (p. 788) ............................................................................................................................................ 95 Case: Free World Trust v Électro Santé Inc., [2000] SCC (p. 793) à ........................................................................................................................... 97 Case: Beecham Canada v Procter & Gamble [1982] Patent Comm. (p. 794) à ....................................................................................................... 97
c) Use of a Patent (p. 800) ...................................................................................................................................................................................................................... 98 d) Process patents (v. product patent) ............................................................................................................................................................................................. 99 Statute: Patent Act, s.55.1 à process patents and presumption of infringement ................................................................................................... 99
e) Notice of Compliance Issues (Patented Medicines) ............................................................................................................................................................ 100 Statute: Patent Act, s.55.2(1) à “early working” exception ........................................................................................................................................... 100 Case: Astrazeneca Canada v. Canada ....................................................................................................................................................................................... 101 Case: Biolyse case (Bristol-‐Myers Squibb) ............................................................................................................................................................................ 101
2. Defences (p.837) ............................................................................................................................................................................................ 102 Statute: Patent Act, s.59 à Pleading invalidity as defence ............................................................................................................................................. 102
3. Compulsory licences and Patent Abuse ............................................................................................................................................... 104 CHAPTER 11: INTELLECTUAL PROPERTY OVERLAPS (NEEDS FORMATTING) ...................................................... 104 I. INTRODUCTION (P.1125) ............................................................................................................................................................................... 104 II. COPYRIGHT AND TRADE-‐MARKS AND PROTECTION OF IMAGE (P.1126) ............................................................................................ 105 1. Fictional Characters (p. 1127) ................................................................................................................................................................ 105 a) Copyright Protection for Fictional Characters (pp. 1128) ............................................................................................................................................... 105 Case: Preson v. 20th Century Fox Canada ............................................................................................................................................................................... 106
II. COPYRIGHT & TRADE-‐MARK CONVERGENCE (P. 1130) ......................................................................................................................... 106 Case: King Features Syndicate v Lechter ................................................................................................................................................................................ 106
VII.TRADEMARKS & PATENTS (P. 1169) ....................................................................................................................................................... 107 Case: Kirkbi v. Ritvik (p.1169) à Lego: distinguishing guise evergreening patents? ....................................................................................... 107 Case: Thomas & Betts v. Panduit (p. 1181) à cable ties, “distinguishing guise” ................................................................................................. 108
CHAPTER 1: INTRODUCTION TO INTELLECTUAL PROPERTY: PHILOSOPHIES, POLICIES AND HISTORY
I. INTELLECTUAL PROPERTY DESCRIBED (P.1)
-‐-‐-‐-‐-‐-‐-‐-‐-‐-‐-‐-‐-‐-‐-‐-‐-‐-‐-‐CLAIRE-‐-‐-‐-‐-‐-‐-‐-‐-‐-‐-‐-‐-‐-‐-‐-‐-‐-‐-‐-‐-‐ Intellectual Property = negative right: right to prevent or exclude other people from exercising the exclusive rights granted to the intellectual property owner Intellectual Property generally divided into two broad categories: -‐ 1) copyright and industrial design -‐ 2) industrial property (trade-‐marks, trade-‐names, geographical indications of course, patents, and confidential
information”
Definition (Convention Establishing WIPO): “Intellectual Property” shall include rights relating to: literary, artistic and scientific works; performances of performing artists, phonograms, and broadcasts; inventions in all fields of human endeavour; scientific discoveries; industrial designs; trademarks, service marks and commercial names and designations; protection against unfair competition; all other rights resulting from intellectual activity in the industrial, scientific, literary or artistic fields.
Types of intellectual property recognized by statute in Canada / source of federal jurisdiction / definition: -‐ Copyright Act à s.91(23) à protects artistic, dramatic, musical, architectural and literary (including computer
programs) original works. -‐ Trade-‐marks Act à s.91(22) à protects new, useful, non-‐obvious inventions and improvements. Patents are
exclusive rights to use, make and sell an invention, which is any new use and useful art, process, machine, manufacture, or composition of matter or any new and useful improvement to these. Patent Act…industrial design, integrated circuit topographies, and plant breed varieties
Generally federal jurisdiction: s. 91(23) copyrights, s.91(22) patents, and the Trademark Act was upheld under trade and commerce power. II. JUSTIFYING INTELLECTUAL PROPERTY (P.4)
Intellectual property = nonrivalrous and non-‐exclusive SCC [2002] Galerie d’Art du Petit Champlain v. Théberge -‐ Must balance “between promoting the public interest in in the encouragement and dissemination of works of the
arts and intellect and obtaining a just reward for the creator” -‐ “excessive control by holders of copyrights and other forms of intellectual property may unduly limit the ability of
the public domain to incorporate and embellish creative innovation in the long-‐term interests of society as a whole, or create practical obstacles to proper utilization.”
-‐ à essentially, rights v. access Public domain: area free for public to use, includes aspects not covered by intellectual property regime (e.g. facts, or when limited term monopoly has expired) III. THEORIES OF INTELLECTUAL PROPERTY (P.8)
Three main theories justifying intellectual property: -‐ Intellectual Property rights based on natural law
o 1) Labour à Locke à influential in common law à by mixing labour with property, you get property right. (intellectual property is a reward and incentive for work. § Interpretations: avoidance theory (reward people who don’t avoid work because we need workers) and
value-‐added theory (reward someone who creates social benefit) § Fisher on problems applying Locke to intellectual property.
o 2) Personality à Hegel à influence in civil law à original ideas and expression are integral to creator’s identity and essential to people’s development. Intellectual property rights are not given by government but originate in relationship with creator and can’t be given away without permission .
-‐ Based on rights bestowed by positive law o 3) Utilitarian à Mill/Bentham à dominant theory in common law jurisdictions à “greatest happiness
principle” (i.e what is beneficial to public/aggregate social welfare) incentivize people to create. § Criticisms: not only way to incentivize, intellectual property appreciated for recognition, not only right
to exclude IV. CANADIAN COURTS & THE PHILOSOPHY OF INTELLECTUAL PROPERTY (P.27)
In Canadian case law, which theories used? -‐ Generally, IP widely perceived through utilitarian lens (Theberge+) -‐ More specifically, “moral rights” in copyright come from personality theory -‐ Patents, in particular rely on utilitarian “bargain theory”
CHAPTER 2: COPYRIGHT – INTRODUCTION AND FOUNDATIONAL CONCEPTS
I. INTRODUCTION (P.33) à NEEDS FORMATTING
-‐-‐-‐-‐-‐-‐-‐-‐-‐-‐-‐-‐-‐-‐-‐-‐-‐-‐-‐BARBARA-‐-‐-‐-‐-‐-‐-‐-‐-‐-‐-‐-‐-‐-‐-‐-‐-‐-‐-‐-‐-‐
Statute: Copyright Act, s.5(1) à what qualifies, general? 5. (1) Subject to this Act, copyright shall subsist in Canada, for the term hereinafter mentioned, in every original literary, dramatic, musical and artistic work if any one of the following conditions is met: […]
Statute: Copyright Act, s.2 à enumerated list of types of works 2. […] “every original literary, dramatic, musical and artistic work” …includes every original production in the literary, scientific or artistic domain, whatever may be the mode or form of its expression, such as compilations, books, pamphlets and other writings, lectures, dramatic or dramatico-musical works, musical works, translations, illustrations, sketches and plastic works relative to geography, topography, architecture or science;
Statute: Copyright Act, s.3(1) à what are the rights of a copyright holder?
3. (1) For the purposes of this Act, “copyright”, in relation to a work, means the sole right to produce or reproduce the work or any substantial part thereof in any material form whatever, to perform the work or any substantial part thereof in public or, if the work is unpublished, to publish the work or any substantial part thereof, and includes the sole right (a) to produce, reproduce, perform or publish any translation of the work, (b) in the case of a dramatic work, to convert it into a novel or other non-dramatic work, (c) in the case of a novel or other non-dramatic work, or of an artistic work, to convert it into a dramatic work, by way of performance in public or otherwise, (d) in the case of a literary, dramatic or musical work, to make any sound recording, cinematograph film or other contrivance by means of which the work may be mechanically reproduced or performed, (e) in the case of any literary, dramatic, musical or artistic work, to reproduce, adapt and publicly present the work as a cinematographic work, (f) in the case of any literary, dramatic, musical or artistic work, to communicate the work to the public by telecommunication, (g) to present at a public exhibition, for a purpose other than sale or hire, an artistic work created after June 7, 1988, other than a map, chart or plan, (h) in the case of a computer program that can be reproduced in the ordinary course of its use, other than by a reproduction during its execution in conjunction with a machine, device or computer, to rent out the computer program, and (i) in the case of a musical work, to rent out a sound recording in which the work is embodied, and to authorize any such acts.
Statute: Copyright Act, s.14.1 àMoral rights 14(1) Where the author of a work is the first owner of the copyright therein, no assignment of the copyright and no grant of any interest therein, made by him, otherwise than by will, after June 4, 1921, is operative to vest in the assignee or grantee any rights with respect to the copyright in the work beyond the expiration of twenty-‐five years from the death of the author, and the reversionary interest in the copyright expectant on the termination of that period shall, on the death of the author, notwithstanding any agreement to the contrary, devolve on his legal representatives as part of the estate of the author, and any agreement entered into by the author as to the disposition of such reversionary interest is void. Introductory thoughts: -‐ Copyright protects against unauthorized copying and certain specific uses of original expression. -‐ Justification for copyright
o A utilitarian view posits that copyright protects authors’ original expression in order to further society’s interests in the creation and dissemination of intellectual work.
-‐ Publishing? o Although copyright is intended to provide an incentive to circulate original expression, there is no obligation
to publish a work. Unpublished works are also protected by copyright.
o Copyright protection enables and facilitates the rights holder to disseminate the work and economically exploit it, but it does not obligate the rights holder to do so.
o Published or not, an original work is protected under copyright law, which is made clear in s. 3 (Copyright Act), which provides the right to publish the work if the work is unpublished.
-‐ What does copyright protect? o Copyright is the exclusive right to reproduce one’s original expression, to authorize someone else to do so,
and to prevent others from reproducing it without permission. o Copyright does not provide protection against someone else independently coming up with the same original
expression (both will have protection, no matter who came up with the idea first) § NB -‐ This is different from patent law!
o In the Copyright Act, two types of rights are protected: § Economic rights (s. 3): The economic rights belong to the copyright owner, and generally, the author is
the first owner of the copyright. § Moral rights (s. 14.1): Rights of authorship, can’t assign.
History of Copyright Law in Canada -‐ Federal Jurisdiction: Copyright is of federal competence according to s. 91(23) of the Constitution Act 1867. -‐ Copyright Act
o Canada’s first complete code of copyright law was enacted in 1921 (it came into force three years later) o Pure Statutory law
§ Statute simply creates rights and obligations upon the terms and in the circumstances set out in the statute (Bishop v Stevens)…
§ …and there is no residual body of common law copyright principles in Canada § NB à Foreign precedents should be and are used with caution!
-‐ International conventions on copyright: o Berne Convention for the Protection of Literary and Artistic Works (1886) o TRIPS Agreement o NB à the SCC has emphasized the globalization of copyright and Canada’s obligations under international
agreements.
1. COMMON AND CIVIL LAW TRADITIONS ON COPYRIGHT (P.40) -‐ Copyright in Canada is inspired by and derived from English traditions of economic rights, and influenced by civil
law traditions with the inclusion of moral rights. -‐ Philosophical roots for IP:
o Common law copyright is rooted in Lockean theory and has historically emphasized economic rights o Civil law “droit d’auteur” is rooted in Hegel’s personality theory and has historically emphasized the authors’
connections with their work an emphasis that is reflected in moral rights.
2. COPYRIGHT PHILOSOPHY AND THE IDEA OF BALANCE (P.42) -‐ Copyright conceptually is about both authors’ and users’ rights and the balance between them.
o In other words, it is in the public interest to protect and encourage creation and to protect and permit access to creation.
-‐ The Copyright Act sets out rights and obligations of both creators and users. -‐ Establishing a proper balance between protection and access is challenging, because the greater the access is, the
greater are the chances of unauthorized reproduction.
II. FOUNDATIONAL CONCEPTS: EXPRESSION, FIXATION, ORIGINALITY, WORK (P.44)
1. IDEAS VERSUS EXPRESSION (P.44) -‐ Copyright protects expression and does not extend to protect ideas. -‐ The objective of copyright is to provide an incentive and/or reward for original expression, and thus it follows that
it would be contrary to copyright’s purpose to grant someone an intellectual property right in mere ideas
-‐ Ideas, themes, “methods or systems of doing something”, facts, and mathematical formulae are all in the public domain and not eligible for copyright protection. o Example (see Goldner v Candian Broadcasting Corp.): One could hold copyright in a literary work describing
the best way to bowl a strike, but that does not give the author a monopoly to exclude others from practicing bowling by following the method described.
-‐ Granting monopolies on Ideas NOT going to happen o If there is only one way to express an idea, then that single expression cannot be protected under copyright
because it is tantamount to protecting an idea. o If there is so limited a range of expression for an idea that there is no way to grant copyright in the expression
without effectively granting a monopoly in the idea, the expression cannot be copyrighted
2. FIXATION (P.48) -‐ Fixation refers to intangible expression being fixed in a tangible material form. -‐ When does the Copyright Act say ‘fixation’ is necessary
o The Act makes explicit references to fixation as a requirement for particular kinds of works (ex: see s. 2, definition of “dramatic work”)
o Conversely, the Act expressly excludes certain material form the fixation requirement (e.g. music can be protected even if unfixed)
-‐ Clarification of the fixation concept by the courts (Canadian Admiral Corp. v. Rediffusion), o The court described a test for fixation and suggested it applied generally to copyright works o “for copyright to subsist in a ‘work’ it must be expressed to some extent at least in some material form,
capable of identification and having a more or less permanent endurance.” (Justification à in order to determine objectively, we ask ‘did the work stay somewhere long enough to have sunk into the mind of “recipients”’?)
-‐ Oral Exceptions o In reality, for most works, the form will be fixed simply because of the type of work that it is. For example, a
painting on canvas, writing on paper, etc. o However, the Act clearly contemplates that at least some expression delivered orally can be copyrightable
subject matter. Examples: § Copyrightable: Structured speeches delivered orally are intended to be captured within copyright since
a “lecture”, defined as “address, speech and sermon” is included as an example of “every original literary, dramatic, musical and artistic work” in the s. 2 definitions.
o In contrast, NOT Copyrightable: § Casual oral conversations are NOT protected by copyright because they are not fixed and are unlikely to
satisfy the standard for originality. § Gould Estate v Stoddart Publishing Co.:
• The Court held that Glenn Gould, the interviewed subject, did not have copyright in oral statements he made to an interviewer.
• However, the Ontario Court of Appeal recognized that the interviewer had copyright in his book, parts of which contained transcriptions of those interviews. The later fixation of those conversations in the interviewer’s book was copyrighted expression belonging to the author-‐interviewer, but Gould’s oral speech at the time of the interview was not protected by copyright because there was no fixation.
3. ORIGINALITY (P. 52) (in brief) Canadian standard of originality “skill/judgment that is non-‐mechanical/-‐trivial” -‐ 1.expression; 2.fixation; 3. ORIGINALITY; 4. work
o Originality is the most important foundational concept of copyright. o The originality requirement functions as a sieve that determines which expression in the copyright field is
protected and acquires that statue of “work”. o WHEN THERE WILL BE PROTECTION: If the work is an “original” expression by an author and there is “fixation”
(where it is required) then a work is copyright protected. -‐ Definition of originality:
o (SCC in CCH) “an exercise of skill and judgment which is neither mechanical nor trivial” § Canada’s test of an exercise of skill and judgment seems to be the best test to apply originality to
different works, including works where it is more difficult to evaluate originality, such as functional works.
§ Originality seems to be based on intellectual (or creative) choices implied in the creation of something. European standard for originality: “intellectual creation”: -‐ Classic European civil law standard of originality à a work must express or reflect the author’s personality
(Hegelian philosophy).
-‐-‐-‐-‐-‐-‐-‐-‐-‐-‐-‐-‐-‐-‐-‐-‐-‐-‐-‐-‐-‐-‐-‐PAULINA -‐-‐-‐-‐-‐-‐-‐-‐-‐-‐-‐-‐-‐-‐-‐-‐-‐-‐-‐-‐-‐-‐ U.S. standard for originality: “modicum of creativity” -‐ Feist Publications, Inc. v. Rural Telephone Service Co., Inc.
o The case dealt with rival factual compilations of telephone directories, the court found that only the compiler’s selection and arrangement may be protected while raw facts can be copied at will (59)
o The USSC found that the basic telephone directory did not meet the required criterion of originality, in spite of the amount of work and expenses involved because the arrangement in the usual alphabetical format and the selection of subscribers was not original.
o USSC ruled that originality requires independent creation plus a “modicum of creativity” (58) o Cour also makes the distinction between creation and discovery and notes that originality does not signify
novelty; a work may be original even though it closely resembles other works (58)
English standard of originality: “industriousness” and “just not copied” -‐ University of London Press v. University Tutorial Press Ltd.
o The case considered whether professors’ examination questions are original literary works, pg 60 o UK courts applied the industriousness standard for originality; the court found that originality “does not
require that the expression must be in an original or novel form, but that the work must not be copied from another work.”
-‐ There is no requirement for creative input o Lockean underpinnings: A work copied from someone else would not be considered original under this
standard because the labor was not the copier’s (61) o This standard makes it difficult for courts to avoid overly expensive copyright (62-‐63)
[hybrid] Canadian standard of originality: “more than a copy” and “product of author’s skill and judgment” -‐ Like in the UK, the Copyright Act does not provide a definition of originality (63) -‐ Instead, originality is articulated by the SCC in CCH Canadian Ltd. v. Law Society of Upper Canada [2004] -‐
Case: CCH v. Law Society of Upper Canada [2004] à
Facts -‐ Headnotes from judicial cases
Issue: -‐ Are they original?
Held -‐ Unanimously held that headnotes from judicial cases are original because the “act of choosing which portions to
extract and how to arrange them in the summary requires an exercise of skill and judgment” (although mentioned that published judicial reasons without editorial additions and which added only basic information and corrected minor grammatical errors were trivial and mechanical changes that did not satisfy originality) (71)
Ratio -‐ The work must originate from the author (“be more than a mere copy”) and that it “must be a product of an
author’s exercise of skill and judgment that is neither trivial nor mechanical” – which necessarily involves intellectual effort) (63)
o Skill: “the use of one’s knowledge, developed aptitude or practiced ability in producing the work” o Judgment: “the use of one’s capacity for discernment or ability to form an opinion or evaluation by
comparing different possible options in producing the work” (63) Reasoning -‐ The SCC relies on the following reasons to explain the originality standard:
1. The plain meaning of “original”: implies that something is not a copy and includes, if not creativity per se, at least some sort of intellectual effort. (65)
2. History of copyright: the idea of “intellectual creation” was implicit in the 1886 Berne Convention for the Protection of Literary and Artistic Works to which CA adhered in 1923. In adopting the sweat of the brow industriousness standard in deciding what is original CML countries departed from the spirit of the Berne Convention. FR and other continental jurisdictions require something more than mere industriousness to find that a work is an original. The author must contribute something intellectual to the work, namely skill and judgment. (66)
3. Recent jurisprudence: review of Feist. In Canada, like in the U.S. copyright protection does not extend to facts or ideas but is limited to the expression of ideas – the “sweat of the brow” is not enough. (67)
4. Purpose of the Copyright Act: to balance public interest in promoting the encouragement and dissemination of works of the arts and intellect and obtaining a just reward for the creator. When an author must exercise skill and judgment to ground originality in a work, there is a safeguard against the author being overcompensated for his/her work. This helps ensure that there is room for the public domain to flourish. (67)
5. Workable, yet fair standard: The “sweat of the brow” standard for originality is too low a standard. It shifts the balance of copyright protection to far in favour of the owner’s rights. While the creativity standard implies that something must be novel or non-‐obvious – concepts that apply better in patent law. (67)
Key statement in CCH re: dual purpose of the Copyright Act -‐ As mentioned, in Théberge, supra, this Court stated that the purpose of copyright law was to balance the public
interest in promoting the encouragement and dissemination of works of the arts and intellect and obtaining a just reward for the creator. When courts adopt a standard of originality requiring only that something be more than a mere copy or that someone simply show industriousness to ground copyright in a work, they tip the scale in favour of the author’s or creator’s rights, at the loss of society’s interest in maintaining a robust public domain that could help foster future creative innovation... By way of contrast, when an author must exercise skill and judgment to ground originality in a work, there is a safeguard against the author being overcompensated for his or her work. This helps ensure that there is room for the public domain to flourish as others are able to produce new works by building on the ideas and information contained in the works of others. (CCH para 23)
Other thoughts regarding the 4 standards of originality -‐ Originality Standards across jurisdictions = interconnected, and often produce the same
o Surface differences in wording mask similarities in concepts and results (73-‐74). o Overlap in results when different standards are applied to similar facts. If a work qualifies as original under
one standard it will also meet the other tests: it will reflect an author’s intellectual creation, have a modicum of creativity, show skill and judgment and originate from the author. (74)
o Commonalities across jurisdictions: originality does not require an original form of expression, original ideas, innovation or novelty and originality is irrespective of aesthetic quality or merit. (74)
-‐ (in reality) Infringement vs. initial evaluation of the plaintiff’s work as original: o The judicial trend is to find that a threshold for minimal copyright has been met and to oversee public policy
objectives through infringement rather than copyrightability. (74) -‐ CCH’s presumed hierarchy of standards or originality: Creativity à exercise of skill and judgment à
industriousness. o In most cases, the hierarchy approach will hold true: it is easier to satisfy the sweat of the brow standard than
minimal creativity or intellectual creation. (76) o However, the CCH standard is not always the middle way: a work could have a modicum of creativity and
satisfy the Feist standard and not be an exercise of skill and judgment. (75)
o Examples § # 1: copies of work of art (photographs of paintings etc.) would seem more likely to satisfy the skill and
judgment vs. creativity standard of originality. A precise reproduction of a visual art in another medium is where the U.S. creativity standard and the Canadian non-‐mechanical and non-‐trivial exercise of skill and judgment standard would be likely to diverge, with the Canadian standard being more likely to be satisfied. (77)
§ #2: an inept translation of a poem. Arguably not an exercise of skill and judgment though viewed as a poem it is creative. Here the CCH originality standard is operatively higher than Feist. (78)
o àLesson: The CCH standard is not necessarily a middle standard, it is simply easier to apply because it focuses on the nature of the choices made by the author, independently of the type of work concerned or any pre-‐conceived notion of creativity. (77)
o Accidental ownership § Feist speaks of the minimal creativity of the work, CCH speaks of the exercise of the skill and judgment
of the author. (78) • Works of “accidental authorship” – i.e. a myopic painter who inadvertently paints a masterpiece could
meet the creativity standard more readily than a skill and judgment standard. 79) Interplay of Originality & Fixation -‐ Where a speech is fixed, the person who orally speaks it may not be the author for the purposes of copyright is
someone else is responsible for the originality (80) -‐ Hager v. ECW Press Ltd.
o An oral interview was written down by the interviewer. o The court found that the copyright in the interview belonged to the person fixing the oral declarations of the
interviewee (80) -‐ Gould,
o the Ontario Court of Appeal concluded that the interviewed subject did not have copyright in statements made during an interview (81)
-‐ What to take from this o A casual conversation or an informal talk or comment is not copyrightable expression because it is neither
fixed nor satisfied originality. A formal speech, structured letter or dictation can be copyrighted provided it is fixed and original. However, a mechanical transcription of a speech or an interviewee’s words generally does not qualify the fixer for copyright protection. (81)
o When transcription in an interview is “mechanical” the writer functions as a scribe not as an author; in a structured interview on the other hand, where the person directs the answers by asking specific questions that follow a logical pattern etc. it is not trivial or mechanical and may fit the originality requirement of skill and judgment (82)
Interplay of Originality and Expression
Case: Kilvington Brothers Ltd. v. Goldberg à
Facts -‐ The plaintiff and defendant manufacture tombstones, the plaintiff alleged that the defendant copied his design
(83) Issue: -‐ Were tombstones designs original? Was there infringement?
Held -‐ The Ontario Supreme Court held that the plaintiff’s tombstone design was an original copyrighted work;
originality does not require novelty. BUT because tombstone designers typically design from a limited choice of elements, the defendant’s tombstone design, although similar, did not infringe.
Reasoning -‐ The scope of the plaintiff’s copyright protection was narrowly limited to only the subject matter that was original
expression (83-‐84)
-‐ This protection did not include the copyright over convention elements of tombstone design that were common to the business. “The plaintiff’s design was original, but the defendant’s design did not infringe, even though the variations from the plaintiff’s design were small, because the defendant had not copied and the plaintiff did not have a monopoly over the basic vocabulary for that field.” (84-‐85)
-‐ àtake away point: the plaintiff can get a copyright in the particular original expression (whether a tombstone, home or any subject matter that can be copyrighted) BUT that copyright does not give the plaintiff a monopoly in the ideas common to the field. (85)
-‐-‐-‐-‐-‐-‐-‐-‐-‐-‐-‐-‐-‐-‐-‐-‐-‐-‐-‐CLAIRE CLASS 5-‐-‐-‐-‐-‐-‐-‐-‐-‐-‐-‐-‐-‐-‐-‐-‐-‐-‐-‐-‐-‐
4. WORK (P.85) Work defined -‐ “work” (defined in s.2): includes “every original production in the literary, scientific or artistic domain, whatever
may be the mode or form of its expression.” o “artistic work”: includes “paintings, drawings, maps, charts, plans, photographs, engravings, sculptures, works
of artistic craftsmanship, architectural works and compilations of artistic works” o “dramatic work”: includes “a) any piece for recitation, choreographic work or mime, the scenic arrangement
or acting form of which is fixed in writing or otherwise; b) any cinematographic work; and c) any compilation of dramatic works”
o “literary work”: (along with examples listed under general definition of books, pamphlets, other writings, lectures and translations of literary works) includes “tables, computer programs, and compilation of literary works”
o “musical work”: means “any work of music or musical composition, with or without words, and includes any compilation thereof.”
-‐ the definition of work is relevant for economic and moral rights under s.3 (right to produce or reproduce)and s.14.1 (moral rights) are only for works. NB only works get s.3 and s.14.1 copyright and the s.15 (copyright in performer’s performance), s.18 (copyright in sound recording) and s.21 (copyright in communication signal) related rights do not.
-‐ Defining work by categories and examples follows the Berne Convention approach whereas some WIPO Committee of Experts notes that “work” = “intellectual creation” and that it should include “an original structure of ideas or impressions”
-‐ Distinguishing categories of work, why? how? o If owner registers copyright (voluntarily), needs to specify and leaves the definition up to judicial
interpretation (NOT supposed to be qualitative/aesthetic evaluation), which typically depends on objective criteria
a) Literary Works (p.88) -‐ note that “literary” is not defined, just a non-‐exhaustive examples -‐ this would include the normal things like novels, memoirs, scholarly articles…but also business forms, racing
coupons, appliance manuals! -‐ Qualitative spectrum: classic literature à mere writing like instructions for sewing patterns -‐ Quantitative spectrum: encyclopedias à single word, title, or slogan -‐ à standard is VERY close to low end (on both qualitative and quantitative) but not the lowest point
i) Quality (p.89) -‐ Principle: Literary merit and quality are not factors when assessing if something is a literary work / judges are not
supposed to be assessing aesthetic value (nb: “literary work” has a definition different from common usage) o Consequence: copyright is available to very pedestrian and minimally literal works such as contracts, business
forms [see Bulman Group Ltd. v. “One Write” Accounting Systems” (1982) 62 C.P.R. (2d) 149 (Fed T.D.)], and brochures.
-‐ HOWEVER, while quality of expression is not meant to be used to judge whether a something is a copyrightable work, the quality of expression is a factor that courts consider when evaluating if a copyrighted work has been infringed.
ii) Quantity (p.91) -‐ Some expression is too minimal to satisfy “original literary work” requirements of s.2. -‐ General rule: single words, names and slogans are NOT protected under copyright.
o Example: in Exxon Corp v. Exxon Insurance Consultants International Ltd., court acknowledged that the word “exxon” involved time and labour, and was invented and original, but had no independent meaning and is not a “literary work”. NO copyright for Exxon.
o More examples: in BC v. Mihaljevic, no copyright for “Expo”; in Via Rail v. Location VIA-‐ROUTE, no copyright for the word via (although there was a trademark for the logo)
o Analogy in Exxon where there could be copyright: the word “Jabberwocky” as a part of Lewis Carroll’s Alice in Wonderland could be copyrightable.
iii) Computer Programs (p.92) -‐ Computer programs, defined as “a set of instructions or statements, expressed, fixed, embodied or stored in any
manner, that is to be used directly or indirectly in a computer in order to bring about specific result” ARE literary works. o Applies to operating and application programs o The code is the protected expression, not the function (similar functional program to another but with
different source code: no copyright violation) or the output (although separate copyright available if itself is original expression qualifying for protection…like music or a picture…and has been produced without the user exercising skill or judgment. For example, Microsoft doesn’t get a copyright for your novel if you used Word to write it.)
o Before computer programs were included in Copyright Act, seminal case Apple Computer categorized original computer programs as literary works (using an analogy to Morse Code). The decision means that functional works are not exclude per se from copyright protection.
o Even though computer programs WERE included in 1988 to the Act, the issue remains whether copyright protection is sufficient and optimal (protected more by patents in US)
o Issue fro m Code-‐generator programs: output copyrighted? Who is author? Whose skill and judgment being used (programmer of code or inputter of data?) Can be solved by licensing agreement but in the absence of one, remains problematic. There is possibility of joint ownership too!
b) Dramatic Works (p.95) -‐ Dramatic work includes [non-‐exhaustive] “a) any piece for recitation, choreographic work or mime, the scenic
arrangement or acting form of which is fixed in writing or otherwise; b) any cinematographic work; and c) any compilation of dramatic works” o Explicit requirement to be “fixed” for some dramatic works. Also means you can have two copyrights in the
same performance, one for the video and one because video is evidence of, say, a choreographed dance. o “cinematographic work” does not need to have a soundtrack
-‐ authors prefer their productions to be categorized as dramatic works because the financial consequences are more favourable than for artistic works
-‐ “Story line” requirement: dramatic works (with exception of choreography) must have a story line/ “thread of consecutively related events”. o Examples of things that are: variety sketch comedy show, instructional video abot real estate sales, reality tv
(because its edited), choreographed sports routines (like synchro swimming…if fixed) o Examples of things that are not: rock videos with trivia/banter between, the format of a tv show, aspects from
the tv show like catch phrases, sporting events (no predetermined choreography, although playbooks and game plans can be copyrighted as literary works), drills taught at hockey camp,
-‐ Cinematographic works: different terms depending on whether it is scripted/dramatic character (in which case it will have a standard term) vs. unedited character (50 years plus the remainder of the calendar year of the first publication…or if it is still unpublished…50 years since its making)
c) Musical Works (p.99)
-‐ 1993 amendment which broadened s.2 definition for “musical work” as “any work of music or musical composition, with or without words” (it used to involve melody/harmony and needed to be printed, reduced to writing or graphically reproduced) o the old definition confused the graphic reproduction with the music itself. The amendment clarifies that it is
the musical, no the sheet music, that is copyrighted o the old definition also required fixation, the amendment does not require it to be in writing o no requirement for melody, meaning experimental music, can be copyrighted
-‐ Key criterion: the music o Not infringement:
§ using “Yukon Magic and Mystery” as a provincial slogan when there was a song that said “Yukon, will you set us free / With your Magic and your Mystery” because copyright is only infringed if “a substantial portion of the song in some medium has been used”
-‐ NB: “with or without words” – the implication is that one person can have a literary copyright in the words, an another the musical copyright in the tune, and a third could have the musical copyright in putting the two together
-‐ NB: arrangements are musical works if they original. If the arrangement is of already copyrighted material, the arranger needs permission (e.g. license) o Example (not Canadian): Hyperion Records v. Sawkins was about restoring original 17th century musical scores,
and English court said there was skill, labour and judgment and the recreation involved a considerable amount of personal judgment. This case is important because it focuses on personality and creativity (not just skill and labour) and because it says recreation is a creative act. Book says presumably would meet Canadian originality standard too given the research and knowledge required to recreate.
-‐ Concluding thoughts on musical works: o Distinct as there are often layers of rights. The composer and lyricist have full rights under s.3 and s.14.1 and
but “neighbouring rights” can exist for producer, performer, sound recorder, etc. d) Artistic Works (p.102) -‐ artistic works includes (s.2): paintings, drawings, maps, charts, plans, photographs [photo-‐lithograph and work
expressed by an process analogous to photography], engravings [etchings, lithographs, woodcuts, prints], sculptures [includes cast or model], works of artistic craftsmanship, architectural works [any building or structure or any model of a building or structure], and compilations of artistic works.
-‐ In theory, the following are NOT supposed to be pertinent to defining something as “artistic”: artistic merit, the intention of the artist to create art, and actual aesthetic value.
-‐ Key criterion: objective “expression” …must be visual o DRG v. Datafile à establishes expression in visual medium as defining characteristic
§ Label designs with numbers 0-‐9 and A-‐Z which followed colour coded classification system WERE sufficient to constitute an artistic work because the designs were visual expressions. NB that the filing system wasn’t protected, just the graphic design used to implement it
§ Functional purpose doesn’t preclude it from being an artistic work § Objective test, defines artistic work as “generic description of the type of works…which find expression
in a visual medium” § References a “sliding scale of infringement”
o Cuisenaire v. South West Imports à § Colour coded rods to help teach addition and subtraction were not copyrightable because they were
“tools and nothing more” or “a practical device to present the method in graphical form”, although flash cards with graphic designs WERE copyrightable
§ Relied on artists intention to have appealed to aesthetic sense, not just incidentally. This is contrary to Canadian copyright law that says intention is irrelevant. In DRG, intention is dismissed.
-‐ Sliding Scale of Infringement o First referenced in DRG à “the simpler the copyrighted work is, the more exact must be the copying in order
to constitute infringement”. o Underlying concern: that an author gets a monopoly over the entire subject matter. o Kenrick & Co v. Lawrence & Co
§ Expression, not ideas à copyright protects the original expression, but does not give author monopoly in the idea.
§ Sliding Scale à For simple drawings, only exact reproductions will infringe in order to prevent an author from getting an exclusive right to represent the subject
-‐ What constitutes expression? How important is the canvas? o Merchandising Corp of America v. Harpbond
§ Makeup case à English court rejects singer Adam Ant’s claim that his face makeup was an artistic work in the context of someone doing a painting of a photograph of his face
§ Makeup is not artistic work because a face isn’t a substrate. Painting isn’t an idea, its an object…and paint without a surface is not a painting. If you did the same makeup on someone else’s face, would be different.
§ The photograph was copyrighted but the painting did not reproduce a substantial part of it. § Also, didn’t infringe because the make-‐up was not artistic work at all § HOWEVER, in Theberge, the artistic work constituted the ink, not the substrate § What about a permanent tattoo?
i) Photographs (p.109) -‐ Defined in the Act: “expressed by any process analogous to photography” where photography is the process of
recoding an imagine on a photo-‐sensitive surface such as film. -‐ Like other works, must be original
o Ateliers Tango Argentin v. Festical D’espagne § Freelance photographer had taken photos of a tango dance troupe for promotional purposes…court
decided that there was original expression and that another photographer may have taken a very different photo
§ “choice, layout and posture of the subject, the choice of camera angle and lighting, and the artistic work and personal effort of the photographer” have been used to establish original expression
-‐ Big issue: is a photograph of artwork and original copyrightable work? o Subquestions: 1) is there original expression; 2) does the photograph infringe the copyright of the first
artwork? o Is it possible to be an original copyrightable work while infringing something else? o Canadian copyright law: changing the medium by photographing another artwork CAN constitute originality if
there is a non-‐mechanical and non-‐trivial exercise of skill and judgment and if it originates from the photographer. It can also constitute an infringement if it reproduces a substantial part of the artwork.
o American case: Bridgemen à photographs of existing 2D artwork not copyrightable § Issue: could exact colour transparencies of public domain paintings constitute separate copright? § Court said no, no creative choices and didn’t meet US “modicum of creativity” standard for originality. § Changing medium alone doesn’t constitute originality, it was “slavish copying”
o UK case: Antiquesportfolio.com v. Rodney Fitch à photographs of 3D artifacts were copyrightable § Scanned encyclopedia photographs of antique objects for website. § Court said photos were original copyright works (based on lighting, angle, focus, subject matter choices)
and scanning and uploading them was an infringement. o UK case: Interlego v. Tyco à copying per se cannot be an original work
§ A well-‐executed tracing, no matter how much labour and skill is put in, is not copyrightable o Hypothetical: what if Bridgmen scenario happened in Canada?
§ More likely to meet Canadian standard of “an exercise of skill and judgment” than American “modicum of creativity”, but may fail on the “judgment” aspect.
§ R v. Allen à • Digitally scanned maps, cross referenced with satellite photos, then updating the map with
proposed roads, corrected errors, made cosmetic changes, etc. • Court said: considerable skill, but no intellectual judgment in copying. • Additionally, changes did not meet ‘originality’ requirement à changes were of a mechanical
nature for style, preference and cost reduction’.
• Even if ‘skill and judgment’ are satisfied, must fulfill ‘original expression’ from the photographer and not be a mere copy.
o CCH case “originality standard” recap: § “more than a mere copy (originate from the author)” § “be the product of an author’s exercise of skill and judgment”… “will necessarily involved intellectual
effort” • skill = “the use of one’s knowledge, developed aptitude or practiced ability in producing the work • judgement = “the use of one’s capacity for discernment or ability to form an opinion or evaluation
by comparing different possible options in producing the work. § “must not be so trivial that it could be characterized as a purely mechanical exercise”
o Book’s answer to this issue: § For 2D photograph (e.g. photo of painting) -‐ Making a precise photographic copy may require skill and
judgment, but it is a mere copy and would likely fail originality test to “originate from the author” § For 3D photograph (e.g. photo of a statue) – all photographs are ‘copies’ of something in the natural
world. A photograph of a statue is less likely to be a copy of the original expression because its in such a different medium (i.e. from 3D to 2D)
§ Funny side issue: what happens when someone intends to copy but doesn’t do it really well and looks vastly different.
-‐-‐-‐-‐-‐-‐-‐-‐-‐-‐-‐-‐-‐-‐-‐-‐-‐-‐-‐LAURIE CLASS 6-‐-‐-‐-‐-‐-‐-‐-‐-‐-‐-‐-‐-‐-‐-‐-‐-‐-‐-‐-‐-‐ (ii) Architectural Works (p.117) -‐ Architectural “works” are defined in s. 2: “any building or structure or any model of a building or structure”.
o NB -‐ architectural drawings & plans (like maps, charts or plans) have a different copyright under general artistic works. Sketches & plastic works also under general artistic works
-‐ Standard of Originality o Old law à Until 1988, the Act referred to “architectural work of art” which required “artistic character or
design” but this was repealed. Old criteria of novelty, distinctiveness were difficult to administer o Currently à turns on whether the building, structure or model meets the standard of originality, i.e. it is NOT
dependent on aesthetic qualities, size or cost § Consequence: forestalls authors from obtaining monopolies on basic architectural building blocks
-‐ Copyright Act, s. 32.2 “Reproduction in Alternate Formats / Permitted Acts” o no infringement when someone reproduces the work in a painting, drawing, engraving, photograph or film as
long as not “in the nature of an architectural drawing or plan” o
iii) Compilations (p.119) -‐ Definition in s. 2 (explicitly added to Copyright Act in 1993)
o Omnibus provision à compilations included in list o (a) à a work resulting from the selection or arrangement of literary, dramatic, musical or artistic works or of
parts thereof, o (b) a work resulting from the selection or arrangement of data; o NB compilations are also protected under TRIPS art. 10(2) & NAFTA art. 1705(1)(b). Both require that
compilations constitute “intellectual creations” because of “selection or arrangement” -‐ Originality Standard
o Assessed with respect to selection or arrangement & not underlying content § SCC in Robertson: use of “or” in s. 2 is significant à don’t need selection AND arrangement
o Originality standard for compilations (CCH standard): § originate from author § non-‐mechanical & non-‐trivial exercise of skill & judgment
o What is NOT original? i.e. What is NOT an original selection or original arrangement? § NOT original when the a) selection of info = routine ; or b) arrangement = conventional
• “Whole-‐of-‐universe” compilations (aka all examples from set) because there’s no selection. E.g. almanac
• Chronological or alphabetical arrangements not original either. E.g. calendar
o G.A. Cramp & Sons Ltd. v. Frank Smythson Ltd.: a typical pocket diary is not protected because arrangement isn’t original
o What IS original? § CCH
• a price guide of top 5,000/18,000 most valuable baseball cards is (CCH) • Court: Required intellectual effort, knowledge & developed aptitude & ability to form an
opinion/evaluation by comparing different options § “best of” lists (e.g. certain restaurants) likely to be original
-‐ Who has what rights? o Content of compilation & selection/arrangement are analyzed separately. This means, a compilation can
consist of an original selection or arrangement of § uncopyrightable info (e.g. data)
• Example from book: electronic database of university students’ registration info • In this case, the selection/arrangement protected as compilation but raw data isn’t
§ works in public domain (i.e. copyright expired) • Example from book: scholarly edition of Shakespeare’s tragedies
§ copyrighted works where compiler obtains permission • Example from book: literary anthology of Canadian late 20th century poetry • In this case of an authorized selection/arrangement, both compilation and content have separate
protection. The compilers only protected against infringement of that selection or arrangement & do not have rights in underlying content (compiler would only acquire protection in data if assigned and not licensed)
• e.g. Robertson: court found a copyright in an electronic database whose content included articles from newspapers, magazines, reference databases, etc. because the keyword searching function created a different selection or arrangement than the compilation of a newspaper
• NB à inclusion of copyrighted work in a compilation doesn’t decrease the author’s economic or moral rights. Also, doesn’t give author any increased right in compilation (Copyright Act, s.2.1(2))
-‐ What to do with mixed content § If compilation’s content = made up of >1 category of works (literary, dramatic, musical or artistic), it is
classified under the category of work that is “the most substantial part”, for example, a multimedia encyclopedia
-‐ Extra database protection? o Databases = collections of data or other material arranged to enable a user to retrieve in terms according to
certain criteria. For example, online phone directories, hospital’s collection of patient data, etc. o What is protected for the compiler:
§ If it meets originality standard, ONLY the reproduction in whole or substantial part of the compilation is protected -‐ not the raw data
o The “thin copyright” problem § If something barely qualifies as copyrightable work, it won’t have strong protection against
infringement…. Meaning someone could extract underlying data, make minor changes to the selection/arrangement and they would not have infringed
§ This has prompted demand by database makers in many countries for stronger protection • Canada doesn’t protect databases under a separate regime (Tele-‐Direct) • US has considered tort of misappropriation • EU defined sui generis right to database contents under the Database Directive (in addition to
copyright on compilation) which grants a 15 year term of protection o But substantial changes to a database are considered a new database (art. 10(3)) o Allows substantial parts of databases to be used without consent for teaching or scientific
research (to extent justified), public security or administrative/judicial procedure (art. 9) III. AUTHORSHIP AND OWNERSHIP
Prof Adams skipped this section
IV. ASSIGNMENT AND LICENSING OF COPYRIGHT
Prof Adams skipped this section V. TERMS OF PROTECTION (P.149)
Statute: Copyright Act, s.6 à term of copyright protection
6. The term for which copyright shall subsist shall, except as otherwise expressly provided by this Act, be the life of the author, the remainder of the calendar year in which the author dies, and a period of fifty years following the end of that calendar year.
-‐ General rule (s.6): o life of author + 50 years o (i.e. 50 years after author’s death & the rest of the calendar year) o after that, in the public domain
-‐ Other scenarios: o joint authors = 50-‐year term starts after the death of the last surviving author (s. 9(1)) o compilations: calculated according to life of compiling author o collective works: each contribution calculated according to life of contributing author and collective work
according to life of editor o anonymous work or under pseudonym: shortest of 50 years after publication or 75 years after the making of
the work. However, if author becomes known during that term à s. 6 applies o same for joint authors (if one or more becomes known, + 50 for whichever dies) o Crown works: 50 years from the first publication + remainder of calendar year. No limit while unpublished o Photographs
§ if the author = natural person à general s. 6 rule § If author is a corporation, term is 50 years from the making of the work (s. 10(1)) (this is because the
owner of the negative or the plate is deemed to be the author under s. 10(2)) § Note that this rule applies when the corporation is the author & not necessarily the owner § But if the majority shareholder is a natural person who would qualify as author but for s. 10(2), then
normal s. 6 rule applies (s. 10(1.1)) (still, authorship remains with corporation) o Cinematographic works
§ Term depends on whether the “arrangement or acting form of the combination of incidents represented give the work a dramatic character” (s.11.1)
§ Dramatic works à usual s. 6 rule (usually author = director) § No dramatic character à 50 years from the first publication + remainder of calendar year
• E.g. unedited coverage, most films of live events o Unpublished works
§ Until 1997 copyright amendments, unpublished works had a perpetual term (also for works that haven’t been performed or delivered in public)
§ Now: regular ‘life + 50’ rule if created after July 25, 1997 § Have special transitional rules for works created before that date
-‐ Moral rights o subject to the same term as economic rights (for the same work)
-‐ Neighbouring rights o generally have a term of 50 years from the relevant act (s. 23) o Relevant act = performance or its first fixation, first fixation of sound recording or broadcast
VI. INFRINGEMENT & DEFENCES – GENERAL (P.150)
1. GENERAL ASPECTS
Statute: Copyright Act, s.27 à general infringement provisions 27.(1) It is an infringement of copyright for any person to do, without the consent of the owner of the copyright, anything that by this Act only the owner of the copyright has the right to do.
Statute: Copyright Act, s .2 à “infringing definition
“any copy, including any colourable imitation, made or dealt with in contravention of this Act”
Statute: Copyright Act, s.3 à economic rights (again) 3. (1) For the purposes of this Act, “copyright”, in relation to a work, means the sole right to produce or reproduce the work or any substantial part thereof in any material form whatever, to perform the work or any substantial part thereof in public or, if the work is unpublished, to publish the work or any substantial part thereof, and includes the sole right
• (a) to produce, reproduce, perform or publish any translation of the work, • (b) in the case of a dramatic work, to convert it into a novel or other non-dramatic work, • (c) in the case of a novel or other non-dramatic work, or of an artistic work, to convert it into a dramatic work, by way of
performance in public or otherwise, • (d) in the case of a literary, dramatic or musical work, to make any sound recording, cinematograph film or other
contrivance by means of which the work may be mechanically reproduced or performed, • (e) in the case of any literary, dramatic, musical or artistic work, to reproduce, adapt and publicly present the work as a
cinematographic work, • (f) in the case of any literary, dramatic, musical or artistic work, to communicate the work to the public by
telecommunication, • (g) to present at a public exhibition, for a purpose other than sale or hire, an artistic work created after June 7, 1988, other
than a map, chart or plan, • (h) in the case of a computer program that can be reproduced in the ordinary course of its use, other than by a reproduction
during its execution in conjunction with a machine, device or computer, to rent out the computer program, and • (i) in the case of a musical work, to rent out a sound recording in which the work is embodied,
and to authorize any such acts.
-‐ general rule (s. 27): -‐ Infringing defined as (s.2) (above)
o recall: copyright = a negative right o infringement = the exercise of an exclusive right (s. 3 rights) without the copyright owner’s permission (unless
there’s a statutory exemption) -‐ material facts for infringement
o existence of copyrighted work o ownership of copyright in the work o defendant’s infringing act by exercise of one of copyright owner’s exclusive rights (e.g. infringing
reproduction) o absence of copyright owner’s consent
-‐ economic rights (s.3) listed at p. 151-‐152 o note that the rights only apply to a “work”
-‐ s. 3 economic rights are a bundle of rights because of the history of the copyright legislation o have different rights for different categories because the UK Act (the legislation the Copyright Act derives
from) consolidated different statutes o the core copyright right = “the right to produce or reproduce work or any substantial part thereof in any
material form whatever” o at time of Statute of Anne, rights created in relation to printing… as new technologies were developed, new
rights were added § e.g. right to make copies is crucial for books but the right of public performance is more important in
the music industry
o J. Binnie (in SOCAN) describes the evolution of copyright as works are disseminated on the Internet o Another evolution that was added: rights to prevent unauthorized derivatives (e.g. film based on novel) o The bundle of different rights is compensated for with the introductory paragraph in s. 3 that applies to all
categories of works -‐ Again, copyright protects original expression not independent creation
o Sliding scale for infringement : the simpler the expression, the more exact of a copy the second person’s work should be before infringement is found (to prevent copyright holder form getting a monopoly on the idea)
o illustrated in Boutin v. Bilodeau: SCC upheld lottery tickets as copyrightable literary works. Despite being very simple expression, held that defendant’s were infringing because they were nearly identical tickets
2. REPRODUCTION (P. 154) -‐ s. 3 the copyright owner has the sole right to
o “produce or reproduce the work or any substantial part thereof in any material form whatever” -‐ 3 step test to determine whether a work has been reproduced without permission; plaintiff must establish:
o 1) Copyright § plaintiff created or otherwise owns a copyright in a protected work
o 2) Objective Similarity § b/w the plaintiff’s work & the defendant’s material § NB: immaterial whether defendant’s product is copyrighted
o 3) Access § defendant had access to plaintiff’s work § presumed if plaintiff’s work = widely disseminated; rebuttable if plaintiff can show the contrary
-‐ à the test requires a causal connection b/w the objectively similar alleged infringing material & the plaintiff’s work -‐ note: copyrightability & infringement are considered separately
o test for copyright: author, original expression, fixation (generally) & work o test for infringement: unauthorized copying of protected original expression which requires that plaintiff
establish 3 step test § … but infringement can affect whether someone’s work is original § often the requirement for original expression won’t be met b/c the individual copied someone else
-‐ can also have a situation where someone meets requirements for copyright but still infringes someone else’s work o e.g. author of compilation (original selection or arrangement) which includes a copyrighted contribution
without the author’s permission -‐ unlike patents (exclusive rights to invention even against someone who independently invents it later), copyright
doesn’t à monopoly on protected expression o a truly independent creation is not a copy; need to prove access o e.g. Verge v. Imperial Oil Ltd.: plaintiff couldn’t prove that Imperial Oil had access to his work (Hockey Night in
Canada jingle) o theoretically possible that someone to create an identical work later with no infringement because there was
no copying by 2nd author § e.g. of traveling author & city author who wrote the same song
-‐ more likely: 2 similar works; access = contested -‐ act of copying can often be inferred by comparing the 2 works
o e.g. Motel 6 logo -‐ an “unconscious” reproduction is considered a copy
o Francis Day case: plaintiff must show the defendant was familiar with original work & that a causal connection linked familiarity to the work
o Needs to be a substantial part of the “remembered” work -‐ Théberge on the meaning of “to produce or reproduce”
o The essence of reproduction is multiplication o “no new reproductions of the respondent’s works were brought into existence” o “division cannot logically be characterized as reproduction” o can’t “allow artists to regulate what can or cannot be done with posters”; “there would be no even
reasonable “bright line” between infringing and non-‐infringing conduct”
o we do protect metaphorical copying (transfer to another medium) & transfers from 2D to 3D, etc. – but not a literal physical, mechanical transfer
o there is no independent meaning to “produce” as distinguished from “reproduce” o same way that purchaser of poster can cut it up, frame it or laminate it
-‐ reproduction applies only if a substantial part of a work is copied o e.g. short quotes can be reproduced from larger work o no set formula for determining what “substantial” means o related more to quality rather than quantity (although quantity is a factor)
§ e.g. the hook of a song’s melody is small but qualitatively important à ringtones are a substantial part of a musical work
-‐ reproduction also applies to non-‐literal copying (metaphorical) o e.g. abridgment of a novel is usually a reproduction o e.g. adaptation of a copyrighted novel into a play o e.g. translation of novel into another language o reproducing a work in another medium will be an infringement if a substantial part of the original expression
of the work is copied § e.g. 3D Popeye doll = infringement of 2D drawing § e.g. 3D polygon sculpture does not infringe 1D drawing of polygons (don’t want a monopoly on polygon
progression) o English CA case involving tableau vivant (humans reenacting a painting) was not held to be a reproduction
§ but s. 3(1)(c) of the Act names the conversion of an artistic work into a dramatic work as part of the author’s bundle of exclusive rights…
§ seems that this would require a separate analysis … § English CA’s decision is in line with the decision to deny copyright protection to stage make-‐up in
Merchandising Cop of America § intervention of humans seems to underlie the court’s decision
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3. PUBLICATION (P. 166) -‐ Section 2.2 CA provides in part that publication in relation to works includes “making copies of a work available to
the public “, which probably includes the internet, although the definition excludes communication to the public by telecommunication and public performance.
-‐ The right is limited to a first publication. -‐ The right of publication in respect of translations is limited to first publication, after which the usual rights
(reproduction of a substantial part, performance in public, communication to the public, etc.) would apply.
4. COMMUNICATION TO THE PUBLIC / PUBLIC PERFORMANCE (P. 166) -‐ The CA includes both the right of public performance and the right of communication to the public by
telecommunication (ss. 3(1) and 3(1)(f)).
Statute: Copyright Act, s.2 à definition of “performance”
“performance” means any acoustic or visual representation of a work, performer’s performance, sound recording or communication signal, including a representation made by means of any mechanical instrument, radio receiving set or television receiving set -‐ The term “in public” was defined to say openly, without concealment and to the knowledge of all. -‐ A distinction should be made between the communication to the public (s. 3(1)(f)) and a performance in public (s.
3(1)), that is, in a place open to a public o “To the public” is broader than “in public”
-‐ Transmitting music over the internet is a “communication to the public by telecommunication” within the meaning of s. 3(1)(f). [SOCAN v Canada Assn. of Internet providers, 2004 SCC 45]
-‐ Canadian Wireless Telecommunications Assn v SOCAN, 2008 FCA 6: The court concluded that the wireless transmission of the digital audio file of a ringtone is a “communication”, when the transmission is complete, even
though the cellphone owner cannot listen to the music during the transmission and may not listen to it until a later time. Moreover, when the wireless carrier transmits a ringtone to its customers it is a communication “to the public”, even though the customers respond individually and non-‐simultaneously, because it is a series of transmissions of the same musical work to the numerous different recipients.
Statute: Copyright Act, s.2.4 à exception for telecommunication undertakings 2.4 (1) For the purposes of communication to the public by telecommunication, (a) persons who occupy apartments, hotel rooms or dwelling units situated in the same building are part of the public, and a
communication intended to be received exclusively by such persons is a communication to the public; (b) a person whose only act in respect of the communication of a work or other subject-‐matter to the public consists of providing
the means of telecommunication necessary for another person to so communicate the work or other subject-‐matter does not communicate that work or other subject-‐matter to the public; and
(c) where a person, as part of (i) a network, within the meaning of the Broadcasting Act, whose operations result in the communication of works or other
subject-‐matter to the public, or (ii) any programming undertaking whose operations result in the communication of works or other subject-‐matter to the
public, transmits by telecommunication a work or other subject-‐matter that is communicated to the public by another person who is not a retransmitter of a signal within the meaning of subsection 31(1), the transmission and communication of that work or other subject-‐matter by those persons constitute a single communication to the public for which those persons are jointly and severally liable.
-‐ SOCAN v Canada Assn. of Internet providers, 2004 SCC 45: o The exception in s. 2.4(1)(b) does not apply generally to exempt internet service providers as a class from
liability for copyright infringement for all their activities but only when a particular activity falls within the statutory definition for passive intermediaries.
5. ADAPTION AND TRANSLATION (P. 173) -‐ Adaptations or derivatives:
o A right to convert (adapt) dramatic works into non-‐dramatic works (s. 3(1)(b)); o A right to convert novels and other non-‐dramatic works and artistic works into dramatic works (s. 3(1)(c)); o A right to adapt and publicly present literary, dramatic, musical and artistic works as a cinematographic work
(s. 3(1)(e)). -‐ The adaptation right is infringed when what is taken to create a derivative work exceeds the underlying idea and
consists of all or a substantial part of the protected copyrighted expression. -‐ The adaptation right implicates the importance of maintaining the balance between protecting the author’s right to
adapt the original expression of the work while maintaining the public’s right to use the ideas and to use the tangible property containing the original expression.
-‐ US legislation concerning adaptations: o The American statutory language is particularly expansive, including in particular the words “any other form in
which a work may be recast, transformed, or adapted…” o There is no counterpart in Canadian legislation (“production or reproduction of the work … in any material
form whatever”) -‐ The adaptation itself may be subject to copyright if it meets the required conditions, including originality, in which
case it would enjoy its own protection, without affecting the protection of the underlying work. o Remember that a work can meet the requirements of the CA and be copyrightable even though it infringes
another work’s copyright.
Case: Roberton v Lewis [1976] US (p.177)
Facts -‐ Two composers arranged old Scottish songs
Issue: -‐ Did they have copyright in their arrangements?
Held -‐ Yes, they had separate copyrights in their respective works.
Reasoning -‐ It is often the case that the traditional work (e.g. folksong) is not eligible for copyright protection (e.g., it is in the
public domain because of its age or it lacks an identifiable author for copyright purposes), but the adaptation or translation may be able to be copyrighted because there is identifiable author and providing that the test for originality under CCH is satisfied
6. MECHANICAL REPRODUCTION (P. 177)
Statute: Copyright Act, s.3(1)(d)
(d) in the case of a literary, dramatic or musical work, to make any sound recording, cinematograph film or other contrivance by means of which the work may be mechanically reproduced or performed, -‐ Compo Co v Blue Crest Music Inc, [1980] (p. 177)
o The Supreme Court held that to “make” a sound recording includes the person who physically makes the recording, but that it can also include persons at other points in the production chain and those who were not directly involved in the physical production of the recording but who act analogously to a general contractor.
7. PUBLIC EXHIBITION (P. 178) -‐ A right of public exhibition was added to the Act in 1988 to give copyright owners of artistic works an analogous
right to public performance.
Statute: Copyright Act, s.3(1)(g) (g) to present at a public exhibition, for a purpose other than sale or hire, an artistic work created after June 7, 1988, other than a map, chart or plan,… -‐ The exclusion of display for the purposes of sale or rental preserves the distinction between the rights of the owner
of the copyright in the artistic work and the owner of the tangible property embodying that expression. o E.g., the protection does not apply to art displayed in a gallery for the purpose of sale but is does apply to art
displayed in a museum or other public exhibition. -‐ The right belongs to the artistic work’s copyright owner, who may not be the author. -‐ The right of public exhibition is not a moral right and thus can be assigned by the author. -‐ European Union: droit de suite entitles a visual artist (and heirs) to a resale royalty each time one of the artist’s
artistic works is resold at a public auction or sale.
8. RENTAL (P. 179)
Statute: Copyright Act, s.3(1)(h),(i)
(h) in the case of a computer program that can be reproduced in the ordinary course of its use, other than by a reproduction during its execution in conjunction with a machine, device or computer, to rent out the computer program, and
(i) in the case of a musical work, to rent out a sound recording in which the work is embodied, … -‐ In the case of sound recordings, a separate rental right is given to the maker (producer) of the sound recording and
the performing artist (ss. 18(1)(c) and 15(1)(c)).
Statute: Copyright Act, s.2.5
2.5 (1) For the purposes of paragraphs 3(1)(h) and (i), 15(1)(c) and 18(1)(c), an arrangement, whatever its form, constitutes a rental of a computer program or sound recording if, and only if,
(a) it is in substance a rental, having regard to all the circumstances; and (b) it is entered into with motive of gain in relation to the overall operations of the person who rents out the computer program or sound recording, as the case may be.
(2) For the purpose of paragraph (1)(b), a person who rents out a computer program or sound recording with the intention of recovering no more than the costs, including overhead, associated with the rental operations does not by that act alone have a motive of gain in relation to the rental operations. -‐ C.A.P.A.C. v Western Fair [1951] (p. 179)
o The Supreme Court concluded that “motive of gain” in s. 2.5(1)(b) is a much wider expression than “private profit”, and it cannot be restricted to circumstances where the motive of gain is the main or the only motive.
9. AUTHORISATION (P. 179) -‐ The right to “authorize” any of the acts mentioned in s. 3 is a distinct right from the performance of those acts
themselves.
CCH case (p. 179): -‐ Prior to the CCH, Canadian courts had said several times that to authorize was to “sanction, approve or
countenance”, but the exact meaning of those words (especially “countenance”) was not entirely clear. -‐ In CCH, it was said that “countenance” in the context of authorizing copyright infringement must be understood in
its strongest dictionary meaning, namely, “give approval to, sanction, permit, favour, encourage”. -‐ There is no duty on the part of a technology provider whose technology can credibly be used for a substantial non-‐
infringing purpose to check whether users of that technology are complying with copyright. The provider should not however suggest or encourage infringing behaviour. o E.g.: authorizing the mere use of equipment that could be used to infringe copyright does not amount to a
violation of the right to authorize. -‐ Active and passive authorizations (established in the CCH case):
o Active authorization: to proactively encourage (in a way that is likely to influence the direct infringer’s conduct) or to formally instruct another to perform a restricted act or to expressly approve such an act (if the approving person is in a position to approve the other person’s behaviour).
o Passive authorization: there are 2 types of passive situations: § 1. One may fail to exercise a duty to control (imposed by the existence of a type of relation that
requires supervision and then to the extent that the performance of the restricted act was reasonably required or foreseeable as part of the functions subject to the duty to supervise).
§ 2. If there is no duty to control, then the dual use analysis above applies: if someone simply provides dual use means to another, and does not expressly encourage (through advertising or otherwise) infringing behaviour, which would fall in the first (“active” part of the analysis), then that person cannot be said to have (passively) authorized the infringement.
-‐ P2P: o The passive/dual use analysis would almost certainly apply to those who provide P2P software because a
substantial number of P2P exchanges are legal (e.g. even without considering the copyright exception for fair dealing, if the person is exchanging material in which he/she owns the right or which is in the public domain).
o But file sharers can be considered to be proactive. Their task is not limited to the making of a copy for “private” use; they have to take at least one additional step to identify the file as available to other P2P users, which is consistent with prima facie infringement.
o It is possible to argue that uploading is covered by either s. 29’s exception for fair dealing or s. 80’s exception for copying sound recording on an audio recording medium for private use, but there are several reasons that go against this: § 1. It seems clear that if either the upload or download is an infringement (of the right of reproduction
and/or the right of communication to the public) then the P2P user who made a file available may be said to have infringed the right to authorize.
§ 2. There are a number of criterions to be satisfied for the s. 80’s exception to apply. (more details see p. 184-‐185)
§ 3. Making a file available for P2P users to download may constitute a communication to the public and/or the authorization of such a communication, an act not covered by s. 80, as is made clear in s. 80(2)(c).
§ 4. Even if knowingly make a music file available to other P2P users is considered to be a form of distribution and not a communication to the public, the s. 80 exception does not apply because one of the purposes of such copying would be to distribute.
10. PARALLEL IMPORTATION (P. 188) -‐ The World Trade Organization defines parallel importation as when a product made legally (i.e. not pirated) aboard
is imported without the permission of the intellectual property right holder (e.g. the trademark or patent owner). -‐ Under Canadian trade-‐mark law, it is not an infringement to import and sell in Canada wares produced aboard
where a trade-‐mark was lawfully affixed, even if such goods were not initially meant to be sold in Canada, provided those goods and related services are the same as those that are sold in Canada by or with the authorization of the trade-‐mark holder.
-‐ s. 27.1 CA: o it infringes the copyright in a book for someone to import it into Canada where, although the copy was made
with the copyright’s owner’s consent in the country where the copies were made, the Canadian copyright owner did not consent to the importation, the importer knew or should have known that the book would infringe copyright if the importer had made the copy in Canada, there is an exclusive distributor for the book in Canada, and the infringement took place in the exclusive distributor’s market sector.
o Additionally, it constitutes secondary infringement under s. 27(2) to import for sale or rent a copy of a work that someone knows or should know infringes copyright or would infringe copyright if it had been made in Canada.
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11. MORAL RIGHTS (P.190)
Statute: Copyright Act, s.14 à moral rights
Moral rights 14.1 (1) The author of a work has, subject to section 28.2, the right to the integrity of the work and, in connection with an act mentioned in section 3, the right, where reasonable in the circumstances, to be associated with the work as its author by name or under a pseudonym and the right to remain anonymous. No assignment of moral rights (2) Moral rights may not be assigned but may be waived in whole or in part. No waiver by assignment (3) An assignment of copyright in a work does not by that act alone constitute a waiver of any moral rights. Effect of waiver (4) Where a waiver of any moral right is made in favour of an owner or a licensee of copyright, it may be invoked by any person authorized by the owner or licensee to use the work, unless there is an indication to the contrary in the waiver -‐ The waiver of moral rights must be clear, although the statue does not require that it be in writing (192) -‐ The author’s moral rights have the same term as the economic rights (s.14.2) and hence for the general copyright
term persist after the author’s death for the rest of that calendar year + 50y -‐ On the author’s death the rights pass to the person to whom the moral rights are specifically bequeathed (see
s.14.2(2) and (3)). (192) -‐ Infringement of moral rights -‐
Statute: Copyright Act, s.28.1 à moral rights infringement, generally
28.1 Any act or omission that is contrary to any of the moral rights of the author of a work is, in the absence of consent by the
author, an infringement of the moral rights.
Statute: Copyright Act, s.28.2 à nature of the moral right of intregrity Nature of right of integrity 28.2 (1) The author’s right to the integrity of a work is infringed only if the work is, to the prejudice of the honour or reputation of the author, (a) distorted, mutilated or otherwise modified; or (b) used in association with a product, service, cause or institution Where prejudice deemed (2) In the case of a painting, sculpture or engraving, the prejudice referred to in subsection (1) shall be deemed to have occurred as a result of any distortion, mutilation or other modification of the work. When work not distorted, etc (3) For the purposes of this section, (a) a change in the location of a work, the physical means by which a work is exposed or the physical structure containing a work, or (b) steps taken in good faith to restore or preserve the work shall not, by that act alone, constitute a distortion, mutilation or other modification of the work -‐ S.28(2) refers to the right to the integrity of a “work” and thus relates to the intangible protected copyrighted
expression (192) -‐ S. 28(2) is not so much concerned with damage to the initial physical creation but applies to distortion, mutilation or
modification of ANY tangible embodiment of that intangible protected expression, including copies (192) -‐ moral rights can be held only by the “author of the work” and only in relation to “works” under s. 3 of the Copyright
Act (190) -‐ Three statutory exceptions to the rule that the author is the first owner: employees (s.13.3); Crown copyright (s.12);
and photographs (s.10.2 – the author is the person who owns the negative or plate) -‐ The principle is that moral rights are based on the connection between the author’s personality and the work – this
presupposes a human author although i.e. the author of a photograph can be a corporation (190) -‐ The association right (attribution right)
o Protects both the author’s right to have his or her name (or pseudonym) on a work and conversely, the right to be autonomous (191)
Théberge reference: the court acknowledged that the artist could have asserted a violation of the moral right of association when the artist’s signature from the posters was deleted on the reproductions.
-‐ The attribution right does not protect all misuses of an author’s name; it is limited to “works” as defined under s.3
i.e. where the author’s work is reproduced and his/her name is removed or someone else’s name is put in place -‐ The attribution right does not protect the author from having his or her name put on a different work that is not the
author’s and that is not a reproduction of the author’s work (191) -‐ However, other legal remedies such as passing off or the tort of misappropriation of personality are available (191)
Statute: Copyright Act, s.35, 38.1 & 42 à remedies for infringement
Liability for infringement 35. (1) Where a person infringes copyright, the person is liable to pay such damages to the owner of the copyright as the owner has suffered due to the infringement and, in addition to those damages, such part of the profits that the infringer has made from the infringement and that were not taken into account in calculating the damages as the court considers just. Proof of profits (2) In proving profits, (a) the plaintiff shall be required to prove only receipts or revenues derived from the infringement; and (b) the defendant shall be required to prove every element of cost that the defendant claims. Statutory damages
38.1 (1) Subject to this section, a copyright owner may elect, at any time before final judgment is rendered, to recover, instead of damages and profits referred to in subsection 35(1), an award of statutory damages for all infringements involved in the proceedings, with respect to any one work or other subject-‐matter, for which any one infringer is liable individually, or for which any two or more infringers are liable jointly and severally, in a sum of not less than $500 or more than $20,000 as the court considers just. Where defendant unaware of infringement (2) Where a copyright owner has made an election under subsection (1) and the defendant satisfies the court that the defendant was not aware and had no reasonable grounds to believe that the defendant had infringed copyright, the court may reduce the amount of the award to less than $500, but not less than $200. Special case (3) Where (a) there is more than one work or other subject-‐matter in a single medium, and (b) the awarding of even the minimum amount referred to in subsection (1) or (2) would result in a total award that, in the court’s opinion, is grossly out of proportion to the infringement, the court may award, with respect to each work or other subject-‐matter, such lower amount than $500 or $200, as the case may be, as the court considers just. Collective societies (4) Where the defendant has not paid applicable royalties, a collective society referred to in section 67 may only make an election under this section to recover, in lieu of any other remedy of a monetary nature provided by this Act, an award of statutory damages in a sum of not less than three and not more than ten times the amount of the applicable royalties, as the court considers just. Factors to consider (5) In exercising its discretion under subsections (1) to (4), the court shall consider all relevant factors, including (a) the good faith or bad faith of the defendant; (b) the conduct of the parties before and during the proceedings; and (c) the need to deter other infringements of the copyright in question. No award (6) No statutory damages may be awarded against (a) an educational institution or a person acting under its authority that has committed an act referred to in section 29.6 or 29.7 and has not paid any royalties or complied with any terms and conditions fixed under this Act in relation to the commission of the act; (b) an educational institution, library, archive or museum that is sued in the circumstances referred to in section 38.2; or (c) a person who infringes copyright under paragraph 27(2)(e) or section 27.1, where the copy in question was made with the consent of the copyright owner in the country where the copy was made. Exemplary or punitive damages not affected (7) An election under subsection (1) does not affect any right that the copyright owner may have to exemplary or punitive damages. Offences and punishment 42. (1) Every person who knowingly (a) makes for sale or rental an infringing copy of a work or other subject-‐matter in which copyright subsists, (b) sells or rents out, or by way of trade exposes or offers for sale or rental, an infringing copy of a work or other subject-‐matter in which copyright subsists, (c) distributes infringing copies of a work or other subject-‐matter in which copyright subsists, either for the purpose of trade or to such an extent as to affect prejudicially the owner of the copyright, (d) by way of trade exhibits in public an infringing copy of a work or other subject-‐matter in which copyright subsists, or (e) imports for sale or rental into Canada any infringing copy of a work or other subject-‐matter in which copyright subsists is guilty of an offence and liable (f) on summary conviction, to a fine not exceeding twenty-‐five thousand dollars or to imprisonment for a term not exceeding six months or to both, or (g) on conviction on indictment, to a fine not exceeding one million dollars or to imprisonment for a term not exceeding five years or to both. Possession and performance offences and punishment (2) Every person who knowingly (a) makes or possesses any plate that is specifically designed or adapted for the purpose of making infringing copies of any work or other subject-‐matter in which copyright subsists, or (b) for private profit causes to be performed in public, without the consent of the owner of the copyright, any work or other subject-‐matter in which copyright subsists is guilty of an offence and liable (c) on summary conviction, to a fine not exceeding twenty-‐five thousand dollars or to imprisonment for a term not exceeding six
months or to both, or (d) on conviction on indictment, to a fine not exceeding one million dollars or to imprisonment for a term not exceeding five years or to both. Power of court to deal with copies or plates (3) The court before which any proceedings under this section are taken may, on conviction, order that all copies of the work or other subject-‐matter that appear to it to be infringing copies, or all plates in the possession of the offender predominantly used for making infringing copies, be destroyed or delivered up to the owner of the copyright or otherwise dealt with as the court may think fit. Limitation period (4) Proceedings by summary conviction in respect of an offence under this section may be instituted at any time within, but not later than, two years after the time when the offence was committed. Parallel importation of books (5) No person may be prosecuted under this section for importing a book or dealing with an imported book in the manner described in section 27.1.
-‐ The term “copyright” refers to economic rights in s.3 “works” -‐ “moral rights” are not classified as “copyright” -‐ Many parts of the Act apply only to “copyright” and thus do not apply to moral rights; i.e. the exceptions (fair
dealing and others), some remedies such as statutory damages (s.38.1) and the option to recover both damages and account of profits (s.35) and criminal offences (s.42) are limited to copyright infringements
-‐ Moral rights stem from the civil law concept of droit d’auteur (193)
Théberge reference: Binnie explained the statutory provision of moral rights in the context of Canada’s dualist backdrop of common law “copyright” and civil law droit d’auteur. “The important feature of moral rights is the present statute is that the integrity of the work is infringed only if the work is modified to the prejudice of the honour or reputation of the author.” (s.28.2(1)) Referring to Snow v. Eaton Centre Ltd.: “Thus, even though the flying geese had been sold and paid for, the artist was able to reach across the ownership divide to take action against a successor owner not for infringing his economic rights but for violating his moral rights, i.e. for penetrating what both he and the judge regarded as an attack on the artistic integrity of the descending flock.” (see pg. 193-‐194 for more case citations)
Case: Snow v. Eaton Centre
Facts -‐ Ribbons on goose installation offended artist
Issue: -‐ Were the artists moral rights violated?
Held -‐ That there was a violation of moral rights associated with the work, in part because the artist felt greatly offended
by the modification (195 Reasoning -‐ The court determined a test for the evaluation of “prejudice” that includes both a subjective and an objective
component: while the author must genuinely feel offended, the prejudice must be based on some objective foundation (195)
-‐ Although copyright protects intangible original expression, the types of works specified in s. 28.2(2) for deemed infringement – sculptures), paintings and engravings – recognizes that the initial physical embodiment of this visual art is significant to the artist (but remember that copies also come within this scope because they are “works” as well) (195
Case: Prise de parole v. Guerin
Facts -‐ Author of something that got put into compilation is offended at association. The author opposed the
reproduction of parts of his novel in a compilation asserting that leaving out parts of his novel that he considered essential amounted to mutilation of his work (196)
-‐ Note that the work here was a novel – s. 28.2(2) is limited to paintings, sculptures and engravings and therefore did not apply and the author’s moral rights claim was rejected by the Federal Court
Issue: -‐ Were the authors moral rights violated?
Held -‐ No. The need expressed in Snow for the author’s subjective “feeling” or a prejudice to his reputation or honour
must be reinforced by objective elements Reasoning -‐ Discussion of the dual subjective/objective criteria for evaluating whether the infringement was a “prejudice of
the author’s honour and reputation”: o The subjective criterion – the author’s opinion as to whether an infringement was prejudicial o The objective criterion – based on public or expert opinion as to whether the distortion, mutilation or other
modification is prejudicial to the author’s honour and reputation (196) -‐
Case: Robinson v. Films Cinar
Facts -‐ The case involved an author’s moral rights claim related to a children’s television series and its fictional character
Robinson Curiosity, against a studio to whom the author had approached for a development deal which produced an animated series called “Robinson Sucroe” featuring a similar explorer character
Issue: -‐ Were moral rights infringed?
Held -‐ No. The QC Superior Court held that because a cinematographic work is not within the provision of s.28.2(2),
evidence that the author was disappointed and even shocked by the way the work is used does not suffice for an infringement right to the integrity of the work which requires evidence that the plaintiff’s reputation was objectively tarnished
-‐ Reinforced Prise de Parole ‘subjective/objective’ test à or works that do not fall under the specific statutory regime provided for paintings, sculpture or engraving, the plaintiff must how that his reputation was objectively tarnished (197)
-‐ An author may be able to show prejudice to his/her honour or reputation if i.e. the author has a policy of never
approving his/her work for commercial use and many times publically criticized musical groups for “selling out” and in the case that the author’s music is used for a tv commercial and this would cause the author’s fans to think that he/she is a hypocrite (198)
12. SECONDARY INFRINGEMENT (P.199)
Statute: Copyright Act, s.27(2) à secondary infringement
27(2) It is an infringement of copyright for any person to (a) sell or rent out, (b) distribute to such an extent as to affect prejudicially the owner of the copyright, (c) by way of trade distribute, expose or offer for sale or rental, or exhibit in public, (d) possess for the purpose of doing anything referred to in paragraphs (a) to (c), or (e) import into Canada for the purpose of doing anything referred to in paragraphs (a) to (c),
a copy of a work, sound recording or fixation of a performer’s performance or of a communication signal that the person knows or should have known infringes copyright or would infringe copyright if it had been made in Canada by the person who made it. Knowledge of importer (3) In determining whether there is an infringement under subsection (2) in the case of an activity referred to in any of paragraphs (2)(a) to (d) in relation to a copy that was imported in the circumstances referred to in paragraph (2)(e), it is irrelevant whether the importer knew or should have known that the importation of the copy infringed copyright. Plates (4) It is an infringement of copyright for any person to make or possess a plate that has been specifically designed or adapted for the purpose of making infringing copies of a work or other subject-‐matter. Public performance for profit (5) It is an infringement of copyright for any person, for profit, to permit a theatre or other place of entertainment to be used for the performance in public of a work or other subject-‐matter without the consent of the owner of the copyright unless that person was not aware, and had no reasonable ground for suspecting, that the performance would be an infringement of copyright.
-‐ Secondary infringement applies to unlawful copies “that the person knows or should have known infringes copyright
or would infringe copyright if it had been made in Canada by the person who made it” -‐ Secondary infringement does not refer to acts done to lawful copies i.e. purchase of a lawful copy (i.e. CD) which
gives the owner of that copy the right to resell his property
Reference to CCH: the Supreme Court ruled that there was no secondary infringement in the Great Library: [80] Under s. 27(2)(a) of the Copyright Act, it is an infringement of copyright to sell a copy of a work that the person knows or should have known infringes copyright, a practice known as secondary infringement. The majority at the Court of Appeal rejected the allegation of secondary infringement on the ground that it was not established that the Law Society knew or should have known it was dealing with infringing copies of the publishers’ works. The publishers appeal this finding on cross-‐appeal. [81] At the Court of Appeal, Rothstein J.A., in his concurring judgment, properly outlined the three elements that must be proven to ground a claim for secondary infringement: (1) the copy must be the product of primary infringement; (2) the secondary infringer must have known or should have known that he or she is dealing with a product of infringement; and (3) the secondary dealing must be established; that is, there must have been a sale. [82] In the main appeal, I have concluded that the Law Society did not infringe copyright in reproducing the publishers’ works in response to requests under its custom photocopy service. Absent primary infringement, there can be no secondary infringement. I would dismiss this ground of cross-‐appeal. -‐ However, importation (s.27(2)(e)) is treated differently than the acts described in ss.27(2)(a) to (d). For importation,
the Act requires only a hypothetical primary infringement, namely that the works would have infringed copyright if they had been made in Canada by the persons who made them outside of Canada (200)
-‐ The Act therefore has a primary infringement regime under s. 27(1), and a secondary infringement regime under s. 27(2) which distinguishes between acts that require primary infringement and importation (200)
-‐ Kraft Canada Inc. v. Euro Excellence Inc. o the plaintiff unsuccessfully tried to prevent the importation into Canada of chocolate made in Europe arguing
that it was secondary infringement of the copyright of an artistic work on the chocolate bar wrapping (201) o All SCC judges and the parties agreed that copyright subsisted in the logo for the chocolate bar as an artistic
work resulting from the exercise of skill and judgment. The plaintiff was the exclusive licensee of the copyright but it was the Canadian copyright owner that manufactured the bars in Europe
o 4/7 judges concluded that s.27(2)(e) did not apply because secondary infringement requires a hypothetical primary infringement but that was not present on the facts since the copyright owner has made the bars in Europe and could not be liable to its own exclusive licensee for copyright infringement (201)
o 3/7 judges concluded that s.27(2)(e) did not apply because although the chocolate wrapping was a copyrightable work, to be protected against secondary infringement a copyrighted work “must be more than merely incidental to the consumer good to which it is affixed”. Justice Bastarache reasoned that s.27(2)(e) “is meant to protect copyright holders from unauthorized importation of works which are the result of their skill and judgment. It is not meant to protect manufacturers from unauthorized importation of consumer goods
on the basis of their having a copyrighted work affixed to their wrapper, this work being merely incidental to their value as consumer goods.” (203)
-‐ S. 27(2)(e) was added by Parliament to correct a gap in the protection previously granted under s.27(1) -‐ Although it is illegal to reproduce a work under s.27(1), the importation of and dealing in copied works when the
reproduction took place in a foreign country was not previously covered. -‐ To determine whether a sale has taken place under s.27(2), normal contract law principles apply and the sale
(though not the reproduction) must take place in Canada (203)
13. PRINCIPLE DEFENCES (P.204) -‐ To establish infringement, the plaintiff must prove:
1. Ownership in a copyrighted work; 2. Objective similarity between the copyrighted work and the defendant’s material; and 3. Access by the defendant (204)
Defence 1: There is no copyrightable work -‐ This argument occurs most often when there is a question about originality and given that the originality standard is
relatively low this primarily arises with functional and factual works i.e. original selection or arrangement of a compilation (204)
Defence 2: No reproduction or other restricted act took place -‐ One can argue that there was no reproduction because the allegedly copied work does not have many similarities
with the original work or that there was no multiplication -‐ Public performance, communication to the public, adaptation, rental or other restricted act did not take place (205)
Defence 3: Only the idea, not the expression was taken -‐ Premised on the principle that the copyright owner has rights only in the original expression and that ideas are free
for others to use -‐ Often applied in suits involving computer programs where absent literal cut and paste copying it is difficult to
determine whether the idea or the expression of a computer program was used -‐ Copyright protection of the code can extend to non-‐literal infringement -‐ In Delrina Corp v. Triolet Systems Inc. the ONT CA developed a three step analysis:
o Whether copying has taken place; o Then it considers whether what was copied was protected expression; and o Whether what was copied was a substantial part of the original program
-‐ Only if all three conditions are filled can it be said that an infringement has taken place (207) -‐ Re non-‐literal copying: most programs contain standard sections and or/tools and techniques. The protection of
copyright does not extend to those parts. (208) -‐ The Copyright Act does not prevent someone from programming a computer to perform the same function as
another program, but it does prevent someone from following another program’s original structure (208)
Defence 4: Only an insubstantial part was taken -‐ The definition of “substantial part” is determined by the quality and not the quantity i.e. is the amount taken plainly
recognized by any person? Examples of excepts of a musical work in Hawkes and Son (London) Ltd. v. Paramount Film Service, Ltd. (209)
-‐ The impact on the plaintiff’s potential market is also relevant i.e. a magazine prints only juicy romantic stories from a celebrity memoir without permission – those romantic details was what fans were most interested in hence would not go on to purchase the full memoir (210)
-‐ The context in which he defendant uses the material may also be relevant – see U.K. approach – hard to reconcile with CA law (211)
Defence 5: There is a license or consent
-‐ Restricted acts are infringing only if someone exercises an exclusive right of the copyright owner without the copyright owner’s consent.
-‐ Evidence of consent largely depends on the facts and the plaintiff’s behavior; if a person has obtained a license or can infer consent from the acts of the copyright owner, no infringement has taken place (211)
Defence 6: Challenging the plaintiff’s title to a work (204) Defence 7: reasonably justified ignorance of a copyright -‐ This limits the available remedies but does not function as a full defence (211) -‐ Under s.39, if the defendant proves that at the time of the infringement the defendant was not aware and had no
reasonable ground for suspecting that there was copyright in the plaintiff’s work, the plaintiff is entitled only to an injunction and cannot be awarded damages
Statute: Copyright Act, s.39 à ignorance of a copyright
Injunction only remedy when defendant not aware of copyright 39. (1) Subject to subsection (2), in any proceedings for infringement of copyright, the plaintiff is not entitled to any remedy other than an injunction in respect of the infringement if the defendant proves that, at the date of the infringement, the defendant was not aware and had no reasonable ground for suspecting that copyright subsisted in the work or other subject-‐matter in question. Exception where copyright registered (2) Subsection (1) does not apply if, at the date of the infringement, the copyright was duly registered under this Act.
-‐-‐-‐-‐-‐-‐-‐-‐-‐-‐-‐-‐-‐-‐-‐-‐-‐-‐-‐BARBARA CLASS 9 -‐-‐-‐-‐-‐-‐-‐-‐-‐-‐-‐-‐-‐-‐-‐-‐-‐-‐-‐-‐-‐
14. STATUTORY DEFENCES (P. 212) a) A Hierarchy of Exceptions? (p. 212)
Statute: Copyright Act, s.29+ à Fair Dealing (research/private study/criticism/review/news-‐reporting) 29. Fair dealing for the purpose of research or private study does not infringe copyright. 29.1 Fair dealing for the purpose of criticism or review does not infringe copyright if the following are mentioned:
(a) the source; and (b) if given in the source, the name of the
(i) author, in the case of a work, (ii) performer, in the case of a performer’s performance, (iii) maker, in the case of a sound recording, or (iv) broadcaster, in the case of a communication signal.
29.2 Fair dealing for the purpose of news reporting does not infringe copyright if the following are mentioned:
(a) the source; and (b) if given in the source, the name of the
(i) author, in the case of a work, (ii) performer, in the case of a performer’s performance, (iii) maker, in the case of a sound recording, or (iv) broadcaster, in the case of a communication signal.
-‐ If one or more of the principal defences apply – because there is no “reproduction” or other restricted act, the
expression was not reproduced, the part is not “substantial” or there was permission from the rights holder – then the statutory defences are not required.
-‐ CCH case (p. 213):
o An interesting part of this case is the apparent establishment of a hierarchy of exceptions.
o There are two copyright exceptions which pertain specifically to libraries and photocopying: § S. 30.2 provides that it is not copyright infringing for a library to make a reprographic reproduction of an
article in certain periodicals or newspapers for a person requesting to use the copy for research or private study.
§ S. 30.3 provides that it is not infringement when a copy of work is made using a photocopier installed by a library (and other specified institutions such as universities) on condition that the institution has posted a copyright warning and has an agreement with a collective society for reprography.
o The court considered, first, whether the actions of the Law Society were fair dealing under the general regime in s. 29 CA. Concluding that it were, the court stated that the Law Society need not rely on the library exemption.
b) The Meaning of Fair Dealing (p. 217)
-‐ CCH case (p. 217) o “research” in s. 29 must be given a large and liberal interpretation in order to ensure that users’ rights are not
unduly constrained and that research is not limited to non-‐commercial or private contexts. -‐ SOCAN v Bell Canada (p. 217)
o Facts: § 30 second excepts of musical works in an online music store for consumers to preview music
constitutes fair dealing, and it reiterated that “research” in s. 29 should be given a broad interpretation. o Reasoning: Planning the purchase of a download or CD involves searching, investigation: identifying sites that
offer those products, selecting one, finding out whether the track is available, ensuring that it is the right version or cover and so on. Listening to previews assists in this investigation.
o Held: Research, even when conducted by commercial entities or for-‐profit, still qualifies as research for purposes of fair dealing.
-‐ Fairness
o For ss. 29 and 29.2 to apply, the dealing must not only be for an acceptable purpose, but it must also be fair. o CCH adopts a non-‐exhaustive list of 6 criteria to determine fairness:
§ 1. The purpose of the dealing; § 2. The character of the dealing; § 3. The amount of the dealing; § 4. Alternatives to the dealing; § 5. The nature of the work; and § 6. The effect of the dealing on the work. § **NB: NOT all 6 criteria have to be applied in each case.
o US fair dealing comparison § The purpose and character of the use, including whether such use is of a commercial nature or is for
non-‐profit educational purposes; § The nature of the copyrighted work; § The amount and substantiality of the portion used in relation to the copyrighted work as a whole, and § The effect of the use upon the market for or value of the copyrighted work. § ***NB: during analysis the court must go through all the criteria, not like in the Canadian test.
o *See p. 222 for a table of similarities/differences between the Canadian copyright law and US copyright law. § It seems that US cases on fair use could be used in appropriate Canadian cases, but with the required
degree of caution.
c) Other Possible Impacts (p. 223)
-‐ If fair dealing is a “right” or at least a special exception (whereas ss. 29.4 to 32.2 and s. 80 would contain “normal exceptions”), then fair dealing is normatively on a higher level than other exceptions – possibly on an equal footing with copyright owner’s exclusive rights.
-‐ The choice of a hierarchy of norms, in which fair dealing is normatively higher than other exceptions, seems to imply that an analysis of an allegedly infringing conduct should proceed sequentially, as the Court did in CCH, even if there is a more specific, directly applicable “normal” exception.
-‐ Part of the fairness requirement demands that one use only the part of a protected work needed for the (allowed) purpose. o Possibility that there may be contexts where reproducing the whole work could be fair:
§ Ex: photograph (for photographs, reproducing the whole work may be almost unavoidable but a reproduction in a lower resolution or size may support the fairness of the dealing)
§ Ex: short poem reproduced for the purposes of criticism or review.
(d) Parody and the Public Interest Defence (p. 226)
-‐ Fair dealing for the purpose of parody has never been successfully invoked in a Canadian court. -‐ One argument is that the fair dealing exception for criticism or review does not apply to most parodies because the
statutory criteria expressly require that the source and other information about the copyrighted work be cited, and parodies rarely make explicit reference to the cited source.
-‐ Courts have concluded that the fair dealing exception for criticism and review is intended to apply when there is a criticism of the copyrighted work and not when the copyrighted work is used to criticize the copyrighted work’s author or owner or when the copyrighted work is even more tangentially related to the object of criticism.
-‐ Cases where FREEDOM OF EXPRESSION is also a factor
Case: Michelin & Cie v CAW-‐Canada [1997] FC (p.227) à parody, copryight and freedom of expression
Facts -‐ The national union for automobile workers tried to unionize Michelin’s employees at 3 tire plants and as part of
its campaign distributed leaflets, displayed posters, and circulated information sheets, which used the company’s logo of Bibendum (the Tire Man). The company brought an action against the union based both on trade-‐mark infringements and copyright infringement of the artistic work.
-‐ The union also argued that their campaign material depicted “Bibendum” were forms of expression protected by s. 2b) of the Charter
Held -‐ The FC held that the union infringed Michelin’s copyright in Bidendum and rejected the union’s claim that parody
fits within the exception for fair dealing for the purpose of criticism. -‐ The court concluded that the Charter right to freedom of expression does not give union right to use the
company’s copyrighted works. Reasoning -‐ The Charter does not confer the right to use private property (plaintiff’s copyright) in the service of freedom of
expression. -‐ In the balance of interests and rights, if the defendants have no right to use the plaintiff’s Bibendum, they have a
multitude of other means for expressing their views. -‐ “Parody would be protected against charges of infringement by its dissimilarity to the original work as long as it
did not produce a substantial portion of the original” (p. 233)
Case: St-‐Hubert v. Syndicat St-‐Hubert Drummondville [1986] (p.231)
Facts -‐ During a labour conflict, the union created and designed material criticizing the company’s working conditions
and featuring the rooster mascot (one of the material used by the union was a pamphlet that bore a stylized head of a long-‐toothed rooster carrying a knife; other materials where of a similar nature). The union argued that it had a right of free expression under the Canadian Charter and under the Quebec Charter to use the modified logo to express its dissatisfaction with the employer’s behaviour and attitude
Held -‐ The Quebec Superior Court rejected the freedom of expression argument as ill-‐founded but did not elaborate on
the intersection between copyright and freedom of expression
Case: Canadian Tire v. Union [1985] (p.232)
Held -‐ An interlocutory injunction was granted enjoining a union to stop using the Canadian Tire logo with a slash across
it. Reasoning -‐ As for the defendants, the prohibition by injunction of their use of the plaintiff’s logo is surely not a critical
impairment of their lawful right to convey information to the public. This they can do, and are obviously doing in a variety of other ways.
-‐ While there may be situations where the guarantee of freedom of expression in 2b) of the Charter may properly limit the protection otherwise given to the owners of copyright, this case does not represent such a situation
-‐ The court leaves a door open! -‐ In James Lorimer the FC also mentioned freedom of expression as a valid defence against copyright infringement –
but the facts of that case could not allow such a defence to apply. (see. 232) Cases where Public Interest is a factor:
Case: Lion Laboratories v. Evans [1985] UK (p.235
Facts -‐ To employees of a company that manufactured the device used by the British police to monitor blood alcohol
levels of drivers had published internal company correspondence that showed the models were defective. The company sued for breach of confidence and infringement of copyright.
Held -‐ The court found that there was a “well established” defence of public interest to actions for breach of confidence
and copyright
Case: R. v James Lorimer [1984] FC (p.232)
Reasoning -‐ “I have no doubt that a defence of public interest as enunciated in the English cases is available in proper
circumstances against an assertion of Crown copyright (but the defence was rejected according to the facts of this particular case).
-‐ One difficulty with the public interest defence in Canada is that copyright law is “purely statutory”. -‐ Difficulty is not public interest defence stated in legislation -‐ no implied exceptions
-‐ NB: In addition to economic rights infringement, parodies of copyrighted works can also infringe the author’s moral
rights.
e) Other Exceptions (p. 237)
-‐ While fair dealing applies to specific acts by any user, there are a number of exceptions in the Act (ss. 29.4-‐30) which are available only to particular categories of users. o Many apply only in the absence of a “motive of gain”
o Several exceptions are specific to “educational institutions” (only for non-‐profit institutions and governmental agencies).
o Libraries, archives and museums also benefit from specific exceptions (ss. 30.1-‐30.5) o There is an exception allowing users of computer programs to make a copy of the program if necessary for
compatibility with a particular computer and if solely for the person’s use, provided the copy is destroyed after the person ceases to be the owner of the copy (s. 30.6(a)).
o Also, no infringement for incidental infringement and ephemereal recordings s.30.7, s.30.8
CHAPTER 4: TRADE-‐MARKS
-‐-‐-‐-‐-‐-‐-‐-‐-‐-‐-‐-‐-‐-‐-‐-‐-‐-‐-‐LAURIE CLASS 10-‐-‐-‐-‐-‐-‐-‐-‐-‐-‐-‐-‐-‐-‐-‐-‐-‐-‐-‐-‐-‐ I. INTRODUCTION (P. 317)
1. ORIGIN -‐ General
o “Trademark” = a word, symbol, drawing, shape, packaging, or color(s) or a combination of the preceding used to distinguish the products or services of a person or organization from those of another in the market
o Trade-‐Marks are used in relation to wares (i.e. goods)& services o Trade-‐Marks are a mental link between consumers & the Trade-‐Mark owners o SCC
§ Trademark = “a symbol of a connection between a source of a product and the product itself” § “the purpose of Trade-‐Marks is to create & symbolize linkages”. Over time, that particular link gives the
mark value and Trade-‐Mark law protects that value -‐ Purpose of Trademark law
o By indicating the source of wares/services, the marks distinguish wares/services of one source from another. The idea of distinctiveness underlies the purpose of Trade-‐Mark law
o 2-‐fold purpose to Trade-‐Marks Act § 1) protect the public by indicating the source of goods/services in order that purchaser can reduce their
search costs, identify the level of quality they seek, and receive a similar product or consistent service over time; • informational purpose: helping consumers recognize goods & services more quickly; serving to
identify the product/service that matches the characteristics they seek § 2) to protect the Trade-‐Mark owner against commercial misappropriation of the mark &/or the
goodwill associated with the mark • Purpose of brand differentiation is much more than identification; represent a certain reputation
or lifestyle; link with brand loyalty o à J. Binnie in Mattel (Barbie) case (p. 318) touches on the importance of Trade-‐Marks as intangible assets for
businesses and how Trade-‐Mark is an assurance of quality for consumers such that Trade-‐Mark law is essentially consumer protection legislation
-‐ Jurisdiction o Federal jurisdiction
§ In Canada, Trade-‐Marks are of federal jurisdiction under the general federal power under s. 91(2) § This is different from copyrights & patents, which are explicitly listed under 91(23) & 91(22) § Most statutory law for trade-‐marks is found in the Trade-‐Marks Act, but other statutes effect Trade-‐
Mark law as well (e.g. Competition Act, Criminal Code) o Provincial jurisdiction
§ A substantial portion of Trade-‐Mark law is regulated by the provinces • Torts of passing off, slander of title, injurious falsehood, trade libel • Some of these are under s. 7 of the Trade-‐Mark Act [s.7(3) has been held ultra vires & s. 7(b) has
been upheld as valid exercise of fed power] -‐ Current Trade-‐Mark Act
o Establishes a regulatory scheme for both registered & unregistered marks and provides civil remedies for both o Regulates the adoption, use, transfer & enforcement of rights o Provides for a national registry system
-‐ Advantages of registration o National protection (exclusive right to use the mark in association with the designated ware/service
throughout Canada) whereas unregistered marks ONLY protected in the same “trade area” o The rights can be enforced in Federal Court o Registration has a presumption of validity (other party has burden of showing that the mark is invalid)
-‐ Without registration, the rights in a mark already exist before registration o Registration only extends protection to national exclusive use
-‐ Long quote by J. Lebel in Kirkbi v. Ritvik Holdings about Trade-‐Mark Act’s applicability to registered & unregistered Trade-‐Marks (p. 322-‐323) explaining that these are NOT two separate enforcement regimes; a comprehensive scheme is designed to protect all Trade-‐Marks
2. PURPOSE & THEORY OF PROTECTING TRADE-‐MARKS (P. 323) -‐ Purposes:
o 1) protect consumers § granting right to sue for infringement safeguards public while allowing owners to protect their
intangible assets o 2) Exclusive rights
§ giving owners an exclusive right to use the mark in association with the designated goods/services § marks are protected as indicators of source to distinguish one person’s goods from another’s § Trade-‐Mark law doesn’t provide absolute property rights in the mark itself
-‐ What does a Trade-‐mark allow you to do with it? o Like all other IP, can be sold, licensed & assigned o HOWEVER, in some ways functions differently than other IP
§ Unlike copyright/patent where something is created or invented, there is NO prerequisite for a new creation or invention with Trade-‐Marks (i.e. the mark doesn’t need to be a new word/symbol/design)
§ Quote by J. Binnie in Mattel on how Trade-‐Marks are somewhat of an anomaly in IP law (p. 324) § There is no reward/incentive for the mere creation of the mark and creating the mark doesn’t give the
creator a monopoly on the mark § Trade-‐Mark rights result from use; not from the mark’s creation § The mark has no legal meaning in isolation: rights arise from use of the mark in association with
wares/services and the rights protect the owner’s right to use the mark to indicate source § Requirement of use is crucial to balance Trade-‐Mark law and consistent with the dual purpose of the
Trade-‐Mark Act (protect consumers & intangible asset) § NB Trade-‐Mark rights belong to person who uses the mark to distinguish wares/services and not the
author of the mark (although might have copyright in design) -‐ Length of term for Trade-‐Mark
o Initial term = 15 years but can be renewed as long as criteria for maintaining the mark are met (s. 46) o Potential for indefinite trademark: as long as its in use & distinctive, term can be renewed o This protects the informational purpose of the mark
-‐ Balancing Interests and Comparison with consumer protection o Tempting to think of Trade-‐Mark law as consumer protection but it’s about balancing interests
§ Trade-‐Mark owner’s interests § Vs. Public’s interest in mark’s signalling value, commercial competition, access to the mark for purposes
such as expression) o In sum, the need for fair competition & not to create zones of exclusivity o e.g. competitors can access functional/general aspects (e.g. name of good) & individuals can access marks for
non-‐commercial expressive purposes o “balancing the public right to competition w/ the private right to ownership” (United Artists Pictures v. Pink
Panther Beauty Corp) -‐ 3 essential characteristics of Trade-‐Marks (from Pink Panther)
o 1) Mark o 2) Distinctiveness o 3) Use
II. OBJECT OF THE PROTECTION (P. 329) – THE MARK
-‐ Object = first characteristic: what is a mark? -‐ Reliance on consumer interest
o Traditional IP law deals with monopolies granted to creators & inventors whereas. Trade-‐Mark takes into account the concerns of consumers à if there’s no consumer interest, we won’t enforce Trade-‐Mark
o (except for the depreciation of goodwill at s. 22 which is a pure rights holder right) o NB – in the past, Trade-‐Mark was distinguishable as the ONLY IP right that focuses on the public’s interests but
this is changing as the court is speaking about the public’s interest more and more in copyright and patent too -‐ What is a Trade-‐Mark
o s. 15 of the TRIPS Agreement (p. 330) à A mark is any sign or any combination of signs capable of distinguishing the goods/services of one undertaking from those of other undertakings and can include personal names, letters, numerals, figurative elements & combination of colors as well as any combination of such signs -‐
o NAFTA art. 1708(1) (p. 330) à very similar definition o Trade-‐mark Act (s.2)
Statute: Trade-‐Mark Act, s.2 (“trade-‐mark”) “trade-mark” means
• (a) a mark that is used by a person for the purpose of distinguishing or so as to distinguish wares or services manufactured, sold, leased, hired or performed by him from those manufactured, sold, leased, hired or performed by others,
• (b) a certification mark, • (c) a distinguishing guise, or • (d) a proposed trade-mark;
§ a) traditional marks à a mark that is used by a person for the purpose of distinguishing …wares or services manufactured, sold, leased, hired or performed by him from those of [others] • note that this refers to mark, use & distinctiveness • ware doesn’t mean final product • same mark can be used for one entity’s wares & services (e.g. a restaurant) • includes word marks, phrases, design marks (e.g. golden arches)
o note: design marks can also be copyrighted § b) Certification Mark § c) Distinguishing Guise § d) Proposed Trade-‐Mark
-‐ Issues with Trade-‐Mark not defining “mark” – what counts? o **NB “mark” itself is not defined under the Act – instead, it sets out the purpose of a mark: to distinguish the
sources of wares/services, as a signalling device for consumers of quality, reputation, cost & other traits o Under the Trade-‐Mark Act, if we don’t define a “mark”, what sensory indicators qualify? What qualifies as
“any sign” under TRIPS/NAFTA? § Traditionally, visual (e.g. signs, logos, packaging) § Colors too (as long as not functional) § TRIPS/NAFTA don’t require member states to make visual perceptibility a condition § VISIBLE à Since it’s anything that distinguishes, it COULD be a sound (e.g. jingle) or an odor (e.g.
perfume) if the mark distinguishes one’s wares/services from another’s … but Canadian courts are unwilling to go that far & have stated that the mark MUST be visible (Playboy v Germain)
Case: Playboy v. Germain
Facts -‐ Company selling hair stuff tells customers verbally that their goods are “PLAYBOY”. No visual representation of
mark. Issue: -‐ Is auditory use of the word PLAYBOY a mark?
Held -‐ No
Reasoning -‐ Court states in obiter dictum that: “a “mark” must be something that can be represented visually” -‐ Discussion: really it’s about whether saying a mark that is registered as a visual mark constitutes use of the mark.
Maybe the result would have been different had PLAYBOY tried and been allowed to register it as an auditory mark as well.
-‐ Note: visual perceptibility (visible to eye) isn’t the same as graphical representation (representation of sign through pictures, written description or both)
o a non-‐conventional mark (sound, smell, tactile) could meet the broad definition of mark under s. 2 although it isn’t visibly perceptible à the difficulty is more evidentiary
o as long as it can be graphically represented and precisely defined so that it can be identified/recorded, it should be able to be registered
o i.e. the court saying that the mark needs to be “visually represented” doesn’t mean that it needs to be “visually perceptible”
-‐ Not-‐traditional marks
o Canada has been slow to allow non-‐traditional marks to be registered (e.g. smell, sound, holograms, color, motion, tactile marks)… we keep focusing on visual perceptibility although other jurisdictions will allow non-‐conventional marks that are graphically represented but not visually perceptible (like music!)
o fictional characters are protected (but the less graphic they get the harder it is) o if graphical representations were allowed, music could be registered but applications have been refused o purely auditory marks haven’t been recognized b/c not visually perceptible o scent is even harder b/c it’s hard to represent graphically & isn’t visibly perceptible o motion marks also can’t be represented in fixed form (can only be separate visual stills)
-‐ b) certification mark = given by a third party guaranteeing a certain origin & quality (defined at s. 23) o can only be registered by someone who isn’t engaged in manufacturing, selling, leasing or hiring the
wares/services o mark’s owner doesn’t use it but licenses others to use the mark & their use is deemed to be the use of a
certification mark owner (s. 23(2)) o the mark signifies the standard and isn’t registered with the wares/services themselves o e.g. ISO standards, “certified organic” o note: if the owner of the mark is an unincorporated body, any member can bring an action to prevent
unauthorized use o note: proposed use applications can’t be filed for certification marks
-‐ c) distinguishing guise = shape, wrapping or packaging distinctive to the product (but can’t be functional!) o e.g. shape & color of Perrier bottle o it can refer to the shaping of wares but the ware and the mark shouldn’t be confused (the mark is the
connection between a product and its source) o Additional requirements for distinguishing guise
§ distinctive through use at the time of application (no proposed use) § exclusive use of the distinguishing guise can’t be “likely unreasonably to limit the development of any
art or industry (s.13(1)) § can’t interfere w/ the use of any utilitarian features (s.13(2)) § need evidence of use
§ registration is not automatically national – need evidence used across Canadaà limited to the wares/services and territorial area where it’s been used to be distinctive (s. 32)
§ **why all these additional requirements? à we don’t want Trade-‐Mark to be used as a backdoor for patent law (unlike patent law which is limited to 20 years, Trade-‐Mark protection can be perpetual)
o Just as copyright is separate from the object, distinguishing guise is separate from the functional elements § e.g. Remington Rand v Philips Electronics: arrangement of 3 cutting heads on shaver is primarily
functional § e.g. Dominion Lock Co v Schlage Lock: application for distinguishing guise mark for bow-‐shaped top for
original keys rejected o Kirkbi: LEGO had patent on interlocking blocks. Patent expires. Mega Blocks markets the same toy. LEGO
argues there’s a distinguishing guise. SCC says design is functional & Trade-‐Mark to extend expired patent -‐ d) Proposed trademark
o allows entities to apply for the registration of Trade-‐Mark before using them o TRIPS article 15 o In Canada & US, can file application but will only be registered when commerce begins o Applicant has priority from application date over someone with actual use that is later in time
-‐ A trade-‐name is not the same thing as a trade-‐mark o Trade-‐name = name under which business is carried on o Can also be a Trade-‐Mark (if functions as one) but not necessarily so o Can cause confusion w/ a Trade-‐Mark (s.6(1) and following)
-‐-‐-‐-‐-‐-‐-‐-‐-‐-‐-‐-‐-‐-‐-‐-‐-‐-‐-‐BARBARA CLASS 11-‐-‐-‐-‐-‐-‐-‐-‐-‐-‐-‐-‐-‐-‐-‐-‐-‐-‐-‐-‐-‐
III. REGISTRABLE MARKS
1. SECTION 12 OVERVIEW (P. 342) -‐ To be eligible for registration, a mark must meet the criteria set out in s. 12 TMA:
Statute: Trade-‐Mark Act, s. 12 à registrability 12. (1) Subject to section 13, a trade-‐mark is registrable if it is not
(a) a word that is primarily merely the name or the surname of an individual who is living or has died within the preceding thirty years; (b) whether depicted, written or sounded, either clearly descriptive or deceptively misdescriptive in the English or French language of
the character or quality of the wares or services in association with which it is used or proposed to be used or of the conditions of or the persons employed in their production or of their place of origin;
(c) the name in any language of any of the wares or services in connection with which it is used or proposed to be used; (d) confusing with a registered trade-‐mark; (e) a mark of which the adoption is prohibited by section 9 or 10; (f) a denomination the adoption of which is prohibited by section 10.1; (g) in whole or in part a protected geographical indication, where the trade-‐mark is to be registered in association with a wine not
originating in a territory indicated by the geographical indication; (h) in whole or in part a protected geographical indication, where the trade-‐mark is to be registered in association with a spirit not
originating in a territory indicated by the geographical indication; and (i) subject to subsection 3(3) and paragraph 3(4)(a) of the Olympic and Paralympic Marks Act, a mark the adoption of which is
prohibited by subsection 3(1) of that Act. (2) A trade-‐mark that is not registrable by reason of paragraph (1)(a) or (b) is registrable if it has been so used in Canada by the applicant or his predecessor in title as to have become distinctive at the date of filing an application for its registration.
2. PRIMARILY MERELY A NAME OR SURNAME AND SECTION 12(1)(A) (P. 344) -‐ General
o The rule does not prohibit the registration of marks using only a first name, fictitious name, or historical name (the person is deceased more than 30 years).
o When the number of instances where a word is used as a name or surname is greater than the number of instances where the same word is used in a different context, the evidence shows that a name is mostly used as a name or surname, and the standard of s. 12(1)(a) would be met.
o Examiners and judges use telephone directories and dictionaries as evidence respectively of the word as a name or surname and of other meanings of the word.
-‐ Test for “primarily merely” a name or a surname: o The Trade-‐marks Office practice is that there must be at least 25 entries of the name or surname in Canadian
telephone directories, or the name or surname must be of a famous individual, for an objection under s. 12(1)(a) to be considered. …If that preliminary test is satisfied…
o The Examiner will consider the response of the general public in Canada to that word. § If the evidence shows that the mark has both uses, then to assess whether a mark is “primarily merely”
a name, the Trade-‐mark Office and courts use Canadians’ perceptions of the word to measure whether it is “primarily merely a surname”.
§ If a person in Canada of ordinary intelligence and of ordinary education in English or French would be just as likely, if not more likely, to respond to the word by thinking of it as a brand or mark or some business as to respond to it by thinking of some family of people (that is, by thinking of it as being the surname of one or more individuals), then it is not primarily merely as name or surname. (Standard Oil Co. v Canada, p. 346)
§ The test for “primarily merely a surname” is whether more Canadians perceive the word to be a name or surname rather than as a mark.
§ If the two senses are equally weighted, it is not “primarily merely” a name or surname.
Case: Standard Oil v. Canada (Registrar) [1968]
Facts -‐ The word FIOR was proposed as a trade-‐mark for use on wares described as direct reduction iron ore. The
proposed trade-‐mark was an invented word mark, based on the acronym for “fluid iron ore reduction”. The issue in this case concerned an invented word (with no dictionary meaning) that was also a surname. The Registrar had refused the application for registration on the ground of s. 12(1)(a) because FIOR appeared in Toronto and Montreal telephone directories as a surname and had no dictionary meaning.
Issue: -‐ Is “Fior” primarily merely a surname?
Held -‐ The court concluded that, even though FIOR was listed as a name in telephone directories, it was not “primarily
merely” a name Reasoning -‐ The court reasoned that s. 12(1)(a) is not intended to bar the registration of all words that appear as a surname in
a telephone directory -‐ S. 12(1)(a) was not intended to eliminate the creation of new words for purposes of proposed trade-‐marks
-‐ Examples where the word was a surname but also a dictionary word in a language other than English or French:
o Calona Wines Ltd. v Canada (Registrar of Trade Marks), [1978] 1 FC 591 (p. 347) § Word: Fontana Bianco (for wine) § Fontana is an Italian word for fountain § “I cannot convince myself that the purchasing general public in Canada would respond to the word
“Fontana”, used in conjunction with the words “Bianco” on the label of a bottle of wine, by spontaneously thinking of it as being the surname of an individual.”
§ Held à NOT “primarily merely” a name or a surname. o Galanos v Canada (Registrar of Trade Marks), (1982) 69 CPR (2d) 144 (p. 347)
§ Word: Galanos (for perfume) § The court found that the general public would think of that word as being a brand or trade-‐mark. § Galanos is a Spanish word for elegant or beautiful. § Held à NOT primarily merely a surname
o Nishi v Robert Morse Applicances Ltd., (1990) 34 CPR (3d) 161 (p. 348) § The Federal Court did not accept evidence that Nishi, a Japanese surname, is recognized as such by
many Canadians.
§ “Nishi” also means “west” in Japanese language. So not “merely” a name or surname, but still need to determine “primarily”
§ Conclusion that albeit a number of people in Vancouver might recognize “Nishi” as a surname, the same could not be said of the majority of Canadians or even a majority of Canadians in a significant area such as British Columbia.
§ Held à Nishi NOT not primarily merely a surname -‐ Examples where the word was a surname but also had dictionary definitions English
o Elder’s beverages (1975) Ltd. v Canada (Registrar of Trade Marks), [1979] 2 FC 735 (p. 350) § The court allowed ELDER to be registered as a trade-‐mark for non-‐alcoholic beverages. § Although the word is a surname that appears in telephone directories in many Canadian cities, the
court emphasized that it also has several dictionary definitions and therefore is not “merely” a surname and it is not “primarily” a surname because the word in the dictionary and the surname are each of substantial significance.
§ Held à NOT primarily merely a surname o Registrar of Trade-‐Marks v Coles Book Stores Ltd, (1972), [19744] SCR 438 (p. 351)
§ The court found that COLES was essentially a family name and refused to rely on the dictionary definition of “cole” as a synonym of cabbage (cole slaw) because it was not well-‐known.
§ What matters is the perception of the average Canadian. § Held à Coles IS primarily merely a surname
3. CLEARLY DESCRIPTIVE AND DECEPTIVELY MISDESCRIPTIVE TRADE-‐MARKS AND SECTION 12(1)(B) (P. 351) -‐ General
o A trade-‐mark that is clearly descriptive or deceptively misdescriptive (in English or French) of the ware or service cannot be registered under s. 12(1)(b) of the Act, until and unless it becomes distinctive for purposes of s. 12(2).
o The terms “clearly descriptive” and “deceptively misdescriptive” refer to the character or quality of the wares or services themselves, the conditions of their production, the persons employed in their production, or their place of origin.
-‐ What will the courts look at ( o The test à is one of first/immediate impression from the perspective of a hypothetical everyday
consumer/prospective purchaser of wares and services (A. Lassonde v. Canada) o The mark must be considered as a whole (in its totality) o Although we consider if the trade-‐mark is clearly descriptive or deceptively misdescriptive in English or
French, foreign words commonly used by English or French speakers would be included. -‐ Associated through use
o S. 12 prohibits only the registration (not the use) of a clearly descriptive or deceptively misdescriptive term; but if, through use, that term becomes associated with a particular source of products or services (i.e. fulfills the function of a mark), then it will be registrable (s. 12(2)).
-‐ Clearly descriptive o If the mark is clearly descriptive, then it is improper for the manufacturer or distributor or other user of the
mark to have a monopoly on a word that clearly describes the product or service. o The reason why the trade-‐mark cannot be descriptive is that, if it was, it would take words from the common
vocabulary o Thus the name can be suggestive, but it cannot be descriptive
-‐ Issues with the “clearly descriptive” test o The test is difficult to apply because there is no bright line to distinguish what is merely suggestive and what is
clearly descriptive. o There is a high volume of apparently inconsistent cases.
-‐ Clearly descriptive cases
Case: A. Lassonde v. Canada [2000] (p. 355)
Facts
-‐ The mark BANANORANGE in association with a fruit juice was contested. Issue: -‐ is “bananorange” clearly descriptive?
Held -‐ YES, the mark is in violation of s. 12(1)(b) because it was clearly descriptive of the composition of the product and
the intrinsic nature of the product Reasoning -‐ The impression of a potential buyer on hearing or seeing the mark BANANORGANGE would be of those mixed
fruits (not of any of the other dictionary meanings of the words “banana” or “orange”) and since that was clearly descriptive of the product, the mark was therefore not registrable under s. 12(1)(b).
Case: Rideout Wines v. Vins Brights [1986] (p. 356)
Facts -‐ The word SELECTION was proposed as a mark for wines -‐ Dictionary meaning is related to the act, instance or process of selecting or choosing, or the fact or state of being
selected or chosen Issue: -‐ Is “selection” clearly descriptive?
Held -‐ YES. “selection” is clearly descriptive or deceptively misdescriptive of the character or quality of the wares within
the scope of s. 12(1)(b) of the TMA. Reasoning -‐ After applying the proper test, the court concluded that the mark was clearly descriptive of the character or
quality of the ware -‐ Certain words may be laudatory in relation to certain wares but not in relation to others
o SELECTION in relation to wines has such a laudatory connotation.
Case: S.C.Johnson & Son v. Marketing International [1979] (p.357)
Facts -‐ The word OFF was proposed as a mark for bugs repellent spray -‐
Issue: -‐ Is the word OFF clearly descriptive?
Held -‐ Yes. The word OFF was descriptive of the bug repellent spray sold under that mark because although the word
“off” is used elliptically with regard to a repellent, it describes the wares of their effect. Reasoning -‐ Off” in isolation is vague, but it is clearly descriptive when assessed in the context of a ware that repels insects. -‐ Must consider mark in totality -‐ The court compares this case to the one involving the word “Frigidaire” (for refrigerator) which was considered to
be descriptive (frigid air) -‐ Would monopolize the most apt and descriptive word for this type of product
Case: Jordan & Ste. Michelle Cellars v. T.G. Bright [1984] (p. 360)
Facts -‐ CHILLABLE RED was proposed as a mark for wine
Issue: -‐ Is CHILLABLE RED clearly descriptive?
Held -‐ NO, the name may be suggestive but is not descriptive of a wine
Reasoning -‐ The court distinguished this case from S.C. Johnson & Son where OFF was a common word while Chillable was
not. -‐ It may be considered as being suggestive, but it is not descriptive
Case: Reed Stenhouse v. Canada [1992] (p. 361)
Facts -‐ PET PLAN proposed as a mark for pet health insurance
Issue: -‐ Is PET PLAN clearly descriptive?
Held -‐ NO, merely suggestive mark and can thus be registered
Reasoning -‐ The court found that the mark merely suggested that the product was associated with animals without stating
what the link was
Case: Kellogg v. Canada [1939] (p. 361)
Facts -‐ GRO-‐PUP proposed as a mark for dog food
Issue: -‐ is GRO-‐PUP clearly descriptive?
Held -‐ NO. GRO-‐PUP was suggestive of the result from the dog food but not clearly descriptive.
Case: Pizza Pizza v. Canada [1989] (p. 362)
Facts -‐ Pizza Pizza wanted to trademark their phone number
Issue: -‐ Is a phone number clearly descriptive?
Held -‐ NO, the phone number was a registrable mark
Reasoning -‐ The court held that a phone number was registrable as a mark for a take-‐out pizza delivery business because the
number did not clearly describe the product or service provided. -‐ Thus, a mark with some functional aspect is not (always) considered as being clearly descriptive -‐ The functional aspect must be unrelated to the ware (service) to which it is associated
-‐ Deceptively misdescriptive definition
o If the mark gives a wrong description likely to deceive, it cannot be registered under s. 12(1)(b) (deceptively misdescriptive).
o Amendments were made to replace the word “clearly” misdescriptive with “deceptively” misdiscriptive as many words may be “clearly misdescriptive” of the ware with which they are used in association but are not necessarily “deceptively misdescriptive”.
-‐ Test
o The proper test to be applied to the determination as to whether a trade mark in its entirety is deceptively misdescriptive must be whether the general public in Canada would be misled into the belief that the product with which the trade mark is associated had its origin in the place of a geographic name in the trade mark.
o Under s. 12(1)b) one of the ways in which a mark can be clearly descriptive or deceptively misdescriptive is with respect to the place of origin of the goods.
-‐ Deceptively misdescriptive as to the place of origin examples o MONSIEUR DE PARIS
§ YES. The court found it to be deceptively misdescriptive as to the place of origin of the perfumes (it did not originate in France), Paris having a well-‐known reputation as a source of perfumes. (Syndicat National de la Perfumerie Francaise v Laboratoire Jean-‐Pierre Ltée, p. 365)
o MEMORIES OF PARIS § NO. The court found that a perfume sold under that mark was not deceptively misdescriptive as to its
place of origin even though it was not manufactured in France. (Syndicat National de la Perfumerie Francaise v Andrew Jergens, p. 365)
o SWISS CHOCOLATE § NO. May be misdescriptive of place of origin but are not deceptively so because they are as likely to
create a first impression on the average Canadian not of a place of origin but of a type of chocolate and those words do not dominate the trademark. (Chocosuisse Union des Fabricants-‐Suisses de Chocolate v Hiram Walker & Sons Ltd, p. 365)
o HEIDELBERG (beer) § YES. Not registrable because it is deceptively misdescriptive of the place where the beer was brewed
(not brewed in Heidelber, West Germany). § The mark was found likely to lead person in Canada of ordinary intelligence and ordinary education in
French or English to think that beer originated in Germany, or Heidelberg in particular. (Labatt Breweries of Canada v Carling Breweries of Canada, p. 366)
o OBERHAUS (beer) § NO. Since it was not established that the general public is even aware that there are placed in Germany
called Oberhausen, it certainly cannot be concluded that the general public in Canada would be misled into the belief that wines associated with the mark Oberhaus had their origin in the places in Germany called Oberhausen.
§ Not deceptively misdescriptive. (Der Stabilisierungsfonds fur Wein v T.G. Bright & Co (1985) p. 367)
-‐-‐-‐-‐-‐-‐-‐-‐-‐-‐-‐-‐-‐-‐-‐-‐-‐-‐-‐PAULINA CLASS 12-‐-‐-‐-‐-‐-‐-‐-‐-‐-‐-‐-‐-‐-‐-‐-‐-‐-‐-‐-‐-‐
4. NAME IN ANY LANGUAGE OF WARE OR SERVICE AND SECTION 12(1)(C)
Statute: Trade-‐Mark Act, s.12(1)(c)
12. (1) Subject to section 13, a trade-‐mark is registrable if it is not (c) the name in any language of any of the wares or services in connection with which it is used or proposed to be used;
-‐ “generic in any language” o Section 12(1)(c) refers to marks that are generic and applies to any language o If the mark is generic because it signifies the general name of the ware or service and not the particular
source, it is not functioning as a mark to distinguish the wares or services and is thus not registrable o Unlike s.12(1)(b) which uses the first impression test, s.12(1)(c) applies regardless of whether the ordinary
Canadian would recognize the word (370) o Examples of evidence include definitions in dictionaries, legislation, or government documents and expert
witness testimony. o Phonetic equivalents are also included in the definition (371)
Case: Canadian Shredded Wheat v. Kellogg
Facts -‐ The plaintiff had patents on a shredded what manufacturing process and sole the product as “shredded what
biscuits” and registered the trade-‐mark SHREDDED WHEAT for biscuits, crackers etc. (371) -‐ When the patents expired, Kellogg manufactured biscuits using the patented process and sold biscuits of similar
appearance under the name “Kellogg’s Shredded Whole Wheat Biscuits” -‐ CSW sued for trade-‐mark infringement arguing unsuccessfully that during the patent term SHREDDED WHEAT was
distinctive for CSW as a source Issue: -‐ had patents on a shredded what manufacturing process and sole the product as “shredded wheat biscuits” and
registered the trade-‐mark SHREDDED WHEAT for biscuits, crackers etc. (371) Held -‐ The single source origin obtained as a result of a patent monopoly did not mean that he term was distinctive of
the plaintiff in a trade-‐mark sense Reasoning -‐ Lord Russell: “a word or words to be really distinctive of a person’s goods must generally speaking be incapable of
application to the goods of anyone else.”
Case: Linoleum Manufacturing v. Nairn
Facts -‐ The plaintiff invented an patented a new floor covering and coined the phrase “linoleum” to describe it
Issue: -‐ Can linoleum prevent others from using the name “linoleum” after their patent expired?
Held -‐ The court found that the inventor could not prevent a competitor company from marketing their solidified oil
floor product as “linoleum” after the patent had expired Reasoning -‐ The inventor company cold not claim exclusive trade-‐mark rights in a word which described the good itself and
did not distinguish the source (371) -‐ The word or words commonly used to designate a general name of the good are available to a competitor firm
which can market a similar product once the patent expires (372) -‐ Trade-‐marks are not rights in the ware itself (which patent law might provide) nor in the generic name of the ware
(372)
5. CONFUSION AND SECTION 12(1)(D) (P.307)
Statute: Trade-‐Mark Act, s.12(1)(d)
s.12(1) Subject to section 13, a trade-‐mark is registrable if it is not ((d) confusing with a registered trade-‐mark;
-‐ Confusing o Fundamental principal: that is it unfair to let a defendant sell its product as being that of another person and
to let one undertaking benefit from the goodwill of another (372) o The test as to whether a product/service is market as those of another is based on the perception of
prospective buyers
Statute: Trade-‐Mark Act, s.6(2) à Definition of confusion
s. 6(2) The use of a trade-‐mark causes confusion with another trade-‐mark if the use of both trade-‐marks in the same area would be likely to lead to the inference that the wares or services associated with those trade-‐marks are manufactured, sold, leased, hired or performed by the same person, whether or not the wares or services are of the same general class
-‐ Interpretation o Confusion is a defined term and the Trade-‐Mark Opposition Board is required to address the likelihood that in
areas where both trade-‐marks are used, prospective purchasers will infer (incorrectly) that the wares and services – though not being of the same general class – are supplied by the same person (372 – from Mattel)
o Confusion is based on “what the registration would authorize the respondent to do, not what the respondent happens to be doing at the moment” (374)
-‐ The relevant date o The relevant date for determining whether there is a likelihood of confusion both for the purposes of
registration under s. 12(1)(d) and for opposition proceedings, is the hearing date -‐ Burden of proof
o The onus of proof lies on the person applying to register a trade-‐mark, who must establish on a balance of probabilities that there is no likelihood of confusion with a previously used or registered mark (373)
-‐ Wares/service overlap o It is possible to have confusion between a ware and a service and between wares and/or services of a
different class o BUT if the wares or services are in the same class and intended for the same audience, those factors tend to
support confusion
Statute: Trade-‐Mark Act, s.15(2) à Registration of confusing marks
Registration of confusing marks 15. (1) Notwithstanding section 12 or 14, confusing trade-‐marks are registrable if the applicant is the owner of all such trade-‐marks, which shall be known as associated trade-‐marks. Record (2) On the registration of any trade-‐mark associated with any other registered trade-‐mark, a note of the registration of each trade-‐mark shall be made on the record of registration of the other trade-‐mark Amendment (3) No amendment of the register recording any change in the ownership or in the name or address of the owner of any one of a group of associated trade-‐marks shall be made unless the Registrar is satisfied that the same change has occurred with respect to all the trade-‐marks in the group, and corresponding entries are made contemporaneously with respect to all those trade-‐marks.
-‐ **The Act includes an exception under s.15 that allows for otherwise confusing marks to be registered IF the applicant owns all the marks in question
Statute: Trade-‐Mark Act, s.6(5) à What to be considered
6(5) In determining whether trade-‐marks or trade-‐names are confusing, the court or the Registrar, as the case may be, shall have regard to all the surrounding circumstances including (a) the inherent distinctiveness of the trade-‐marks or trade-‐names and the extent to which they have become known; (b) the length of time the trade-‐marks or trade-‐names have been in use; (c) the nature of the wares, services or business; (d) the nature of the trade; and (e) the degree of resemblance between the trade-‐marks or trade-‐names in appearance or sound or in the ideas suggested by them
-‐ Factors to consider o Section 6(5) provides a guide for courts to determine whether a trade-‐marks is confusing. The five basic
criteria are: § Strength § Length of use § Type of merchandise and service
§ Nature of commerce § Resemblance
o These criteria do not have to be equally weighted; the criteria are not exhaustive and the test set out in s. 6(5) is highly factual and contextual
o NB Confusion is always with respect to the SOURCE of the wares and services with which the mark is associated and not the marks by themselves (375)
-‐ Factors supporting confusion are (and adverse inference from lack of such evidence where it would be available): o If the mark is well-‐known o In use for a long time o Customers are not sophisticated o Little time is spent on purchase o The ware or service is inexpensive o The marks are very similar or identical
-‐ Perspective and test o Likely Consumer à Confusion is evaluated from the perspective of the likely consumer of the wares and
services at issue o The test àconsiders the perspective of a person, with an imperfect recollection of the registered mark, who
might encounter the applicant’s wares or services in the marketplace and whether they would likely be confused about the source. (376)
o The “first impression test” is that of the “ordinary casual customer in a hurry” (Binnie J. in Mattel) (377) o In Veuve Clicquot [summarized in infringement section], the companion case to Mattel, Justice Binnie further
elaborated the first impression test: § “The test to be applied is a matter of first impression in the mind of a casual consumer somewhat in a hurry who
sees the name Cliquot on the respondents’ storefront or invoice, at a time when he or she has no more than an imperfect recollection of the VEUVE CLICQUOT trade-‐marks, and does not pause to give the matter any detailed consideration or scrutiny, nor to examine closely the similarities and differences between the marks. As stated by Pigeon J. in Benson & Hedges (Canada) Ltd. v. St. Regis Tobacco Corp., 1968 CanLII 1 (SCC), [1969] S.C.R. 192, at p. 202:
It is no doubt true that if one examines both marks carefully, he will readily distinguish them. However, this is not the basis on which one should decide whether there is any likelihood of confusion
the marks will not normally be seen side by side and [the Court must] guard against the danger that a person seeing the new mark may think that it is the same as one he has seen before, or even that it is a new or associated mark of the proprietor of the former mark.
o NB -‐ The marks should NOT be compared side by side – to maintain the first impression test (379) o “General Recollection” à In British Drug Houses v. Battle Pharmaceuticals the court described the correct
approach as a combination of a “negation of careful analysis of the marks side by side together with the necessity of assuming only a general recollection of the earlier marks when the later one is seen by itself” (379)
a) Strength of the mark -‐ General
o The Act refers to both the inherent distinctiveness and the extent to which it has become known o To assess the strength of the mark, the trade-‐mark has to be considered both as a whole and in its entire
context (380) o Although marks should not be minutely dissected, the individual features of a mark may be examined for
comparison purposes -‐ Rule of thumb and “thin protection”:
o Confusion exists where the use of that mark in connection with wares or services different from those with which it is currently used would lead the public to believe there is a connection between the “new” product or service and the trade-‐mark owner. A strong mark with an inherent distinctiveness can be used in connection with wares or services that don’t differ widely from the original wares and services (380)
o When marks are weak, smaller differences aren’t enough to avoid confusion -‐ Confusion in PARTS
o Confusion can exist with only parts of the marks
o In Pernod Ricard v. Molson Breweries, there was a dispute which concerned RICARD and RICKARD’s RED. The court indicated that for the purposes of distinction, the most important part of the mark was usually the first part. (381)
o Use of part of a mark can be confusing where a company has associated marks that use the same part of the mark i.e. McDonald’s identifies many of its products with “Mc”
-‐ Major Factors: nature of good and distribution channels o The likelihood of confusion as to the origin of the product depends on factors such as the nature of the goods
(i.e. food or not) and distribution channels (382) -‐ Evidence looked to
o To evaluate confusion, evidence of the state of the register and the marketplace in Canada may be assessed for third party marks in use that have elements common to both of the marks at issue and the extent and duration of their use
o In Maximum Nutrition Limited v. Kellogg Salada Canada Inc. the Federal Court of Appeal concluded that there was no likelihood of confusion between the mark NUTRI-‐VITE for breakfast and snack foods and the registered marks NUTRI-‐MAX and NUTRI-‐FIBRE for health food products. The court reasoned that the term “Nutri” is commonly used in marks, with more than 225 registrations for trade-‐marks and trade-‐names using the word, the marks have little or no inherent distinctiveness and small differences distinguishing them. (383)
b) The Length of Use -‐ Existence à A mark that has been in use for a longer time is more likely to be distinctive. -‐ Co-‐existence à The longer the marks have co-‐existed, the more difficult is it will be to convince a court that there
exists a likelihood of confusion without evidence of the actual confusion (385) -‐ Example: In Panavision Inc. v. Matsushita Electric Industrial Co., the court concluded that two marks, which existed
side by side for 10 years without any evidence of confusion during this period, could not be said to be confusing (385)
c) The Type of Merchandise and Service -‐ S. 6(2) establishes that there can be a likelihood of confusion even where the wares and services are not of the same
general class -‐ Distinct Fields
o If two marks operate in distinct fields, there is a smaller likelihood of confusion o Examples of distinct fields à no confusion
§ In Clorox Co. v. Sears Canada Inc., the judge found that fruit cake and bbq sauce which both used the name MASTERPIECE were different types of merchandise and that confusion was unlikely (385)
§ In Joseph E. Seagram & Sons Ltd. v. Canada (Regisrar of Trade Marks) the court found that the mark SEAGRAM was only protected in the field of alcoholic beverages and that use of that name for a real estate company would not create customer confusion (386)
§ LEXUS for a car and LEXUS for food are not likely to make the consumer think that the car maker started making food
-‐ Sophistication of consumer o The type of merchandise and service criterion also implicates how knowledgeable a likely purchaser is i.e. a
purchaser of nuclear power is an extremely sophisticated consumer (386) o The purchaser of high quality and expensive Max Mara Fashion products is not likely to confuse those
products of Max & Cie which has a chain of supermarkets and retail department stores and also sells some clothing items (387)
o Similarly for services, consumers buying a service that involves large sums of money, such as a mortgage service, will take more care than when buying a routine household consumable. (388)
d) The nature of commerce -‐ Commercialization factor
o This part of the test relates to the methods and strategies of commercialization (i.e. the type of store – retail of wholesale, the type of buyer, the display of the wares in the store, distribution and marketing of the wares and services)
o i.e. a consumer in a supermarket may be more likely to purchase in a hurry than in a department store o the likelihood of confusion is less if it is a professional consumer at a wholesale vs. a retail consumer or where
the items are sold in different channels i.e. luxury boutiques vs. whole sale -‐ Tiger Bran Knitting Co. v. John E. Fetzer Inc.
o the court illustrated the importance of the channels of distribution and targeted clientele. o The court had to determine whether there could be confusion between the Detroit Tigers (a professional
baseball team) merchandise labeled as TIGER and a brand of clothing called TIGER – it found that the different looking logos, pitched to different consumers in different settings and with different channels of distribution had to be considered by the Opposition Board
o “The marks and the products have to be viewed thought the eyes of the ordinary consumer which brings into play the intention of the parties in terms of channels of distribution and marketing strategy.” (389)
e) Degree of resemblance -‐ Appearance/sound/idea
o this part of the test considers the appearance, sound and idea (including connotations and slang) of the marks o resemblance is evaluated by considering the whole mark, though when the mark is composed in part of a
common word, courts tend to focus on the other elements (389) -‐ Coca-‐cola example:
o “The real basis of the plaintiff’s claim is not against the style of the script lettering in which the Pepsi-‐Cola mark was registered or used by the defendant is written; the basis of the claim is the use of the compound word in any form…Here the plaintiff is really attempting to secure a monopoly on the word “cola”. (390-‐391)
-‐ Territorial element / “same area” o The notion of confusion between marks also has a territorial element (recall s.6(2) says “in the SAME AREA” o Thus, the same mark can be used by two different businesses if the use of the marks in the same area would
not lead to a likelihood of confusion about the source o Depending on the nature of the wares and services, the “same area” may not necessarily be all of Canada
(391) o S. 32(2) of the Act states that the Registrar may impose a territorial restriction on the use of a trade-‐mark to
the region where it has become distinctive. This applies with respect to distinguishing guise and secondary meaning.
o Prior concurrent use à S.21 permits the prior concurrent use of a confusing trade-‐mark in a restricted territory if it was used in good faith before the other mark was registered and the other’s mark’s registration is uncontestable under s. 17(2) (example: McDonalds Bakery)
Statute: Trade-‐Mark Act, s.32(2) à restricting registration to defined territorial area
s.32(2) The Registrar shall, having regard to the evidence adduced, restrict the registration to the wares or services in association with which the trade-‐mark is shown to have been so used as to have become distinctive and to the defined territorial area in Canada in which the trade-‐mark is shown to have become distinctive.
Statute: Trade-‐Mark Act, s.21(1) à concurrent use of confusing marks Concurrent use of confusing marks 21. (1) Where, in any proceedings respecting a registered trade-‐mark the registration of which is entitled to the protection of subsection 17(2), it is made to appear to the Federal Court that one of the parties to the proceedings, other than the registered owner of the trade-‐mark, had in good faith used a confusing trade-‐mark or trade-‐name in Canada before the date of filing of the application for that registration, and the Court considers that it is not contrary to the public interest that the continued use of the confusing trade-‐mark or trade-‐name should be permitted in a defined territorial area concurrently with the use of the registered trade-‐mark, the Court may, subject to such terms as it deems just, order that the other party may continue to use the confusing
trade-‐mark or trade-‐name within that area with an adequate specified distinction from the registered trade-‐mark. -‐ To which consumer does the confusion test apply?
o To the likely consumer for that ware or service and not the average consumer for all wares and services o This emphasis on the likely consumer is especially significant for goods sold in specialized markets or via
specialized channels (393)
-‐ Language o Language is another source of potential confusion (394) especially when a French or English word is used
§ See Boy Scouts of Canada v. Alfred Stenrjakob GmbH & Co KG – the use of the mark SCOUT & DESIGN – the word “scout” has numerous meanings in English but only one meaning in French which associates the word with the Scout movement (394-‐395)
o The language that the relevant consumer speaks can also be significant § In Ferrero v. Produits Freddy Inc. the court had to pronounce on the confusion found between
NUTELLA and NOIXELLE. Marceau J.A. observed that the two marks had distinct meanings in English and French that could cause confusion for a bilingual person. The federal court ruled that it was important to consider the bilingual consumer. (399)
§ In Monsport Inc. v. Vetements de Sports Bonnie Ltee the issue was the confusion between MONSPORT and BONSPORT. The court concluded that neither an Anglophone or francophone customer would be likely confused between the marks, which both have a meaning in French. The court went through the test under s.6(5) of the Act (see pages 400-‐404)
o Other languages § While Anglophone, francophone, and in special cases, bilingual consumers are relevant, those speaking
other languages thus have not been considered relevant, at least under the standard confusion test (404)
§ See KRAZY GLUE and KOLA LOKA example (Spanish language issue) which dealt with Spanish speaking consumers in Canada who may be confused by the two marks. The court in Krazy Glue Inc. v. Group Cyanomex conclude that the mere fact that there are ethnic enclaves in urban centers in the Canada who understand Spanish is not sufficient to displace the well-‐established average consumer test. (405)
-‐-‐-‐-‐-‐-‐-‐-‐-‐-‐-‐-‐-‐-‐-‐-‐-‐-‐-‐PAULINA CLASS 13-‐-‐-‐-‐-‐-‐-‐-‐-‐-‐-‐-‐-‐-‐-‐-‐-‐-‐-‐-‐-‐
-‐ Famous marks
o Confusion often arises as an issue with famous marks but note that the same analysis under s. 6(5) [see above] applies to famous marks as well
o However, when the factors are applied having “regard to all the surrounding circumstances”, as directed, many of the criteria in this factually specific and contextual analysis will support a finding of confusion within the famous mark (405)
o The significance of a famous mark in relation to confusion is explained by Justice Binnie in Veuve Clicquot: The…finding that VEUVE CLICQUOT is a “famous” mark is of importance in considering “all the surrounding circumstances” because fame presupposes that the mark transcends at least to some extent the wares with which it is normally associated. However, the fact of being famous or well known does not by itself provide absolute protection for a trade‑mark. It is one factor which must be assessed together with all the others. The s. 6(5) list is clearly not exhaustive. Some enumerated factors may not be particularly relevant in a specific case, and in any event their weight will vary with “all the surrounding circumstances”. The fame of the mark is not, as such, an enumerated circumstance (although it is implicit in three of the enumerated factors, namely inherent distinctiveness, the extent to which a mark has become known, and the length of time that it has been used). Undoubtedly fame (or strength) is a circumstance of great importance because of the hold of famous marks on the public mind. With that introduction, I turn to discuss the statutory list.
o As with all marks, the owner of a famous mark does not have a monopoly on the mark itself, the rights to a famous marks are in association with the designated wares and services, and the confusion for a famous mark is analyzed in relation to the wares and services in association with which the marks is registered (though the defendant does not have to use the identical mark as registered for there to be a likelihood of confusion) (406)
o Cross-‐marketing § Companies with famous marks are increasingly exploiting them assertively and moving into new areas,
the more this occurs the more people expect that a mark that resembles a famous mark, even when used with a completely different class of wares, is from the same source as the famous mark…thus increasing the likelihood of confusion
§ For all marks, s. 6(2) of the Act provides that there can be a likelihood of confusion between two marks even where the wares or services are not from the same class (407)
o Trade-‐mark Act’ purposes and balance § Confusion with famous marks implicates both the purposes: of protecting customers and protecting
the owners’ intangible asset… while ALSO invoking the need to ensure fair competing by not over-‐protecting the mark
o No foregone conclusion § While many of the confusion factors tend to support a finding of confusion with respect to famous
marks, this does not suggest a foregone conclusion that any other trade-‐mark will cause a likelihood of confusion with a famous mark
o “the relevant point about famous marks is that fame is capable of carrying the mark across product lines where lesser marks would be circumscribed to their traditional wares and services” (407)
o Example of fame NOT carrying mark across product lines
Case: United Artists Pictures v. Pink Panther Beauty
Facts -‐ Beauty products have same name as famous [trade-‐marked] “Pink Panther” cartoons
Issue: -‐ Is there likelihood of confusion between famous trade-‐marked Pink Panther cartoon character and PINK
PANTHER Shampoo? Held -‐ No likelihood of confusion
Reasoning -‐ There is no doubt that "The Pink Panther" is a famous and strong trade-‐mark. If it does not have inherent
distinctiveness, then it certainly has acquired a great deal of distinctiveness in the thirty years or so that it has been part of popular culture. However, the issue to be decided is not how famous the mark is, but whether there is a likelihood of confusion in the mind of the average consumer between United Artists' mark and the one proposed by the appellant with respect to the goods and services specified. That question must be answered in the negative. There is no likelihood of confusion as to the source of the products. The key factor here is the gaping divergence in the nature of the wares and in the nature of the trade. It is not a fissure but a chasm
-‐ United Artists produces movies. It does not manufacture or distribute beauty products. United Artists' products are not likely to be made available in the same places of trade as the appellant's products. Shampoo is not sold in movie theatres or video stores. Videos are not available in beauty parlours. These are facts recognized by the Trial Judge, but they bear emphasizing. What the Trial Judge did not give sufficient weight to is that, not only were the wares in each case completely disparate, but there is no connection whatsoever between them. As I stated earlier, where no such connection exists a finding of confusion will be rare.
Adams/Books counter-‐arguments -‐ BUT one wonders whether the merchandising wave of the last several years, especially for clothing and countless
assorted produces and services using cartoon characters, would lead a court to a different conclusion if the issue were addressed again…
o Amount of credit with respect to famous marks § One could also argue that while it is important to give credit to the consumer this “amount of credit”
should vary depending on the ware, the likely consumer and other factors i.e. when a consumer is purchasing a shampoo the decision making time is likely to be limited versus a car or a major appliance (409)
§ In Veuve Clicquot the SCC emphasized that under the statutory provision a likelihood of confusion can arise when the wares or services are not of the same general class – a mark is, even if well known, is not protected per se as an isolated object but rather as an indicator of source to distinguish one person’s goods (or services) from another person’s, and that he purpose and the value of the mark is in the mental link that is created over time in the minds of prospective buyers between the marks and the goods or services of a particular source.
§ Thus in Veuve Clicquot, the SCC acknowledged that the fame of a luxury champagne mark had an aura that extended to luxury goods beyond wine and champagne, but found that fame did not extend so far as mid-‐priced women’s clothing. (410)
Case: Mattel v. 3894207 Canada Inc. [2006]
Facts -‐ Mattel Inc. owner of the BARBIE trade-‐mark, which is not an inherently distinctive mark but has acquired
distinctiveness in association with dolls -‐ Mattel was relying on the well-‐known nature of its trade-‐mark to argue that even a barbeque restaurant would
cause a likelihood of confusion with the famous doll despite the difference in the ware and channels of trade. -‐ Mattel contended that the application by a Montreal-‐based restaurant chain to register the trade-‐mark BARBIE’S
in association with “restaurant services, take-‐out services, catering and banquet services” would likely create confusion with the famous mark BARBIE for dolls
Issue: -‐ Is there a likelihood of confusion between trade-‐marked Barbie dolls and Barbie restaurant?
Held -‐ No
Reasoning (Binnie J.) -‐ Having acquired such fame, marks such as . . . BARBIE may not now be used in Canada on most consumer wares
and services without the average consumer being led to infer the existence of a trade connection with the owners of these famous brands” (emphasis added but the Board found BARBIE’s fame to be tied to dolls and doll accessories. At this stage, its fame is not enough to bootstrap a broad zone of exclusivity covering “most consumer wares and services”.
-‐ The key factor here is the gaping divergence in the nature of the wares and in the nature of the trade. It is not a fissure but a chasm
-‐ Real issue under s.6 analysis is NOT a connection between wares and services of the parties but is an issue of customer confusion o Examples of famous marks that DID transcend the different product lines
§ Although in Veuve Clicquot and Mattel the famous marks did not transcend the different product lines at issue, other cases have found that a mark from a different class of wares DID raise a likelihood of confusion with a famous mark.
§ The following marks were found to cause a likelihood of confusion with a famous mark despite differences with wares: • Proposed mark CUTTY SARK for pipe tobacco with the famous registered mark CUTTY SARK for
whisky • The proposed mark VOGUE for costume jewelry with the famous mark VOGUE for magazines and
sewing patterns • The proposed mark VOGUE for door locks and hardware with the famous mark VOGUE for
magazines • The mark KODAK for bicycles with the famous mark KODAK for cameras • The mark JAGUAR for luggage with the famous mark JAGUAR for luxury cars (425)
-‐ Survey evidence o The use of survey evidence of the likelihood of confusion has been controversial. This issue was addressed in
Mattel o The more recent practice is to admit evidence of a survey of public opinion, presented through a qualified
expert, provided its findings are relevant to the issues and the survey was properly designed and conducted in an impartial manner.
o Courts have been more receptive to such evidence, provided that the survey is both reliable (in the sense that if the survey were repeated it would likely produce the same results) and valid (in the sense that the right questions have been put to the right pool of respondents in the right way, in the right circumstances)
o Surveys have been excluded where: § The individuals surveyed did not constitute the relevant population; § Where the trade-‐mark used in the survey was not precisely the trade-‐mark applied for; § Where the wrong question was asked i.e. survey done for Coca-‐Cola was excluded on the basis that it
was not directed to the issue of confusion but rather to the measure of public recognition of the word Classic as part of soft drink names
§ Where the survey was not carried out in an impartial and independent manner § Lack of information provided to those who responded in the survey (427)
o Thus, the SCC approves of the admission of survey evidence providing that it is relevant to the issue (which is the likelihood of confusion, not the mere possibility of confusion) and the survey satisfies both reliability and validity for evidentiary purposes.
-‐-‐-‐-‐-‐-‐-‐-‐-‐-‐-‐-‐-‐-‐-‐-‐-‐-‐-‐LAURIE CLASS 14-‐-‐-‐-‐-‐-‐-‐-‐-‐-‐-‐-‐-‐-‐-‐-‐-‐-‐-‐-‐-‐ IV. DISTINCTIVENESS
1. TRADEMARK DISTINCTIVENESS REQUIREMENT (P. 452)
Statute: Trade-‐Mark Act, s.2 “distinctive”
s.2 “distinctive” à …means a trade-‐mark that actually distinguishes the wares or services in association with which it is used by its owner from the wares or services of others or is adapted so to distinguish them;
-‐ 3 requirements for distinctiveness (Philip Morris v. Imperial Tobacco, 1989):
o 1) a mark and a product are associated; o 2) the “owner” uses this association between the mark & his product in the manufacturing/selling of his
product; o 3) the association enables the owner of the mark to distinguish his product from that of others.
-‐ Inherent distinctiveness v. acquired from use o Inherent
§ “adapted so to distinguish” § Coined or arbitrary word has no meaning apart from association
• Coined words tend to be more inherently distinctive (Standard Coil Products v Standard Radio Corp) If it isn’t inherently distinctive, then it becomes a question of fact whether it actually distinguishes the wares – if yes, can be registered
§ E.g. APPLE for computers o Acquired
§ “actually distinguishes” § Mark that is initially descriptive that acquires distinctiveness w/ time § E.g. McDonald’s, Barbie dolls § NB: if clearly descriptive, prima facie unregistrable but can be registered if it has been used to acquire
distinctiveness at the time of the application § Usually weaker than inherently distinctive Trade-‐Marks
§ AstraZeneca AB v. Novopharm Ltd. explains distinctiveness & the difference b/w clearly descriptive & inherently descriptive marks (p. 453)
-‐ Condition for maintaining o Distinctiveness isn’t only a condition for obtaining Trade-‐Mark rights, but also for maintaining them o If you don’t use it, you lose it
-‐ General o A Trade-‐Mark must be distinctive of its owner o Single source à The message to the public must indicate a single source i.e. public must believe that the mark
indicates that the product/service sold under a particular mark comes from a single source (this ensures quality of goods/services)
-‐ Distinctiveness vis-‐à-‐vis registration and confusion o distinctiveness is a precondition to registration o it is one of the 4 grounds to oppose registration (s. 38(2)(d)) o note that distinctiveness is also a factor for confusion (s. 12)
-‐ Foreign marks o A foreign mark can negate the distinctiveness of another party’s mark if the foreign mark:
§ 1) is known to “some extent at least” and its reputation is “substantial, significant or sufficient” or § 2) it is well-‐known in a specific area of Canada
o s.5 à to negate distinctiveness, the mark doesn’t need to satisfy the s. 5 test for a well-‐known mark made known in Canada (that determines whether the foreign mark itself has rights in Canada)
o the issue is the distinctiveness of someone else’s mark and whether the foreign mark’s reputation has negated the distinctiveness of that mark
o Evidential burden à the evidential burden that needs to be satisfied for a mark’s reputation from use in another country to negate the distinctiveness of another party’s mark is explained in Bojangles’ International LLC v Bojangles Café Ltd.
Case: Bojangles’ International LLC v. Bojangles Café Ltd. Facts -‐ Applicant (Bojangles Intl) argues that Bojangles Café mark doesn’t distinguish the respondent’s wares/service
from their own because Bojangles is already known in Canada as Bojangles International’s Trade-‐Mark Issue: -‐ What is the extent to which a mark need be known in Canada for that mark to negate the distinctiveness of
another party’s mark? Held -‐ Bojangles Café Trade-‐Mark is not already known in Canada because the evidence presented to the Trade-‐Mark
Opposition Board is not substantial, sufficient or significant Reasoning -‐ not required to prove that the Trade-‐Mark is well known in Canada w/in the meaning of s. 5 (repeats Andres
Wines) -‐ Old standard à known “to some extent at least” was the legal standard set out in Motel 6 but this is vague;
“substantial, significant or sufficient” give a clearer meaning to that expression
2. ACQUIRED DISTINCTIVENESS (P. 461) -‐ Definition:
o marks that were clearly descriptive a priori (or which were primarily merely a person’s name) but which through use in Canada have “become distinctive” when the application is filed
o see ss. 12(1)(a) & (b) o also referred to as “secondary meaning” o In other words, this relates to trade-‐marks that prima facie unregistrable but can be rebutted through
acquired distinctiveness & the marks registered pursuant to s. 12(2) [subject to s. 10] o this concept also applies to distinguishing guise (only registrable once it becomes distinctive s.13(1)(a))
-‐ To become distinctive o Question of fact à whether a mark has acquired distinctiveness is a question of fact (Astrazeneca v
Novopharm) o Need to show a strong link between the wares/service and the mark o Applicant must show on a balance of probabilities that through use in Canada, the mark has become
distinctive on the date of application -‐ Limitations
o General name à the general name of the ware/service cannot become distinctive (s.12(1)(c), s. 10, s. 12(1)(e)) § e.g. orange will never be protected in connection with oranges
o Territorial limitations à marks registered because of acquired distinctiveness are territorially limited to the geographic area where distinctiveness is shown (s.32(2)) while registered marks usually have national protection
3. LOSS OF DISTINCTIVENESS (P.463) -‐ To keep Trade-‐Mark rights, marks must
o continue to be distinctive of the owner o continue to indicate source
-‐ Why this single-‐source rule? o To protect the public & the Trade-‐Mark owner (remember two-‐fold purpose of Trade-‐Mark Act)
§ note that consumer doesn’t have to be able to name source; mark just has to signal a single one § mark doesn’t have to identify a specific corporate or physical entity either § consumer needs to associate particular mark à particular product
-‐ When will mark be lost o Possible for a single infringer to cause a mark to lose its distinctiveness (although unlikely) o Trade-‐Mark is no longer distinctive when there is more than one origin or if the origin is not the owner of
the mark -‐ 2 different products/services can be sold under the same mark. Why?
o 1) owner can register a mark for use with >1 ware/service o 2) >1 owner can use the same mark if the mark indicates source & provided that confusion doesn’t apply
§ b/c Trade-‐Mark rights aren’t rights in the mark but in the mark’s signaling capacity as an indicator of source in association w/ designated wares/services
-‐ What is key to look at? o the message sent to the consumer or relevant public is key (White Consolidated Industries Inc. v Beam of
Canada Inc.) -‐ When the owner loses rights
o owner may lose the rights in the mark if, without adequately informing the public, the owner § transfers the mark; § licenses the mark w/o ensuring quality control; § uses the same mark w/ products/services of different quality; § degrades the quality of the wares/services; § *and the mental link that was created over time in the minds of prospective buyers b/w the mark & the
goods/services of a particular source has been severed (i.e. loss of distinctiveness) -‐ lack of distinctiveness can be raised:
o before registration in an opposition to an application for registration (s. 38) o after registration in proceedings to invalidate the registration (s.18)
-‐ 2 relevant time periods for assessing distinctiveness under s. 18 o 1) Trade-‐Mark registration is invalid if it was not registrable at the date of registration (s.18(1)(a))
§ but there’s an exception to “rescue” a mark that acquired distinctiveness at the date of registration (s.18(2))
o 2) Trade-‐Mark registration is invalid if the Trade-‐Mark is not distinctive when the proceedings to invalidate it begin (s.18(1)(b))
-‐ Loss of distinctiveness due to licensing/assignment o problems with loss of distinctiveness often occur when a Trade-‐Mark is assigned or licensed and the message
to the public doesn’t adequately indicate who the owner is § s. 50(1) allows Trade-‐Mark owners to count the use, advertisement or display of a mark by a licensee as
the owner’s own use, provided that the owner has direct or indirect control of the character or quality of the wares/services
§ s. 48 allows the assignment of Trade-‐Marks but provides that an assignment can result in the mark being non-‐distinctive if the transfer results in >1 person having rights to the use of confusing Trade-‐Marks
§ NB: these 2 sections change the CML which hadn’t allowed licensing & assignments unless the mark transferred with all the goodwill of the original source – because it was believed that licensing & transfers undermined source theory
§ Quote from Pink Panther case (p. 465) shows this move away from a rigid view of source theory o So we allow assignments & transfers, but the requirement that a Trade-‐Mark be distinctive is paramount
§ Canada doesn’t require an explicit determination from the registrar that the transfer is in the public interest (the UK does)…
§ … but as Laskin shows in the Breck’s case (p. 466), the public is protected because the mark may be invalidated for loss of distinctiveness
Case: Breck’s case
Facts -‐ Fishing equipment manufactured by 1st owner of the Trade-‐Mark. The mark is assigned to an American company
and then to a Canadian company. Source of goods = French company. Canadian company became owner of mark and continued to buy goods from the French company.
Issue: -‐ The source didn’t change, but ownership did à confusion?
Held -‐ Yes
Reasoning -‐ SCC didn’t accept the argument that the mark used to identify the origin of the good “morphed” to identify the
seller-‐distributor of the good instead of the manufacturer
Case: Bousquet v. Barmish
Facts -‐ Cacharel Trade-‐Mark is well established in France by Bousquet but Bousquet didn’t sell or promote the product in
Canada. -‐ Barmish acquired a reputation using Cacharel in Canada
Issue: -‐ Does Bousquet lose the right to Trade-‐Mark in Canada?
Held -‐ Yes, “if you don’t use it you lose it. Bousquet lost the right to trade-‐mark in Canada
Reasoning -‐ This is unlike the transfer of Trade-‐Marks from the Korean Hyundai Company to Hyundai Canada à survived an
expungement action because Hyundai Canada is the “uninterrupted face to the public” because of its extensive advertising and network of franchised dealerships
o Important to educate the public about changes in the mark’s source (Wilkinson Sword v Juda) § Court invalidated registrations of marks for “loss of distinctiveness” reasons because the marks
distinguished goods from the British manufacturer and not the seller (the Canadian subsidiary who
resold some razorblades manufactured by the parent in the UK and assembled others in Canada) who made no effort to educate the public
§ Single source requirement also applies to subsidiaries of a corporation (Moore Dry Kiln Co v United States Natural Resources Inc) • 2 U.S. companies & a Canadian company (all part of a larger corporate family) selling dry kilns
under the Trade-‐Mark MOORE • court concludes that since the mark is simultaneously being used by all 3 who all have the right to
do so, it isn’t distinctive of the wares for any of them à expunged o example of a loss of distinctiveness after assignment of the mark: Heintzman
Case: Heintzman v 751056 Ontario Ltd
Facts -‐ Mark initially used by Ontario piano manufacturer for high quality pianos. -‐ Company is sold. Mark assigned to new owner that outsources production to Asia – lower standards w/o
informing consumers. -‐ Actively concealed that source was no longer Canadian
Issue: -‐ Does the trade-‐mark hold up?
Held -‐ NO, mark is expunged for loss of distinctiveness
-‐ Loss of distinctiveness through name becoming generic o Letting a mark become generic is another way to lose distinctiveness o Generic = word that identifies a type of goods or services rather than their source (think Kleenex, Xerox, etc) o A distinctive mark becomes clearly descriptive or generic (opposite of acquired distinctiveness) o Trade-‐Mark becomes known as general category o Sometimes words are “partly generic” (sometimes identify product & sometimes specific manufacturer) – e.g.
THERMOS -‐
Case: Aladdin Industries (Thermos case) (p. 471)
Facts -‐
Issue: -‐ Should “Thermos” be expunged for loss of distinctiveness and genericizing of name?
Held -‐ No, it would cause consumer confusion
Reasoning -‐ Different interests court considers:
o mark owner’s interest in mark o competitor’s interest in generic term o paramount interest of protecting consumers
-‐ Although the word was used as a term for any vacuum bottle, it also still indicated source -‐ Court does NOT expunge mark because an “appreciable number of ultimate purchases might be misled or
confused” if the mark was used generically -‐ i.e. if manufacturers other than respondent (Thermos) can mark their bottles as thermos bottles, consumers will
be misled into buying these other bottles when they think they’re buying the respondents’ bottles -‐ once distinctiveness is lost, non-‐distinctive mark can be struck from Register & opposition procedures apply to any
application for re-‐registration. For rights to re-‐emerge, Trade-‐Mark owner must begin using the mark to try to re-‐establish its distinctiveness
-‐-‐-‐-‐-‐-‐-‐-‐-‐-‐-‐-‐-‐-‐-‐-‐-‐-‐-‐BARBARA CLASS 15-‐-‐-‐-‐-‐-‐-‐-‐-‐-‐-‐-‐-‐-‐-‐-‐-‐-‐-‐-‐-‐
V. USE OF A MARK (P. 474)
-‐ The importance of use: o Use is a central concept in Canadian trade-‐mark law both to GAIN and to MAINTAIN rights against third
parties, and hence it is essential to be able to determine when a trade-‐mark is used. o “Unlike other forms of intellectual property, the [essence] of trade-‐mark entitlement is actual use. By
contrast, a Canadian inventor is entitled to his or her patent even if no commercial use of it is made. A playwright retains copyright even if the play remains unperformed. But in trade-‐marks the watchword is ‘use it or lose it’. In the absence of use, a registered mark can be expunged (s. 45(3)).” (Mattel) (p. 474)
-‐ Use required for registration:
o For trade-‐marks (unlike copyright or patent) the right holder has a positive obligation to use the trade-‐mark in order to acquire and to maintain trade-‐mark rights and to enforce the rights against others. Without use, the mark will not be distinctive of source.
o A trade-‐mark cannot actually be registered until a ‘Declaration of Use’ is filed, although one can apply for registration in respect of a proposed trade-‐mark. § A statement of use may be filed with the initial application if the mark is already in use (s. 30(b)) § If the mark is only a proposed mark, the Declaration of Use must be filed before the mark can be
registered (s. 40(2)). o NB
§ Needs to show not only advertisement, but actual commercial use of the mark § No registration without actual use of the mark § Needs to indicate the specified wares and services (cannot be “for everything” – because no property in
the mark, only in the mark in association with the wares and services) -‐ Use determines scope of right
o S. 19 – right to exclusive use § With respect to registered marks, “use” delineated the exclusive right of the trade mark owner to the
national use of the mark throughout Canada in respect of the designated wares or services. § The defendant’s use of the plaintiff’s mark is a required element for infringement under ss. 19 and 22)
o S. 20 – right to exclusive use infringed by confusing mark o Exclusive use is infringed by a person who is selling, distributing or advertising wares or services in
association with a confusing mark. • S. 22 – depreciation of goodwill
o Defendant’s use of the plaintiff’s registered mark depreciates goodwill. -‐ Defining use:
Statute: Trade-‐Mark Act, s.2 “use”
s.2 “use” à ”, in relation to a trade-‐mark, means any use that by section 4 is deemed to be a use in association with wares or services
Statute: Trade-‐Mark Act, s.4 “use”
4. (1) A trade-‐mark is deemed to be used in association with wares if, at the time of the transfer of the property in or possession of the wares, in the normal course of trade, it is marked on the wares themselves or on the packages in which they are distributed or it is in any other manner so associated with the wares that notice of the association is then given to the person to whom the property or possession is transferred.
(2) A trade-‐mark is deemed to be used in association with services if it is used or displayed in the performance or advertising of those services. (3) A trade-‐mark that is marked in Canada on wares or on the packages in which they are contained is, when the wares are exported from Canada, deemed to be used in Canada in association with those wares. -‐ Use in association with wares
o Transferred goods à “Use of a trade-‐mark in association with ware requires the transfer of property in goods in the course of trade. Consequently, if no goods are transferred in the course of trade, there can be no confusion”. (p. 476)
o Sale/delivery time à In most cases regarding wares, ‘use’ means that the mark appears on the wares or their packaging at the time of sale and delivery.
o Registered à The use must be in association with the wares that are registered. o Proof à For a mark to be deemed to be used there must be proof of at least one sale (wholesale or retail) in a
normal course of trade, which must be a genuine commercial transaction and not a sale that is deliberately manufactured or contrived to protect the mark’s registration nor a symbolic sale.
o Distribution of info not sufficient à The distribution of catalogues, comparative brochures, advertising, and other promotional material on their own are not sufficient to constitute use of a mark in association with wares. However, such advertising and promotional material can qualify as an association with the wares in “any other manner” (s. 4(1)) trade-‐mark ‘use’ can be constituted if it is distributed with the wares when the property in, or possession of, the wares is transferred.
-‐ Use in association with services
o “normal course of trade” requirement does not apply to services. o The mark is deemed to be used if it is used or displayed when performing or advertising services. o Advertising and making services available in Canada is sufficient to constitute the use under s. 4(2) o But the services must be also performed in Canada
-‐ Non-‐use can lead to expungement
o Example: Mayborn Products Ltd v. Canada (Registrar of Trade-‐Marks) (p. 479) § The Federal Court held that the Registrar correctly expunged a mark for non-‐use where the
manufacturer owned the trade-‐mark but only the manufacturer’s subsidiary was using the mark in the normal course of trade and nothing identified to the consumer that the subsidiary was merely a conduit.
o 3 year rule à Non-‐use may lead to the loss of trade-‐mark rights. After 3 years of non-‐use, a third party may apply to the Registrar for expungement of a trade-‐mark under s. 45
o What are criteria for expunging? § A mark is abandoned for purposes of attaching the registration under s. 18(1)(c) when two elements are
proven: • The mark is no longer used in Canada, and • There is an intention to abandon the mark (intention can be inferred from long period of non-‐use).
-‐ Must use the registered mark
o Deviated significantly from register à Whether a mark is in “use” is evaluated against the appearance of the mark in the register, and thus if the mark owner uses a mark that deviated significantly from the appearance of the mark on the registry and does not use the mark as registered, the registered mark may not be in use.
o Updated mark à When the owner is using an updated mark that deviated significantly from the registered mark, the registered mark can be attacked for lack of use or abandonment.
o Mark change without message change à If the mark changes significantly and the owner does not change the message to the consumer so the new mark still identifies the source, the registered mark may no longer be in use (s. 45)
o Flexibility à However, the trade-‐mark law allows some flexibility and does not require that the mark in use be completely identical to the mark on the register. If the updated or revised mark can be recognized by the public as maintaining an identity with the registered mark and does not lead to confusion, use of the updated mark will count as continued use of the registered mark.
o Test of consumer perception à “The practical test to be applied in order to resolve a case of this nature is to compare the trade mark as it is registered with the trade mark as it is used and determine whether the differences between these two marks are so unimportant that unaware purchaser would be likely to infer that both, in spite of their differences, identify the goods having the same origin.” (→Canada (Registrar of Trade-‐Marks) v Cie international pour l’informatique CII Honeywell Bull SA) (p. 481) o The test is always about the consumers’ perception
Case: Promafil Canada Ltée v Munsingwear Inc [1992]
Facts -‐ Company owns use of both thin and fat penguin trade-‐marks but the owner had not used the thing penguin for a
period of time. Issue: -‐ Should the thin penguin trademark be expunged?
Held -‐ NO. The court ruled that the use of corpulent formally attired penguin counted as use of the registered slim
penguin mark Reasoning -‐ The court explained that the test is “the maintenance of identity and recognisability and the preservation of
dominant features”, and variations from a registered mark can be used if they would not mislead an unaware purchaser.
-‐ “Obviously, with every variation the owner of the trademark is playing with fire. […] But cautious variations can be made without adverse consequences, if the same dominant features are maintained and the differences are so unimportant as not to mislead an unaware purchaser” (p. 483)
-‐ “Maintains recognizability” à “The law must take account of economic and technical realities. The law of trademark does not require the maintaining of absolute identity of marks in order to avoid abandonment, nor does it look to minuscule differences to catch out a registered trademark owner acting in good faith and in response to fashion and other trends. It demands only such identity as maintains recognisability and avoids confusion on the part of unaware purchasers.” (p. 483)
VI. REGISTRATION
Prof Adams skipped this section VII. LICENSES AND ASSIGNMENTS
Prof Adams skipped this section VIII. INFRINGEMENT (P. 498)
-‐ 2 main categories of infringement: o 1. Infringement of any trade-‐mark (registered or not), based on the common law of tort of passing off and
general civil liability in Quebec, and partly codified in s. 7 of the Trade-‐Mark Act o 2. Three specific instances of infringement that apply only to registered marks, provided for in ss. 19, 20 and
22 of the TMA. § S. 19’s infringement applied to the use of identical marks on identical wares or services as the
registered mark. § S. 20’s infringement applied to confusing marks § S. 22’s infringement applies to the depreciation of a mark’s goodwill.
1. INFRINGEMENT OF REGISTERED MARKS a) “Right to Use” and “Use” for Purposes of Infringement
-‐ S. 19 protects against use of identical mark -‐ Defendant must be “using”“mark” as defined with reference to s. 2 and s. 4 (see above in “use” section)
b) Section 19 (p. 500)
Statute: Trade-‐Mark Act, s.19 – infringement of identical marks
s.19 à Subject to sections 21, 32 and 67, the registration of a trade-‐mark in respect of any wares or services, unless shown to be invalid, gives to the owner of the trade-‐mark the exclusive right to the use throughout Canada of the trade-‐mark in respect of those wares or services. -‐ What does trademark holder get?
o S.19 à An exclusive right valid “throughout Canada” regardless of where the mark is in fact used, unless the mark was registered pursuant to s. 12(2) or s. 13 and has become distinctive only in part of the country (s. 32(2)) or unless a concurrent prior use of a confusing mark is allowed under s. 21.
-‐ When is there infringement? o For infringement, the registered trade-‐mark and the ware or service in association with which it is used must
be identical to the infringing mark and the ware and service in association with which it is used. -‐ NB: No evidence of confusion is required for infringement under s. 19
Case: Mr. Submarine v. Amandista Invetments [1987] (p. 501) re : s.19
Facts -‐ The plaintiff, who was the owner of the registered trade-‐mark of MR SUBMARINE for sandwiches and restaurant
services, claimed that the defendant’s use of the marks MR SUBS’N PIZZA and MR 29 MINS SUBS’N PIZZA for a business that quickly delivered food through telephone orders infringed the plaintiff’s registered trade-‐mark because the defendant’s mark took an “essential element” of the plaintiff’s mark.
Issue: -‐ Did Mr Subs’n Pizza and Mr. 29 Mins Subs’N pizza take an essential element of Mr. Submarine
Held -‐ NO – cannot argue infringement under s.19 on the basis of an ‘essential element’
Reasoning -‐ Because the defendant’s mark were only similar, and not identical, to the plaintiff’s registered trade-‐mark there
was no infringement of s. 19, which required that the whole identical mark be used. *** continues below w.r.t. s. 20 c) Section 20 (p. 503)
Statute: Trade-‐Mark Act, s.20 à infringement with confusing trade-‐mark 20. (1) The right of the owner of a registered trade-‐mark to its exclusive use shall be deemed to be infringed by a person not entitled to its use under this Act who sells, distributes or advertises wares or services in association with a confusing trade-‐mark or trade-‐name, but no registration of a trade-‐mark prevents a person from making
(a) any bona fide use of his personal name as a trade-‐name, or (b) any bona fide use, other than as a trade-‐mark,
(i) of the geographical name of his place of business, or (ii) of any accurate description of the character or quality of his wares or services,
in such a manner as is not likely to have the effect of depreciating the value of the goodwill attaching to the trade-‐mark. (2) No registration of a trade-‐mark prevents a person from making any use of any of the indications mentioned in subsection 11.18(3) in association with a wine or any of the indications mentioned in subsection 11.18(4) in association with a spirit.
-‐ Under s. 20, the registered trade-‐mark owner’s exclusive right to use is expanded to “confusing” trade-‐marks and trade-‐names.
-‐ S. 20 protects against use of confusing mark o S. 20 expands the scope of the exclusive right of the owner of the registered mark in s. 19 to cases where
wares or services are sold, distributed, or advertised in association with a confusing mark or trade-‐name, in which case infringement is deemed.
o Under s. 20, the two identities that are required for s. 19 are not necessary. Can also be in relation to different wares and services (s. 6(5))
o The issue is the likelihood that prospective purchasers will be confused about the source. o Infringement under s. 20 does not require that the defendant “use” the mark as defined in ss. 2 and 4. o Contrary to s. 19, which applied throughout Canada, a combined reading of ss. 20 and 6(2) leads to the
conclusion that confusion must be present in a given area. o Confusion can exist even if mark is used on different types of wares and services.
§ Recall s. 6(2) § Confusion defined in s. 6(5) – same test used for registration requirements
Statute: Trade-‐Mark Act, s.6(2) The use of a trade-mark causes confusion with another trade-mark if the use of both trade-marks in the same area would be likely to lead to the inference that the wares or services associated with those trade-marks are manufactured, sold, leased, hired or performed by the same person, whether or not the wares or services are of the same general class.
Statute: Trade-‐Mark Act, s.6(5) In determining whether trade-marks or trade-names are confusing, the court or the Registrar, as the case may be, shall have regard to all the surrounding circumstances including
• (a) the inherent distinctiveness of the trade-marks or trade-names and the extent to which they have become known; • (b) the length of time the trade-marks or trade-names have been in use; • (c) the nature of the wares, services or business; • (d) the nature of the trade; and • (e) the degree of resemblance between the trade-marks or trade-names in appearance or sound or in the ideas suggested by
them.
Case: Mr. Submarine v. Amandista Invetments [1987] (p. 501) re : s.20
Facts -‐ See above in s.19 section
Issue: -‐ Did Mr Subs’n Pizza and Mr. 29 Mins Subs’N pizza infringe s.20 rights of Mr. Submarine by causing confusion?
Held -‐ YES – Although the plaintiff failed in the infringement call based on s. 19 since the marks were not identical, the
plaintiff was successful on the infringement claim based on confusion under s. 20 Reasoning -‐ “Whether the respondent’s trademarks or trade names are confusing with the appellant’s registered trade mark
must […] be considered not only having regard to the appellant’s present business in the area of the respondent’s operations but having regard as well to whether confusion would be likely if the appellant were to operate in that area in any way open to it using its trade mark in association with the sandwiches or services sold or provided in the operation.” (p. 505)
-‐ “The essence of the trade mark, that which alone gives it distinctiveness, is the combination of the two common and by themselves quite undistinctive words.” (p. 506)
o For both MR SUBMANIE and MR SUBS’N PIZZA, what makes the mark distinctive is the combination of
“Mr” with a common word. -‐ Both have retail customers, and the only difference in the nature of the wares is that the defendant also sells
pizza -‐ There is a small degree of resemblance between the marks -‐ It would likely confuse purchasers where both marks appear close together, such as in telephone listing. -‐ There is also a likelihood of confusion in the store signs -‐ Consumers might think that the defendant’s store is a licensed outlet that varies slightly because it also sells pizza.
-‐ Reverse confusion:
o Reverse confusion can also be the subject of an infringement action under s. 20 o Reverse confusion usually occurs when the junior user has greater economic power than the senior user and
uses a mark that is confusingly similar to the senior user to crowd out the senior user. o Consumer thinks that the defendant’s goods originate with the plaintiff o This is a novel claim in Canadian trade mark law. o Reverse confusion is recognized implicitly in s. 6 of the Trade-‐mark Act.
Case: A&W v. McDonalds [2005] FC – “reverse confusion”
Facts -‐ A&W was the senior mark owner of CHICKEN GRILL and McDonald’s the junior mark owner of CHICKEN MCGRILL,
and A&W alleged that McDonald’s use of its mark would lead A&W’s consumers to think that their chicken sandwiches are coming from McDonald’s
Issue: -‐ Does s.20 protect A&W from reverse confusion (consumers thinking their trademarked sandwiches were from
McD?) Held -‐ Although s.20 COULD apply to reverse confusion, it was not the case here.
Reasoning -‐
-‐ Exceptions to s.20: good faith use
§ S. 20(1)(a) allows a person to use her personal name as a trade-‐name in good faith. § S. 20(1)(b) allows a person to use the geographic name of his or her location or an accurate description
of the type or quality of the merchandise or service, if either is done in good faith and the use is not as a trade-‐mark
o For good faith use under s. 20(1)(a) and (b), the defendant must not be trying to deceive consumers into thinking the business is the same as the plaintiff’s.
o Both ss. 20(1)(a) and (b) are qualified by the condition that the good faith use cannot be likely to depreciate goodwill
Case: Hurlburt Co. v. Hurlburt Shoe Co (p. 510) à s.20 exception using name in good faith
Facts -‐ Both parties manufactured shoes and were stamping the shoes with the same word
Issue: -‐ Is there a trademark infringement?
Held -‐ No. There was only good faith use of a persons name without attempting to gain advantage of the usage
Reasoning -‐ Registered trade-‐mark owner could not prevent another trader from using his own name (which was the same as
the trade-‐mark) as a trade-‐name where the defendant had no intent to pass off the goods as someone else’s
-‐ Parody and satire?
o Balance between trademark law and freedom of expression o Parody: an imitation of the style of a particular writer, artist, or genre with deliberate exaggeration for comic
effect: the film is a parody of the horror genre (OED) o Satire: the use of humour, irony, exaggeration, or ridicule to expose and criticize people’s stupidity or vices,
particularly in the context of contemporary politics and other topical issued (OED) o Likelihood of confusion
§ Source Perrier S.A. v Fira-‐Less Marketing Co [1983] 2 FC 18 (p. 511) • The FC rejected the defendant’s Charter claim as to freedom of expression and found a prima facie
case of infringement under s. 20, reasoning that the similarity in appearance and pronunciation of PERRIER and PIERRE EH! are not likely to cause confusion but are obviously meant to cause confusion. Otherwise, the spoof would not be a spoof.
§ Green v Schwarz (1986) 9 CIPR 290 (p. 511) • The court enjoined the defendant from marketing sweatshirts which spoofed the design of Roots’
sweatshirts, which have a beaver silhouetted in a tree and the trade-‐mark ROOTS in a stylized script, by substituting a “macabre beaver” with a skeletal body and having ROTS in the same script style used by Roots.
§ Are the courts confused? • One could argue that a satire or parody or spoof is not meant to cause confusion because in order
for it to work the audience must be able simultaneously to hold in their head the original source and the parodic version. If the audience is confused and thinks it is authentic, the parody or satire has not worked.
• “One could say, in contradiction to the Federal Court, that ‘a spoof would not be a spoof’ if it causes confusion because the effect is achieved only when the audience can distinguish between the authentic and the spoofed versions.
• This argument addresses the likelihood of confusion, but the likelihood of depreciation with a satire or parody of spoof raises distinct issues. For many satires and parodies, especially where the targeted audience is large, the likelihood of depreciation of a mark’s goodwill is more logically implicated by parody and satire than is the likelihood of confusion.
o Parody examples § The north face makes outdoor activewear and The South Butt makes outdoor active wear § Intent of confusion is irrelevant, because the consumers still have to be confused
-‐-‐-‐-‐-‐-‐-‐-‐-‐-‐-‐-‐-‐-‐-‐-‐-‐-‐-‐PAULINA CLASS 16-‐-‐-‐-‐-‐-‐-‐-‐-‐-‐-‐-‐-‐-‐-‐-‐-‐-‐-‐-‐-‐
d) Section 22 (p. 512)
Statute: Trade-‐Mark Act, s.22(1) à depreciation of good will
Depreciation of goodwill 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 attaching thereto. Action in respect thereof 2) In any action in respect of a use of a trade-‐mark contrary to subsection (1), the court may decline to order the recovery of damages or profits and may permit the defendant to continue to sell wares marked with the trade-‐mark that were in his possession (or under his control at the time notice was given to him that the owner of the registered trade-‐mark complained of the use of the trade-‐mark) -‐ Focus on trade-‐mark owner rights
o S. 22 is the only section of the Act that creates a right essentially in favor of the trade-‐mark owner and which does not have the purpose of protecting the public
o S.22 applies even in the absence of consumer confusion
-‐ Veuve Clicquot test for depreciation o the SCC established that infringement under s.22 for deprecation has 4 elements:
§ 1) Used in connection à A claimant’s registered trade-‐mark was used by the defendant in connection with wares or services – whether or not such wares and services are competitive with those of the claimant;
§ 2) Sufficiently well-‐known à the claimant’s registered trade-‐mark is sufficiently well-‐known to have significant goodwill attached to it (without it needing to be famous);
§ 3) Likely effect à the claimant’s register red trade-‐mark was used in a manner likely to have an effect on that good will (i.e. linkage);
§ 4) Depreciation à the likely effect would be to depreciate the value of its good will (i.e. damage). o Under this test look to the definition of “use” under ss. 2 and 4 of the act (513)
Statute: Trade-‐Mark Act, s.4 à “use” When deemed to be used 4. (1) A trade-‐mark is deemed to be used in association with wares if, at the time of the transfer of the property in or possession of the wares, in the normal course of trade, it is marked on the wares themselves or on the packages in which they are distributed or it is in any other manner so associated with the wares that notice of the association is then given to the person to whom the property or possession is transferred. (2) A trade-‐mark is deemed to be used in association with services if it is used or displayed in the performance or advertising of those services. Use by export (3) A trade-‐mark that is marked in Canada on wares or on the packages in which they are contained is, when the wares are exported from Canada, deemed to be used in Canada in association with those wares. -‐ “Use” under s.4 related to s.22 depreciation of good will
o The plaintiff must show that the defendant used a sufficiently similar mark to the registered mark to “evoke in a relevant universe of consumers a mental association of the two marks that is likely to depreciate the value of the goodwill attaching to the plaintiff’s mark
o The onus of proof is on the plaintiff to establish a likelihood of depreciation (514) o The marks do not have to be identical: in Veuve Clicquot only part of the mark was used by the defendant and
that part was not spelled the same way o Use with different wares and services – the suggestion is that the mark placed with different goods may make
the use more likely to depreciate the value of the mark’s goodwill -‐ The goodwill of the mark
o is the part of the reputation of the business identified with the goods and services with which the mark is associated
o The goodwill of the mark is its power to draw a buyer towards one company’s product or service rather than that of a competitor (515)
-‐ The depreciation of goodwill in a mark o is when the advantage of that goodwill is reduced o To evaluate whether there is enough goodwill in a mark that it could be depreciated includes factors such as:
§ Whether the mark retains its source significance when encountered outside of the context of goods and services with which the mark is used by the trademark owner;
§ The mark’s degree of recognition within the relevant universe of consumers; § The sales volume and market penetration of the associated products; § The extent of the duration of advertising and publicity for the mark; § The mark’s geographic reach; § The mark’s degree of inherent distinctiveness; § Whether the associated products have a narrow or specialized channel of trade and if there are
multiple channels of trade
Case: Veuve Clicquot Ponsardin v. Boutiques Cliquot [2006] SCC à depreciation of goodwill
Facts -‐ Famous luxury wine and champagne maker claimed that the trade-‐name and registered trade-‐mark CLIQUOT of a
small Ontario and QC chain of mid-‐priced women’s apparel stores infringed the champagne maker’s mark under ss.20 and 22.Infringement case, (unlike Mattel – opposition proceedings) and the claimant has the burden to prove the likelihood of depreciation on a balance of probabilities
Issue: -‐ Did boutiques infringe trademark as per s.20 or s.22?
Held -‐ The court found NO LIKELIHOOD of confusion between the marks for the purpose of s.20 given the significant
differences in pricing, target marketing and channels of trade. -‐ The court also rejected the s.22 claim finding that a consumer would not make a mental link between the use of
“CLIQUOT” in the defendant’s stores and the plaintiff’s mark. NO mental link, no likelihood of depreciation in the goodwill of the plaintiff’s mark.
Reasoning -‐ Depreciation includes, but is not limited to, blurring and tarnishing of a trade-‐mark, in which the defendant
creates a negative association for the mark by blurring the brand image evoked by the Trade-‐Mark or of its positive associations, or decreasing the mark’s ability to distinguish products and attract customers.
-‐ 4 elements of s.22 o 1) Use of the claimant’s registered mark: The appellant’s s. 22 claim fails at the first hurdle. In my
view a consumer who saw the word “Cliquot” used in the defendants’ stores would not make any link or connection to the [plaintiff’s mark]. [para. 96] if a reasonable buyer is not at all likely to think of the senior user’s trademark in his or her own mind, even subtly or subliminally, then there can be no dilution. That is, how can there be any “whittling away” if the buyer, upon seeing defendant’s mark, would never, even unconsciously, think of the plaintiff’s mark? So the dilution theory presumes some kind of mental association in the reasonable buyer’s mind between the two parties and the mark.
o 2) Proof of Goodwill: there is clearly considerable goodwill attaching to the VEUVE CLICQUOT mark that extends beyond wine and champagne. [54] While “fame” is not a requirement of s. 22, a court required to determine the existence of goodwill capable of depreciation by a “non-‐confusing” use (as here) will want to take that approach into consideration, as well as more general factors such as the degree of recognition of the mark within the relevant universe of consumers, the volume of sales and the depth of market penetration of products associated with the claimant’s mark, the extent and duration of advertising and publicity accorded the claimant’s mark, the geographic reach of the claimant’s mark, its degree of inherent or acquired distinctiveness, whether products associated with the claimant’s mark are confined to a narrow or specialized channel of trade, or move in multiple channels, and the extent to which the mark is identified with a particular quality.
o 3) The Likely connection of linkeage made by consumes between the claimant’s goodwill and the defendant’s use: the appellant failed to establish this element. “Likelihood” is a matter of evidence not speculation.
o 4) The Likelihood of depreciation. The appellant did not establish this. -‐ The casual consumer, on the evidence, would not associate the name of the respondents’ stores with the house
of VEUVE CLICQUOT, whose mark would continue to distinguish without depreciation the famous French champagne. The goodwill would remain intact. There would be no negative perceptions to tarnish its positive aura (s in Clairol, or Dallas Cheerleaders porn example).
Case: Clairol International v. Thomas Supply [1968]
Facts -‐ The plaintiff Clairol and the defendant Revlon were both manufacturers of hair coloring. To entice customers,
Revlon used Clairol’s trade marks (MISS CLAIROL and HAIR COLOR BATH) along with Revlon’s marks (REVLON and COLORSILK) on comparative hair color shade charts to identify which of Revlon’s shades would be closest to Clairol’s. All of the marks were registered in association with hair coloring or cosmetics. The defendant’s color comparison charts appeared in advertising brochures and product packaging. Clairol sued for infringement.
Issue: -‐ Was there infringement?
Held: -‐ Use of the plaintiff’s marks on the defendant’s packages was used in a manner that was likely to depreciate the
goodwill in the plaintiff’s marks and infringed s.22. BUT use of the mark on the brochures did not meet the s. 4(1) requirement for use of a mark in association with wares and services and thus did not come within the scope of s.22
Reasoning: -‐ “the goodwill attaching to a trade mark is I think that portion of the goodwill of the business of its owner which
consists of the whole advantage, whatever it may be of the reputation and connection, which may have been built up by years of honest work or gained by lavish expenditure of money and which is identified with the goods distributed by the owners in association with the trade mark”
-‐ You may not put the competitor’s trade mark on your goods for the purpose of appealing to your competitor’s customers in your effort to weaken their habit of buying what they have bought before for this is “not only calculated to depreciated and destroy the competitor’s goodwill but it is using his competitor’s trade mark to accomplish his purpose
Comments: -‐ when consumers are led to buy one product rather than a competitor’s because the competitor’s trade mark is
used for comparative purposes on the wares or packaging there is a likelihood of depreciation of the mark -‐ However, use must qualify as such under s. 4 of the Act and it is different for wares and services -‐ S.22 does not prohibit all forms of comparative advertising. It is only when the use of the mark is likely to
depreciate the goodwill that s.22 is infringed. Note that a likelihood of depreciation can be found even if the information that the defendant provides is truthful –i.e. color comparison chart
-‐ Businesses can compete and can try to get their competitor’s customers but they cannot use someone else’s mark in a menner that is likely to depreciate it
-‐ Use distinction re:s.22
o Clairol distinguishes between the comparison charts on the packaging and those in advertising brochures under s.4(1)– had the brochures been available at the point of sale, the could possibly fit under s.4(1)
o By contrast, if the comparison charts had been about services, the brochures would fit the definition under s.4(2) (530)
-‐ Lego case o In AG v. Irwin Toy Ltd. the Federal Court ordered the defendant to stop using the plaintiff’s LEGO trade-‐mark
on the defendant’s packaging, and in brochures inside the packages that said that the defendant’s children’s toy blocks were compatible with LEGO and states “works with leading brand” with a picture of a Lego block
-‐ Michelin o to prevent a union from using the employer’s logo or other trade-‐mark on their posters, flyers or website
(530) § The cases turned on the fact that the defendant unions were not “using” the plaintiff’s marks. S. 2
includes “any lawful trade union” as a “person” under the Act, and thus a union can register a trade-‐mark and can infringe other people’s marks BUT the union’s use of the employer’s trademarks in the union’s recruitment literature is not a “use” of the mark under s.4 of the Act, which is a requirement under s.22
§ The term “use” is limited to its definition under s.2 and s.4 of the Act
o In Michelin the court found that the plaintiff did not prove that the union’s activities would likely have a “negative effect or depreciate the drawing power of the plaintiff’s marks in the market place” Although the union’s activities might diminish the plaintiff’s reputation as an employer
o S.20 claim also rejected because the court did not find that a consumer would likely be confused that the source of brochures featuring a mean tire creature about to stomp an employee had come from Michelin and the union identified itself in the material
-‐ Source Perrier S.A.
o The Federal Court found that there was a use and that the parody infringed s. 22 (see page 531) o The court was unwilling to recognize the freedom of expression interests of the satirist – freedom of
expression was outweighed by the protection of the mark’s goodwill because the owner of the mark should not have to bear a loss association with the mark being exploited to make a point about another point entirely (533)
-‐ Comparison with US dilatation
o The notion of depreciation of goodwill IS NOT the equivalent of the U.S. concept of dilution, a cause of action for dilution of the distinctive quality of a famous mark in cases of injury to the economic value of a famous mark
o U.S. law refers to dilution of a marks’ distinctiveness; Canadian law refers to depreciation of a mark’s goodwill (534)
o U.S. notion of dilution applies essentially to famous marks, while the Canadian protection against depreciation in s.22 applies to any registered mark
o U.S. right focuses on the reduction of the capacity of the famous mark to identify the goods of the owner, not loss of goodwill as with the Canadian concept
-‐ Conclusions on s.22 o The focus of Section 22 is thus NOT CONFUSION, rather, depreciation refers to use by a person, in most cases
a competitor, in the course of trade of another person’s mark(s) in a way that is likely to negatively affect the reputation and worth of the mark
o Section 22 does not deal with libel, injurious falsehood or other matters left to tort law o The main target of S.22 is NOT comparative advertising – if done properly and without undue negative
inference, comparative advertising should be allowed. o A consumer may well decide to opt for a different product because of the product’s features and/or price
without thinking less of the reputation of another company’s mark
-‐ SUMMARY OF INFRINGEMENT SECTIONS FOR REGISTERED MARKS: o Section 19:
§ Requires identical marks and identical wares or services and that the defendant use the mark; § It does not require confusion;
o Section 20: § Requires the likelihood of confusion and that the defendant “sells, distributes or advertises” wares or
services; § it does not require that the defendant “use” the mark as defined in ss.2, 4; § S.20 has three exceptions: good faith use of own name, geographical location and description of
business/wares o Section 22:
§ Requires a likelihood of depreciation of the goodwill of a mark; § The defendant must use the mark § It does not require confusion, identical marks or identical wares and services; § Requires linkeage in the consumer’s mind between the defendant’s use and the plaintiff’s mark
-‐-‐-‐-‐-‐-‐-‐-‐-‐-‐-‐-‐-‐-‐-‐-‐-‐-‐-‐CLAIRE CLASS 17-‐-‐-‐-‐-‐-‐-‐-‐-‐-‐-‐-‐-‐-‐-‐-‐-‐-‐-‐-‐-‐
e) Parallel Importation
-‐ Definition of parallel importation: “importation of a product which is legally made abroad but is manufactured without the permission of the intellectual property holder.
-‐ Rule: o Wares produced abroad with lawful Trade-‐Marks can be imported and sold in even when there is an exclusive
distributor in Canada o Exception (i.e. imported product can’t be sold): When the imported product is not the same quality as
domestic product -‐ NB: this is different for copyright, there is explicit provision against parallel importation -‐ Smith & Nephew v. Glen Oak (Federal Court of Appeal)
o Plaintiff was exclusive licensee allowed to use NIVEA trade-‐mark in Canada. Defendant imported NIVEA products from Mexico where they were cheaper…and then sold them in Canada for cheaper.
o Allowed parallel importation, saying plaintiff could have contractual action against parent company, but didn’t have action in trade-‐mark infringement against another authorized licensee.
2. INFRINGMENT OF ANY MARK Prof. Adams skipped this section a) Common Law Prof Adams skipped this section b) Section 7
Statute: Trade-‐Mark Act, s.7 à infringement of any mark Notes
No person shall: a) make a false or misleading statement tending to discredit the business, wares or services of a competitor
Parallel to tort of injurious falsehood
b) direct public attention to his wares, services or business in such a way as to cause or be likely to cause confusion in Canada, at the time he commenced so to direct attention to them, between his wares, services or business and the wares, services or business of anothe
Codify tort of “passing off”
c) pass off other wares or services as and for those ordered or requested d) make use, in association with wares or services, of any description that is false in a material respect and likely to mislead the public as to: i) the character, quality, quantity or composition; ii) the geographical origin; iii) the mode of the manufacture, production or performance of the wares or services;
Resembles tort of deceit
e) do any other act or adopt any other business practice contrary to honest industrial or commercial usage in Canada
Ultra vires!! Doesn’t apply!
Constitutional issues -‐ Constitutional unlike copyrights and patents, federal trade-‐mark legislative power stems from general “trade and
commerce” provision and provinces can regulate through tort law (property and civil rights) -‐ Constitutionality of s. 7 has been challenged a number of times
o MacDonald v. Vapor Canada à SCC determines 7(e) is ultra vires framework § FYI -‐ the book takes 5 pages right out of this judgment and sticks it in, completely unnecessarily § Plaintiff sought relief because former employee disclosed their trade secrets, there was a breach of
confidence and a misappropriation of confidential information. § Court found that s.7 nor s.7(e) standing alone would be valid but that s.7 (with the exception of s.7e)
would be valid because it rounds out the regulatory scheme for trade-‐marks, patents and copyrights. § As this case did not involve intellectual property infringement, it was outside federal competence to
make it a subject of a statutory cause of action. § In the end, it was a mere contractual
o Kirkbi v. Ritvik Holdings à SCC holds 7(b) is valid exercise of federal trade and commerce power
§ Plaintiff claims s.7(b) is not linked or connected in any way to the trade-‐mark registration scheme in the Act.
§ Court finds that it IS directly connected to the federal scheme for enforcing trade-‐mark, it’s a minimum intrusion into provincial jurisdiction, is limited in application and rounds out an otherwise incomplete trade-‐mark scheme.
o In sum, § 7(a) à no final word, book says “constitutionally dubious” § 7(b) à OK, as per Kirkbi § 7(c) à no final word, book says “would likely survive challenge, “ although plaintiff would need to show
passing off is connected to trade-‐mark (Celliers du Monde, Federal Court of Appeal decision) § 7(d) à no final word, unclear constitutionality (Balanyk v. University of Toronto, in obiter) § 7(e) à ultra vires, as per MacDonald v. Vapor Canada § NB: regardless of constitutionality, can always rely on torts of passing off, slander of title, injurious
falsehood, or trade libel (In provinicial courts only!) Section 7(a) -‐ targets injurious falsehood -‐ constitutionality in doubt -‐ requirements (NB: NOT necessary to show bad faith). Plaintiff must show
o 1) that the parties are competitors o 2) the existence of an (objectively) false or misleading declaration o 3) the declaration’s likely or demonstrated effect of discrediting the plainitff’s business/wares/services o 4) damage
-‐ Common contexts: o Comparative Advertising, explicitly or by implication o Unsubstantiated threats of an IP infringement action, which would put the company out of business
-‐ Common law tort comparisons o Slander of title AND Trade libel / slander of goods / malicious falsehood / disparagement of goods o Differences
§ For torts, courts will look for bad faith or knowledge of the falsity, but they are not required for s.7(a) § For torts, court requires a false statement, in s.7 can be false OR misleading
Section 7(b) -‐ “creates a civil cause of action that essentially codifies the common law tort of passing off” -‐ Kirkbi -‐ Differences w/ passing off
o S.7(b) plaintiff must prove there is a valid mark (registered or unregistered) whereas common law doesn’t require mark and can protect other indicia of reputation.
o Common law passing off requires goodwill, a likelihood of deception of the public by misrepresentation, and damage (actual or potential) whereas 7(b) requires that “direct public attention” to defendant’s wares/services/business in such a way as to cause or likely cause confusion.
o 7(b) parties don’t need to be in the same field of activity or competitors, although its a factor in establishing confusion, defined at s.6(2) and requires defendant’s use, as defined in s.4. NB – use of a trademark in association with a ware requires transfer of goods in the course of trade. If there isn’t transfer, then there can’t be confusion.
-‐ Foreign mark holders can bring action under s.7(b) and the plaintiff would not have to establish that it has used the mark in Canada for the purposes of s.4, nor that it has made the mark known for the purposes of s.5…just that it has reputation in its mark.
Section 7(c) -‐ Deals with “passing off” situations of direct substitution (i.e. counterfeiting) -‐ Searle Canada v. Novopharm
o “in order to succeed in its passing off action under s.7(c), the appellant would have to show that its getup had acquired a secondary meaning or reputation in the mind of the public such that the public identifies that get-‐up with the appellant or at least with some manufacturing source
Section 7(d) -‐ requires a false or misleading designation -‐ MUST be “important”
o E.g. saying your water contains 591 mL and its only 590 mL = not important -‐ Relatively few cases here, application is rare. -‐ Fournier Pharma v. Apotex (although at interlocutory stage)
o Product says “micronized formulation” when it was not micronized. Court found violation of 7(d). -‐ Unclear constitutionality
o Balanyk v. University of Toronto (SCC, in obiter) à depends on being applied to a subject matter coming within federal legislative jurisdiction.
Competition Act, s.52(1) à S.7(d) often invoked in conjunction with 52(1) of Competition Act
52. (1) No person shall, for the purpose of promoting, directly or indirectly, the supply or use of a product or for the purpose of promoting, directly or indirectly, any business interest, by any means whatever, knowingly or recklessly make a representation to the public that is false or misleading in a material respect. Proof of certain matters not required (1.1) For greater certainty, in establishing that subsection (1) was contravened, it is not necessary to prove that (a) any person was deceived or misled; (b) any member of the public to whom the representation was made was within Canada; or (c) the representation was made in a place to which the public had access. Permitted representations (1.2) For greater certainty, a reference to the making of a representation, in this section or in section 52.1, 74.01 or 74.02, includes permitting a representation to be made. Representations accompanying products (2) For the purposes of this section, a representation that is (a) expressed on an article offered or displayed for sale or its wrapper or container, (b) expressed on anything attached to, inserted in or accompanying an article offered or displayed for sale, its wrapper or container, or anything on which the article is mounted for display or sale, (c) expressed on an in-‐store or other point-‐of-‐purchase display, (d) made in the course of in-‐store, door-‐to-‐door or telephone selling to a person as ultimate user, or (e) contained in or on anything that is sold, sent, delivered, transmitted or made available in any other manner to a member of the public, is deemed to be made to the public by and only by the person who causes the representation to be so expressed, made or contained, subject to subsection (2.1). Representations from outside Canada (2.1) Where a person referred to in subsection (2) is outside Canada, a representation described in paragraph (2)(a), (b), (c) or (e) is, for the purposes of subsection (1), deemed to be made to the public by the person who imports into Canada the article, thing or display referred to in that paragraph. Deemed representation to public (3) Subject to subsection (2), a person who, for the purpose of promoting, directly or indirectly, the supply or use of a product or any business interest, supplies to a wholesaler, retailer or other distributor of a product any material or thing that contains a representation of a nature referred to in subsection (1) is deemed to have made that representation to the public. General impression to be considered (4) In a prosecution for a contravention of this section, the general impression conveyed by a representation as well as its literal meaning shall be taken into account in determining whether or not the representation is false or misleading in a material respect. Offence and punishment (5) Any person who contravenes subsection (1) is guilty of an offence and liable (a) on conviction on indictment, to a fine in the discretion of the court or to imprisonment for a term not exceeding 14 years, or to both; or
(b) on summary conviction, to a fine not exceeding $200,000 or to imprisonment for a term not exceeding one year, or to both. Reviewable conduct (6) Nothing in Part VII.1 shall be read as excluding the application of this section to a representation that constitutes reviewable conduct within the meaning of that Part. Duplication of proceedings (7) No proceedings may be commenced under this section against a person against whom an order is sought under Part VII.1 on the basis of the same or substantially the same facts as would be alleged in proceedings under this section.
Criminal Code ss. 408-‐410 à “Also potentially relevant”
408. Every one commits an offence who, with intent to deceive or defraud the public or any person, whether ascertained or not, (a) passes off other wares or services as and for those ordered or required; or (b) makes use, in association with wares or services, of any description that is false in a material respect regarding (i) the kind, quality, quantity or composition, (ii) the geographical origin, or (iii) the mode of the manufacture, production or performance of those wares or services.
• R.S., 1985, c. C-‐46, s. 408; • 1992, c. 1, s. 60(F).
Instruments for forging trade-‐mark 409. (1) Every one commits an offence who makes, has in his possession or disposes of a die, block, machine or other instrument designed or intended to be used in forging a trade-‐mark. Saving (2) No person shall be convicted of an offence under this section where he proves that he acted in good faith in the ordinary course of his business or employment.
• R.S., c. C-‐34, s. 367. Other offences in relation to trade-‐marks 410. Every one commits an offence who, with intent to deceive or defraud, (a) defaces, conceals or removes a trade-‐mark or the name of another person from anything without the consent of that other person; or (b) being a manufacturer, dealer, trader or bottler, fills any bottle or siphon that bears the trade-‐mark or name of another person, without the consent of that other person, with a beverage, milk, by-‐product of milk or other liquid commodity for the purpose of sale or traffic.
3. DEFENCES Defences For Registered Marks -‐ s.20(1) – registration does NOT prevent:
o s.20(1)(a) à good faith use of one’s personal name as a trade-‐name § may require that defendant use disclaimers and other means to notify the public.
o s.20(1)(b) good faith use (other than as a trade-‐mark), if the geographical name of the place of business or an accurate description of the character or quality of the wares or services
o **Both s.20 defences are qualified by the proviso that the use cannot be likely to have the effect of depreciating the goodwill attached to the mark
-‐ s.20(2) -‐ specific allowance for use of certain listed generic names for wines and spirits -‐ common law possible defences
o “prior use” is a valid defence to a claim of passing off…and court might allow concurrent prior use to continue. NB – “prior use’ defence often accompanied by counterclaim as prior user usually has superior rights!
o “unclean hands” – a party with unclean hands is not permitted to ask for an equitable remedy such as an injunction
o an express disclaimer can be sufficient to defeat an action in passing off
4. REMEDIES Prof. Adams skipped this section IX. FOREIGN MARKS
Prof. Adams skipped this section X. DOMAIN NAMES AND INTERNET-‐BASED INFRINGEMENT
Prof. Adams skipped this section
CHAPTER 5: PATENTS
-‐-‐-‐-‐-‐-‐-‐-‐-‐-‐-‐-‐-‐-‐LAURIE CLASS 18-‐-‐-‐-‐-‐-‐-‐-‐-‐-‐-‐-‐-‐-‐-‐-‐ I. INTRODUCTION (P. 643)
-‐ What is a patent o a grant of a privilege or property to an individual by the government (Black’s definition) o A patent is an exclusive right to one’s invention for a limited period of time, in exchange for its disclosure to
the public. o à it provides negative rights to exclude others from exercising the patentee’s exclusive rights o The patentee’s use of the invention may be subject to other regulatory/legal constraints (e.g. pharma
products require approval from Health Canada) and patentee’s can’t abuse their rights. -‐ Term of protection? What happens after?
o After the expiry of the term of protection, usually 20 years after the date of application for the patent, the invention falls into the public domain.
-‐ Justification for patent law o Prevents the two following scenarios
§ Inventor keeps the invention secret or seeks protection under laws that don’t require public disclosure of the information (e.g. trade secrets) • Patent Act designed to get rid of “hide and hoard” mentality. WE want public disclosure for societal
advancement § naive inventor lets everyone know about the invention, but has no recourse if someone w/ more
resources markets the invention first à limits his ability to profit and reduces his incentive to invent in the future
o The SCC summarized its “patent bargain” policy in Pioneer Hi-‐Bred v Canada: “In Canada, the granting of a patent means the kind of contract b/w the Crown and the inventor in which the latter receives an exclusive right to exploit his invention for a certain period in exchange for complete disclosure to the public of the invention and the way in which it operates.”
-‐ Jurisdiction o Federal, under: 91(22) “Patents of Invention and Discovery” o Patents are solely statutory law, governed by the federal Patents Act
Basic Requirements for a patent -‐ To obtain a patent (i.e. a limited term monopoly), there must be
o 1) patentable subject matter, o 2) novelty, o 3) non-‐obviousness o 4) utility
-‐ “Disclosure is the quid pro quo for valuable proprietary rights to exclusivity […] the patent monopoly should be purchased with the hard coinage of new, ingenious, useful and unobvious disclosures.” – Binnie J. (Apotex v Wellcome Foundation Ltd)
II. OBJECT OF THE PROTECTION (P. 651)
(again) Patentability criteria -‐ The invention must
o 1) have patentable subject matter (i.e. the nature of the invention must fall w/in the definition of “invention” in s. 2)
o 2) be new o 3) be non-‐obvious o 4) be useful.
-‐ Broad definition of “invention” in s.2 o Is broad because the Act was designed in part to promote innovation, it is only reasonable to expect the
definition of invention to be broad enough to encompass unforeseen and unanticipated technology” – Bastarache J. (Harvard Mouse)
Statute: Patent Act, s.2 à “invention”
s.2 invention = any new and useful art, process, machine, manufacture or composition of matter, or any new and useful improvement in any art, process, machine, manufacture or composition of matter. Summary of Basic Principles of Patents Subject Matter Useful New Non-‐Obvious Art (not in copyright sense), Process, Machine, Manufacture or “Composition of Matter” or improvement
Functions as described and has a use (i.e. does something)
Must be new compared to any element of “prior art” i.e., anything in existence prior to the invention
Must be the result of an inventive “spark” and not appear obvious to a person “skilled in the art” when considered in light of all elements of prior art
Statute: Patent Act, s.32 “improvement doesn’t convey right to original invention”
32. Any person who has invented any improvement on any patented invention may obtain a patent for the improvement, but he does not thereby obtain the right of making, vending or using the original invention, nor does the patent for the original invention confer the right of making, vending or using the patented improvement.
1. SUBJECT MATTER (P. 653) a) Excluded Subject Matter
-‐ What can a patent be? : o “any new and useful art, process, machine, manufacture or composition of matter, or any new and
useful improvement in any art, process, machine, manufacture or composition of matter (s. 2 “invention)
o Thus to be patentable, the subject matter must fit within at least 1 of those statutory categories & must, relate to a field of technology. Technology = an area of applied science, trade, industry, commerce & mechanical arts
o Embodiment/tangible or sellable § Patents are granted for the physical embodiment of an idea or a process that produces
something tangible or that can be sold.
-‐ Examples of patentable subject matter: o new kind of umbrella, new machine to make an umbrella, new method to make an umbrella, new
process to replace the fabric on an umbrella, an improvement on one of these o NB: The mast majority of patents are for improvements.
Statute: Patent Act, s.27(8) à not-‐patentable scientific principle/abstract theorum
What may not be patented 8) No patent shall be granted for any mere scientific principle or abstract theorem.
-‐ What is excluded from patent protection? o An invention is not a discovery.
§ “No patent shall be granted for any mere scientific principle or abstract theorem” s. 27(8) § The identification of an additional advantage to a mechanical device – that always existed but
was theretofore unperceived – is a discovery (Strayer J) § Discover adds to the amount of human knowledge; invention produces some tangible result
which is new & useful § E.g. E = mc2 could not be patented § E.g. discovering that UV rays prevent the growth of an organism is not patentable; applying the
new knowledge that irradiating water with low doses of UV light adequately treats water to prevent the replication of that organism has commercial value & is an invention
§ E.g. tree, fungus, animal discovered in natural state can’t be patented v. practical application (e.g. new drug, process made possible by discovery) is
o Explicitly excluded as subject matter (Arbour J in Monsanto): § natural phenomena, laws of nature, scientific principles; § computer programs where discovery is a method of calculation; § methods of medical treatment; § higher life forms; § business systems & methods & professional skills & methods; § printed matter producing only an artistic intellectual or literary result; § mere human conduct or mental steps or instructions.
o In sum, no one can patent formulas, mere ideas, speculations of what is possible… because an invention must be new & useful – i.e. it must work & be practical.
o Corollary: a patent won’t be granted for an invention contrary to the laws of nature (e.g. perpetual motion device – Otta case)
o It won’t be patentable if the same aspects are already protected by another IP right. (e.g. computer programs and architectural plans are protected under copyright)
Patentable art (s.2) defined by SCC: -‐ “new and innovative methods of applying skill or knowledge provided they produced effects or results
commercially useful to the public” -‐ Excluded
o à Professional skills & methods (way of doing law, accounting, marketing, selling, teaching) are because they aren’t within a field of technology.
o à Medical Treatment: Canada bans patents on therapeutic & surgical methods, but diagnostic methods can be patented.
§ A method CAN be patented where it produces an essentially economic result in relation to trade, industry or commerce.
§ So medical treatments (e.g. how surgeon operates) can’t be patented, but medical instruments (e.g. machine for laser eye surgery) can.
§ Tennessee Eastman: surgical method for joining incisions by applying certain compounds = unpatentable
§ Imperial Chemical: method for cleaning teeth = unpatentable
b) Computer Programs and Business Methods (p. 660)
-‐ Controversy o Both computer programs and business methods are highly debated because they potentially run afoul of
the rule that abstract mental steps alone can’t be patented. o TRIPS protects computer programs as literary works but doesn’t mention the patentability of software.
Computer programs
-‐ What is/isn’t patentablein Canada o Unpatentable à computer programs involving only a method of calculation are unpatentable since they
are the mere application of mathematical concepts that can’t be patented under s. 27(8) o Patentable à computer-‐related inventions, computers as apparatus in whole “system” can be patented.
Key (=only) case on patentability of computer programs = Schlumberger v Canada § found a way to take measurements obtained in boreholes, transmit them to computer program
that uses mathematical formulae to convert this information into useful charts, graphs, etc. § nothing new in using computers to make calculations § what is new: discovery of the various calculations to be made & math formulae to be used in
making those calculations § if the calculations were made by men, this would just be mental steps and not patentable § However, in this case the specifications prescribe the calculations to be made by computers § If we allowed this to be patented, we would be patenting something that otherwise can’t be
patented (calculations) § The fact that a computer is used to implement discovery, doesn’t change that this is discovery § Although subject matter that consists only of the algorithm of a computer program to do
calculations according to a specified formula are not patentable (Schlumberger), computer programs integrated w/ hardware & computer related inventions can be patented.
§ If the program does more than calculations (e.g. it produces a result according to data recovered), the “system” can be patented.
Business method: -‐ what is it?
o a plan or a scheme to conduct a commercial interaction. o Often, combined w/ computer programs in patent applications (e.g. Amazon one-‐click)
Case: Amazon v. Canada “one-‐click ordering” [??] FC …SCCà patentability of computer-‐based business method?
Facts -‐ How it works: Customer first visits website and enters account, billing & shipping info. Identifying cookie is stored
on customer’s computer. On next visit to website, cookie allows seller’s server to recall the customer’ info & pair it with the online shopping cart contents so the customer can checkout w/ a single click without having to reenter the info on each transaction
-‐ Patent Appeal Board rejected Amazon’s application on the grounds that o the claimed invention was not an “art” under s. 2 & therefore not statutory subject matter o business methods are per se unpatentable o claimed invention was not technological in nature
Issue: -‐ Is “one click ordering?” patentable?
Held -‐ Federal Court says yes, both system and method (process) are patentable subject matter, reversing Patent
Appeal Board and orders that decision be sent back for re-‐examination Reasoning -‐ Phelan J expressly moves away form UK precedent that excludes business methods & suggests rapprochement to
US which allows business methods to be patented
-‐ notes that there is no statutory exclusion of business methods in the Patent Act & rules that Canada should assess business methods pursuant to the general categories of “invention” as is done in the US
-‐ says we need to be flexible with how we understand “technology”; the Patent Act must be applied in a way that recognizes changes in technology & the move from industrial age to electronic one
-‐ Rules that both the system & the method (process) = patentable subject matter -‐ Not simply an idea; a practical application of the one-‐click concept put to use through cookies, the internet & the
customer’s own action -‐ Tangibility is not an issue; physical effect is in customer manipulating their computer and creating an order -‐ This invention has a commercially applicable result & is concerned w/ trade, industry & commerce
-‐ Phelan does suggest however that the invention may be obvious (SCC later says it wasn’t at the time)
-‐ Key issues raised by the Amazon decision o 1) we need to consider it against the backdrop of cases that have limited the protection of computer
programs (Schlumberger) because Amazon’s patent is entirely implemented by software o 2) there must be a limit to patentable subject matter (i.e. an idea, mental steps, business know-‐how) o 3) alignment with US patent law is significant because the US has arguably the broadest definition of
patentable “invention”; concerns that Americans “anything under the sun made by man” + we decided differently than the US in Harvard Mouse
-‐ Evolution from Schlmberger to Amazon o Even before Amazon, CIPO was issuing patents for some inventions resembling business models &/or
computer software so long as they were an “art” under s. 2 § CIPO guidelines detailed software is patentable when:
• 1) it is included in a new & useful process • 2) it is integrated with another system that comprises patentable subject matter • **although these were often applied while reiterating Schlumberger holding
§ A number of decisions by Patent Appeal Board allowing patents on software-‐based inventions • E.g. Motorola: a novel algorithm, if embodied in firmware or hardware will not be
characterized as abstract -‐ Going forward
o Given the globalization of IP & the cross-‐border nature of online shopping in N. America, there will be pressure on Canada to review its jurisprudential exclusion with respect to the patenting of computer programs and, to a lesser extent, business methods.
o Maybe Amazon Federal Court decisions gives us the opportunity to do this (it did, SCC confirmed FC decision)
o this would be more in line w/ TRIPS which states that patents are available in all fields of technology o Prediction: the decisions will be made case by case. a computer software program or business method
won’t be patentable if § it consists merely of abstract mental steps § doesn’t fit the statutory subject matter categories § isn’t within a field of technology § otherwise doesn’t fit patentability criteria
-‐-‐-‐-‐-‐-‐-‐-‐-‐-‐-‐-‐-‐-‐BARBARA CLASS 19-‐-‐-‐-‐-‐-‐-‐-‐-‐-‐-‐-‐-‐-‐-‐-‐ c) Life Forms (p. 671)
Case: Diamond Chakrabart [1980] US (p.673)
Facts -‐ Patent application for genetically engineered bacterium that can be used to break down oil spills -‐ Patent examiner refuses because bacterium is a life form
Issue: -‐ Are life forms patentable?
Held -‐ Yes. The Supreme Court declared valid patent claims for a man-‐made micro-‐organism capable of degrading four
kinds of hydrocarbons Reasoning -‐ USSC (5-‐4) concludes that “manufacture” and “composition of matter” includes “anything under the sun that is
made by man” -‐ Should not read in the Patent Act limitations that do not exist -‐ Bacterium is patentable subject matter
Case: Re: Abitibi Co [1982] Patent Commissioner à yeast
Facts -‐ Patent application for a yeast culture engineered to digest certain waste products in the effluent from a pulp and
paper plant Issue: -‐ Is yeast a patentable subject matter?
Held -‐ Yes. microbial culture that could be used to purify waste from pulp mills WAS patentable
Reasoning -‐ Refers to Chakrabarty, but carefully limits the scop -‐ “...this decision will extend to all micro-‐organisms, yeasts, moulds, fungi, bacteria, actinomycetes, unicellular
algae, cell lines, viruses or protozoa; in fact to all new life forms which are produced en masse as chemical compounds are prepared, and are formed in such large numbers that any measurable quantity will possess uniform properties and characteristics”
Case: Pioneer Hi-‐Bred v. Canada [1986] (p.672) à cross-‐bred plants
Facts -‐ Application for patent on new variety of soybeans -‐ A strain of a naturally grown plant derived by artificial cross-‐breeding -‐ Reference to the US case of Diamond v Chakrabarty (which says life forms are patentable subject-‐matter)
Issue: -‐ Are cross-‐bred plant life forms patentable subject matter?
Held -‐ Federal Court says No. SCC says No too.
Reasoning -‐ Federal court says plant variety is not a manufacture or composition matter, as per s.2 -‐ SCC says Hi-‐Bred’s intervention does not alter the soy beans reproduction process, which occurs in accordance
with laws of nature (always considered in the realm of simple discoveries) -‐ This is NOT a case of genetic engineering that changes the genetic material itself. -‐ Court did not directly decide on whether life forms are patentable subject matter
-‐ Conclusions after this case:
o Combining the discussions in Pioneer Hi-‐Bred and Abitibi, one could conclude that lower life forms, such as yeasts and fungi, can be patented but not plants.
Case: Harvard College v. Canada [2002] SCC (p.676) à mouse
Facts -‐ The case dealt with mice that were genetically altered to become more prone to developing certain forms of
cancer, thus accelerating cancer research in laboratories. -‐ Harvard sought to patent the life form of the transgenically modified mouse and therefore included the
oncomouse itself in its patent claims -‐ Allowed patent on process à The Commissioner allowed the patent claims on the method of producing the
genetically altered mice but denied the patent claim on the animal itself. Issue: -‐
Held -‐ No (split SCC) higher like forms such as mice, but also plants (hence apparently confirming Pioneer Hi-‐Bred) could
not be patented Reasoning -‐ Rejects “anything under the sun made by man” US approach -‐ Higher life forms can not be considered “manufactures” or “compositions of matter” under s. 2. (dissent, some
thought mice could be considered composition of matter) o If the words “composition of matter” are understood too broadly, then the other listed categories of
invention, including “machine” and “manufacture”, become redundant. This implies that “composition of matter” must be limited in some way.
o A complex life form such as a mouse or a chimpanzee cannot easily be characterized as “something made by the hands of man” (which is the definition usually given to “manufacture”)
-‐ Just because something is valuable to humans doesn’t mean the mouse can be defined solely with reference to the genetic matter of which its composed. Unique qualities beyond genetic matter transcends the mouse from its matter and prevents their characterization as “compositions of matter”
-‐ Parliament didn’t intend to include higher life forms nor is the Patent act equipped to deal with “self-‐replicating inventions” (see issue later in Monsanto of “use” of self-‐replicating inventions)
-‐ Slippery slope to humans argument -‐ multitude of arguments concerning patenting higher life forms
o Patent rights are merely a right to exclude others from making, using, and selling invention. § Does not give right to commercialize invention § Patent act is not intended to regulate biotechnology § Issues raised involve corollary legislation, not Patent Act
o Statutory interpretation of “manufacture” and “composition of matter” § Agree with majority that definition of invention does not include “everything under the sun that
is made by man” § But definition necessarily includes unanticipated inventions § Untenable distinction between lower and higher life forms § Philosophical debate on mind-‐body dualism not appropriate for determining if a higher life form
is not a composition of matter àThis is not part of the Patent Act. o International harmonization
§ Other jurisdictions with similar legislation grated patent § Concern that companies will not invest in R&D in Canada
o Disappearing subject matter § Majority acknowledged (in obiter) patentability of genetically altered egg § Illogical to argue that the resulting oncomouse is not patentable (becomes an issue in
Monsanto). o Incentives for research and development
§ Biotechnology an important industry sector for Canada § Research requires compensation, whether carried out in public or in the private sector § Patent rights is a mechanism for ensuring compensation to inventors
o Religious objection § Whether scientists are “playing God” id not a consideration for the court
o Lack of regulatory framework § Patented inventions are regulated by corollary legislation § How patents are commercialized is not an issue to be addressed by definition of invention
o Laws of nature objection § Claim that oncomouse is the result of laws of nature (growth from single fertilized egg to
mouse) misses the point) § Laws of nature affect every patented invention – what invention can work against the laws of
nature? § Patented drugs work because of the laws of nature that govern bodily processes and functions. § The laws of nature do not account for the genetic alteration that makes the mouse an invention
o Ordre public and morality § TRIPS Agreement allows states to enact exceptions to patentable subject matter on basis of
ordre public and morality § Canadian legislation has not implemented these exceptions.
o Animal rights § Animals can be used in research § Mice are already property, so granting a patent does not commodify animal life § Not granting a patent will not stop the use of the technology – technology will be available to be
used by anyone o Commodification of human life
§ Slippery slope argument – today mice, tomorrow human beings § Not accepted – qualitative divide between rodents and humans beings
o Query: xenotransplantation – animals genetically altered with human genetic material to provide donor organs that will not be rejected by human body
§ At what point does “transgenic” raise a concern with respect to quantity/ type of human genetic material?
o Environmental protection § Concern with release of genetically modified life forms into the environment § An issue to be addressed through corollary legislation
o Concerns of developing countries § Issued of equitable access addressed in multilateral agreements
o High life forms are such a “different kind of technology” patent should not be allowed, until the parliament says that we can patent it.
§ All the other objections that were raised belong to other areas than patent law.
Case: Mosanto Canada v Schmeiser [2004] SCC (p. 697) à use of patented seed
Facts -‐ This case dealt with the patentability of genetically altered canola seed. -‐ Due to the genetic modification, farmers who use the modified seed can spray the herbicide roundup which will
not affect the canola. Most plants sprayed with a glyphosate herbicide do not survive, but a canola plant grown from seed containing the modified gene will survive.
-‐ Mosanto requires a farmer who wished to grow that kind of canola seeds to enter into a licensing arrangement. The licensed farmers may not sell or give the seed to any third party, or save seed for replanting or inventory.
-‐ Schmeiser, a Saskatchewan farmer, was discovered during a Mosanto audit of fields to be using the canola seeds without having purchased the seed or having a licence to plant it.
-‐ The origin of the plants was contested. Schmeiser argued it was due to accidental contamination with seeds carried by the wind from neighbouring lands or from passing trucks.
Issue: -‐ What constitutes ”use” necessary for infringement? Whether the acts of a farmer isolating, harvesting, saving and
replanting genetically modified patented seed constituted patent infringement?
Held -‐ The appellants “used” Mosanto’s patented gene and cell and hence infringed the Patent Act -‐ Where a defendant’s commercial or business activity involves a thing of which a patented part is a significant or
important component, infringement is established. It is no defence to say that the thing actually used was not patented, but only one of its components
-‐ Infringement does not require use of the gene or cell in isolation (p. 699) Reasoning -‐ Mosanto claims protection only over a gene and a cell.
o To find a gene and a cell to be patentable is in fact consistent with both the majority and the minority holdings in Harvard Mouse (lower life forms)
o The patent on the gene and cell is valid -‐ The issue is whether, by cultivating plant containing the cell and gene, the appellant used the patented
components of those plants -‐ Held: Where a defendant’s commercial or business activity involves a thing of which a patented part is a
significant or important component, infringement is established. It is no defence to say that the thing actually used was not patented, but only one of its components.
-‐ Implications of life forms as patentable subject matter o What constitutes “use” (exclusive right to make, sell or use) o Harvard College: no protection for higher life forms, including plants
§ No protection for the plant, not protection for the seed o Mosanto has patent protection for genetically modified gene and cell
§ Is planting the seed and harvesting the plant making “use” of the modified gene and cell? § YES
Dissent -‐ Majority’s decision allows Monsanto to achieve indirectly what cannot be done directly, which is to obtain patent
protection for a plant, contrary to Harvard College o by saying that a plant infringes a patent on the cell, then there is a possibility to do indirectly what was
prohibited in Harvard College (grants protection for the plant indirectly – nobody can use the plant) o “Use” should be restricted to use of gene or cell in isolation
-‐ Reversal of Harvard? NO
o While Mosanto may appear to be a reversal of Harvard College, this conclusion is incorrect. o Certainly, in Mosanto the court seemed to accept the economic rationale to allow patents on new types
of inventions (including modified genes in plants) which had been mentioned by the minority in Harvard.
o In Harvard, the justices agreed that a genetically modified egg is a patentable subject matter; likewise in Mosanto, the patent for Mosanto’s gene and cell was valid.
o The Harvard College conclusion that higher life forms per se are unpatentable still holds after Mosanto. o In Mosanto, the Court did NOT hold that the plant itself was patented but that one could patent
modified genes and the resulting cells and that use of those modified genes and cells, whether in laboratory or not, would infringe the patent.
-‐ Distinction without difference o The practical result is that many components of higher life forms, including proteins, genes and cells, can
be patented, but entire organisms, such as plants and animals, cannot. Because one can infringe a patent in one of those components by “using” the higher life form in which it is embedded, it may be that for the purposes of infringement it will prove to be a distinction without a difference.
-‐ Conclusion o Thus, as things stand now in Canada, higher life forms are NOT patentable subject matter. This exclusion
embraces animals at any stage of development, including fertilized eggs. o There cannot patent a plant or animal but there would be no patent restriction on manufacturing or
selling them in Canada (other regulatory regimes may apply to prohibit that). o Component of higher life forms can be patented, including proteins, cells, and genes.
o Components of animals are patentable only if they do not have the potential to develop into an entire animal (but according to both the SCC majority and dissent in Harvard College, fertilized eggs are patentable subject matter).
o Finally, extrapolating from Mosanto, a patent on a component part (such as a gene) can be infringed by using the whole animal or plant that contains it.
-‐-‐-‐-‐-‐-‐-‐-‐-‐-‐-‐-‐-‐-‐PAULINA CLASS 20-‐-‐-‐-‐-‐-‐-‐-‐-‐-‐-‐-‐-‐-‐-‐-‐ d) New Use of Known Compound
Case: Shell Oil v. Canada [1982] SCC à new use of a known compound can = patentable subject matter
Facts -‐ Appellant applied for a patent on certain chemical compositions comprising chemical compounds mixed with an
adjuvant. -‐ The alleged “invention” was the discovery of the usefulness of the compounds, old and new, as plant growth
regulators. -‐ The Examiner rejected appellant’s application and the Commissioner of Patents and the Federal Court of Appeal
upheld his decision. Issue: -‐ Whether a new use for an old compound is patentable; -‐ Whether appellant can opt for a patent on the compositions instead of on the new compounds -‐ Whether a claim on the compositions violates s. 36 of the Patent Act.
Held -‐ Patent application allowed. New use for old compound is patentable. Claim for composition containing new
compounds was also patentable Reasoning -‐ Appellant’s idea of applying old compounds to a new use—one capable of practical application and of undisputed
commercial value—was an invention within the meaning of s. 2 of the Patent Act. Nothing in the Act, including s. 36, precluded a claim for these compositions which are the practical embodiment of the new knowledge.
-‐ he claim for the compositions containing new compounds was also patentable. The patenting of the compounds only would not give appellant protection for its idea of using compounds having a particular chemical structure as plant growth regulators. The mixture of the compounds with the appropriate adjuvants was necessary in order to embody the idea in practical form. Therefore, there was an inventive step involved in mixing the compounds with the appropriate carriers for their application to plants. Further, these composition claims were not subject to the restrictions of s. 41 (products intended for food or medicine) and no separate claim was being made for the compounds.
-‐ It is not the process of mixing the old compounds with the known adjuvants which is put forward as novel. It is the idea of applying the old compounds to the new use as plant growth regulators;
-‐ What is the invention under s.2? o The application of this new knowledge to effect a desired result which has an undisputed commercial
value and that falls within the words “any new and useful art”. o I think the word “art” in the context of the definition must be given its general connotation of
“learning” or “knowledge” as commonly used in expressions such as “the state of the art” or “the prior art”.
o The appellant’s discovery in this case has added to the cumulative wisdom on the subject of these compounds by a recognition of their hitherto unrecognized properties and it has established the method whereby these properties may be realized through practical application. In my view, this constitutes a “new and useful art” and the compositions are the practical embodiment of the new knowledge.
-‐ In sum
o New use of a known compound is patentable subject matter (NB it is easier to demonstrate if the new use is in a different field (Shell Oil) if it meets the patent criteria of novelty, usefulness, and non-‐ obviousness
o “Swiss style claims” in the pharmaceutical industry: § these are claims that focus on new (medical) uses of a known substance (compound or
composition) § in Canada, such claims are patentable if they disclose a truly new industrial or commercial result § the patent should disclose clearly (in the specification or claims) what the means for
distinguishing the new use from the already known use § Finding a new combination of known elements may also be patentable subject matter (706)
e) Selection Patents -‐ What is a selection patent?
o Patents “whose subject matter is a fraction of a larger known class of compounds which was the subject matter of a prior patent”
o Selection patents provide exclusive rights to one or more members of a previously known class (“genus patent” or “originating patent”) and their patentability claims based on special qualities that are peculiar to the selected members of a larger class where the advantage of the selected class (new use or benefit) was not previously disclosed
-‐ Arguments against selection patents o Opponents of selection patents argue that this allows pharmaceutical companies to double patent the
same compound and “evergreen” protection beyond the normal 20 year patent term -‐ Arguments FOR selection patents
o Supporters of selection patens argue that this type of patent can be sought by a party other than the owner of the original genus and that the claims of the genus patent are typically broader than those of the selection patent
-‐ Selection patents can be vulnerable to being anticipated or made obviously by the previously disclosed larger class of compounds (707)
Case: Apotex Inc. v. Sanofi-‐Synthelabo [2008] à selection patent test
Held -‐ Selection Patents must meet three conditions:
o 1) There must be a substantial advantage to be secured or disadvantage to be avoided by the use of the selected members
o The whole of the selected members (subject to “a few exceptions here and there”) possess the advantage in question
o The selection must be in respect of a quality of a special character peculiar to the selected group. If further research revealed a small number of unselected compounds possessing the same advantage, that would not invalidate the selection patent. However, if research showed that a larger number of unselected compounds possessed the same advantage, the quality of the compound claimed in the selection patent would not be of a special character.
(see below in “novelty” for full case)
2. NOVELTY -‐ Next step.
o Once it is determined that a product or process falls within the realm of acceptable subject matters, one must determine whether that product or process is “new”
o Novelty is required by S.2’s definition of an invention as “new” and is defined in s. 28.2(1)
Statute: Patent Act, s.28.2(1) à “Novelty” 28.2 (1) The subject-‐matter defined by a claim in an application for a patent in Canada (the “pending application”) must not have been disclosed: (a) more than one year before the filing date by the applicant, or by a person who obtained knowledge, directly or indirectly, from the applicant, in such a manner that the subject-‐matter became available to the public in Canada or elsewhere; (b) before the claim date by a person not mentioned in paragraph (a) in such a manner that the subject-‐matter became available to the public in Canada or elsewhere; (c) in an application for a patent that is filed in Canada by a person other than the applicant, and has a filing date that is before the claim date; or (d) in an application (the “co-‐pending application”) for a patent that is filed in Canada by a person other than the applicant and has a filing date that is on or after the claim date if [long section follows – not included in text book] -‐ How does the timing thing work
o Once the invention has been made available to the public ANYWHERE in the world (by publication, sale or use) – either by the applicant or a person who obtained the knowledge via the applicant -‐ the applicant has one year to apply for a patent in Canada
o However, if at any time prior to the claim date (claim date = the filing date in Canada unless priority is claimed based on the filing date of an earlier application in another country), a person (other than the applicant or someone who has knowledge of the invention from the applicant) disclosed the invention anywhere in the world, the invention is NO LONGER NEW.
o If two applications are filed in Canada for the same invention, the first to file will be entitled to the patent.
-‐ Filing date: the date on which the application is filed – the date when the CA Commissioner receives the documents, information, fees etc.
o Note that if the application is field in a member country of the Paris Convention, the applicant has 12 months to file in other countries in order to receive the priority [s.28.4(5)]
-‐ “priority date” is a claim date based on a filing for which priority has been claimed in another Paris Convention country
-‐ “Claim date”: is defined in s. 2 as the “Date of a claim in an application for a patent in Canada as determined in accordance with s. 28.1” (this contemplates a new filing or a filing based on a claim from elsewhere where you get to adopt the original filing date or “priority date” from that other country)
Statute: Patent Act, s.28.1(1)
28.1 (1) The date of a claim in an application for a patent in Canada (the “pending application”) is the filing date of the application, unless (a) the pending application is filed by (i) a person who has, or whose agent, legal representative or predecessor in title has, previously regularly filed in or for Canada an application for a patent disclosing the subject-‐matter defined by the claim, or (ii) a person who is entitled to protection under the terms of any treaty or convention relating to patents to which Canada is a party and who has, or whose agent, legal representative or predecessor in title has, previously regularly filed in or for any other country that by treaty, convention or law affords similar protection to citizens of Canada an application for a patent disclosing the subject-‐matter defined by the claim;(
b) the filing date of the pending application is within twelve months after the filing date of the previously regularly filed application; and (c) the applicant has made a request for priority on the basis of the previously regularly filed application -‐ In sum
o If a foreign applicant files in Canada within 12 months of the foreign filing and requests “priority”, the “claim date” in Canada will be the date of foreign filing
o When applied to s.28.2(1)(c) this means that to be novel in Canada the actual Canadian filing date must be before someone else’s foreign claim date
-‐ Disclosure destroying novelty à “prior art”
o The one year grace period is only available in Canada and the U.S., almost all other countries apply an absolute novelty standard which means that disclosure destroys an invention’s novelty (710)
o Once the appropriate date(s) to assess the novelty of an invention are determined, the next step is to decide whether what was disclosed prior to that date was in fact the same invention – was this invention “anticipated” prior to disclosure?
o Anticipation refers to the relationship between the invention and the prior art and involves a comparison between the “reference” (the single prior art allegedly indicating the same invention) and the patent claims for the invention in question
o In order to determine whether an invention is new, it must be compared to the prior art
Case: Reeves Brothers Inc. v. Toronto Quilting & Embroidery
Issue: -‐ What determines whether the invention is ‘new’?
Held -‐ Novelty of invention test: Prior Art must
o Give an exact prior description o Give directions which will inevitably result in something within the claims; o Give clear and unmistakable directions; o Give information which for the purpose of practical utility is equal to that given by the subject patent o Convey information so that the person grappling with the same problem must be able to say “that gives
me what I wish” etc. -‐ “anticipation defence” was raised as a defense in an infringement action, attacking a patent on the grounds that
the invention was already made known to the public prior to the relevant time. Essentially saying: this IS an invention but you’re too late. Someone already invented it.
-‐ NB this test is modified by Apotex case -‐ Anticipation (or absence of novelty)
o Definition: § Anticipation (which is a mixed question of fact and law) = a publicly available single element of
prior art for a product or process which contains all the essential elements of the claimed invention, albeit not necessarily in the same form, enabling a person skilled in the art to work the alleged invention without an undue burden of experimentation. (714)
• Enabling à it contains a clear direction that a person skilled in the art reading and following it would in every case and without possibility of error be led to the claimed invention
• Public disclosure à written, oral, through publication or sale, an include public conferences, lectures or the internet. Disclosures in private conversations or that are covered by confidentiality agreements or are internal to a company do not void novelty, nor do reasonable or necessary testing or experiments conducted on the alleged invention to ensure its utility
§ Any significant difference must be interpreted in the applicant’s favor à if any difference in the essential elements could be said to leave a “possibility of error” for a person skilled in the relevant art or science, the invention is new
o Anticipation test explained by SCC in Free World Trust § planted flag, not signpost à “The legal question is whether the [the alleged invention] contains
sufficient information to enable a person of ordinary skill and knowledge in the field to understand, without access to the two patents, “the nature of the invention and carry it into practical use without the aid of inventive genius but purely by mechanical skill…A signpost, however clear, upon the road to the patentee's invention will not suffice. The prior inventor must be clearly shown to have planted his flag at the precise destination before the patentee.
§ One must, in effect, be able to look at a prior, single publication and find in it all the information which, for practical purposes, is needed to produce the claimed invention without the exercise of any inventive skill. The prior publication must contain so clear a direction that a skilled person reading and following it would in every case and without possibility of error be led to the claimed invention.
o Clarified test/approach in Apotex v. Sanofi-‐Synthelabo for lack of novelty/anticipated § Although the case applied only to selection patents, its findings might find an echo in other
types of patents
Case: Apotex Inc. v. Sanofi-‐Synthelabo à Anticipation/lack of novelty test
Facts -‐ Deals with a situation where a prior patent could have been considered an “enabling disclosure” for the patent at
issue, thereby anticipating by the second patent Issue: -‐ Is there enablement if the person skilled in the art must perform “trial and error” to be able to perform or make
an invention Held -‐ Even if no inventive step is required, the skilled person must still be able to perform or make the invention of the
second patent without undue burden Reasoning -‐ Factors to consider [non-‐exhaustive]
o 1. Entire prior patent constitutes prior art à Enablement is to be assessed having regard to the prior patent as a whole including the specification and the claims
o 2. Common knowledge à The skilled person may use his or her common general knowledge to supplement information contained in the prior patent.
o 3. Perform without undue burden à If no inventive step is required, the prior patent must provide enough information to allow the subsequently claimed invention to be performed without undue burden. Routine trials are acceptable and would not be considered undue burden, however prolonged or arduous trial and error would not be considered routine
o 4. Correcting obvious errors or omissions à Obvious errors or omissions in the prior patent will not prevent enablement if reasonable skill and knowledge in the art could readily correct the error or find what was omitted
-‐ Overclaiming à an issue with respect to novelty
o Determining whether an invention has been anticipated by a single piece of prior art depends in part on how the patent claims are interpreted; what is the “invention” in the claims and how does it compare to what has been disclosed in the prior art
o Overclaiming can happen if the patentee § tries to appropriate something that is already known; § claims a monopoly over something disclosed in prior art § uses ambiguous terminology to describe the invention in hopes that it will be construed
favorably. o Danger: In the application process, it is natural for an applicant to try to obtain as broad a monopoly as
possible, but this comes with the inherent danger of claiming too much, which may result in the finding of anticipation
o Lesson for inventor: The balancing act is difficult à make your claims as narrow as you see fit in order to protect yourself from the invalidity that will ensue if you make them too broad. At the same time, not too narrow to not get an appropriate scope for your patent (Burton Parsons Chemical v. HP)
o NB patentees can NOT use general language in the claim and subsequently restrict, or expand, or qualify what is therein expressed by borrowing this or that gloss from other parts of the Specifications (Ingersoll Drill Co. v. Consolidated Pneumatic Tool Co. 1908)
o Fence analogy
§ By his claims the inventor puts fences around the fields of his monopoly and warns the public against trespassing on his property. His fences must be clearly placed in order to give necessary warning and he must not fence in any property that is not his own. The terms of a claim must be free from avoidable ambiguity or obscurity and must not be flexible; they must be clear and precise so that the public will be able to know not only where it must not trespass but also where it may go safely…The inventor may make his claims as narrow as he pleases within the limits of his invention but he must not make them too broad…It follows that a claim must fail if, in addition to claiming what is new and useful, it also claims something that is old or something that is useless. (Minerals Separation. v. Noranda Mines [1947]) (720-‐721)
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3. UTILITY -‐ Invention must be useful (see s.2 “invention” above) -‐ Utility test has two components:
o 1) USEFULNESS à the invention must provide something of commercial or industrial usefulness § Patent Bargain / Public Benefit Principleà Comes from patents being seen as a contract between
inventor and the Crown, on behalf of society. Disclosure exchanged as consideration for value of invention for society. See case Northern Electric v. Brown’s Theatres
§ Tennessee Eastment v. Canada à product that is toxic at therapeutic dosage fails the utility test § Burton Parsons Chemicals v. HP à potentially harmful material passes utility test because a person
“skilled in the art” would know how to use it to not harm anyone and have a benefit o 2) OPERABILITY à the patent must disclose an invention that works when put in practice according to the
disclosure, as it would be understood and used by a person skilled in the art and does what the disclosure promise the invention will do. (i.e. no false promises!)
-‐ What is “not useful” o Consolboard à “means the invention will not work, either in the sense that it will not operate at all or, more
broadly, that it will not do what the specification promises that it will do” o X v. Canada Patent Commissioner à “the test of utility of an alleged invention depends on whether, by
following the directions of the specification, the effects which the patentee professed to produce can be, in fact, produced.”
-‐ Implications for disclosure o Disclosure must include “all essential elements of the invention to provide efficient use for a person skilled in
the art o If patent fails to mention an “essential component”, than the invention lacks utility, unless it is ‘known in the
art’ and obviously required for operability o Must describe
§ The invention that works § How it works § NOT how it is useful or why it works (except when utility is based on sound prediction which does
require an articulation of reasoning) -‐ Marketability as measure of utility?
o Commercial success has been interpreted as sign of usefulness (and lack thereof as non-‐usefulness) o not REQUIRED to be marketable to be utility
-‐ Aventis v. Apotex (Federal Court) summarizing concept of utility o Level of Utility? Invention must be novel, inventive and useful. A “mere scintilla of utility” will suffice. o Marketability? Utility does not depend on marketability, unless commercial utility is specifically promised. Its
important for invention to do what it promised to do. (Wanscheer v. Sicard) o Side effects? Negative side effects doesn’t, for patent purposes, undermine utility (Visx v. Nidek) o Overclaim à if inventor includes something that are devoid of utility, patent will not be valid (Monsanto)
a) Sound Prediction
-‐ Utility is evaluated at the tie of the claim date and can be based on demonstrated utility OR sound prediction (i.e. allows inventors to advance claim date)
-‐ When does this doctrine apply? o for cases where its unable to clearly state the utility but rather have a scientifically credible educated guess
and the doctrine of “sound prediction” allows the applicant to satisfy utility standard. o Seen most often with pharmaceuticals
-‐ Policy rationale for sound prediction doctrone o (from Apotex v. Wellcome Foundation) “The doctrine of sound prediction balances the public interest in early
disclosure of new and useful inventions, even before their utility has been verified by tests (which in the case of pharmaceutical products may take years) and the public interest in avoiding cluttering the public domain with useless patents and granting monopoly rights in exchange for misinformation”
-‐ Test for sound prediction (from Apotex v. Wellcome Foundation) à is a question of fact o 1) a factual basis for the prediction o 2) the inventor’s articulable and “sound” line of reasoning, at the date of the patent application, from which
the desired result can be inferred from the factual basis o 3) proper disclosure
Case: Apotex v. Wellcome[2002] SCC (p.728) à Sound prediction test
Facts -‐ There was a challenge by other companies regarding Wellcome/Glaxo’s patent on AZT, saying utility had not been
established as of the priority date. -‐ Novel use: The AZT compound had already been discovered as a cancer-‐cure but the relevance for HIV/AIDs was
discovered by Wellcome Issue: -‐ Had Wellcome established utility as of the priority date?
Held -‐ Yes, they had a sound-‐prediction for utility at the priority date,
Reasoning -‐ At priority date, pre-‐clinical studies to test toxicity and efficacy were finished but not clinical tests on human
studies -‐ Patent Bargain theory would support the patent. Glaxo disclosed new use of AZT and deserve monopoly -‐ The “sound prediction” doctrine was explicitly received into our law in Monsanto (compounds to prevent
premature vulcanization of rubber) -‐ Different from Beecham Group v. Bristol Lab (UK) where the claim for semi-‐synthetic penicillin wasn’t allowed
because it was “little more than an announcement of a research project” -‐ NB – patentability does NOT equal the drug satisfying regulatory requirements for marketing a new drug (safety
and effectiveness v. utility and inventiveness) -‐ NB Priority: sound prediction is assessed as of the claim date. The patent is based on earliest priority of the Paris
Convention member countries Ratio -‐ Claims CAN be made that there was no basis for sound prediction at patent’s claim date. Lucky guesses and rolls
of dice are NOT basis for a patent, even if they turn out later to be correct. Conversely, if there IS a sound basis but it doesn’t pan out, the patent is invalid for lack of utility
4. NON-‐OBVIOUSNESS -‐ Statutory requirement #4 for patentability: Non-‐Obviousness (i.e. inventiveness) -‐ Test for non-‐obviousness came from common law but now in s 28.3
Statute: Patent Act, s.28.3 à “non-‐obviousness” The subject matter defined by a claim in an application for a patent in Canada must be subject-‐matter that would not have been obvious on the claim date to a person skilled in the art or science to which it pertains, having regard to:
a) information disclosed more than one year before the filing date by the applicant, or by a person who obtained the knowledge, directly or indirectly, from the applicant in such a manner that the information became available to the public in Canada or elsewhere; and
b) information disclosed before the claim date by a person not mentioned in paragraph (a) in such a manner that the information became available to he public in Canada or elsewhere
-‐ Threshhold for non-‐obviousness: o Described in positive form as “inventive step” or “ingenuity” but should not be too high!
-‐ What is obviousness? o Judged by an “unimaginative technician” “skilled in the art” to be plain as day or crystal clear. o The INVENTION must be obvious, not just the need for the invention o Simplicity = NOT synonymous with obviousness o Courts keep in mind “hindsight risk” (Free World Trust)
-‐ Classic articulation of non-‐obviousness (Beloit Canada v. Valmet Oy) … NB this is modified by Sanofi-‐Synthelabo v.
Apotex o “test for obviousness is NOT to ask what competent inventors did or would have done to solve the
problem…The classic touchstone for obviousness is the technician skilled in the art but having no scintilla of inventiveness or imagination; a paragon of deduction and dexterity, wholly devoid of intuition; a triumph of left hemisphere over the right. The question to be asked is whether this mythical creature (the man in the Clapham omnibus of patent law) would, in the light of the state of the art and of common general knowledge as the claimed date of invention, have come directly and without difficulty to the solution taught by the patent”
-‐ Test for obviousness = factual inquiry. (Janssen-‐Ortho v. Novopharm)
o List of relevant primary factors § 1) the invention à what is in issue § 2) the hypothetical skilled person referred to in Beloit à must establish what skills the hypothetical
person of ordinary skill in the art § 3) the body of knowledge of the person of ordinary skill in the art à what is in common knowledge
(including what they may reasonably be expected to know and find out) § 4) climate in relevant field at time the alleged invention was made à includes knowledge,
information…as well as attitudes, trends, prejudices, and expectations § 5) motivation in existence at the time of the invention to solve a recognized problem àIf everyone is
trying to solve a problem, then its more likely the invention required inventive ingenuity. Similarly, if only the inventor is trying to solve it, it may be more likely to have inventive ingenuity from personal motivation
§ 6) the time and effort involved in the invention à can be indicators but aren’t determinative of inventiveness. Think “lucky hit” or “uninventive application of routine techniques”
o List of relevant secondary factors (bear less weight): § 7) commercial success à quick success with consumers could indicate inventive ingenuity (while
considering other factors like marketing skills, market power, etc) § 8) meritorious awards
o Court Cautions!!! à Factors are indicative but not determinative
-‐ Obvious-‐to-‐try test (sanofi-‐Synthelabo v. Apotex) o Context: inventions resulting from experimentation o Revisiting the classing Beloit test for obviousness in cases of inventions resulting from experimentation: o When is an invention “obvious to try”?:
§ 1) Identify the notional “person skilled in the art and 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? • SCC à “obvious to try” test may be relevant here • SCC à test is contextual and factual • Obvious to try test à if warranted, following factors should be taken into account
o 1) is it more or less self-‐evident that what is being tried ought to work? Are there a finite number of identified predictable solutions known to persons skilled in the art?
o 2) what is the extent, nature and amount of effort required to achieve the invention? Are routine trials carried out or is the experimentation prolonged and arduous such that the trials would not be considered routine?
o 3) is there a motive provided in the prior art to find the solutions the patent addresses? o Sanofi, in sum: “for a finding that an invention was ‘obvious to try’, there must be evidence to convince a
judge on the balance of probabilities that it was more or less self-‐evident to try to obtain the invention. Mere possibility that something might turn up is not enough”
-‐ Novelty v. non-‐obviousness
o (from Beloit) “obviousness is an attack on a patent based on its lack of inventiveness…”any fool could have done that”….Anticipation, or lack of novelty, in effect assumes that there has been an invention but asserts that it has been disclosed to the public prior to the application for the patent…”your invention, thought clever, was already known”
o Prior art is relevant to both novelty and non-‐obviousness but used differently § For novelty: the test turns on a single element of prior art § For non-‐obviousness: test turns on mosaic/aggregation of prior art § Example: a different applicant’s published co-‐pending application describing the same invention with an
earlier claim date will negate novelty of application…but a co-‐pending application cannot be used as prior art for the purposes of assessing obviousness unless the co-‐pending application was publicly available before the claim date of the application at issue.
III. APPLICATION
Prof Adams skipped this section IV. TERM OF PROTECTION (P. 767)
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Statute: Patent Act, s.44-‐45 à term of protection
Term of patents based on applications filed on or after October 1, 1989 44. Subject to section 46, where an application for a patent is filed under this Act on or after October 1, 1989, the term limited for the duration of the patent is twenty years from the filing date. Term of patents based on applications filed before October 1, 1989 45. (1) Subject to section 46, where an application for a patent is filed under this Act before October 1, 1989, the term limited for the duration of the patent is seventeen years from the date on which the patent is issued.
-‐ Term of Protection
o A term of 20 years for patents filed on or after Oct 1, 1989, calculated from the filing date of the application (s. 44)
o For patents based on applications filed before Oct 1, 1989, the protection term is 17 years from the date on which the patent is issued (s. 45).
-‐ First-‐to-‐file system o Term of protection calculated from filing date o The first date is when the application is filed, or for priority dates, the earliest filing date of previously filed
applications anywhere in the world. o Confidentiality period lasts 18 months from first date (s.10(2)
§ During this time period, the applicant’s “first to file” status is protected & the examination process begins.
§ There is no public disclosure during this confidentiality period & thus no rights (no quid pro quo yet). § After 18 months, the patent application is laid open, even though the Office probably won’t have made
a decision as to whether to grant the patent yet. § This intermediate period (when patent hasn’t been granted but public disclosure is available) usually
lasts 1 – 2 years. The patentee doesn’t have full rights, but can get reasonable compensation for infringement during this period (provided the patent is subsequently issued). Third parties are responsible to pay reasonable compensation to the patentee for activities that would have been infringing if the patent had been granted on the laid open date (s. 55(2)).
Statute: Patent Act, s.55 à infringement and scope of liability
55. (1) A person who infringes a patent is liable to the patentee and to all persons claiming under the patentee for all damage sustained by the patentee or by any such person, after the grant of the patent, by reason of the infringement. (2) A person is liable to pay reasonable compensation to a patentee and to all persons claiming under the patentee for any damage sustained by the patentee or by any of those persons by reason of any act on the part of that person, after the application for the patent became open to public inspection under section 10 and before the grant of the patent, that would have constituted an infringement of the patent if the patent had been granted on the day the application became open to public inspection under that section
Statute: Patent Act, s.20(15) à no claim for good faith infringement during patent secrecy
Rights protected (15) No claim shall be allowed in respect of any infringement of a patent that occurred in good faith during the time that the patent was kept secret under this section, and any person who, before the publication of the patent, had in good faith done any act that, but for this subsection would have given rise to a claim, is entitled, after the publication, to obtain a licence to manufacture, use and sell the patented invention on such terms as may, in the absence of agreement between the parties, be settled by the Commissioner or by the Federal Court on appeal from the Commissioner. -‐ What rights when?
o The exclusive right of the patentee thus emerges fully only after the grant of the patent, not the filing date. o The patentee essentially has no right to enforce during the confidentiality period when there is no quid pro
quo. o Filing the application protects the applicant’s right as the first filer (against other potential inventors) & will
start the examination process, hopefully leading to the grant. o The principle that a patentee has no right during the confidential period is expressed in respect of
government-‐owned patents in s. 20(15). o During the intermediate period (between opening of application & grant), third parties are on notice: they
can read the pending application. They know the extent of the monopoly that may be granted to the applicant. But there’s no certainty about whether patent will be granted. So, they don’t have to pay “all damage” but “reasonable compensation” (s. 55(2)). This obligation applies provided that the patent is ultimately granted (the Act uses the word patentee in s. 55(2) to make that clear
o Justification àIt would be illogical to give a cause of action for a patent not yet issued but it would also give applicants an incentive to delay the final decision in order to provide them with this separate cause of action.
V. INFRINGEMENT, DEFENCES, AND REMEDIES (P. 769)
1. INFRINGEMENT -‐ A patent shall be granted unless the Commissioner is satisfied that an applicant is “not by law entitled to be
granted a patent” (s. 40). -‐ What does the patentee get?
o A patent gives the patentee “the exclusive right, privilege and liberty of making, constructing & using the invention & selling it to others to be used, subject to adjudication in respect thereof before any court of competent jurisdiction” (s. 42)
Statute: Patent Act, s.42 à patentee gets exclusive right to…
42. Every patent granted under this Act shall contain the title or name of the invention, with a reference to the specification, and shall, subject to this Act, grant to the patentee and the patentee’s legal representatives for the term of the patent, from the granting of the patent, the exclusive right, privilege and liberty of making, constructing and using the invention and selling it to others to be used, subject to adjudication in respect thereof before any court of competent jurisdiction.
o -‐ This exclusive right allows the patentee to prevent others from exercising that right w/o authorization o This doesn’t mean that the patentee can positively exercise the rights to use, make & sell the invention –
might need regulatory approval first -‐ What is an infringing act?
o No separate provision defines infringement in the Patent Act – but it follows form s. 42 that an infringing act is an unauthorized exercise of a patentee’s exclusive right
o Infringement seen as a trespass w/in the fence posts of the claims o I.e. Infringement amounts to = Any act that interferes w/ the full enjoyment of the monopoly granted to the
patentee is an infringement, if done w/o his consent -‐ Actions not intentions
o In determining whether a patent claim is infringed, it is the defendant’s actions, not his or her intent, which the court must consider
-‐ Presumption of validity (s. 43(2)). o Once a patent is granted, it is presumed valid “in the absence of evidence to the contrary” s. 43(2)).
Statute: Patent Act, s.43(2) à presumption of validity of patent once granted
43. Validity of patent (2) After the patent is issued, it shall, in the absence of any evidence to the contrary, be valid and avail the patentee and the legal representatives of the patentee for the term mentioned in section 44 or 45, whichever is applicable.
o This presumption is rebuttable but any defendant trying to invalidate a patent has the burden of proof o Presumption exists b/c the patent is issued by the Commissioner after a thorough examination by an expert
examiner (hard to say that the examiner was wrong unless you can show his decision was based on flawed data)
o “the onus so imposed is not an easy one to discharge” (Ernest Scraag) o The view that the presumption of validity is fairly strong has been criticized: The presumption has been placed
far too high & that a normal prima facie presumption is a rebuttable presumption àA presumption shows on whom the burden lies; not the degree of proof he must attain
o Thus, the presumption resembles regular prima facie presumptions but given the technical nature of patent law, courts are less reluctant to intervene in declaring a patent (or part of it) invalid for anticipation (lack of novelty) if the party alleging anticipation can bring to the court’s attention an element of prior art not considered by the examiner à the court doesn’t review the decision, but puts itself in the examiner’s shoes
-‐ Reexamination request
o Party who believes there is an element of prior art that should have been considered can also request a re-‐examination (s. 48(1))
-‐ Infringement is a mixed question of fact & law. o Law à interpret the claims to determine the scope of the invention o Fact à determine whether the defendant’s acts fall w/in the scope of the claims & is therefore infringing o Once patent claims have been construed, infringement analysis is straightforward (compare invention to what
defendant made/used) -‐ Claims construction
o is critical to the policy underlying the patent bargain: There should only be 1 patent for 1 invention. o protects against overclaiming, covetous claiming & evergreening. o Balance: don’t penalize inventor w/ unduly narrow interpretation of claims that gives him less than he
invented… but be fair to the public by not penalizing it w/ an unduly broad interpretation beyond what a skilled person would have understood them to include
a) Claims Construction (p. 773) -‐ Focus of infringement is on claims (statements by the inventor to describe what he/she believes to be the
invention) -‐ The process of interpreting these claims defines the scope of the patent monopoly – i.e. will determine if the
patent is valid & if it’s been infringed -‐ Patent claims are analogized to “fences” & “boundaries (pp. 773) -‐ Claim construction precedes legal analysis of validity & infringement
o à Claims get the same interpretation for both purposes o à Claims construction is a legal question
-‐ Policy Considerations o Claims construction invokes policy considerations since the patentee asserts exclusive rights in the claims &
from that language, others should be able to predict what is “fenced off” -‐ How to read the patent: Vantage Point
o As a person skilled in the art or science of the subject matter would have read it when it first became public (i.e. from “laid open” date and not claim date)
-‐ How to read the patent: Interpretation of language o Historically, “literal reading” was used in a number of cases (i.e. any monopoly should be interpreted
restrictively & any difference, however minute, b/w the language of the claim & the defendant’s product/process is sufficient to avoid a finding of infringement)
o In Canada, the purposive approach (substantive construction; teleological method) is preferred. à principles of purposive construction laid out in Whirlpool
Whirlpool v Camco [2000] SCC (p.774) à infringement: principles of claims construction and essential elements
Facts: -‐ Whirlpool was granted 3 patents related to mechanisms for washing machine agitation & sued the defendants
for patent infringement. The defendants attacked the validity of the 3rd patent arguing it was already covered in the scope of the 2nd patent or alternatively, that it was obvious
-‐ Note: Unusually, the defendants argued in favour of a broad scope for some of the plaintiff’s patents to argue that that 3rd patent was invalid
-‐ ‘803 patent is the initial patent which doesn’t say vanes are flexible -‐ ‘734 patent (third patent) explicitly stated that the vanes of the lower oscillator of the dual action agitator were
flexible rather than rigid -‐ appellants state that the ‘803 patent included the flex vanes & that there was nothing distinct in the ‘734
patent (i.e. Camco accusing Whirlpool of evergreening by double-‐patenting) Issue:
-‐ What are the principles of patent claims construction? Held:
-‐ SCC upheld the validity of Whirlpool’s third patent & the infringement
Ratio: -‐ Key to purposive construction is to identify, from the skilled reader’s perspective, the words or phrases in the
claims that describe what the inventor thought the essential elements (the “pith & marrow”) of the inventions are
Reasoning: -‐ use purposive construction to interpret patent claims for both issues of patent validity & infringement -‐ Catnic: it is those novel features on that that the inventor claims to be essential that constitute the so-‐called
“pith & marrow” of the claim -‐ The determination of which elements are essential depends upon the language of the claims, read purposively
& informed by evidence as to how persons skilled in the art would understand the claim -‐ Here, patents had been infringed in spite of apparent differences in the vanes & the nature of the motion -‐ [NOTE: The book doesn’t include the section in Whirlpool where the SCC determined why the third patent was
held to be valid à “It was open to the trial judge to conclude, having regard to the expert evidence, that the claims of the '803 patent, properly construed, did not include flexible vanes. […] The trial judge, reading the claims with the knowledge and insight into the technical terms provided by the rest of the specification, and by the concession of the appellants’ own expert, concluded that rigid vanes were essential to the '803 invention as claimed. No basis had been shown to reverse that conclusion.”]
-‐ What is an “essential element”
o (Freeworld definition) an element may be found to be essential on the basis of the intent of the inventor as expressed or inferred from the claims, or on the basis of evidence as to whether it would have been obvious to a skilled worker at the time the patent was published that a variant of a particular element would make a difference to the way in which the invention works
o à to determine whether infringement has occurred, the question is whether the accused device takes all of the essential elements of the invention
-‐ Best way to understand purposive construction: o Ask what a person skilled in the art concerned would conclude, upon reading the patent claims, as to what the
essential teachings of the patent are compared to the prior art. § Has the “pith & marrow” been taken? (Wenham) § Has the ‘infringer’ taken the substance of the idea? (Linghtning Fastener)
-‐ Relevant date o The relevant date to construe the claims is the date on which they are open for inspection under s. 10 (i.e.
normally 18 months after filing)
Construing claims Publication date Assessing validity or obviousness Claim date
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b) Essential elements and the doctrine of equivalents (p. 788) -‐ There is patent infringement if the essential elements of the patent are taken (if the defendant changes only non-‐
essential elements). -‐ It is important to formulate a test that will be fair and predictable for both the inventor and the public. To decide
whether a patent is infringed, a court must first decide what its essential teachings are to a person skilled in the art through the process of purposive claims construction, keeping in mind that the court must interpret the claims not redraft them.
-‐ Similarities with copyright law o Recall literal and non-‐literal infringement in copyright law
§ Literal infringement is exact reproduction § Non-‐literal infringement involves differences, question is whether different enough – idea/expression
dichotomy o Literal and substantive infringement in patent law
§ Literal infringement is exactly the same invention § Substantive infringement involves differences, question is whether different enough – essential
element/doctrine of equivalents (US) -‐ For an element to be considered non-‐essential and thus substitutable, it must be shown either “
o (i) that on a purposive construction of the words of the claim it was clearly not intended to be essential; or o (ii) that at the date of publication of the patent, the skilled addressees would have appreciated that a
particular element could be substituted without affecting the working of the invention. o à Free World Trust (p. 788)
-‐ In the US → doctrine of equivalents: o there is infringement if someone else’s widget performs substantially the same function in substantially the
same way to obtain substantially the same result, when evaluated from the perspective of a person who is skilled in the art.
o American case: Graver Tank & Manufacturing Co v Linde Air Products Co: “It is obviously an important public policy to control the scope of “substantive infringement”. A purely literal application of the text of the claims would allow a person skilled in the art to make minor and inconsequential variations in the device while staying just outside the monopoly. A broader interpretation, on the other hand, risks conferring on the patentee the benefit of the inventions that he had not in fact made but which could be deemed with hindsight to be “equivalent” to what in fact was invented.” (p. 789)
o According to the doctrine of equivalents, replacing an element in a claim with an equivalent can constitute infringement.
o One risk that stems from the application of this doctrine is that the monopoly will be broadened in unexpected ways by including in the scope of the invention things that are “equivalent” only in “hindsight”. § “There can be no denying that the doctrine of equivalents, when applied broadly, conflicts with
definitional and public-‐notice functions of the statutory claiming requirement”. (Warner-‐Jenkinson Co. v. Hilton Davis Chemical Co., cited in Free World Trust)
-‐ Certainty and predictability (Free World Trust p. 790):
o The scope of patent protection must not only be fair, it must be reasonably predictable. o A patent that is of uncertain scope becomes a public nuisance. o There is a high economic cost attached to uncertainty and it is the proper policy of patent law to keep it to a
minimum. o Predictability is achieved by tying the patentee to its claims; fairness is achieved by interpreting those claims
in an informed and purposive way. o “The words chosen by the inventor will be read in the sense the inventor is presumed to have intended, and in
a way that is sympathetic to accomplishment of the inventor’s purpose expressed or implicit in the test of the claims. However, if the inventor has misspoken or otherwise created an unnecessary or troublesome limitation in the claims, it is a self-‐inflicting wound”. (p. 792)
-‐ List of issues concerning the tension between literal and substantive infringement to achieve a fair and predictable
result (p. 792): o The purposive approach promotes adherence to the language of the claims o Adherence to the language of the claims in turn promotes both fairness and predictability o The claim language must, however, be read in an informed and purposive way o The language of the claims thus construed defines the monopoly. There is no recourse to such vague notions
as the “spirit of the invention” to expand it further o The claims language will, on a purposive construction, show that some elements of the claimed invention are
essential while others are non-‐essential. The identification of elements as essential or non-‐essential is made: § On the basis of the common knowledge of the worker skilled in the art to which the patent related § Having regard to whether or not it was obvious to the skilled reader at the time the patent was
published that a variant of a particular element would not make a difference to the way in which the invention works, or
§ According to the intent of the inventor, expressed or inferred from the claims, that a particular element is essential irrespective of its practical effect
§ Without, however, resort to extrinsic evidence of the inventor’s intention o There is no infringement if an essential element is different or omitted. There may still be infringement,
however, if non-‐essential elements are substituted or omitted.
Case: Free World Trust v Électro Santé Inc., [2000] SCC (p. 793) à
Facts -‐ This case involved patent related to a machine for using low frequency electro-‐magnetic waves on the human
body for therapeutic purposes. The defendant came up with a machine which achieved the same purpose, but using different technology. The patentee conceded it was a different method but argued that the patent is infringed by anything that achieves the same end result.
Issue: -‐ Is there infringement?
Held -‐ Infringement if you reach the same result using a different invention
Reasoning -‐ Particular means to achieve it à “The ingenuity of the patent lies not in the identification of a desirable result but
in teaching one particular means to achieve it. The claims cannot be stretched to allow the patentee to monopolize anything that achieved the desirable result. It is not legitimate, for example, to obtain a patent for a particular method that grows hair on bald men and thereafter claim that anything that grows hair on bald men infringes.” (p. 793)
-‐ Substantive infringement and essential elements à It would be unfair to allow a patent monopoly to be breached with impunity by a copycat device that simply switched bells and whistles, to escape the literal claims of the patent. Thus the elements of the invention are identified as either essential elements...or non-‐essential elements.
-‐ Promoting both certainty and fairness in infringement claims o Patent production must be both fair and reasonably predictable. o Patent system does not provide incentives for innovation if competitors are afraid to “invent around” the
patent because cannot predict the scope of patent o Predictability achieved by limiting the scope of patent to claims, while fairness achieved by purposive
construction of claims (avoid overly literal interpretation) -‐ There is an argument made as to the fact that the purposive predictability does not bring enough predictability.
How a defendant can know what was the purpose of the invention intended by the inventor? According to this argument the only way to have predictability is to rely on a literal interpretation. But the court does not accept such an argument and says that the construction approach brings certainty because everyone should read the applications purposively.
Case: Beecham Canada v Procter & Gamble [1982] Patent Comm. (p. 794) à
Facts -‐ Patent infringement suit involving a patent for method and product claims on dryer conditioning sheets
(BOUNCE). The defendant argued their sheets were not infringing because the patent claims referred to a “web” substrate that it “coated” with the conditioning agent, but the defendant argued that its sheets use a non-‐web polyurethane foam substrate
Issue: -‐ Is there infringement?
Held -‐ Yes, the nature of the substrate was not an essential element to the invention
Reasoning -‐ References in claims to “carrying”, “impregnated”, “web substrate carrying”, “flexible substrate carrying” (see p.
794) -‐ Carrying, as used in the disclosure, taken in context, is used in the sense of “conveying” and does not, giving to
that word its ordinary meaning, imply in any way that such “conveying” must be on the surface of the substrate.
-‐ The claims contemplate either or both means of carriage. To suggest otherwise is to fail to give the language of the specification a purposive construction.
-‐ That alleged variant in the defendant’s product does not exist or cannot have any material effect on how the invention works so that the appellant’s submission must fail.
-‐ The invention = the discovery that fabrics could be conditioned in a domestic dryer by commingling damp fabrics with a flexible substrate carrying a transferable conditioning agent.
-‐ The nature of the substrate is NOT part of the invention claimed. -‐ All that is required is a suitable substrate, and differences between a web substrate and polyurethane foam have
no material effect on the way the invention works c) Use of a Patent (p. 800) -‐ s. 42 of the Patent Act gives the patentee exclusive rights (see above in “infringement”): -‐ The meaning of “use” is significant both to the scope of the patentee’s exclusive right and whether there has been
an infringement. o Note that the section does not mention any commercial use o Before Mosanto, the interpretation of use was very easy. “Use” rarely at issue in infringement, because it is
very easy to prove o Reconciling Harvard College (no patents for higher like forms) and Mosanto (infringing use of what can be
patented – modified genes and cells). o Patent law seems incoherent in this sense
-‐ Mosanto case (p. 801):
o “It Is no bar to a finding of infringement that the patented object or process is a part of or composes a broader unpatented structure or process, provided that the patented invention is significant or important to the defendant’s activities that involve the unpatented structure” (p. 801)
o The governing principle is whether the defendant, by his actions, activities or conduct, appropriated the patented invention, thus depriving the inventor, in whole or in part, directly or indirectly, of the full enjoyment of the monopoly the patent grants.
o Determining the meaning of “use” under s.42 is essentially a matter of statutory construction. The starting point is the plain meaning of the word, in this case “use” (exploiter) § Use à denotes utilization with a view to production or advantage
o Three well-‐established rules or practices of statutory interpretation: § 1. Inquiry into the meaning of “use” under the PA must be purposive, grounded in an understanding of
the reasons for which patent protection is accorded. § 2. Inquiry must be contextual, giving consideration to the other words of the provision. § 3. Inquiry must be attentive to the wisdom of the case law.
o In s. 42 what is prohibited is any act that interfered with the full enjoyment of the monopoly granted to the patentee.
o Where the defendant’s impugned activities furthered its own commercial interests, there should be a particular alert on the part of courts to the possibility that the defendant has committed an infringing use. § Note however that even in the absence of commercial exploitation the patent holder is entitled to
protection. o The law holds that a defendant infringes a patent when the defendant manufactures, seeks to use, or uses a
patented part that is contained within something that is not patented, provided the patented part is significant or important.
o In the present case, the patented genes are present throughout the genetically modified plant and the patented cells compose its entire physical structure.
o Infringement through use is possible where the patented invention is part of, or composes, a broader unpatented structure or process.
o Key point: It is no bar to a finding of infringement that the patented object or process is a part of or composes a broader unpatented structure or process, provided the patented invention is significant or important to the defendant’s activities that involve the unpatented structure.
o Stand by or insurance utility § Possession of a patented object or an object incorporating a patented feature may constitute “use” of
the object’s stand-‐by or insurance utility and thus constituted infringement. § Example: fire extinguisher may not be used, but has a stand-‐by value § Possession, at least in commercial circumstances, raises a rebuttable presumption of use.
o Intention § While intention (of the inventor) is generally irrelevant to determining whether there has been use and
hence infringement, the absence of intention to employ or gain any advantage from the invention may be relevant to rebutting the presumption of use raised by possession.
§ I.e. à Intention relevant when defendant argues possession without use because of the stand-‐by value
-‐ Patent exhaustion or “first sale doctrine” (p. 808) à once its yours you can do what you want with it o It is important to distinguish use of the invention which infringes s. 42 from the use of the article (the tangible
object), which a lawful purchaser is permitted to do. For example, if a purchaser buys a blender that has one or more patented parts, the purchaser does not infringe the patents by using the blender at home for its intended purpose (e.g. to made a smoothie). This concept is known as the doctrine of exhaustion, or the first sale doctrine.
o Exhaustion differentiates the rights associated with intellectual property from the rights associated with tangible property.
o Eli Lily v Novopharm: § “If the patentee sells the patented article that he made, he transfers the ownership of that article to the
purchaser. This means that, henceforth, the patentee no longer has any right with respect to that article which now belongs to the purchaser who, as the new owner, has the exclusive right to possess, use, enjoy, destroy or alienate it. It follows that, by selling the patented article that he made, the patentee impliedly renounces, with respect to that article, to his exclusive right under the patent of using and selling the invention. After the sale, therefore, the purchaser may do what he likes with the patented articles without fear of infringing his vendor’s patent.” (p. 809)
• First sale exhausts exclusive right of use in relation to purchaser
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d) Process patents (v. product patent) -‐ What are the issues with process patents
o Inferior reach § Usually preferable to seek product patent because of its superior reach § E.g. a patent on a product that the inventor found one way of making was interpreted as providing a
monopoly on all the other ways (processes) of making the same product. o Difficulty to prove infringement
§ difficult to prove infringement of process patent because can’t tell by looking at something, how it was made.
§ Infringement = a product made from patented process or machine without the consent of the patent owner
-‐ What is good about a process patent o Presumption of infringement (s.55.1):
Statute: Patent Act, s.55.1 à process patents and presumption of infringement Burden of proof for patented process 55.1 In an action for infringement of a patent granted for a process for obtaining a new product, any product that is the same as the new product shall, in the absence of proof to the contrary, be considered to have been produced by the patented process.
§ I.e. patent holder needs to prove the product is the same, then alleged infringer needs to prove the contrary.
§ NB: this applies to an action for infringement and presumption is not to be used at application for orders under Patented Medicines (Notice of Compliance) Regulations (Eli Lilly v Novopharm p 810) and
private companies would have to set up parallel action to proceedings under the Regulations. Presumption does NOT exist at administrative stage and burden of proof remains with patent holder
-‐ Also relevant for process patents o Importation or “Saccharine doctrine”
§ Importing a product into Canada produced outside Canada by a process patented in Canada….amounts to infringement
§ Despite patent legislation being territorially limited, we must look to where infringement has occurred. § S.42 exclusive rights does NOT include right to import. § Leading case: Saccharine § Saccharine doctrine has been extended to product patents too (Pfizer v. Minister of Health) § Factors in evaluating whether extraterritorial products or processes have deprived the patentee “in
whole or in part, directly or indirectly, of the advantage of the patented invention” (815) • 1. Importance à The importance of the product or process to the final product sold into Canada.
Where use is incidental, non-‐essential, or could be readily substituted, a court might be less inclined to find an infringement
• 2. All or part à Whether the final product actually contains all or part of the patented product. Where the patented product can actually be identified in the product sold into Canada, there may be a strong case for a finding of infringement.
• 3. Stage à The stage at which the patented product or process is used. For example, use of a process as a preliminary step of a lengthy production process may lead to a conclusion that the patentee has suffered little deprivation
• 4. Instances of use à The number of instances of use made of the patented product or process. Where the same patented product is used repetitively through the production of the non-‐patented end product, clearer evidence of impairment
• 5. “if carried out or used in Canada” à would there be infringement if carried out or used in Canada, with benefit of the doubt going to the party using the product or process (i.e. patentee bears burden of proving infringement)
e) Notice of Compliance Issues (Patented Medicines)
Statute: Patent Act, s.55.2(1) à “early working” exception
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 if 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.
o Example: Generic drug companies developing “copycat” versions of patented drugs and submitting the required information for the regulatory process.
-‐ The Notice of Compliance Regulations under s.55.2(4) prevent infringement under early working exception of s.55.2(1). The Patent Act provides a limited term monopoly for the invention of a new, non-‐obvious, useful drug, improvement on a drug or process related to a drug. The Food and Drug Act and Regulations provide a framework to ensure the efficacy and safety of drugs before they are marketed. The NOC regulations facilitate a generic drug company’s applying for regulatory approval during the time when the initial drug’s patent term is running…while also ensuring “early-‐working” exception isn’t abused. Essentially, generic drug can shorten its approval process by piggy-‐backing on the safety and efficacy information of the innovator.
-‐ IN sum, early working exceptions helps generic drugs be ready for market once the original patent expires by allowing generic companies to gather necessary data to apply for a NOC before the patent expires, and the NOC regulations then regulate a generic drug company’s use of s.55.2(1) early working exception by requiring that if a generic company is relying on a notice of compliance issued to patented drugs, that the generic drug company must address the patent issues
-‐ Regulatory Approval Process (from Bristol-‐Myers Squibb v. Canada “Biolyse case”) o Food and Drug Act impose rigorous health and safety requirements, culminating in the issuance of a Notice of
Compliance
o FDA regulations require drug manufacturers to submit different types of submissions. Two principal forms: New Drug Submission (filed by innovators) and Abbreviated New Drug Submission (filed by generic manufacturers that claim its product is pharmaceutical equivalent of a previous approved ‘reference product’ § An NDS needs to include description of benefits claimed, adverse reactions experienced, chemical
composition of the ingredients and methods of manufacture and purification. Then the Minister looks into the material, possibly requiring further studies and conduct wide-‐ranging, several year inquiry. When satisfied, issues a NOC and the drug can go ot market.
§ A second person applying for the same NOC has two options: • Accepts the NOC will not be issued until the patent expires • Allege that the patent filed by the first person is not he owner or exclusive licensee in Canada of
the drug…or that the patents have expired or are invalid or that the applicant would not infringe any claim “for the medicine itself and no claim for the use of medicine”
Case: Astrazeneca Canada v. Canada
Facts -‐ A generic manufacturer relied on bioequivalence to a patented drug. Innovator company had added two patents
on the patent list for different versions of the same drug that the generic company was not using Held -‐ Patents that had been subsequently added to the list (from which generic company hadn’t benefited) were of
marginal significance and were a form of “evergreening” that violated NOC regulations -‐
Case: Biolyse case (Bristol-‐Myers Squibb)
Facts -‐ BMS owned several patents related to new and useful formations and methods of anticancer drug called
paclitaxel…but not the paclitaxel itself (which had been discovered by gov’t funded US institute and placed in public domain). The NCI research had a particular procedure that killed the plant that they extracted something from, creating a supply problem). BMS had NOC for a medicine containing paclitaxel. Then Biolyse developed a new source of paclitaxel from a different plant which didn’t kill the plant…and applied for a notice of compliance. It was treated as a new drug because of new source and new uses…and required that it provide its own clinical research which they did and got their NOC. BMS tried to quash it saying it was based on bioequivalence to BMS’ product…or that “because its drug Taxol contained paclitaxel which is the active ingredient in Biolyse’s product, Biolyse must be subject to the statutory freeze period under the NOC regulations even though BMS didn’t discover paclitaxel and it was in the public domain.
Held -‐ Neither 5(1) or 5(1.1) of NOC regulations applied to Biolyse because their submission was not based on
bioequivalence and because it was an innovative drug, and therefore the statutory freeze did not apply to Biolyse at all.
Significance -‐ NOC regulations neither decide whether a patent is valid nor whether it has been infringed, those are dealt with
by Patent Act -‐ Onus of proof in NOC proceedings rests on the applicant and is considered on a balance of probabilities, bearing
in mind that on allegations of invalidity there is a statutory presumption of validity. -‐ When an action for patent infringement is available, the inability of patent holder to access the automatic stay
provisions in Notice of Compliance Regulations does NOT constitute irreparable harm.
-‐ NOC Regulation amendments in 2008 o Limits ability of Minister to delete patents from list unless expired, been declared invalid or void, or is not
eligible for inclusion. I.e. it cannot be removed from the list solely because its “not relevant to the submission”
o Generic manufacturer is now only required to address the patents already listed against an innovator’s drug as of the date when they file their NOC submission.
o Food and Drug Regulations extended the period of data protection for an innovative drug to 8 years of exclusivity (unless innovator consents) and generic companies can’t file NOC submissions till at least 6 have passed.
f) Inducement to Infringe (p.830) Prof Adams skipped this section
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2. DEFENCES (P.837) -‐ Statutory Defences and “user’s rights” can be defences -‐ Users rights: rights implicit in stator scheme or implicit in distinction between intellectual property and traditional
property. o For example, “exhaustion” or “first sale doctrine” says an authorized purchaser of a patented product has the
right to use and resell the particular article for its intended purpose. o Another example, the right to make repairs to the patented article as long as the reparis are not so extensive
that they are equivalent to remaking the invention. I.e. can prolong life of patented product but not recycle parts from many and make a new one.
-‐ Statutory defences o “THIS PATENT IS INVALID” à first line defences
§ s.59; “ the defendant in any action for infringement of a patent may plead as matter of defence any fact or default which by this Act or by law renders the patent void, and the court shall take cognizance of that pleading and of the relevant facts and decide accordingly.
Statute: Patent Act, s.59 à Pleading invalidity as defence
59. The defendant, in any action for infringement of a patent may plead as matter of defence any fact or default which by this Act or by law renders the patent void, and the court shall take cognizance of that pleading and of the relevant facts and decide accordingly.
§ Can be found invalid based on lack of novelty, obviousness, lack of utility, or unpatentable subject matter (GlaxoSmithKline v. Canada)
§ Problem with submission • Can also be voided if there is an untrue material allegation in the patent application OR there is a
wilfully misleading omission or addition to the specification and drawings. § NB: Presumption of validity
• Once a patent is granted, it benefits from a “presumption of validity” under s.43(2) thus the burden is on the challenger to prove otherwise.
o Regulatory use exception § s.55.2(1) provides that its “not an infringement” to make, use or sell a patented invention “solely for
uses reasonably related to the development and submission of information required under any law that regulates the manufacture, construction, use or sale of any production (relied upon by generic drug manufacturers to prepare the required info for submissions for a Notice of Compliance (NB stockpiling allowance retracted)
o “Bona fide experimental and private non-‐commercial use” (p 838-‐839) § s.55.2(6) “subsection 1 does not affect any exception to the exclusive property or privilege granted by a
patent that exists at law in respect of acts done privately and on a non-‐commercial scale or for a non-‐commercial purpose or in respect of any use, manufacture, construction or sale of the patented invention solely for the purpose of experiments that relate to the subject matter of the patent.
§ Patent bargain lies behind this one: limited monopoloy granted in exchange for public disclosure so people can access the info for non-‐commercial purposes and experimentation
§ In other words, limited experimental use without a licence done in good faith and not intended for sale = NOT a violation of the patent (no damage and no profits generated by defendant)
o Acts in good faith prior to patent claim date § S.56(1) Every person who, before the claim date of a claim in a patent has purchased, constructed, or
acquired the subject matter defined by the claim, has the right to use and sell to others the specific article, machine, manufacture or composition of matter patented and so purchased, constructed or acquired without being liable to the patentee
§ This could happen if someone came up with the same patent put didn’t disclose or file. § Interpretation of “specific” -‐-‐> covers everything in pre-‐claim-‐date inventory to be used and sold but
not additional machines that were subsequently manufactured o Gillette Defence
§ Permits a defendant to argue in the alternative (so the defendant doesn’t have to choose whether its better to argue for invalidity or for no infringement)
§ Essentially à defendant bases non-‐infringement on the patent being invalid by being anticipated by prior art. A defendant argues that his or her acts were based on prior art to the patentee’s invention and were themselves non-‐patentable.
§ Patentee’s dilemma: if patentee argues for the claims to be construed broadly to include the defendant’s actions, then the patent will include the prior art and be invalidated for lack of novelty. On the other hand, if the patentee argues for the claims to be construed narrowly to avoid being anticipated by the prior art, then the defendant has not infringed.
§ The Gillette defence is both an argument that the patent is invalid (because it was anticipated by prior art) and that if patent IS valid, then the claims do not prevent the defendant’s use because the defendant was only doing a non-‐patentable variation of a previously known process or product which is not infringing.
§ Gillette Defence comes from UK Gillette Safety Razor v. Anglo-‐American Trading Co. § “Heads I win, tails you lose” § Defendant needs to show: that his product/process is comparable to a product/process disclosed in
some way prior to the claim date of the patent alleged to be infringed, then either the patent is invalid for anticipation or its claims must be interpreted as not preventing the defendant’s use.
§ NB in Canada, based on principles for claims construction in Whirlpool and Free World Trust the claims must be construed prior to addressing infringement.
o Other argument: laches by plaintiff § NB: has had little success in patent infringement cases § Laches is an equitable doctrine arguing that plaintiff should be estopped form pursuing the cause of
action for failure to assert the plaintiff’s rights in a timely way and the defendant was prejudiced by the delay.
§ Laches are not a cause of action, only a defence and thus only affects the remedies o Other argument: acquiescences by plaintiff
§ Essentially saying that plaintiff passively signalled consent to the potential infringer. o Other argument: plaintiff has no title o Other argument: defendant had permission to do the purportedly infringing acts
§ Because infringement is only the unauthorized exercise of a patentee’s exclusive rights. o Final defence: fraud on Patent Office
§ S.73(1)(a) says a defendant can argue that a patent should not have been granted because false information was provided during the patent prosecution process. (recently added to Patent Act as a defence)
-‐ Procedures o S.60 provides procedures to apply to Federal Court to have patent declared invalid or, conversely, for a
declaration against the patentee that something is not infringing o S.60(1) à must be “interested” person can apply for invalidation of a patent (can be made as counterclaim to
infringement o S.60(2) a person “with reasonable cause to believe” that a patentee might allege infringement, can bring
action to Court to declare no infringement
3. COMPULSORY LICENCES AND PATENT ABUSE -‐ all patents have inherent “anti-‐competitive” aspects in that they are grants of limited-‐term monopolies. -‐ However, if it gets to the point of significant anti-‐competitive behaviour, patentees can get sanctioned (and
including imposition of compulsory licences) due to “abuse of exclusive rights -‐ Two statutory provisions on patent abuse
o 1. S.65(1) …although seldom invoked § says AFG or interested person, after three years from grant of patent, can apply for relief from alleged
abusive behaviour with s.65(2) setting out list of deemed abuses (interpreted to be exhaustive). Includes • 1) if demand for patented article is not being met to adequate extent and on reasonable terms • 2) if trade or industry in Canada is prejudiced by refusal of patentee to grant licences and its in
patent interest for licences to be granted • 3) if any trade or industry, person or class of persons, is unfairly prejudiced by conditions to a
licence. • 4) if a process patent has been utilized by the patentee so as to unfairly prejudice the manufacture,
use or sale of any materials § s.66 specifies commissioner’s powers in case of abuse, including:
• compulsory licence (s.66(1)(a)) • revocation of patent (s.66(1)(d)
§ s.66(4) considerations by which commissioner should be guided: • to secure the widest possible use of the invention consistent with the patentee deriving a
reasonable advantage from his patent rights • to secure the patentee the maximum advantage consistent with the invention being worked by the
licensee at a reasonable profit • to secure equality of advantage among licensees (and may reduce royalties or payments)
§ “patent abuse” successfully invoked in fairly few cases • (Puckhandler v. BADS industries) • hesitance is discussed by Commissioner of Patents in Torpharm v. Merck (p. 849-‐855) • Federal Court took fairly narrow view of patent abuse in a case where there was no evidence of the
unment “demand”, which must be by more than a single trader…must be existing demand not anticipated, future or potential demand.
o 2. s.32 of Competition Act (much broader in scope) § deals with undue restraints of trade in relation to intellectual property § s.32(1) lists improper restraints of trades resulting from abuse of exclusive rights
• a) limit unduly the facilities for transporting/producing/manufacturing/suppling/storing/dealing in any article or commodity that may be a subject of trade or commerce
• b) unduly restrain or injure trade or commerce • c) unduly prevent, limit or lessen the manufacture or production of any such article or
unreasonably enhance the price thereof • d) unduly prevent competition
§ s.32(2) possible orders • declare licence void, in whole or in part • restrain from being carried out any or all terms of licence • order compulsory licences • direct that such acts be done or omitted to prevent any such use.
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CHAPTER 11: INTELLECTUAL PROPERTY OVERLAPS (NEEDS FORMATTING)
I. INTRODUCTION (P.1125)
-‐ There is no hierarchy to the various IP statutes. Therefore, overlaps arise. This is partly b/c a single tangible object can give rise to more than intangible right; the various IP rights protect different aspects.
-‐ What to do? Courts try to interpret the statutes so each of their objectives can be met o No back-‐door protection: Courts generally won’t allow using 1 type of protection to extend a form of
protection available under another statute o e.g. can’t use Trade-‐Mark on a patented invention or copyright in drawings included as part of a patent to
extend patent protection -‐ Each of the IP rights has a bargain that is underwritten by policy & theory à tampering with bargain disrupts the
balance in the system -‐ A key part of bargain = the nature & scope of protection (what rights are, term of protection, exceptions & user’s
rights) & the related requirement that the object of the protection be freely useable by others after the expiry of such term o e.g. copyright = life + 50 while patent = 20 years from filing.. but patent protects against independent
invention while copyright doesn’t -‐ Some overlaps are forestalled by statutory limits to a right’s subject matter.
o E.g. copyright protects original expression but excludes “ideas, procedures, methods or operation or mathematical concepts” (TRIPS)
o e.g. Trade-‐Mark prohibits registration of distinguishing guise if it is likely to limit the development of any art or industry (s. 13 Trade-‐Mark Act); also, its registration can’t interfere with the use of any utilitarian feature à utility is patentable
o e.g. patentable subject matter excludes “mere scientific principles or abstract theorems (s. 27(8) Patent Act) à pure software protected as literary works under copyright right and not under patent
-‐ But overlaps are mostly regulated in case law. The courts try to fulfill the purpose of each right while avoiding overreaching. o Courts do recognize that a single tangible article can give rise to more than 1 IP right, provided that each
right’s requirements & objectives are satisfied o However, overlapping protection for the same aspects should be avoided o And 1 IP right shouldn’t be used to get back-‐door protection or to try to extend the term of another IP right
-‐ Decisions that will combine 2 forms of protection are often based on equitable considerations à the best e.g. is fictional characters (under copyright & Trade-‐Mark)
II. COPYRIGHT AND TRADE-‐MARKS AND PROTECTION OF IMAGE (P.1126)
1. FICTIONAL CHARACTERS (P. 1127) -‐ Can be based in prose (e.g. Jane Eyre), visual (e.g. Garfield), audio-‐visual (e.g. Buffy the Vampire Slayer) -‐ Protection: ©, Trade-‐Mark, unfair competition, contract & appropriation of personality
o à Each area of law protects different aspects of the character o Copyright protects the original expression of the literary or artistic creations o Trade-‐Mark protects the fictional characters as indicators of the source of a good/service
-‐ An increasingly valuable asset. They are cultural & commercial commodities o Commercial: merchandising – especially with multiple media outlets o Cultural: expression & identity value to public as they become part of our popular lexicon
-‐ There will be official (e.g. licensed apparel) & unofficial (fan website) uses of the character. à Copyright & Trade-‐Mark owners need to be strategic about how they protect the legal rights in these characters without alienating the popular fan base.
a) Copyright Protection for Fictional Characters (pp. 1128) -‐ Elements of fictional character: name, physical appearance & character traits à not all of these are copyrightable
o Copyright protects the original expression in the fictional character o No separate section for fictional characters under the Copyright Act o The characters can fall within the categories of literary works, dramatic works (including motion pictures) &
artistic works (drawings & artistic craftsmanship)
-‐ Debate: whether fictional characters per se are copyrightable as independent works, or rather, if characters are protected as part of the large work in which they appear o in latter, would have infringement of fictional character if someone reproduces a substantial part of the larger
work in which they appear o à preferable view: fictional characters can be independently copyrighted
Case: Preson v. 20th Century Fox Canada
Facts -‐ Plaintiff claims that producers of the Star Wars film Return of the Jedi infringed his copyright in his Space Pets
script & the Olak & Ewok characters – same names used in the Star was movie Issue: -‐ were Olak & Ewok separately copyrightable?
Held -‐ Under Canadian copyright law a literary fictional character could be separately protected, but these characters
were not sufficiently delineated & thus the mere similarity in the 2 characters’ names didn’t constitute infringement
Reasoning -‐ Judge referred to US test: “the less developed the characters, the less they can be copyrighted; that is the
penalty an author must bear for marking them too indistinctly” (Nichols) -‐ So this gets back to the idea/expression dichotomy: you can have expression of a mouse, but not of all cartoon
mice -‐ This test incorporates originality (developed character suggests skill & judgment) & has a public notice function
(with more recognizable character, I can predict when I’m infringing)
-‐ Curiosities about applying the copyright tests to fictional characters: the type of medium that the character is in can affect the scope of protection o courts more likely to find infringement w/ pictorial depictions rather than literary characters o this is partly evidentiary: easier to see that they’re similar when they’re visual o general rule: visual similarity, even absent a similarity of personality & behaviour will infringe (Mickey in
promiscuous drug culture infringes) o particular challenge w/ literary characters (if character has a few quirks, more likely to infringe than if
introspective/enigmatic) II. COPYRIGHT & TRADE-‐MARK CONVERGENCE (P. 1130)
-‐ 3D figures based on 2D figures infringe copyright if they reproduce a substantial part – because reproduction in any material form infringes copyright -‐ s. 3 Copyright Act o e.g. comic strip (2D) of Popeye was infringed by Popeye toy (3D)
Case: King Features Syndicate v Lechter
Facts -‐ King Features (plaintiff ) is the owner of copyright for Popeye comic strip. Defendant made watches with Popeye
on them and registered the Trade-‐Mark for POPEYE. King Features also made watches with Popeye on them. (we know putting characters on dial faces was infringement)
Issue: -‐ whether the title of a fictional character is protected under copyright
Held -‐ Use of “Popeye” with the characters, was an infringement of the copyrighted work
Reasoning -‐ Generally, titles can’t be copyrighted independently.. but Copyright Act s. 2 provides that the copyrighted work
includes the title when the title is original & distinctive
-‐ Reproducing the title could infringe copyright if it constitutes taking a substantial part of the copyrighted work -‐ By linking title with characters, this was substantial
Subsequent infringement -‐ Subsequently, the defendants marketed different watches w/ look-‐alike figures that were very “Popeye-‐ish” and
this was also held to be infringement even without appearing under the character name Popeye b/c it would still be recognizable by consumers & there was no evidence of independent creation
-‐ This case points to a problem of convergence (confusion) betweenw copyright & Trade-‐Mark principles
o Copyright is supposed to protect original expression & Trade-‐Mark law to protect distinctive marks which indicate the source of particular wares or services
o Tension: in the copyright analysis, courts often consider whether characters are recognizable & distinctive, which is more properly considered as a Trade-‐Mark issue
o i.e. concepts of reproducing a substantial part (copyright) & recognition, distinctiveness & likelihood of confusion (Trade-‐Mark) not dealt with separatel
§ e.g. Michelin v CAW-‐Canada: Michelin brought copyright & Trade-‐Mark actions against the union using the Bibendum tire character on its union recruiting posters. Michelin succeeded on copyright claim but not on Trade-‐Mark analysis à 2 results shows that this case did deal w/ them separately
VII.TRADEMARKS & PATENTS (P. 1169)
-‐ Trade-‐Mark means indefinite protection à Big concern that Trade-‐Mark not be used to extend indefinitely the limited term patent protection on functional aspects
-‐ When conflicts between patent & Trade-‐Mark most often occur: potential distinguishing guise under Trade-‐Mark includes functional aspects subject to patent law protection o Especially problematic: shape of an article became a distinguishing guise under Trade-‐Mark while being
protected by a patent
Case: Kirkbi v. Ritvik (p.1169) à Lego: distinguishing guise evergreening patents?
Facts -‐ Plaintiffs (Kirkbi) held patents on LEGO blocks, but patents expired. They brought a passing off action under
Trade-‐Mark Act s. 7(b) against defendants (toy manufacturer) that made similar blocks. Plaintiffs claimed the shape of eight-‐stud block as an unregistered distinguishing guise Trade-‐Mark.
Issue: -‐ What is the relationship b/w distinguishing guise Trade-‐Marks & patent law?
Held -‐ SCC refused to allow the plaintiff to invoke the protection of Trade-‐Mark law after the patent protection expired
Ratio -‐ The exclusive rights to a Trade-‐Mark don’t give the owner exclusive rights to the functional elements of the
associated product. (SCC expanded the functionality doctrine) Reasoning -‐ “A purely functional design may not be the basis of trade-‐mark, registered or unregistered. […] the law of passing
off & of trade-‐marks may not be used to perpetuate monopoly rights enjoyed under now-‐expired patents” -‐ Bargain in patent law: “Patents protect new products and processes. In consideration of disclosure of the invention,
patent law grants a time-‐limited monopoly to the patentee on the use & marketing of the subject matter of the patent”
-‐ Trade-‐Mark is about indicating source à “Despite its connection with a product, a mark must not be confused with the product”
-‐ LEGO turned into a household word – source & product were identified – but when the patent expired, the LEGO technology fell into the public domain
-‐ The “distinguishing guise” consisted solely of the technical or functional characteristics, formerly protected by
Kirkbi’s patents -‐ Doctrine of functionality: the purpose of Trade-‐Mark law is the protection of the distinctiveness of the product, not
a monopoly on the product o Trade-‐Mark Act s. 13: the registration of a mark will not interfere with the use of the utilitarian features it
may incorporate o Trade-‐Mark law isn’t intended to prevent competitive use of utilitarian features of products -‐ it fulfills a
source-‐distinguishing function -‐ The appellant is just complaining about the existence of competition based on a product that is not in the public
domain -‐ Kirkbi was trying to protect its market position (i.e. Lebel is saying they tried to use Trade-‐Mark law to evergreen a
patent) -‐ Trademark rights = Separate from functional elements
o Just like the intangible rights of copyright are separate from the physical object, the rights of the Trade-‐Mark owner in the exclusive use of the mark are separate from the rights in the functional elements
o Courts have prevented inventors who coin a new word to describe their invention from also claiming that word as an exclusive Trade-‐Mark after patent term expires for same reason (e.g. shredded wheat, linoleum are just the names of the product itself)
-‐ Remington Road (p. 1175) o [the classic case on overlap b/w distinguishing Trade-‐Marks & patents before Kirkbi] o 3 head design for razors o goes through history of functionality doctrine o granting Trade-‐Mark would allow applicants to receive a patent in the guise of a Trade-‐Mark o the principal functional feature of the Philips shaver are its cutting heads which they depict o shaver heads are functional. 3 headed shaver heads are also functional. In depicting these functional
elements, the design mark is functional o “a mark which goes beyond distinguishing the wares themselves is transgressing the legitimate bounds of
trade-‐mark”
-‐ Dominion Co v Schlage Lock Co o Schlage applied for a Trade-‐Mark for original keys with a specific key design (bow on top of the key).
Competitor companies objected b/c they wanted to supply blank replacement keys to locksmiths in that design (industry practice)
o Application refused b/c the Trade-‐Mark wasn’t distinctive & exclusive use by applicant would unreasonably limit the development of an industry (s. 13(b))
Case: Thomas & Betts v. Panduit (p. 1181) à cable ties, “distinguishing guise”
Facts -‐ Plaintiff manufactured a cable tie with an oval shape & had a patent on it, but the patent term expired. The
defendants started to manufacture a cable tie that was virtually identical to plaintiff’s cable design. Plaintiff claimed the defendant was infringing its common law trade-‐mark rights in the distinctive shape of the head of the cable tie & passing off its goods. The defendant argued that the plaintiff couldn’t extend the length of the patent term by claiming Trade-‐Mark rights in the expired patent’s design
Issue: -‐ Is the oval-‐shaped head a distinguishing guise within the meaning of the Trade-‐Marks Act?
Held -‐ Yes
Ratio -‐ Trade-‐Mark law will not extend to protect the utilitarian feature of a distinguishing guise. However, if a guise
acquired the required degree of distinctiveness & is not purely functional, its protection under Trade-‐Mark law
remains unaffected by the expiry of a related patent Reasoning -‐ Goods that were patented aren’t automatically disqualified from Trade-‐Mark protection but it is more difficult for
a plaintiff to prove that a mark has become distinctive of him when he has enjoyed a legal, de facto monopoly of the goods in question
-‐ Doctrine of functionality explained again (cites Remington Rand) -‐ Motions Judge erred in focusing on the “invention” on the Patent Act rather than on “wares” under the Trade-‐
Mark Act -‐ Need to determine whether the oval-‐shaped head is a preferred embodiment of the invention i.e. evidence of
functionality -‐ Corollary of ratio above: If the invention described in the expired patent can be made w/o copying the non-‐
utilitarian (i.e. aesthetic) aspects of the patentee’s product, & w/o using the Trade-‐Marks as indicators of source, there will be no violation of either the (expired) patent or the Trade-‐Mark. I.e. cable ties were made without oval heads
Summary: 2 principles from case law involving overlaps between IP rights:
1) to the extent possible and consistent with the statutory provisions, there should be legal protection for each aspect of each IP right as long as it does not conflict with the purpose of another IP right and there is no specific override specified in legislation
2) IP rights protect different aspects so that any particular intangible object can implicate more than 1 intangible IP right