Lecture at Peking University Law School and Intellectual Property SchoolDelivered April 7, 2013

An Overview of the Canadian Law of Intellectual Property Protection

Sean L. Gosnell, LL.M.sgosnell@blg.comTel: 416.367.6120Fax: 416.361.2711

This presentation is prepared as a service to the attendees of this seminar. It is not intended to be a complete statement of the law or an opinion on any subject. Although we endeavour to ensure its accuracy, no one should act upon it without a thorough examination of the law after the facts of a specific situation are considered. No part of this presentation may be reproduced without prior written permission of Borden Ladner Gervais LLP (BLG). This presentation is co-authored by Sean Gosnell and Robert Dewald.

Overview

1. A Brief History of Canada (10 min)2. Patents (20 min)3. Trade-marks (20 min) 4. Copyright (15 min)5. Questions (15 min)

PART 1 – A Brief History of Canada• World’s second largest country• 35 million population, mostly in a few cities: Vancouver,

Calgary, Edmonton, Toronto, Ottawa, Montréal• Highly dependent on immigration to maintain and grow

population

Fundamental Political and Legal Structure

• Country is a federation of provinces and territories with a federal government. Powers of each level of government carefully defined in original legislation, which was enacted by both the U.K. and Canadian Parliaments.

Jurisdiction Over Intellectual Property• The ultimate court determining the exact scope of

those powers for the first 100 years of Canadian history was the U.K. Privy Council. Generally speaking provinces prevailed over federal government.

• However, intellectual property law is one of the few areas that is exclusively within the control of the federal government and federal courts.

Critical Political Events After Formation of Canada

Depression: 1930-1940First World War: 1914-1918

Population: 8,000,000

Army Size at the Beginning of the War:

3,000

Army Size During the War: 690,000

Killed: 67,000

Wounded: 173,000

• 20% of population on government assistance

• Drought in prairies• GDP down 40%• Emergence of socialistic

governments in some western provinces

• Rise of federal government corporations such as CBC, Air Canada, CNR.

• Old age pension started in 1927, due in large part to pressure from veterans

FLQ Crisis and Repatriation of Constitution

1970• A Québec cabinet

minister was kidnapped and later killed

• Hundreds of prominent figures arrested

1982• Constitution revised

and, with consent of U.K., becomes exclusively Canadian

• Explicitly provides for a number of human rights including various freedoms. However, deliberately excluded protection of property rights

Toronto – One of the World’s Most Diverse Cities

• Population: 5.5 million;• About 50% not born in Canada• About 50% are visible minorities

Source: Wikipedia “Demographics of Toronto”

• As of 2006 there were about 540,000 people of Chinese descent in Toronto

• By 2031 in Canada that number will be in the range of 2.4 to 3.0 million

Source: Statscan, “The Daily”, March 9, 2010

Summary• Gradual replacement of independence and self

sufficiency with large and expensive government social programs

• Correspondingly high level of taxation and significant government regulation and involvement in many areas, such as health care

• Strong historical democratic traditions and rule of law but little tolerance of challenge to government institutions

PART 2 - Patents

What is a patent and what does it do?• A patent is an IP right granted by a country to a patent

holder for a specific period of time. It gives the patent holder the exclusive right to prevent others from making, using, offering for sale, selling or importing articles covered by the patent without the patent holder’s permission. To produce the patented object the patent holder may be required to obtain other approvals.

• In exchange for this exclusive right granted by a country, the patent holder must disclose the invention to the public.

Patents - Requirements• A patent may only be granted for an invention that meets

all of the following conditions:• Novelty• Unobviousness (inventive step) • Utility (industrial applicability)• Patentable subject matter

Patents - Novelty• To be patentable, an invention must be novel. That is,

the invention must not have been described or claimed in a previously filed third party Canadian patent application, and must not have been previously publicly disclosed by a third party, anywhere in the world.

• A lack of novelty is often referred to as anticipation.For example: Apple cannot patent the device

inside the Iphone that transmits the call (this has been anticipated by previous technological developments), but Apple can patent the unique design of the Iphone.

Patent - Obviousness• The subject-matter of the invention should not have been

obvious to a person skilled in the relevant art • To be unobvious, the invention must be more than a

mere workshop improvement. If someone with general knowledge in the subject matter could “discover” the invention, the invention is considered obvious and therefore non-patentable.

• Obviousness must be assessed, without the benefit of hindsight, by considering both the claim and the filing date.

Utility• To have utility, a patent application must perform as

described or predicted by the inventor .• It is immaterial that the invention works for a different but

unclaimed purpose• It is irrelevant that the invention is impractical from a

commercial viewpoint, a nuisance, immoral or a burden to society

Patentable Subject Matter• For an invention to be patentable, it must be of the

permissible subject matter. In Canada, courts do not allow patents for non-human higher life forms, for example, plants and animals

• Patentable: • Single celled non-human organism with modified genetic material• An altered plant gene or cell is patentable• Lower Life Forms (i.e. micro-organisms, yeasts, moulds, fungi, bacteria,

antinomycetes, unicellular algae, cell lines and viruses or protozoa)

• Non-Patentable: • Multi-Cellular Animal Organisms • Plants

Patentable Subject Matter – Business Methods

A business method may be patentable if :• it has a practical application;• it is a new and inventive method of applying skill or

knowledge; and• it has a commercially useful result.

For example: Amazon’s 1-Click method allowing online purchases with a single click, using payment information previously entered by the user, is an acceptable business method patent

PART 3 - Trade-marks• Canadian trademark law provides statutory protection to

“marks” under the Canadian Trade-marks Act and also at common law.

• A trade-mark is a word, slogan, logo, symbol, or some other indicator, or combination of indicators, used to distinguish one owner’s products or services from the products or services of others.

• A mark can be protected either as a registered trade-mark under the Trade-mark Act, or by the common law action of passing off.

Trademarks – Passing Off• Passing off was first concerned with traders who passed their

business or goods off as another's. • e.g. an imitation Louis Vuitton purse.

• The notion is now construed more broadly and covers a wide range of deceptive commercial practices• e.g. “mismarketing”.

• Three essential elements are required to prove passing off:• Existence of goodwill• Deception of the public due to misrepresentation; and• Actual or potential damage to the plaintiff

Trademarks - Goodwill• Reputation/Goodwill – To establish passing off, a trade-

mark owner needs to show that they own a reputable mark

• Intentional Copying Establishing Reputation - Evidence of intentional copying establishes prima facie case of secondary meaning

• Identity of source immaterial - it doesn’t matter that the public has no idea of the identity of the trade source

Trademarks – Deception of the Public

“The proof required to establish a probability of deception is that there would be a likelihood of deception in the mind of a substantial number of persons such as the ordinary purchaser or user (of the goods or services in question) purchasing with ordinary caution.” [Walt Disney Productions vs. Fantasyland Hotel ]

• Confusion and Damages presumed – if goodwill and a misrepresentation are established

Trademarks – Deception of the Public

Example:Walt Disney Productions v. Fantasyland Hotel• Disney Corporation, who owns “Fantasyland”

amusement park in Disney World, sued Fantasyland Hotel in West Edmonton Mall

• Fantasyland Hotel was using of word “Fantasyland” in association with an amusement park within the mall.

• Evidence showed 8.2% of people in Edmonton thought there was a connection between the Fantasyland amusement park and Disney

• As a result, Disney succeeded in its passing-off claim

Trademarks - Damages• Damages include:

• Lost sales • Lost profits• Interference with goodwill• Loss of control of mark, • Expert opinion re future losses

Trademarks – Defence to Infringement

Negate goodwill of trade-mark by showing:• Absence of reputation or goodwill• Lack of Distinctiveness • Descriptive Word or Marks• Functionality • Non-UseOther Defences• Registration of Trade-Mark • Use of an Individuals Own Name

Trademarks – Statutory Protection• A mark that has been validly registered gives the

exclusive right to the owner to use the mark throughout Canada in respect to the wares (goods) and services specified in the registry, and to sue another party who uses a mark that interferes with the owner's right.

• Under Trade-mark Act, the owner must have: • registered the mark, • used the mark, and • used it for the sale of identical wares or services.

• If these three criteria are satisfied, the owner may enforce their trademark rights across Canada.

PART 4 - Copyright• The Copyright Act governs the legally enforceable rights

to literary and artistic works.• Copyright includes the right to first publish, reproduce,

perform, transmit and show in in public. • Copyrights do not need to be registered in order to be

enforceable under the Act or at common law.

Copyright – What is Protected?• A “work” must be original and its nature must be one of

the following:• Literary (i.e. an essay you wrote)• Dramatic (i.e. a monologue you performed)• Musical (i.e. a song your band composed)• Artistic (i.e. a portrait you painted)

• A “work” includes a compilation.• Copyright is granted the moment the work is created.• There is no distinction between for-profit, commercial, or

personal use, nor does Copyright distinguish between the work of a professional and the work of an amateur.

• The “work” must be fixed in a material form.

Copyright - Originality• Resulting from the Supreme Court of Canada decision in

CCH v. Law Society of Upper Canada, the minimum standard of originality for a work is that it:

1. originates from its author2. is not copied from another work3. involves the exercise of skill and judgment

Rights Conferred by Copyright• Copyright is the right to produce or reproduce the work

or any substantial part, to perform the work in public, and to publish the work, including the right:• to translate;• to create a novel from a dramatic work;• to dramatize a novel;• to make a sound recording or movie;• to make a move of a novel, etc;• to telecommunicate the work;• to exhibit the work;• to rent out a computer program;• to rent a sound recording; and • to authorize any of the above.

Moral Rights• Moral Rights consist of the right:

• to retain integrity of the work• not to have the work distorted, and • to have the author’s name associated or not, as the author chooses,

with the work

• Infringing moral rights requires detriment of the honour or reputation of the author• Example of infringement – tying ribbons on a sculpture, or putting

somebody else’s name on a story

• Moral rights cannot be assigned by the author, but they can be waived

Infringement of Copyright• Primary Infringement – to do something, without the

consent of the owner, that only the owner has the right to do.• For Example: it is an infringement to make a substantial copy of a

magazine article, or make a recording of a song in public

• Secondary Infringement – means that there has been a primary infringement, such as an unauthorized copy, which a person then sells, rents or distributes, provided that such person knows or ought to have known, that it was an infringing copy.• For Example: A person who rents out a theatre for what they ought to

know is an infringing performance (i.e. screening a counterfeit movie)_

The Fair Dealing Exception• In order to establish a fair dealing defence, the

defendant must show: 1) the dealing was for the purpose of research, private study, education, criticism or review, parody, satire, or news reporting and 2) it was fair. Six factors are considered to determine “fairness” in CCH: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; and6. The effect of the dealing on the work.

Copyright – Technological Protection Measures (“TPMs”)

• Recent changes to the Copyright Act prohibit circumvention of TPMs

• A TPM is any effective technology, device or component that:• controls access to a work (i.e. access control)• restricts one from exercising the exclusive rights of a

copyright owner or remuneration rights (i.e. copying control)

• The TPM prohibitions in the Copyright Act could potentially “trump” or prevail over various exceptions in the Copyright Act, e.g. the fair dealing exception.