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Industrial and Intellectual Property

Pr.: Gold
Tuesday and Thursday: 11:35-12:55
Office: Room 201, 3661 Peel
-Tel: 398-6636
-Email: Richard.Gold2@McGill.ca
-Hours: by appointment
-No final exam: 24 hour take-home, 5 pages typed, double-spaced

Introduction

-IP constitutes today, in many cases, the primary assets of most corporations. Interest in
IP has developed in the mid-1990s.
-IP space includes: books, paintings, how one plans the day, list of friends etc. The
primary criteria is that the thing to be protected has an intangible mental aspect.
-Overlapping spheres within IP space:
1. Copyrights: authenticity of an idea, painting, song etc.
2. Trademarks: control over use and commercialization of symbols, names, color
scheme, that are related to a product or service etc.
3. Patents: over use and exploitation of computers, cars and all inventions, etc.
-NOTE: lots of stuff is not protected in IP space, there are many things that do not fall in
the three spheres. The question is therefore why is no protection afforded? Is it out of
neglect, impossibility, purpose?
-NOTE: there is also significant overlap between the three spheres: computer programs
can be both patent and copyright, phrases such as 'Heres Johnny' [Carson] can fall in
more than one sphere.
-NOTE: patents and copyrights are competitive schemes: cannot be in both at the same
time. Consequently we need to consider what are the advantages of one over the other.
-We will look at the three spheres/regimes separately, then we will look at them
comparatively:
Differences,
Similarities,
Limitations,
History of IP,
Need/purpose of IP law and the regimes,
National and international aspects,
Cross-influences
-One significant sticking point is who governs IP, who resolves IP issues. Acts are
present, but who decides on issues of infringement: govt, courts, private actors?
-NOTE: Another means of protecting IP is K law. A definition that is useful in this
context is that of property rights: relationship between a person and everybody else, a
right of exclusion, an absolute veto on activities that does not require justification: this is
to some extent the same for K and property law.
-NOTE: patents, trademarks and copyrights are local and not international; must get
patents, trademarks and copyrights in all countries in order to have intl protection. Thus,
for example, a US TM means nothing in Canada.
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Passing Off and Trademarks

Essence of both PO and TM is to protect goodwill as it is embodied in a mark
Passing Off: Protecting the goodwill that is embodied in the use of the mark
(mark is in relation to a product or service, and the impression of the product or
service that is conjured up in the mind of the consumer when he/she sees the mark
is the goodwill). PO is a CML notion that operates within a statute when it
becomes a TM
Trademarks: Protecting the goodwill present, future and to some extent past
embodied in the use of a mark, TMs afford protection via registration.
What constitutes a mark: any word, name, symbol, phrase, colour scheme, design
etc. that connects a product or service with a manufacturer anything that
invokes a name or service or thing.
Goodwill is the recognition/association made in the minds of consumers between
a name (producer) and a product or service. This is acquired over time with the
use of a mark.
Distinction between TM v. R: R is registered trademark, TM is the CML passing
off action (i.e. it is not registered). Both essentially cover the same things, both it
is easier to prove a R than it is to prove a TM, simply because it is registered.

Marks and Guises:

In both PO and TM, the marks can be a variety of things: works, phrases, designs,
shapes, get-up (packaging via which the product or service is advertised and
sold), colours?, sounds?
There is also something called a certification marks or extended passing off:
this is connected to a class of goods, the standard of quality of products (ex:
protection of word 'champagne' in opposition to mere sparkling wine, ISO
companies)

Passing off: An Overview

-CML notion incorporated into federal law

-No person shall:
(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 another (s. 7 (b) of the
TMA)
There is some issue of constitutionality in this: civil rights and property are a
provincial jurisdiction, not a federal one.
This section provides both the advantages of PO and TM, one need not choose
between the two

What passing off prevents:

Use of name or get-up directly used to sell competing products
Dilution of distinctiveness of name
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PO is only valid in regions where product or service is recognized, not in regions

where the product or service is unknown.
Essentially it prevent people from using your mark or a similar mark such as to
cause confusion about the product or service being consumed (confusion is terms
of origins, quality etc)
Dilution: making the word become generic

Remedies afforded by PO:

Damages:
o Lost profits
Loss of trade
Damage to reputation
Harmful association
Loss of opportunity to licence
Inability to expand
o Accounting of profits: what the other person gained (person guilty of the
PO), not necessarily what the person lost (person subject to PO).
Injunction

Elements of passing off:

Must have goodwill or reputation attached to goods or services
There must be misrepresentation by defendant to the public leading or likely to
lead to conclusion that goods or services are those of plaintiff
The above must result or be likely to result in damages from belief engendered by
misrepresentation

Origin of the Mark:

Need not prove that the reputation in goods derives from its origins in a particular
supplier but simply that goods have the same origin even if unknown (consumer
must believe that the goods are from same origin [producer], even if they don't
know who or where the supplier is).
No need to show who controls the mark, no need to determine who the legal
entity that owns the mark is, simply need to show that there is a common origin
Ex: Coca-Cola products are all associated to the name and are believed to come
from the same place. This is all that is necessary; there is no need to
demonstrating who actually owns Coca-Cola in Canada

Distinctiveness vs Descriptiveness:
Normally, descriptive word cannot be protected but where word acquires a
secondary meaning distinguishing ones goods or services from that of others,
one can obtain protection. In other words, the mark must be either distinct or its
use have acquired a secondary meaning above and beyond the mere descriptive
role it provides.
When used to distinguish rather than functionally describe, can give rise to PO
action.
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EX: Camel hair belts: belts made out of camel hair (this is an actual case)
(became distinctive thru time and use)

Becoming Generic:
If a name used too broadly, it loses its distinctiveness and becomes generic, at
which point one cannot argue that it is distinct but rather has become descriptive.
EX: Thermos, shredded wheat

Duration:
As long as you use it, the mark is valid.
Accordingly, must first use it before can claim protection under PO.
Basic rule: use it or lose it

Who must be confused?

Whose confusion counts for passing off? Presumable those of the average
consumer, not those of the average distributor. And here we refer to the 'average'
consumer, not the professional or learned consumer (professional buyer for ex,
who is likely to be more aware of the origins of a particular product or service)

Trademarks: An Overview

-Affords legislative protection, as opposed to the CML concept of PO. A trademark is a

signifier: we do not care about it for its own sake, but rather for what it refers to.

Same core concept:

o Goodwill
o Distinctiveness
But these are expressed thru the TMA

Trademarks: definition
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

Distinctiveness: names and surnames:

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
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Note that this does not necessarily mean that a name cannot become a TM: it can
if it has acquired a secondary meaning and no longer is merely the name or
surname of an individual.

Distinctiveness: descriptive or misdescriptive:

12 (1) Subject to section 13, a trade-mark is registrable if it is not
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

Distinctive over time?

S. 12(2): names and descriptive marks might be registrable if they become
distinctive

Never distinctive:
S. 12(1) Subject to section 13, a trade-mark is registrable if it is not [(c)- (h)]:
o A name in any language (table, spoon etc.)
o Confusing with a registered TM
o Prohibited & official marks (s. 9) & generic (s. 10)
o Geographical indications (ex: Toronto water not allowed)

Official Marks:
No person shall adopt in connection with a business, as a trade-mark or
otherwise, any mark consisting of, or so nearly resembling as to be likely to be
mistaken for,
o (n) any badge, crest, emblem or mark
o (iii) adopted and used by any public authority, in Canada as an official
mark for wares or services,
(s. 9 (1) (n) of the TMA)

Non-use of a TM:
45 (3) where it appears to the Registrar that a TM, either with respect to all of
the wares or services specified in the registration or with respect to any of those
wares or services, was not used in Canada at any time during the 3 year period
immediately preceding the date of the notice and that the absence of use has not
been due to special circumstance that excuse the absence of use, the registration
of the TM is liable to be expunged or amend accordingly
(s. 45 (3) of the TMA)
TM last 15 years but is renewable (s. 46(1) of TMA)
Person holding a TM may be forced to demonstrate that it is in use (s. 45 TMA)

Use:
-"Use", 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;
(s. 2 of the TMA)
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Use: wares:
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.
s. 4(1) of the TMA

-Warhol paintings of Campbell soup: no use, because the use of the name Campbell was
not in association with the goods. But on the can of soup itself, the mark was/is used.

Use: services:
4 (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.
s. 4 (2) of the TMA

Infringement of TM:
One does not necessarily need to prove literal copying; rather the test is the
likelihood of confusion
S. 19: literal infringement (Mr. Sub case): using the same mark on similar goods
S. 20: non-literal infringement: using a similar mark (ex: Xerox, Xerex).
S. 22: depreciation of goodwill: distinctiveness of the mark is reduced but not
necessarily its value: essentially means invoking a mark in a way that makes it
less distinctive. The value of the link between the mark and what it refers to is
being devalued: this does not mean that the product is made to look bad, but
rather that the link is weakened between the mark and the product it refers to in
the minds consumers. It may, however, also result in a reduction of the esteem in
which the mark is held.

Confusion: when people use famous/recognizable marks:

What the appellant seeks to do is profit financially from the goodwill associated
with the Respondents trade name. The appellant anticipates that the average
consumer will associate its products with the name Pink Panther and be more apt
to buy them. (MacDonald J. in Pink Panther)
The above involved the use of the name Pink Panther for hair care products:
products had nothing to do with the films themselves, but in the minds of the
consumer the association would be made. This is an infringement of the TM.

Infringement of Trade-Mark
Where a court is satisfied, on application of any interested person, that any act has
been done contrary to this Act, the court may make any order that it considers
appropriate in the circumstances, including an order providing for relief by way of
injunction and the recovery of damages or profits and for the destruction,
exportation or other disposition of any offending wares, packages, labels and
advertising material .
(s. 53.2 of the Trade-Marks Act)
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Grey Marketing:
What is grey marketing?
How important are difference in ingredients between products?
Ownership vs. licensing of trade-mark
Affiliated companies

-Ex: buy a TM product in a different countries, product is also TM in Canada, and sell
purchase here. Is there a violation? YES, there is a violation if the Canadian TM holder is
different from that of the US. But if both TM holders are the same, there is no violation
cause product was legally purchased in the US.

Becoming Generic:
18. (1) The registration of a trade-mark is invalid if

(b) the trade-mark is not distinctive at the time proceedings bringing the
validity of the registration into question are commenced,

Abandonment of a TM:
S.18(1) TMA: The registration of a trade-mark is invalid if
(c) the trade-mark has been abandoned.
The practical test to be applied is 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 an unaware purchaser would be likely to infer that both, in spite of their
differences identify goods having the same origin.
Pratte J in Honeywell Bull

Distinguishing Guises:
-s. 2 of the TMA: "distinguishing guise" means

(a) a shaping of wares or their containers, or

(b) a mode of wrapping or packaging wares the appearance of which 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

Distinguishing Guises:
13. (1) A distinguishing guise is registrable only if
(a) 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 and
(b) the exclusive use by the applicant of the distinguishing guise in
association with the wares or services with which it has been used is not
likely unreasonably to limit the development of any art or industry.

Distinguishing Guises:
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-s. 32(1) of TMA:

(1) An applicant who claims that his trade-mark is registrable under section 13
shall furnish the Registrar with evidence establishing the extent to which and the
time during which the trade-mark has been used in Canada

Registration to be restricted:
(2) The Registrar shall 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.

Certification marks:
S. 2 of TMA: "certification mark" means a mark that is used for the purpose of
distinguishing or so as to distinguish wares or services that are of a defined standard with
respect to

(a) the character or quality of the wares or services,

(d) the area within which the wares have been produced or the services performed,

from wares or services that are not of that defined standard

S. 23 (1) & (2) of TMA:

23 (1) A certification mark may be adopted and registered only by a person who is not
engaged in the manufacture, sale, leasing or hiring of wares or the performance of
services such as those in association with which the certification mark is used.

23 (2) The owner of a certification mark may license others to use the mark in
association with wares or services that meet the defined standard, and the use of the
mark accordingly shall be deemed to be use thereof by the owner.

Patents: An Overview

-In a way, patent regime is a response to trade secrets, which are both CML and CVL
tools of protection to keep info confidential.

Trade Secret at CVL:

-A trade secret is:
Information (consumer lists, business plans, charging scheme etc.)
That is not generally known in the industry or easily accessible (does not mean
that the information is unknowable, but rather only that it would be very difficult
to obtain said information)
With a commercial value
In respect of which the owner takes precautions to maintain its secrecy (meaning
that one does not advertise it, try to keep it confidential, only tell a few people).
-All the above conditions have to be met for a trade secret to be recognized.
-NOTE: a trade secret can be eternal (Ex: recipe for KFC)
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Use of Trade Secret at CML:

Confidential information:
o Cannot be completely in public domain although can be application of
thought to info available to the public
Was communicated in circumstances indicating its confidential nature
The receiver may only use the info for purposes for which it was conveyed.

Remedies:
Damages/ lost profits
Injunction
Accounting of profits
Restitutionary award

-Trade secrets do not protect from fortuitous discovery: it only works for those involved
in confidential relationships. Thus if someone discovers the trade secret without any
divulgation from those privy to it, then tough luck to the holder.
-Trade secrets are what people use to protect information, blocks off access to
information. But of course this necessarily means that the info remains secret, that it is
not made public. In this sense trade secrets to not have a limited life span and are not to
be understood as a deal between society and creator: no quid pro quo: protection is not in
response to divulgation.
-To solve this issue of blocking access to information, patent regimes were developed: the
use of the thing is still protected, but the info concerning it is made public. The advantage
is that it is easier to produce, market and sell it (requires fewer safeguards if the info is
public).
-PA covers inventions, and represents a right to exclude others from manufacturing and
selling or importing the thing protected (exclude right to make, use and sell)

-If human intervention is required, then it is an invention for the purposes of patent law.
Something in natural state cannot be patented, but one can patent the same thing if it is in
an unnatural state. Ex: gene in body cannot be patented, but if take out DNA and make
copies of it, then can get patent, or again if bring changes to it.
-Basic question is: was human intervention required to make the thing or could it exist
naturally without human intervention? If the former, can get a patent, if the latter, cannot
get a patent.
-IN USA: if it is in an unnatural state, it can be patented. Not so in Canada for policy
reasons. Thus the general definition is subject to different interpretation.

Patents:
S. 42 PA: 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
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Term of Protection:
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.
(s. 44 of the Patent Act)
46 (1) A patentee shall, to maintain the rights according by the patent, pay to
the Commissioner such fees as may be prescribed.
(2) Where the fees payable under subsection (1) are not paid within the time
provided by the regulations, the term limited for the duration of the patent
shall be deemed to have expired at the end of that time.
(s. 46 of the Patent Act)

Obtaining a Patent:
File an application with Commissioner of Patents (s. 27 of PA)
Application must contain:
o A specification correctly and fully describing the invention and its
operation or use (s. 27 (3) of the PA)
o Claims defining distinctly and in explicit terms the subject-matter of the
invention (s. 27(4) of the PA)
When applying for a patent, one always wants to give the fewest details possible
in order to get the greatest protection possible: the more language that is used, the
more specific the protection is. Of course the flipside is that the application can be
rejected if it is not specific enough.

Review of Patent Application:

File application with CIPO
o Full application
o Provisional application
Examination of patent
Issuance of patent

International Protection:
No such thing as an international patent. To have absolute intl protection, one
could file applications in every single country, but obviously time and energy
consuming. SO:
Thru Paris Convention: entitled to apply for patent in member state, and the date
of filing in those other countries is the date of filing in the original
o Right to apply in any country that is a member of this Convention as if
citizen of that country: access to the patent system of that country
o Date of filing in first country is accepted as date of filing in all other
countries so long as the filing is actually done in the other countries within
the following 12 months.
Thru Patent Cooperation Treaty (PCT), can apply for intl search and examination
o Somewhat of an alternative to the Paris C.
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o File in one country, within 12 months can file an intl application: this is
followed by a preliminary examination that will take a while (up to 3
years) during which you need not immediately apply in every country
right away: essentially a means of getting some breathing space in order to
prepare applications.
o Best to go with PCT if seeking a patent that is recognized worldwide.
In the end, patents are granted on a country by country basis (For ex: in Euro
Community, can be issued by community but is subject to national law)

Secrecy and Patents:

Until patent application laid open, its contents are secret. On day it is filed, it is a
private communication and is not made public. Can still claim trade secret. Lasts
for 18 months (priority date is the date of the first filing).
Once laid open (at 18 months after priority date), secrecy is lost.
This is true everywhere in the world except USA (and even there +/- true): if
filing only in the US, then patent application is secret until one obtains patent (no
limit of 18 months). If file intl, then same 18 month rule even in the US.
Mere act of filing means that application will eventually end up in the public
domain. 18 months provides enough time to think about retracting application and
retain trade secrecy protection. If application retracted, then as if never filed.

Scope Literal vs. Non-Literal

How do we protect patents from minute alterations that would appear not to be
protected in the patent?
o Purposive approach: Canada, India, UK, Australia: look at the words of
the claim thru the eyes of the skilled reader (person that possess all the
technical skills of the particular field involved). Skilled reader will:
Interpret the words in the claim using the vocabulary of the field.
Fill in the blanks.
The day the file is opened (18 month after the filing date), he will
look at the literature and determine the essential and non-essential
elements so as to determine what changes will be permissible and
which will not be. In other words, he/she will eliminate
characteristics that need not be included in the patent for it to be
viable and will extend to it characteristics that need be there.
Accordingly, the first step in order to sue for infringement will be
to define the scope of what is covered by the patent, and then look
at what might infringe it.
For an infringement to occur, all characteristics of the thing
protected need not be present, one just need that the elements of
the invention that are essential to it be substantially the same as
seen thru the eyes of the skilled reader.
o USA:
Test to determine infringement is more difficult in the US:
Compare the two items. Need not define the scope of what
is covered as a first step as in Canada.
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If one element is missing, not an infringement; if all

elements are there, then there is an infringement .
Doctrine of equivalents in the USA: if all elements are not all
present, skilled reader comes in and asks: are the elements
substantially the same? Element by element rule. Here we dont
care if the element under investigation is essential or non-essential.
Patent prosecution estoppel: In a patent application: always ask
for more than less, so that one has leverage, stuff to negotiate with,
things that can be withdrawn if the application is rejected. But
there is a price to doing this: when one reduces claims, one reduces
the ability to sue for things that are substantially the same: lose
ability to expand the scope of what one can sue for under the
doctrine of equivalence: estoppel from claiming doctrine of
equivalents

-So in the USA, there is no defining of the scope of the patent, just a comparison of the
constituent parts of the patented product and the 'infringing' product, whereas in Canada
we first define the scope to determine what can and cannot constitute an infringement.

Patent Criteria:
To obtain a patent, an invention must satisfy all of the following criteria:
o The invention must be new (novelty)
o The invention must be inventive (non-obviousness)
o The invention must be useful
Invention means 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 of the Patent Act)
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.
(s. 28.3 of the Patent Act)

Failure to Satisfy Criteria:

48.1(1) Any person may request a re-examination of any claim of a patent by
filing with the Commissioner prior art
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
(might not get patent or will fail to enforce it)
60(1) A patent or any claim in patent may be declared invalid or void by the
Federal Court at the instance of the Attorney General of Canada or at the instance
of any interested person.
(s. 48.1(1), 59 & 60(1) Patent Act)
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Novelty:
28.2(1) The subject-matter defined by a claim in an application for a patent in
Canada 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) [same but for foreign application]

(S. 28.2 (1) of Patent Act)

What is an anticipated claim?

What must be disclosed in prior art?
Test in Reeves Brothers
What constitutes publicly available prior art?
Display of invention
Lecture at conference
Installed at home where others can see it

Concept of obviousness:
-Trying to prevent people from getting a patent on something that is already a given. One
should not be able to obtain a monopoly over knowledge that is already in the public
domain. Thus obviousness fulfills a similar purpose to novelty:
o s. 28.3 of PA:
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:
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(a) information disclosed more than one year before the filing
date by the applicant, or by a person who obtained knowledge,
directly or indirectly, from the application 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 the public in Canada or
elsewhere.

So the question is: Was the invention practicably within the

grasp of others skilled in the art?

Test for NON-Obviousness

Modified Cripps question: Would the skilled unimaginative worker, in light of
his/her common general knowledge and armed with the available prior art be led
"directly and without difficulty" to the claimed invention? If yes, no protection, if
no, protection
In general, not a difficult step in the process of getting a patent: usually a spark
of genius is found to be necessary.

What is knowledge of prior art?

Narrower than test for novelty: General knowledge + Narrow definition of prior
art

General Knowledge
Knowledge that is established, sufficiently disseminated and accepted within the
art so as to be generally known and understood by the real life equivalents of the
unimaginative skilled technician in the art.
Not the same as common knowledge
Must be known and widely accepted without question by the bulk of practitioners
Knowledge that practitioners may be expected to have as a part of their technical
equipment

Meaning of Prior Art

Cannot determine what constitutes prior art with hindsight only, so the factors to
consider are:
Would the researcher have found the prior art after a diligent search?
Prior art must be sufficiently disseminated and accepted within the art
Prior art includes written documents such as patents (or published patent
applications), scientific/technical articles, and prior use

Some indicia of non-obviousness includes:

Commercial success
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Long-felt need
Attempts by others to solve problems
Acceptance by relevant public
Contemporaneous development

European approach to inventive step:

Problem and solution approach:
Identify the technical problem to be solved
Is the technical solution to this problem obvious to unimaginative
skilled person?
Problem of invention of purely scientific interest
Thus here we care why the invention was in fact invented: was it an obvious
answer to the question that it means to resolve? This is not a question we ask in
Canada or USA.

Statutory Basis for Utility Requirement

Invention means 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 of the Patent Act)

Different standards of utility:

Canada: actual and ultimate utility: thing does not have to be good at what it does,
just needs to do it.
Euro: if it can be made and someone might want to use it, then it is useful
US: specific, substantial, and credible utility: specific (must do and be used for
what it was designed), substantial (people must want to use it) and credible (claim
that invention will work must be credible on the day claim is filed).
 16

Utility in Canada:
Invention must work for purposes for which it was designed, but it need not work
well
Invention must serve some positive purpose
Judged using perspective of someone skilled in the art
Benefit to society is not relevant
Invention must either work as of date of publication (18 months after priority
date) or inventor must be able to make a sound prediction of utility
If utility claim based on sound prediction, must lay out reasons for that prediction
Prediction must ultimately prove true
Similar test to prediction in USA

Utility in US
Brenner v. Manson: set up the basis for specific utility:
Applicant claimed three forms of utility, including a specific utility in
researching if the thing could perhaps fight tumours
Rejected by Patent Office for lack of evidence (projected utility did not
count, since only thing that the isolated steroid served was to do
further research to see if it would indeed fight tumours).
a patent is not a hunting license. It is not a reward for the search, but
compensation for its successful conclusion.
(per Fortas J. in Brenner v. Manson)
Specific utility: a utility that is specific to what makes the invention inventive
Substantial utility: not a throw away utility, but a real, substantive use
Credible: the claim of utility must be credible given the state of knowledge in the
art

Industrial application in Europe

European Patent Convention requires that the invention have an industrial
application
Can be made; or
Has an industrial use
European Patent Office has signalled that may add requirement that
someone would actually want to use the invention

Statutory Requirement for Disclosure

-There are two parts to a patent application:
Claim
Description
 17

Description:
The specification of an invention must
(a) correctly and fully describe the invention and its operation or use as
contemplated by the inventor;
(b) set out clearly the various steps in a process, or the method of constructing,
making, compounding or using a machine, manufacture or composition of matter,
in such full, clear, concise and exact terms as to enable any person skilled in the art
or science to which it pertains, or with which it is most closely connect, to make,
construct, compound or use it;
(c) in the case of a machine, explain the principle of the machine and the best mode
in which the inventor has contemplated the application of that principle; and
(d) in the case of a process, explain the necessary sequence, if any, of the various
steps, so as to distinguish the invention from other inventions.
(s. 27(3) of the Patent Act)
 18

Description of the invention must be complete

No need to explicitly describe how the invention is useful
Adopt the point of view of someone with ordinary skill in the art
Cannot require any knowledge other than obvious steps falling within
common knowledge of someone skilled in the art
Would such a person understand the description to describe all instantiations of
the claimed invention?
If not, claim is over-broad
If there is evidence that some instantiations of the invention do not work, then
claim must be rejected
This flows from utility requirement
See Minerals Separation
Would this person understand that all instantiations of the invention would likely
work?
If it is possible for the patentee to make a sound prediction and to
frame a claim which does not go beyond the limits within which the
prediction remains sound, then he is entitled to do so.(Pigeon J. in
Monsanto v. Canada citing Graham J. in Olin Mathieson Corporation
v. Biorex Laboratories Ltd.)

US disclosure
-Harder test to meet than the Canadian test: US highest utility and enablement
requirement. The specification must satisfy two requirements:
Description: what is to be protected
Enablement: how to make it

US Description Requirement
-Two parts to this requirement
Specification must describe the invention fully:
o Does the description given in the specification include all claimed
instantiations of the invention?
o If not, invention is not fully described
Specification must describe how the invention operates
In most cases, a showing that invention does operate is sufficient
In other cases (e.g., pharmaceuticals) must provide some scientific evidence to
support claim that works
Similar to test in Monsanto v. Canada

US Enablement Requirement
To be enabled, the specification must give instructions to someone skilled in the
art on how to make and use the invention
 19

If not all instantiations of the invention work, then the invention is not enabled
Cannot require undue experimentation
Apply a reasonableness standard

Invalidity:
A patent is void if any material allegation in the petition of the applicant in
respect of the patent is untrue, or if the specification and drawings contain more
or less than is necessary for obtaining the end for which they purport to be made,
and the omission or addition is willfully made for the purpose of misleading.
(s. 53(1) of the Patent Act)

-Fact that one gets a patent does not necessarily mean that the patent is legally good: it
can subsequently be challenged. Although just obtaining a patent may be legally good in
practice since going to court is costly (others might respect the patent just because they
want to avoid legal proceedings)
-Patent is evaluated on the reasonability of the claim, but it is not tested per se.

Failure to identify inventors:

-In terms of who is an inventor, one does not have to have physically made the thing,
rather one must have contributed to the creation of the idea.

In Canada, the failure to list all inventors does not lead to invalidity
Not a material allegation
See Apotex v. Wellcome Foundation (Fed.C.A)
In US, failure to name an inventor leads to invalidity unless innocent error
See 35 U.S.C. 256

Infringement
-NOTE: unintentional use is still an infringement: infringement does not depend upon
intention. One and only exception to this rule: when one was not aware of the
existence of the thing and did not want to take advantage of the thing: hard test to
meet.
 20

-An infringement constitutes:

Making, using, selling or importing invention in Canada
When the invention may be embedded in a larger object (car, plant) (refer to
Monsanto)
Use includes furthering a business or commercial interest (this is an SCC
definition)
Unintentional use still infringement unless truly innocent
Remedies
-Pretty much the same as those of TM or Passing-Off:
Injunction
Damages
Lost profits to patent holder
Accounting of profits
Based on actual gain due to use of invention

-Once one has shown one utility and obtained a patent, one can also claim all other
possible utilities.
-NOTE: multiple patent rights to the same property is possible
-NOTE: patent, copyrights and trademarks are based on the notion of a right to exclude,
not the right to use (in CML, there is no such thing as a right to use, just a complete
freedom and a right to exclude others).
-Patents give you no right to use your invention. It simply allows you to impose
constraints on other from using your invention. You have a liberty to use the patented
invention to the extent that nothing else stops you. Thats true of all IP, not just patents.
-Each IP right holder gets to exclude others, but it doesnt give a right to use the object of
the right.

Copyright: An Overview

What a copyright gives you

-Its a right to prevent others from:
Producing or reproducing work
Performing work in public
Publishing work
Engaging in or authorizing above acts

Expression
Expression vs content: patent deal with concrete ideas, trademarks are protecting
marks, copyrights protect expression.
Copyright protects only the expression.
 21

Example: a recipe. Which activities can you prevent if youve authored a recipe
book:
o You cant prevent people from reading it. You cant prevent people from
lending it. You cant prevent people from cooking the recipe. You cant
prevent people from selling the book. You cant prevent people from
telling the recipe to others. Use is not part of copyrights.
o You can prevent someone from writing out the recipe in full and giving it
to someone else.
o When youre copying the recipe, youre reproducing the expression. But
the steps taken in the recipe and the contents arent part of the copyright.
o So you cant copy the recipe word for word and you cant copy the way it
was expressed, but you can convey the information contained in the
expression.

Fixation vs. corporeality

-The work must be fixed, must have a concrete physical form. The work itself isnt the
concrete form. At some point in its life, the work has to be captured in physical form, it
has to be fixed. This requirement is so that you can prove the existence of the work.

Originality
what is worth copying is prima facie worth protecting, University of London
Press
Traditional view: must be original in the sense that the work originated with the
author
Feist and progeny: a higher standard for originality, at least with respect to
compilations.
Originality is the statutory heart of copyrights. Copyrights protect original
expression.
Originality doesnt require some threshold of creative genius. Copyright applies to
people who write computer manuals. The courts dont really want to get into a
discussion about whether something is creative or not.
The originality requirement goes back to the idea that it originates with the author.
The source of the expression must be the author; the author mustnt have taken it
from somewhere or someone else.
However, theres an implication: two people might have come up with the exact
same text, or music, whatever. Both of them originated with their own author.
Therefore, both author has a copyright, and each one can exclude the rest of the
world from using their work. Each copyright holder can use his own work, but not
the others work, even if both guys work are identical. (Although one wonders if
this could ever really happen: identical expression of an idea seems unlikely)
There has been some debate as to whether you can claim something is original to
you if it requires absolutely no mental power, it only requires brute force. For
instance, a telephone book. I.e. how do we deal with something thats completely
uncreative? The U.S. has introduced a tiny little spark of creativity requirement.
Europe doesnt require that, they just go back to originality, and in Canada, were
undecided (sitting on the fence again).
 22

Categories of works
i) Artistic works
-Artistic works includes paintings, drawings, maps, charts, plants,
photographs, engravings, sculptures, works of artistic craftsmanship,
architectural works, and compilations of artistic works (section 2 of the
Copyright Act)
-This is a non-exhaustive list.
-What happens if your work doesnt fall in that list? If youre not on this list,
how do you decide if its artistic?
Word artistic identifies phrase artistic work and used to qualify
artistic craftsmanship
Does the use of the word artistic in the phrase import any
requirements of artistic-ness on the object?
Artistic means it falls within the plastic arts, its a formal definition,
not a substantive one. It need not to be artistic to be an artistic work.

ii) Literary Works

-Literary work includes tables, computer programs, and compilations of
literary works (s. 2 of the Copyright Act)
-Literary means pertaining to the use of words rather than to literature
-Characters? Possible, but difficult

iii) Titles
-work includes the title thereof when such title is original and distinctive (s. 2
of the Copyright Act)
-Weve seen distinctiveness in trademarks. So, to be protected as a separate
thing, the title has to be quasi-trademark, it has to distinguish your work from
that of someone else. That means that the great bulk of titles arent protected as
separate works.
-That doesnt mean that the title isnt protected at all because the title is part of
the whole book/movie/play/etc. Its protected as part of the overall work.
-The separate protection means that the title is protected as a distinct and
separate work.
-2 ways to protect titles:
As part of overall work
When original and distinctive, as separate work (extremely difficult)

iv) Computer programs

-Computer program means 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 a specific result (s. 2 of the Copyright
Act)
 23

-This is a closed definition, it says means and not includes.

-Computer program usually refers in our mind to ideas rather than expression,
and it is often found that they dont really fit in copyrights.

v) Dramatic Works
-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. (s. 2 of the Copyright Act)
Fixation of dramatic work
-Its the one instance of specific requirement of fixity in the Copyright act.
As dramatic work is often spontaneous, it can be hard to fix it. So, some
notes of what youre planning to do fulfils the fixity requirement.
-Improvisation isnt a dramatic work until its recorded somehow.

vi) Musical work

-Musical work means any work of music or musical composition, with or
without words, and includes any compilation thereof. (s. 2 of the Copyright
Act)
-Can have a single copyright in combined music and lyrics to a song.
-This is about the music itself and not the performance of music.
-You can have a copyright in the separate lyrics, the separate music, and in the
two together.
-What are the various parts of a musical work?
Melody
Harmonic structure
Rhythm
Hook
-Usually, the part that is recognized about the music is the part thats protected.

vii) Compilations and Databases

-Compilation means
(a) a work resulting form the selection or arrangement of literary,
dramatic, musical or artistic works or parts thereof; or
(b) a work resulting from the selection or arrangement of data (s. 2 of the
Copyright Act)
-So, you get a copyright in the manner that you compile the date, the order you
give it. Our casebook, the prof. didnt write the materials, but he did put it
together. Some thought went into the structure of the casebook. So, the
professor has some protection in the way he put the casebook together.
 24

Assignment vs. License

-The most straightforward way to make money off your copyright is to make it and
sell it yourself.
-However, if you dont want to get into that, you can either assign your copyright or
license it.
-Assignment changes ownership of underlying copyright (in whole or in part)
-License involves contractual relations only you keep to copyright but you chose
against whom youre going to exercise your right to exclude. You tell someone,
give me some consideration, and I wont sue you should you use the object of the
copyright. The license can be exclusive or not.

Reproduction
-Copyright means the sole right to produce or reproduce the work or any
substantial part thereof in any material form whatever
(section 3(1) of the Copyright Act)
-Thats wrong again, you have the right to prevent other people from reproducing
the work.
-In Theberge: Reproduction requires the creation of new copies. This was a 4-3
decision with all Qubec judges dissenting. The case reveals the split between
common law approach and civil law approach. The civilist approach was a more
abstract notion of what reproduction is and doesnt require additional copies to be
made.

Non-literal Reproduction
-Copyright holder can prevent not only literal copying, but non-literal copying as
well. Degree of similarity between works is the key but is also hard to measure
(Nobody has ever been able to fix that boundary, and nobody ever can: Learned
Hand in Nichols v. Universal Pictures Corporation)

Substantial part
-Even if portion copied is quantitatively small, may be qualitatively significant.
-Must assess work as a whole and determine importance of elements that are similar
-Use of stock elements does not contribute to copying
-The copy of even a small but substantial part can constitute copyright
infringement. For instance, if you copy only a few notes of music and youd know
immediately where its from, that would be infringement

Criteria for copyright protection:

expression has been fixed somehow
originality requirement: started with the author, not necessarily that it is
completely original
-Extent of the right: prevent others from reproducing the work in whole or in parts:
substantive amount of infringement in terms of quality or quantity
 25

Copyrights protect expression and not ideas: this is the central concept: perhaps not
only of copyrights but also of patents (idea vs. invention) and TMs (mark vs. product)
Limits on Copyright: Fair Dealing
Fair dealing: copying for the purpose of research or private study does not
infringe copyright
(s. 29 of the Copyright Act)
Fair dealing: copying for the purpose of criticism or review does not infringe
copyright
(s. 29.1 of the Copyright Act)
Fair dealing for the purpose of news reporting does not infringe copyright
(s. 29.2 of the Copyright Act)

Limits on Copyright: Fair Use

Fair use is wider, more open and flexible concept
Balance of interests of copyright holder against those of the public
Almost any commercial use is presumptively unfair
Non-commercial use only unfair if strong evidence of likely future harm

Copying Sound Recording

[T]he act of reproducing all or any substantial part of
(a) a musical work embodied in a sound recording, onto an audio recording
medium for the private use of the person who makes the copy does not constitute an
infringement of the copyright in the musical work
(s. 80(1) of the Copyright Act)

Parody???
Kinds of parody?
Is any or all of them fair dealing?
Would it be fair use in the US?

Moral Rights
The author of a work has 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.
(section 14.1(1) of the Copyright Act)

Attribution
The author of a work has the right to to be associated with the work as its
author by name or under a pseudonym and the right to remain anonymous.
(section 14.1(1) of the Copyright Act)
-NOTE: In US: there is no such thing as a moral right.
 26

Integrity of the Work

The authors 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.
(s. 28.2(1) of the Copyright Act)
Does the right extend to a copy of the work?
Deemed Prejudice
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.
(s. 28.2(2) of the Copyright Act)
Why single out painting, sculpture and engraving?
Prejudice to Honour or Reputation
How do we apply this test to works that are not paintings, sculptures, or
engravings?
Must distortion, mutilation, modification, or association be objectively
prejudicial or must it be only subjectively prejudicial?? (refer to Prise
de Parole v Guerin)
Does test depend on why we protect moral rights?
Waiver
Copyrights can be assigned or licensed
Moral rights cannot be assigned not licensed: Moral rights may not be assigned
but may be waived in whole or in part.
(s. 14.1(2) of the Copyright Act)
Accordingly, moral rights cannot accompany copyrights when these are
transferred. NOTE that moral rights can be inherited however.
NOTE also that moral rights can be waived in the sense that one may choose not
to exercise them.
Can the holder waive her moral right in a work before the work is created? There
is no answer to this question.

Effect of Waiver
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 work.
(s. 14.1(4) of the Copyright Act)
 27

Obtaining Copyright
Copyright protection in Canada is automatic on the creation of the work
Nevertheless, can register copyright with the Canadian Intellectual Property
Office to obtain a presumption of validity
The Register of Copyrights is evidence of the particulars entered in it. (s.
53(1) of the Copyright Act)

Term of protection
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.
(s. 6 of the Copyright Act)

-Date of creation does not matter, it is irrelevant to the duration of the Copyright. The
only relevant date is the year of death of author.

Eldred Case
USSC: upholds the Sonny Bono Copyright Extension Act (7-2)
Life plus 70 years
95 years for some cartoon works (because of Mickey Mouse)

Exceptions to term
For anonymous works: lesser of 50 years from date of publication or 75 years
from the making of the work
For posthumous works: 50 years from publication
Joint authorship: 50 years from end of year in which last author dies

International Copyright
Berne Convention for the Protection of Literary and Artistic Works, 1886 up to
Paris Revision of 1971
Universal protection throughout member states
National treatment
Absence of formalities
Term of protection
 28

Universal Copyright Convention

For non-signatories of the Berne Convention
States entitled to retain certain formalities
Term of protection defined by reference to term of years
Less detailed than Berne Convention

TRIPs under the WTO

Agreement on Trade Related Aspects of Intellectual Property Rights under WTO
Agreements
Requires compliance with Berne (1971)
National treatment
Most-favoured-nation treatment
Protection of computer programs and compilations of data
Protection of performers and broadcasting
Obtaining International Copyright Protection
For Berne members (including all WTO members), once one obtain a copyright in
one member country one obtains a copyright in all other member countries
according to their copyright laws

-For non-Berne but UCC members, may have to register to obtain copyright in that
member state

Roderick A. MacDonald The Suisse Army Knife of Governance (2002)

Choice of governing instruments:
-SAKnife is an instantiation of the logic of plural modes and multiple sites of governance.
-The gadgets of the knife are hypotheses of action
-Two hypothesis:
o Finding an appropriate mean to an end: I have to regulate the right of inventors, writers
and image, how do I do that? The end constrains the choice of means.
o Finding an appropriate end attainable by the means available: I have an IP regime, what
can I do with it? The mean constrains the choice of end.
-Problems:
1- Too many tools. What should I use?
-There isnt necessarily a single best tool in any given situation.
-Moreover, different users might have preferences for one or another tool.
-Sometimes, less obvious solutions might actually prove to be more effective.
2- Over-inclusiveness. I just want a knife. Cant I get a model without all the other stuff?
-Although a tool is flexible and highly varied, sometimes, a certain problem requires a totally specialized
and different tool.
-Conceptualising the problem at the outset is important, with a specific end in mind. Clears out what type of
means to use.
3- Wrong tool. Some problems require a totally different tool altogether. None of the available ones are
intended to solve this issue.
4- Intended use, Unforeseen problems. Collateral damage from poorly-designed regulatory solutions.
5- Creative Use, Unforeseen Problems. Dont expect too much from your instrument. Dont use the Tax
Act for something more.
 29

6- Design Redundancies: Couldnt we merge a few steps together in order to have a more effective IP
system?
7- Specific-Use tools. Micro-regulation tends to sell people short, by denying the creative role that citizens
can have in solving their own problems.
8- Design Tradeoffs: sometimes, a liability rule might be most suited for the task.
-The criterion used to evaluate the regulatory solution is important
9- Cultural Limits: Some countries dont consider copying an infringement on CR. Cultural
predispositions limit at the outset the possible range or character of regulatory solutions available.
10- Preconceptions of use: Patents are used to solutions certain problems, and CR others; but couldnt we
switch around?
-Issues to be considered when deciding on what tool to use:
o Primary v. Secondary characteristics: the end helps decide which characteristics are
primary, and mandatory in picking the type of tool.
o Relations between uses: sometimes, by the force of habit, it is difficult to make a tool adapt
to another problem: like patents on life.
o Political Ideology helps
o Administrative cost-benefit analysis: new technologies require more sophistication in order
to deploy them properly.
o Multiple regulatory sites: sometimes, if you can get certification in USA, it does not
guarantee a certification in CAD. Different criteria in Europe and North America.
-Is IP the right tool to be used? Or should a liability rule be used instead? To what extent does IP considers
efficiency in its allocation of rights?
Theory of utilitarianism: Notion of efficiency = justification of the regime
Is that an appropriate description of IP or should we let Moral Rights play a larger role?
Compulsory licensing for medication to generic companies might be one way of
including moral rights.but, NAFTA and TRIPS consider that this approach would limit
research, and therefore place pressure to limit this practice.
Compulsory licensing still used in Europe, as it carries historical values
Political Ideology:
What is the ideology behind each scheme?
Which theory justifies IP?
Cost Benefit Analysis:
How about pressure to use the tool because of tradition? Conviction vs. Convention.
How about practical difficulties with the system? Are people overusing the system?
Patent offices, whom do they represent? A ghost in the machine, with a quota to allow a certain
number to pass and others not to? You can get a faster read in the US if you pay more. Does that
create a conflict of interest? Does it matter that they are not neutral?
Is the system flexible enough to adapt to new technology? (patenting life-mice). Who is going to
make the changes? The legislative? Regulatory agencies? Judge-made law?

-Discussion of McD's article:

All about how we use legal tools. Which is the best instrument to achieve a
particular policy?
All tools have effect on behaviour. State might want to direct our choice of
instruments in order to affect our behaviour.
Analogy of the Swiss Army knife: an instrument with multiple tools that may
serve numerous purposes.
Sometimes too many choices are available, as in the Swiss Army Knife
5 different IP regimes (PO, TM, Copyright, Patents, Trade Secrets): is this too
many? Can we achieve our goals with fewer regimes? Do they really accomplish
the ends that we want?
 30

Modalities of Ordering IP Space:

A) What is included?

Copyrights:

Nichols v. Universal Pictures Corp., 1930, p. 20:

Facts: Pf wrote a play called Abies Irish Rose. Def wrote a motion picture play called The Cohens and
the Kellys. Pf says that def copied her play and violated her copyright.
Issue: where is the line to be drawn between original ideas for the purposes of copyrights and general
themes that are not protected under copyrights?
Held: In favour of def, case dismissed.
Ratio:
-Copyright cannot be limited literally to the text, else a plagiarist would escape by immaterial variations.
-When the plagiarist does not take out a block in suit, but an abstract of the whole, decision is difficult.
-While storylines are protected, there is a limit beyond which general patterns will not be protected. What
one must focus on are substances. To draw the line is difficult and arbitrary, but drawn it must be.
-As respects plays, the controversy chiefly centers around characters and sequence of incident, these being
the substance.
-Here stories are quite different, and so are characters: only matter common to the two plays is a quarrel
between a Jewish and an Irish father, the marriage of their children, the birth of grandchildren and a
reconciliation.
-These are general themes that cannot be afforded protection under copyrights: themes are too general, and
characters are prototypes.
-A comedy based upon conflicts between Irish and Jews, into which the marriage of their children enters, is
no more susceptible of copyright than the outline of Romeo and Juliet.
Comment:
-Point of the case: what is protected is not the idea (here a family quarrel between Jews and Irish) but
rather the expression of that idea (particular description of the quarrel)

-Essential question: what is it that you get when one gets a copyright: expression, but not
ideas. What does this mean: what is expression, what is idea?

Allen Rosen, Reconsidering the Idea/Expression Dichotomy, p. 24

-It is an elementary principle of copyright law than an author has no copyright in ideas but only in his
expression of them. His copyright is confined to the literary work in which he has expressed them. The
ideas are public property, the literary work his own.
-Idea/expression dichotomy is a conspicuously central yet manifestly unclear principle of copyright law.
-One of the difficulties lies in the vagueness and lack of definition for the terms ideas and expression of
ideas.
Purpose of Idea/Expression Dichotomy:
-Canadian traditional rationale for copyright protection: that it is intended to strike a balance between
ensuring that authors, artists and other creative individuals receive just rewards for their labours, and
encouraging progress in the arts for the benefit of the public at large.
-US rationale: copyright and patents protection is to promote the Progress of Science and the useful Arts, by
securing for limited times to Authors and Inventors the exclusive Right to their respective Writings and
Discoveries. More of a utilitarian perspective (encourage work) than a just rewards principle (Canadian:
merit compensation for work).
-Task of copyright law is to balance two factors: one, the publics interest in having access to new works,
new ideas, and the progress that may be expected to result from their general dissemination; the other, to
provide incentives or rewards for continued creativity.
-The idea/expression dichotomy fits very nicely into this traditional picture.
-NOTE: test of infringement of copyright in Canada, England, and the US is the substantial similarity or
 31

substantial part test

-Look at the various characterization/explanation of the idea/expression dichotomy:
1. Style/content contrast
a. Idea means the content of an idea and expression means the style in which an idea is
presented.
b. Problem is that the more abstract and nonrepresentational a work of art, the more the
creators style tends to merge with the content or subject matter of the work
2. Fixed/unfixed idea:
a. Idea must be fixed in a material form before they can receive copyright protection.
b. Fixation is an important requirement of copyright law, for unless ideas are anchored in
some more or less enduring form they cannot readily be identified for copyright purposes.
c. But this explanation only serves to remove one set of ideas, those that are fixed, from
public use (as they are protected), and therefore does not serve the purpose of advancing
society.
3. Ideas & Language: The Lockean Story
a. Ideas become embodied in language and then are susceptible to copyright protection.
b. Comparison does not hold because it presumes that ideas are essentially non-linguistic
and are only incidentally embodied in linguistic form.
4. General & Specific Ideas
a. Copyright does not extend to mere unelaborated notion or general concept, but rather
only to elaborated complex ideas.
b. Problem is: when is an idea complex enough? At what point does it cease to be a general
idea and become a specific idea? How do we draw the line (refer to Nichols)
5. Merger Doctrine
a. Where the idea can only be expressed in one form and the form adds nothing to the
original idea, the idea is said to merge with its expression
b. Problem: very rarely will an idea only be expressible in one form.
-Ultimately, of these only 4 is useful to the purpose of copyrights: Highly specific and well developed ideas
should be likely candidates for copyright protection because extending protection to such ideas provides
incentives for additional creativity without unduly impeding the free flow of ideas.

Trademarks:

Frank I. Schecter, The Rational Basis of TM Protection, p. 34:

-Unlike in the past when TMs were used to both or either identify the author of a goods or to whom it
belongs, modern TMs do not accomplish this: most often consumer has no idea where good was made, and
certainly is not used to identify the good as his.
-Purpose of modern TM: mark indicates that the goods in connection with which it is used emanate from
the same - possibly anonymous - source or have reached the consumer thru the same channels as certain
other goods that have already given the consumer satisfaction, and that bore the same mark.
-Yet this is not the whole story: the mark actually sells the goods. Purpose of a TM is to identify a product
as satisfactory and thereby to stimulate further purchases by the consuming public. To describe a TM
merely as a symbol of good will, without recognizing in it an agency for the actual creation and
perpetuation of good will, ignores the most potent aspect of the nature of a TM and that phase most in need
of protection.
-Creation and retention of custom, rather than the designation of source, is the primary purpose of the TM
today, and that preservation of the uniqueness or individuality of the TM is of paramount importance to its
owner.
-Holding TMs to identify origin or ownership, the law unfortunately only intervenes in situations where it is
necessary to prevent the misuse of that mark only where there is an actual confusion created by such
misuse, resulting in either diversion of trade or other concrete financial liability or injury to trade repute. In
other words, two identical TMs, if not leading to any confusion on the part of customers (lets say because
on totally different products, apples and chairs), would be unproblematic.
-This is indeed problematic, because it results in the gradual whittling away or dispersion of the identity
and hold upon the public mind of the mark or name by its use upon non-competing goods. In essence, the
 32

more distinctive or unique the mark, the deeper is its impress upon the public consciousness, and the greater
its need for protection against vitiation or dissociation from the particular product in connection with which
it has been used (refer to Pink Panther)
-Conclusion: preservation of the uniqueness of a TM should constitute the only rational basis for its
protection.

-There are 2 ways of looking at the purposes of TMs (as per Schecter);
Protecting the consumer: this is a consumer oriented perspective: provides
consumers with a vague sense of where a particular products came from: knowing
that the product comes from a particular producer/manufacturer is a consumer
controlled quality mechanism: trust the brand because in the past had a good
experience. (this is one of the traditional views of TM, the other being identifying
to whom the good belongs via the mark)
TM as creating markets: companies invest in TM to make consumers feel good
about their products (focusing on the TM holder, this is more of a proprietary
perspective). TM creates a capital asset, that is to say the loyalty of the consumer

Patents:

-Patents: remember that these cover inventions, products and processes requiring human
intervention.
-Patents emerged in the 60s, particularly out of the then burgeoning chemical industry:
the purifications of chemicals were some of the first patents (patenting the process)
-NOTE: In this context, remember that pure knowledge cannot be patented, but applied
knowledge can (EX: distinction between law of gravity [not patentable] and a pendulum
that uses the law of gravity [patentable]). This may parallel the idea/expression
dichotomy (idea/pure knowledge not protected, expression/applied knowledge protected)

Tennessee Eastman Co. v. Canada (Commissioner of Patents), [1974] SCR, p. 45:

Facts: Patent claim is not about the making of a particular adhesive but rather its use in medical treatment:
can be used to join or bond living tissue.
Issue: Can one consider the use of the adhesive in the medical context an art or process within the meaning
of the PA?
Held: Appeal dismissed, patent claim is no good.
Ratio:
-The subject-matter of the claimed invention is the discovery that this particular adhesive is nontoxic and
such that it can be used for the surgical bonding of living tissues as well as for a variety of inert materials.
-The basic claim is not in regards to the adhesive or even the making of the adhesive, but rather in regards
to a new use for surgical purposes of a known substance. Can be claimed as an invention?
-In opinion of court, the therapeutic use cannot be claimed as a process apart from the substance itself.
Otherwise, it would mean that while the substance could not be used except when prepared by the patented
process; its use however prepared could be claimed as a method of treatment.

-NOTE: s. 41 was the basis of the court's decision, but it no longer exists: products that
are pharmaceutical are not patentable: this is no longer true, but was so at the time of the
case.
-Ultimately, we have only vague zones in terms of what is protected by our systems:
Copyright: vague notion of expression (expression v. idea, and where the line is
drawn between the two is not very clear)
 33

TM: distinctiveness
Patent: something that requires human intervention (not pure knowledge but
applied knowledge)
-The vagueness, to some extent, is required because we want the regime to be flexible

Schlumberger Canada Ltd. v. Canada (Commissioner of Patents), 1982, CA, p. 51:

Facts: Applicant's application discloses a process whereby the measurements of boreholes used to find oil
and gas are recorded on magnetic tapes, transmitted to a computer programmed according to the
mathematical formulae set out in the specifications and converted by the computer into useful info in
human readable form.
Issue: The invention, applicant maintains, is not the computer program used to make the calculations, it is
the complex process, which is effected by computer, of transforming measurements into useful info.
Held: Appeal rejected, patent claim is no good.
Ratio:
-What is new here is the discovery of the various calculations to be made and of the mathematical formulae
to be used in making those calculations. If those calculations were not to be effected by computers but by
men, the subject-matter of the application would clearly be mathematical formulae and a series of purely
mental operations; as such, it would not be patentable. A mathematical formulae must be assimilated to a
'mere scientific principle or abstract theorem' for which subsection 28(3) of the Act prescribes that 'no
patent shall issue'. (this is an attempt to patent pure knowledge in the forms of mathematics, not an
application of pure knowledge)
-What the appellant claims as an invention here is merely the discovery that by making certain calculations
according to certain formulae, useful info could be extracted from certain measurements. This is not an
invention within the meaning of section 2.

-Here we note that the various calculations could have been done by human beings, so the
thing sought to be patented was really just abstract pure knowledge. As there can be no
patent over scientific knowledge (now s. 27(8) of PA), claim must fail.
-Computer programs per se are not patentable: but the line between pure and applied
knowledge is difficult. Cannot patent a computer program that does something or other,
but can patent a process that achieves a practical result. Accordingly can patent a process
that is carried on by a computer.
-Case is about how you write your patent application, and not a rule of what can or
cannot be patented.

B) Criteria

Copyrights:

-In terms of copyrights, something is eligible for protection because it is expressive, but
this is not the end of the investigation. There is a need for originality as well, and also a
need of fixation. Note however, that fixation is usually not a problem
-A few observations in terms of copyrights:
o Originality not the same thing as novelty
o Originality: work must originate with me: if I am the source, then OK, if I
copied it, no good.
o Novelty: some spark of human genius (refer to Feist)

Feist Publications v. Rural Telephone Services, US SC, 1991, p. 53:

 34

Fact: Feist publishes a 'white-page' telephone directory using, in part and without approval, Rural's own
'white-page' directory.
Issue: Can Rural claim a copyright over the date (names, addresses, phone #) in its directory used by Feist?
Held: NO, there can be no copyright of data, and Rural's directory does not meet the originality
requirement for a valid copyright.
Ratio:
-The sine qua non of copyright is originality. Original, as the term is used in copyright, means only that
the work was independently created by the author and that it possesses at least some minimal degree of
creativity.
-Accordingly facts and data cannot be copyrighted, simply because facts and data do not owe their origin to
an act of authorship: they exist independently of being collected by someone. (NOTE: alternative was the
'sweat of the brow' theory that allowed for copyrights of facts based on the effort one had to expand to
acquire, collect and compile facts: no longer in use).
-Note that the originality requirement is not particularly stringent: in terms of date and facts, originality
requires only that the author make the selection or arrangement independently.
-For infringement to exist, two elements must be proven:
Ownership of a valid copyright,
Copying of constituent elements of the work that are original.
-Here the second element is not met, since neither Rural's data nor its arrangement were original
(essentially, its 'white pages' is entirely typical).
Principle: As a constitutional matter, copyright protects only those constituent elements of a work that
possess more than a de minimis quantum of creativity.
Comment:
Point of the case: originality means that the work originated with the author
-One cannot have a copyright over pure date or information (lacks the creativity
requirement), but one can have a copyright over the way in which the data or information
was selected, organized and presented, because these do involve some creativity, even if
its negligible creativity (remember the casebook example: can be copyrighted because
involve creativity in terms of organization)
-Case considers the 'sweat of the brow' theory but rejects it: time and effort is not
sufficient, there must also be a spark of genius, some non-mechanical effort

CCH Canadian Ltd. v. Law Society of Upper Canada, 2003, SCC, from WebCT:
Facts: The respondent publishers commenced copyright infringement actions against the Law Society,
arguing that the Law Society had infringed copyright when the Great Library reproduced a copy of each of
the works. The Law Society denied liability and counterclaimed for a declaration that copyright is not
infringed when a single copy of a reported decision, case summary, statute, regulation or a limited selection
of text from a treatise is made by the Great Library staff or one of its patrons on a self-service photocopier
for the purpose of research.
Issue: whether the Law Society has breached copyright by either (1) providing the custom photocopy
service in which single copies of the publishers' works are reproduced and sent to patrons upon their
request or by (2) maintaining self-service photocopiers and copies of the publishers' works in the Great
Library for use by its patrons.
Held: NO in both cases: although the works in question were "original" and thus covered by copyright, the
Law Society's dealings with the works were for the purpose of research and were fair dealings within s. 29
of the Copyright Act.
Ratio:
-Copyright law protects the expression of ideas in these works; it does not protect ideas in and of
themselves. The law of copyright does not give him any monopoly in the use of the ideas with which he
deals or any property in them, even if they are original.
-Binnie J. recently explained in Thberge, supra, at paras. 30-31, that the Copyright Act has dual objectives:
The Copyright Act is usually presented as a balance between promoting the public interest in the
encouragement and dissemination of works of the arts and intellect and obtaining a just reward for
 35

the creator . . . .
The proper balance among these and other public policy objectives lies not only in recognizing the
creator's rights but in giving due weight to their limited nature.
-The headnotes, case summary, topical index and compilation of reported judicial decisions are all works
that have originated from their authors and are not mere copies. They are the product of the exercise of skill
and judgment that is not trivial. Thus all of the work of the respondent are subject to copyrights.
-Under s. 27(1) of the Copyright Act, it is an infringement of copyright for anyone to do anything that the
Act only allows owners to do, including authorizing the exercise of his or her own rights. The publishers
argue that the Law Society is liable for breach of copyright under this section because it implicitly
authorized patrons of the Great Library to copy works in breach of the Copyright Act.
-A person does not authorize infringement by authorizing the mere use of equipment that could be used to
infringe copyright.
-For several decades, the Law Society has maintained self-service photocopiers for the use of its patrons in
the Great Library. The patrons' use of the machines is not monitored directly. Since the mid-1980s, the Law
Society has posted the following notice above each machine: "The copyright law of Canada governs the
making of photocopies or other reproductions of copyright material. Certain copying may be an
infringement of the copyright law. This library is not responsible for infringing copies made by the users of
these machines."
-Conclude that the Law Society's mere provision of photocopiers for the use of its patrons did not constitute
authorization to use the photocopiers to breach copyright law: courts should presume that a person who
authorizes an activity does so only so far as it is in accordance with the law. And even if there were
evidence of the photocopiers having been used to infringe copyright, the Law Society lacks sufficient
control over the Great Library's patrons to permit the conclusion that it sanctioned, approved or
countenanced the infringement.
-The fair dealing exceptions to copyright are set out in ss. 29 to 29.2. In general terms, those who deal fairly
with a work for the purpose of research, private study, criticism, review or news reporting, do not infringe
copyright.
-The purpose of the dealing, the character of the dealing, the amount of the dealing, the nature of the work,
available alternatives to the dealing and the effect of the dealing on the work are all factors that could help
determine whether or not a dealing is fair.
-Although the retrieval and photocopying of legal works are not research in and of themselves, they are
necessary conditions of research and thus part of the research process. There is no other purpose for the
copying; the Law Society does not profit from this service.
-Finally: Educational institutions, libraries, archives and museums are specifically exempted from copyright
infringement in certain circumstances, and this would be one of those circumstances, although thanks to the
previous conclusion, it was not necessary to determine the issue.
Principles:
-Court concludes that an "original" work under the Copyright Act is one that originates from an author and
is not copied from another work. That alone, however, is not sufficient to find that something is original. In
addition, an original work must be the product of an author's exercise of skill and judgment. The exercise of
skill and judgment required to produce the work must not be so trivial that it could be characterized as a
purely mechanical exercise. While creative works will by definition be "original" and covered by copyright,
creativity is not required to make a work "original".
Comments:
-Court specifically rejects the 'sweat of the brow' approach.
-Case is all about the meaning of fair dealing.
-Contrast with Feist. This is a Canadian case, whereas Feist is USA.

Trademarks:

Linoleum Manufacturing v. Nairn, 1878, Chancery Division, p. 102:

Facts: Pf is inventor of linoleum and sells it under that name. Def begins to sell linoleum as well. Pf argues
that def has not right to call its product linoleum.
 36

Held: Appeal dismissed

Ratio:
-Pf invented a new subject-matter, but they used merely the name distinguishing that subject-matter, but do
not use a name distinguishing that subject-matter as made by them from the same subject-matter as made
by other persons.
-Word 'linoleum' is descriptive of the product (oxidized oil), and only secondarily means the manufacture of
the pf, and has that meaning only so long as the pf are the sole manufacturers. It would be extremely
difficult for a person who has been by right of some monopoly the sole manufacturer of a new article, and
has given a new name to the new article, meaning that new article and nothing more, to claim that the name
is to be attributed to his manufacture alone after his competitors are at liberty to make the same article.
Comment:
-In this case we see that a non-descriptive/original name (mark) can lose its distinctiveness over time,
become diluted or generic.

Reckitt & Colman Products Ltd. v. Borden Inc., 1990, House of Lords, p. 104:
Facts: Pf had for years sold lemon juice in lemon shaped plastic containers and the consuming public had
come to associate the container with the company. Furthermore pf had a virtual monopoly by threatening
competitors with passing off actions if they sold similar containers containing lemon juice. US company
decides to sell lemon shaped containers.
Issue:
Held:
Ratio:
Lord Oliver of Aylmerton:
-Passing Off: no man may pass off his goods as those of another. 3 elements need be proven in a successful
passing off action:
Establish a goodwill or reputation attached to the goods or services which he supplies in the mind
of the purchasing public.
Demonstrate a misrepresentation by the def to the public (whether or not intentional) leading or
likely to lead the public to believe that goods or services offered by him are the goods or services
of the pf.
Demonstrate that he suffers or is likely to suffer, damage by reason of the erroneous belief
engendered by the def's misrepresentation.
-Here the two products could be differentiated on the basis of the label, but first instance judge recognized
that nobody (or very few people) read the label when purchasing the products. Thus first instance judge
concludes that the competitor's product, in light of the virtual monopoly that the pf previously had
(goodwill is here established) and in light of the fact that nobody reads the labels, is likely to cause
confusion because it is not sufficiently distinctive.
-Normally, one cannot claim a monopoly in the use of a container which is common use. However, in this
case the lemon-shaped container has acquired, by virtue of monopoly, a secondary meaning, namely that it
is associated with the pf's product.
-Thus def's argument is rejected on the basis that the plastic container is not sold as an object in itself but
rather as part of the get-up under which the pf's produce is sold. It was not 'common to trade' at the time,
since the pf's enjoyed a virtual monopoly.
-The essence of passing off is a deceit practiced upon the public and it can be no answer, in a case where it
is demonstrable that the public has been or will be deceived, that they would not have been if they had been
more careful
Comment:
-If the public is accustomed to rely upon a particular brand name in purchasing goods of a particular
description, it matters not at all that there is little or no public awareness of the identity of the proprietor of
the brand name.
-Case concerns the possibility that a get-up (packaging) can become a mark for a product deserving of
protection. This might create problems in terms of granting what would essentially be a patent over a
container.
-Note also that if the pf was to have a TM over the lemon shaped plastic bottle, there might be an issue of
distinctiveness.
 37

-This is a passing off case, not a case of TM

-Test for passing off is: (1) goodwill, (2) misrepresentation, (3) damage/potential damage.
-Question: can yellow plastic lemon shaped bottles be a mark? Why could it not be a
TM?
-To some extent, 2 and 3 were supported: there was survey data that showed that
consumers would be confused in the marketplace: would mistake the one product for the
other, and this would definitely result in economic losses to the pf. The problem is with 1:
argument of def is that to recognize the plastic bottles as a mark would essentially mean
giving a patent to the pf over said bottle. This would be giving them too much. Yet since
there is survey evidence that consumers would be confused, this can help the pf argue
that lemon plastic bottle is part of the get-up of their product, that people now associate
the lemon plastic bottle with the pf's product (lemon juice)
-This is a similar situation to the one in Linoleum Manufacturing: is the signifier [the
lemon shaped plastic bottle / the name 'Linoleum'] pointing to the general product or to
the manufacturer's product? [pointing to lemons or to the Jiff juice / pointing to linoleum
in general or Linoleum's linoleum?]
-Here the court comes to an opposite result from Linoleum Manufacturing: the most
important signification is the connection of the lemon plastic bottle to the manufacturer
and not to the general product.
-Lets say Jiff decided to sell shampoo in the same bottle, and then hand cream: could they
still claim a right over lemon shaped plastic bottles? NO, this would be too much, as they
would essentially have a patent over lemon shaped plastic containers. Here all the court
wants to do is recognize that the lemon shaped bottle is associated in consumer's minds
with Jiff's product, that the lemon shaped bottle is part of that particular product's get-up,
but NOT that Jiff has right over all lemon shaped bottles.
-The main difficulty of this case is that what Jiff wants the court to protect not the
distinctiveness of a word or symbol, but rather that of a physical container as a signifier
of its product. This creates significant tension because one cannot have a TM over a non-
distinct container [cannot, for example, have a TM over cardboard boxes generally]; one
could, however, have a TM over a particular 'get-up'. So all of this comes down to the
distinctiveness requirement.

Barton Beebe, Search and Persuasion in TM Law, 2003, p. 117:

-Irony of TM: TM pf is often placed in the awkward position of arguing for the commonness of her goods
and the ignorance of her consumers, while the def begs to differ.
-Discusses spatial model of TM: two axes, one for TMs, one for possible products. In essence, the closer a
particular product with a specific TM is positioned to either another product very similar OR another TM
very similar, the greater the confusion will be in the minds of consumers. In order to prevent said
confusion, TM law typically grants the owner of a TM combination exclusive rights over more than simply
a point in TM space, but rather a scope, a region.
-In this process, pfs and apologists of TMs argue for a low degree of search sophistication (providing the
wider scope of protection and greater power to TM persuasion), while defs and reductionists argue for a
high degree of search sophistication (reducing the scope of protection and minimizing the TMs persuasion
ability).
-Search sophistication refers to the consumer's capacity during search to distinguish between similar but
not identical TM uses.
-TM law rarely confronts a situation where the entire relevant consumer population is confused, nor does
the law seek to disabuse all relevant consumers of confusion when it enjoins a def's confusing use.
-In cases involving professional buyers, courts typically limit the scope of protection they afford to pfs.
 38

More common are cases where the court assumes a very low degree of search sophistication, with the effect
that the pf's scope of protection balloons out to exclude even dissimilar competing TMs.
-It is an article of faith in TM doctrine that the more distinctive a mark is, the more likely it is that
consumers will confuse other marks with it.
-In TM law, persuasion sophistication may be defined as the consumer's capacity during search to resist
the 'selling power' of differential distinctiveness, the power of distinctiveness to alter preference.
-While persuasion knowledge describes the consumer's ability to cope with all forms of commercial
persuasion, persuasion sophistication describes the consumer's ability to cope with only one, namely the
persuasive 'selling power' of TM distinctiveness.
-Children and ados are invoked as a class of consumers especially susceptible to the persuasive power of
distinctive brands. Professional buyers are the archetype of consumers with high persuasion sophistication.
-Received orthodoxy is that TM law exists to minimize our search costs. Dominant view conceives of TM
law as designed to facilitate search, and of the consumer as sovereign over the market and over TMs.
-All of this eschews the question: is the consumer a 'king' in terms of having a high ability to choose, or do
TMs determine the ability of consumers to choose thru their persuasive power, making them fools?

Patents:

-Patent requirement: novelty, non-obviousness and utility. Unfortunately, not many

cases on the subject, most are litigated in the USA because that is the most interesting
market.
Novelty: s. 2 of PA: invention has not previously been known in a single source
anywhere in the world in any kind of literature. Onus is on the person attacking
the validity of the patent: must find a single source/document that shows that the
thing patented was known so that the novelty requirement is killed. Idea: no
patent over something that we already know about. Refer to Beloit.
Obviousness: In Canada, similar to the Euro standard, but different from that of
the USA: again refer to Beloit
o Test is a technician skilled in the art that has no indicia of genius.
o In Europe, the test is "what is the technical purpose of the thing?" Given
this purpose, would any unskilled worker have come to the same product
to solve this technical problem?
Utility: not saying that this invention is better than any other on the market, rather
saying that it accomplishes the task that the inventor created it for, it actually does
what it is supposed to, it works.
-NOTE: when one is filing, one does not have a positive obligation to prove that the thing
does what it is supposed to; the only obligation is to provide the specifications of the
thing so that the register can conclude that the thing will in fact work. In a sense, when
one is applying for a patent, it is the register that has the burden of proving that it will not
work if he wants to reject the application.
-This is the same principle for TM regime: the register has to demonstrate why the TM or
the patent should be rejected on the basis of

Beloit Canada Ltd. v. Valmet Oy, 1986, FCA, p. 140:

Facts: Case concerns 2 patents granted for the same invention to 2 different parties. Invention is for the
press section of a paper machine. Each party claims infringement of its patent and the invalidity and
expungement of the other's patent.
Issue: Trial judge found that the patents granted to both pf and def should be expunged on the grounds of
obviousness or anticipation. Was this an error?
 39

Held: Yes, pf's patent is good.

Ratio:
-Obviousness is an attack on a patent based on its lack of inventiveness. Attacker essentially says: '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, essentially asking: "Your invention,
though clever, was already known".
Obviousness:
-Test is not to ask what competent inventors did or would have done to solve the problem. Classical
touchstone for obviousness is the technician skilled in the art but having no scintilla of inventiveness or
imagination. The question to ask is whether this technician would, in light of the state of the art and of
common general knowledge as at the claimed date of invention, have come directly and without difficulty
to the solution taught by the patent? Here the answer is no.
Anticipation:
-Para 28(1)(b): asks whether the claimed invention is "described in any patent or in any publication in
Canada or in any other country more than two years before presentation of the petition"
-Inquiry is directed to the very invention in suit and not, as in the case of obviousness, to the state of the art
and to common general knowledge. Anticipation must be found in a specific patent or other published
document. One must, in effect, be able to look at a prior, single publication and find in it all the info which,
for practical purposes, is needed to produce the claimed invention without the exercise of any inventive
skill. Here there was no such single document.
-Finally, patent is not void for misrepresentation, because "none of the errors had been made with
fraudulent intent and they resulted from carelessness."
Comment:
-A patent once issued is presumed valid and the burden of demonstrating its invalidity is always on the
attacker.
-Case is about the inventiveness (novelty) and non-obviousness requirement of patents in Canada.

C) Scope of Right

-In all the following cases, we are trying to determine the scope of what is covered by
patents, TM and copyright. But this is a battleground, and the case-law is not always clear
on the issue: narrower or larger scope of protection?
-Fuzziness in scope creates economic problems: people stay away from the boundaries
(afraid of being sued), and so might not be able to use the things to make advances: the
balance of the rights of the holders and those of the public are not well served by
fuzziness in scope, and the balance is tipped in favor of the holder.

Scope of copyrights:
-See Nichols v. Universal Pictures Corp, above.
-Refer to Nichols: expression v. ideas concept: expression susceptible of copyrights, but
not ideas.
-Refer to parody article and particularly Rogers v Koons: copyrights do not protect ideas
but rather expression. This is why Koons sculpture was an infringement: the expression
was the same (or substantially the same), it was the idea behind the expression that was
different (but ideas are not protected, expressions are).
-Are the works the same? This may be irrelevant and the more appropriate question is:
are the expressions the same? Koon argues that they are not: he wanted to make fun of
media that distributes these kinds of images, whereas Rogers wanted to show typical
American folk scene.
 40

-Are the changes significant enough to bear this out (fact that it was in a different
medium is irrelevant)? There must be some differences, otherwise somebody could just
copy the work and say: "I had a different meaning, so there is no infringement": this
would be way to easy.
-Case raises the issue of what is of substance in the work such that minor alterations are
insignificant? From a visual point of view, there is substantial similarity, particularly from
the point of view of the average person (this is the vintage point we must adopt, not, as
Koon suggested, from the point of view of the educated art lover)

Rogers v. Koons, US CA 2d cir, 1992, p. 148

Facts: Rogers is photograph. Makes a picture of friends and wife holding some puppies. Picture is made
into a postcard. Koons sees postcard and reproduces the image almost exactly in a sculpture.
Issue: Whether Koons sculpture is an infringement of Rogers' picture, and if so can Koons argue fair use?
Held: NO, no fair use, infringement.
Ratio:
-Pf must prove 2 things for infringement:
1. Ownership of a copyright: Rogers has a valid copyright, and def argument that subject-matter and
expression of it is not original fails. Work is original in positioning of subjects, lighting, film used
etc.
2. Def copied protected material without authorization: Koons continuously instructed studio to
mould the sculpture as per photo. This was copying that was unauthorized.
-Def claim of fair use: equitable doctrine that permits other people to use copyrighted material without the
owner's consent in a reasonable manner for certain purposes. Factors involved in this determination
1. Purpose and character of the use: here the sculpture was not to benefit the public at large, but
exclusively for commercial benefit of Koons. This does not help finding of fair use. Parody
argument is no good, cause the sculpture in no way directly refers to the photo, and cannot parody
something without referring to it.
2. Nature of the copyrighted work: not a work of facts, and so fair use is more difficult to sustain
under this aspect.
3. Amount and substantiality of the work used: look at the expression rather than the facts expressed:
here expression is copied nearly in toto.
4. Effect on the use on the market value of the original: most significant factor: here copy prejudices
the photo.
Comment:
-This is one of the seminal cases that one must understand, cause conceptually it really
sets out the idea/expression dichotomy, which is, by analogy, applicable in all three
regimes (CR, TM, Pat)

Michael Spence, "IP and the Problem of Parody", p. 159:

-Parodist is both a 'user' and a 'creator'. Accordingly this raises problems for IP protection of work.
-Parody here defined as "the imitation of a text for the purpose of commenting, usually humorously, upon
either that text or something else". Very inadequate definition, but workable for the purposes of legal
analysis.
-Parody may raise difficulties in many of the regimes protecting IP:
Copyright: parody will constitute an infringement if the parodist has taken a 'substantial part' of a
protected work. Possibility that a parody could be fair dealing for the purposes of criticism or
review is recognized, provided that a work of criticism or review must be accompanied by
'sufficient acknowledgement'. It will be sufficient if there is some identification of a person and
'any reasonably alert member of the relevant audience could identify that person as author'.
Moral rights: liability for false attribution of authorship or right to object to derogatory treatment.
Passing Off and TM: If associated with the original author or infringed the mark of said author.
More difficult cause to some extent rests on the confusion of consumers, which presumably a
 41

parodist is not relying on.

Registered design: if parody is not substantially different from a registered design.
-Because parody is legally problematic, maybe it should be afforded special protection. Justification of this:
1. Parody as a distinctive genre: Parody is special use of another's work and as such
deserves protection. Problem: what makes parody 'distinctive' such that it should be
protected where other forms of uses are not?
2. Parody as a problem of market failure: owner of a work has a strong motivation for
refusing to license, such as to protect his honour or reputation, he may not be prepared to
license a socially desirable use and the licensing system may no ensure that the work is
most efficiently exploited. Problem with market failure theory: fostering the
dissemination of text may be the primary goals of Copyrights, but certainly not of passing
off and moral rights.
3. Parody as a problem of transformative use: Parody ought not to constitute infringement if
the parody itself constitutes an original work for the purpose of disseminating new texts.
Same problem as in 2.
4. Parody as a problem of free speech: in order to comment upon a particular text or its
creator, to draw from that text itself. Problem: a text protected by an IP right has become
shorthand for a range of meanings for which no adequate alternative means of expression
exists (EX: Barbie to refer to objectification of women's bodies). Of course, this raises
issues in terms of protection of a person's reputation. May give rise to counter-claims of
freedom of speech from the original author (EX: Barbie as a doll or a word used in a
crusade over bulimia)
-Blanket protection of parody raises problems: what is parody, and should free speech prevail over IP?
-See p. 166 for argument that IP is not inconsistent with free speech.
-Might need to re-read the final section of this article, pp. 169-

Scope of TM:

Pink Panther Beauty Corporation (appel) v. United Artists Corporation (resp), Fed Ct
Can, Ct Ap, 1998, p. 173:
Facts: Resp is owner of TM "The Pink Panther", the film name and cartoon image associated with the Peter
Sellers films. Been in use for over 30 years and is well-known by the public at large. Appel wants to use the
name "Pink Panther" for beauty and hair care products.
Issue: How far the TMA will go to protect famous TMs where those marks are used in relations to
completely different wares or services.
Held: Allow appeal, no TM infringement.
Ratio:
Linden J.A.:
-Keeping in mind that what is important is that the TM be associated in the minds of the public with the
goods produced by the TM owner (i.e. the association of the TM with a particular source), the decision rests
on s. 6 of the TMA, which is the section dealing with the likelihood of confusion of consumers v-a-v
similar or identical TMs.
-Six factors to consider in this analysis:
1. The inherent distinctiveness of the TM or trade-names and the extent to which they have become
known
2. Length of time in use
3. Nature of the wares, services or business
4. Nature of trade
5. Similarity in appearance, sound and idea suggested
6. All the surrounding circumstances.
-The weight given to these factors will vary according to circumstances.
-AS the ultimate test is confusion, where one product does not suggest the other it will be a strong
indication that confusion is unlikely.
-here there is no likelihood of confusion: gaping difference in the nature of the wares and in the nature of
 42

trade.
McDonald JA (dissenting):
-Believes that it is precisely because of the fame and goodwill associated with the name "Pink Panther" that
the appel has chosen that name for its business. What the appel seeks to do is profit financially from the
goodwill associated with the resp's trade-name.
-When dealing with a widespread, distinctive TM it is not always necessary that the mark in question be
used for similar wares or in a similar industry for confusion to exist.
Comment:
-The question posed by the existence of IP regimes has been defined as one of where to draw the line
between the right to copy and the right to compete.
-What is being protected thru TM is not the exclusive right to any mark that a person might think of, but the
exclusive right to prevent others from using in association with certain products or services.
-Remember that the registration of a TM does not grant the registrant ownership of the words or images in
that mark, but the right to associate that mark with particular products or services.
-While I disagree with the outcome, I can see the majority's argument: if, lets say, the company had used
the name Pink Panther in relation to tires, or plumbing equipment, would there really be a chance of
confusion? However, I think the minority also has a point, def obviously chose name Pink Panther because
of goodwill associated with the films. So case is difficult to decide either way.
-This case is all about the status of a famous mark and how wide the scope of protection
can be depending on how well-known the mark is. Should the protection of the goodwill
that is attached to a famous mark be extended to products or services that are not directly
related to the present object of the goodwill (here should the goodwill associated with the
film Pink Panther be extended to whatever other products the holder of the Pink Panther
TM might get into, such as shoes, or lipstick or whatever)?
-PF United Artist argued: we have invested our mark with goodwill thru serious effort,
and we should be rewarded with the greatest/widest protection possible.
-The statute (TMA) talks of confusion with respect to consumers, and this is what the
court bases its decision on: the end consumer, will or could s/he be confused about the
origin of the product? Would or might s/he associate it with the film, even if the products
are beauty products?
-Court states that the more famous the mark, the likelier the confusion will be, but here it
was decided that there would be no confusion, the ultimate consumer would not believe
that the product was somehow connected to the film. Why? Because with respect to the
Pink Panther film, the mark is not just the name, but also the cartoon and the music that
accompanies it. Accordingly, because the beauty product company just wants to use the
name Pink Panther, the end consumer would not be confused. At least that's what the
majority says, but the minority disagrees, and in fact recognizes that the beauty company
chose the name Pink Panther precisely because it is well-known and people would think
of the film when they saw the beauty products (while I agree, one has to wonder why the
beauty company would want people to associate beauty products to Peter Sellers??)
-NOTE: the consumer confusion standard is a floating standard, and it is difficult to
predict how court will apply it.

-What type of activities can one prevent when one has a mark? Refer to Michelin and
BCAA

Compagnie Gnrale des tablissements Michelin-Michelin & Cie v. National

Automobile, Aerospace, Transportation and General Workers Union of Canada (CAW -
Canada) and Basil Hargrove and Larry Wark, Fed Ct, 1996, p. 192:
 43

Facts: Case about infringement of copyright and trademark. CAW tries to get workers of the Michelin plant
in Nova Scotia to unionize. Uses the image of the Michelin marshmallow-like figure on flyers and other
literature.
Issue: Does the use of the name 'Michelin' and of the figure constitute an infringement of copyright and or
TM?
Held: NOT an infringement of TM, but an infringement of copyrights
Ratio:
-Pf argued that word 'use' should be interpreted broadly and beyond the definition given to it in the seminal
case of Clairol.
-'Use' is defined in the TMA (ss. 19, 20, 22 in conjunction to ss. 2 and 4): in essence, to 'use' a TM is to
associate the TM with wares or services for the purposes of distinguishing the wares or services from those
of others. An infringement is therefore to use someone else's TM in a way that will lead to confusion on the
part of consumers and that will associate wares and services with the owner of the TM even if said wares
and services are not those of the owner of the TM.
-Meaning of 'use' is designed so that not all users of TM belonging to another person are caught within the
threads of the infringement provisions.
-The questions to ask are:
1. Did the def associate their services with the pf's TM?
2. Did the def use the mark as a TM for the purpose of distinguishing or identifying the def's services
in connection with the pf's wares or services?
-Here the CAW's 'use' of the name 'Michelin' and of the figure were not associated with the sale of wares or
services, and so the use was not 'use' in the sense of the word as defined in the TMA.
-Pf also argued that the use by CAW would depreciate the goodwill of the mark: rejected because the use
was restricted to employees of the plants, and not the public at large.
-Court found that the use of the name and the figure did violate Copyright of the pf.
Comment:
-Case is about the meaning of the word 'use' in the context of a TM: to use is to
associated the mark with a product or service. If used in another way, then not 'used'
in the sense of the TMA.

British Columbia Automobile Association v. Office and Professional Employees' Intl

Union, Local 378, 2001, BCSC, p. 203:
Facts: BCAA claims that the Union established websites in the process of a strike that violated TM and
copyrights, and that also constituted passing-off and depreciated the good-will associated with its TM.
Violation is concerning website design, shape, structure, colour scheme and lay out of the website,
placement of CAA logo, format, lay-out and colour scheme, meta-tags etc. Note that there were 3 different
Union websites.
Held: Violation of copyright, not infringement of TM, passing-off only for the first version of the Union's
website, no depreciation of goodwill, only nominal damages awarded.
Ratio:
-Def's rationale was to make their site similar to that of the pf so that search engines would make it popular
for those looking for the pf's site; it would attract them to visit the def's site thereby publicizing its strike.
This is precisely why the pf is upset: diverted traffic from its own site and also potential customers.
-Passing off: 2 possibilities:
either def has named, packaged or described its product or business in a manner likely to lead the
public to believe that the def's products or business is that of the pf, OR
def has promoted his product or business in such a way as to create the false impression that his
product or business is in some way approved, authorized or endorsed by the pf or that there is
some business connection.
-For a claim of passing off:
1. Existence of reputation or goodwill
2. Misrepresentation leading to belief in business connection. Actual proof of confusion is not
required, all that is required is the possibility of such confusion.
3. Damage or potential damage.
 44

-Current website: no misrepresentation that the Union site is a site of the pf or that it is endorsed, affiliated
with or connected to the pf. Fact that the site is not associated with the BCAA is quickly apparent from
looking at the site. Lack of competition (two are not in the same trade) was also significant.
TM:
-s. 22 TMA: no person shall use a TM registered by another person in a manner that is likely to have the
effect of depreciating the value of the good will attaching thereto.
-For claim to be successful, must prove:
1. Validly registered TM,
2. That the def has 'used' the TM
3. That such use is likely to have the effect of depreciating the goodwill attached to the TM.
-1: TM is validly registered.
-2: use is defined in s. 4 (wares and services). Statute requires that the offending use be a use in association
with wares and services and that contemplates an element of commercial use as identified in Clairol and
Michelin. Here this was not the case
-Idea behind 3: third party's use of a registered TM is likely to render the mark less extensive and thus less
advantageous by otherwise diluting the TM's effectiveness as a TM. Again here this was not the case.
-First Union site was found to be an infringement of copyright and a passing-off. But because no actual
damage or assessment of damage was shown, nothing but nominal damages are awarded.
Comment:
-Again case is about the meaning of the word use in the context of TMs.

-Both the above cases involve the use of the logo of an employer by a union in the
context of a strike. In Michelin, the logo was used on flyers (character Bibendum). In
BCAA, use of the meta-tags that are like those of the employer (also use of the imagery
scheme [colors, patters and so on] on the website)
-Same issue is involved: what kinds of activities constitute TM infringement? The TMA
says that the mark must be 'used'. But what is meant by the term 'use' in ss. 19, 20, 22?
More particularly, what is meant by the expression 'use in the context of a good or
service'?
-In both cases the court decides that there was no use of the marks. Why? Because the
unions were not attempting to sell a product or a service; rather they were trying to
communicate info on some event that was happening. This was a 'use' in terms of speech,
not a commercial use of the mark. This is not TM infringement, otherwise the mere
saying of the words Coca-Cola would constitute infringement.
-Thus the conclusion is that the simple invocation of TM words or images is not 'use' as
used in the TMA.
-This means that as long as one is not using the mark in a commercial context, one is OK.
And even if one is using the mark in a commercial context, this does not necessarily
mean that that 'use' constitutes infringement. There needs to be a depreciation of the
goodwill because the mark is associated with a product that is not in fact a product of the
owner of the mark. This does not mean that one cannot 'diss' a product, but rather that one
cannot dilute the association of the product and the mark in the minds of consumers.
-EX: Pepsi - Coca Cola: if one of them does a positive comparison (my product is as
good as) with the other product and in doing so uses the other's mark, then one is
diluting the mark and there is infringement. BUT if one does a negative comparison (my
product is better than) then there is no dilution, because the product remains distinct,
the mark remains distinctive, the goodwill between the mark and the product is not
affected.
-NOTE: TM is commercial in nature, non-commercial use is excluded from the operation
of TMs.
 45

-NOTE: copyright does not care about commercial/non-commercial distinction: mere

copying of the copyright, for whatever purpose, triggers infringement. This is why the
use of the Bibendum and other Michelin logos was an infringement of copyright but not
of TM.
-In all of this there is a concern with freedom of expression: the court does not want to go
so far as restricting people's right to express themselves (same concern is present in Pink
Panther). This may be one of the most significant reasons why TMs are inherently
commercial, and non-commercial uses are not infringements.

Scope of patents:

-Both of the following cases were decided by the SCC on the same day. Both involved
the same issue, namely what does one get when one has a claim for an invention with
parts A, B, C?
-To answer the above, in Canada we ask: what does the claim include, what is the scope
of the claim beyond A, B, C. To do so, we use the skilled reader (which is obviously a
legal fiction: a person that is deemed to have knowledge in the field, a person that
understands the particular technology involved). The pretense is that it is not the court
that is interpreting the claim. Of course this IS a fiction, and so what really happens is
that the court tries to put itself in the shoes of the skilled reader (someone skilled in the
art). The court does this thru expert testimony (which of course in many instances will be
contradictory).
-When the claim says A, B and C, what does this actually mean?
Use of the skilled reader as a dictionary: what would the skilled reader understand
A, B and C to mean?
Beyond A, B and C, did the claim also include D? Would the skilled reader
interpret the claim as including D? Is D unmentioned but implicit? SK fills in the
blanks.
Thus the SK provides meaning to the terms and interprets them.
SK essentially determines the essential and non-essential elements, and reads the
latter out so as to retain only what is necessary for the claim. Similarly, the SK
also reads-in elements that are not explicit in the claim but essential. Thus he
conducts a process of reading-in and reading-out. What the SK determines to be
essential to the claim is what may be subject to infringements.
This is called the purposive approach.
-Remember that a patent is a communicative device: it is used to tell people what they
can or cannot do with respect to an invention. A patent essentially says "this is the extent
of my invention"; anything that falls within the boundary of the description is no go, but
everything that is beyond is OK. This is done thru the eyes of the SK.
-In this context, note that there are 3 schools of thought, or 3 approaches to
interpreting a patent infringement:
Europe: what did the inventor think the claim covered? Spirit of the invention
approach
Canadian, India, Australia and other Commonwealth countries: purposive
approach as per above.
 46

USA, China, Japan: doctrine of equivalence: look at the language of the claim
and the device that is supposedly infringing: are they essentially the same, are all
the elements the same or so near as they seem to be the same? If one element is
missing, then there is no prima facie infringement. Court would then look at the
various elements to see if the inventions are substantially the same Here there is
no discussion of essential and non-essential elements.
-NOTE: the SK is frozen at the time the application is open to the public, that is to say 18
months after the submission of the claim. This is because after the patent is disclosed,
SK's knowledge is modified.

Free World Trust v. lectro Sant, SCC, 2000, p. 221:

Facts: Free World 2 patents over apparatus that bombards different parts of the human body with low
frequency electro-magnetic waves. Patent is over the method of controlling the amplitude and frequency of
the electromagnetic waves by 'circuit means' with desirable and beneficial effects. Electro Sante's apparatus
achieved similar results but employed somewhat different technology.
Issue: Electro Sant argues that (1) Patents not valid by virtue of anticipation, (2) No infringement of the
patents even if valid.
Held: (1) Patent is valid, but (2) there was no infringement.
Ratio:
(1) There was no anticipation, no document found 2 years prior to patent application that would allow a
person of ordinary skill and knowledge in the field to understand, without access to the 2 patents, 'the
nature of the invention and carry it into practical use without the aid of inventive genius but purely by
mechanical skill.'
(2)
-Essence of this case is the extent to which a patent monopoly protects the substance or the spirit of an
invention, as distinguished from what is literally described in the written claims.
-Appellant concedes that the respondent's machine is not precisely as described in the written claims of its
patent. Argues that the resp have stolen the substance of its invention.
-Predictability is achieved by tying the patentee to its claims, fairness is achieve by interpreting those
claims in an informed and purposive way.
-How to solve the tension between literal infringement and substantive infringement: this is where the court
must make a distinction between essential and non-essential elements based on the skilled reader's test.
-For an element to be considered non-essential and thus substitutable, it must be shown that either (i) that
on a purposive construction of the words of the claim it was clearly not intended to be essential, or (ii) at
the date of publication of the patent, the skilled reader would have appreciated that a particular element
could be substituted without affecting the working of the invention.
-Here 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 achieves the
desirable result. Patent was over a magnetization coil being stationary during treatment; this was explicitly
stated in the claim. As the resp's apparatus incorporates a coil that is not stationary, there is no infringement.
Comment:
-Patent protection rests on the concept of a bargain between the inventor and the public. In return for
disclosure of the invention to the public, the inventor acquires for a limited time the exclusive right to
exploit it.
-Patent system is designed to advance research and development and to encourage broader economic
activity. Achievement of these objectives is undermined however if competitors fear to tread in the vicinity
of the patent because its scope lacks a reasonable measure of precision and certainty.
-Case deals with the purposive approach to interpreting patent claim: determine the essential and non-
essential elements of a claim, and consequently the extent of it.

Whirlpool Corp v. Camco Inc (appel), 2000, SCC, p. 234:

Facts: In 1970s, Whirlpool developed an ingenious dual action agitator for clothes washing machines. Led
to obtaining 3 patents, the latter two being for a part of the machine that was fixed and one for the same part
 47

but flexible.
Issue: Appel argued that: (1) patents 2 and 3 constituted double patenting because the invention set out in
its intermittent drive claims corresponded with the invention set out in the claims of the earlier patent. (2)
Alternatively, the second patent is not valid because the modification was an obvious and non-inventive
variation.
Held: Appeal is dismissed.
Ratio:
-(2) First step in a patent suit is to construe the claims. The 'purposive construction' approach is adopted for
both validity and infringement issues. This requires the identification by the court, assisted by the skilled
reader, of the particular descriptive words or phrases in the claims that describe the 'essential' elements of
the invention. This advances the objective of an interpretation of the patent claims that is reasonable and
fair to both patentee and public. Here the trial judge did find that the patents were good, and that the 'fixity'
requirement in patent 2 and the 'flexibility' requirement of patent 3 were essential elements of the claims.
-(1) Prohibition against double patenting: 2 possibilities:
1. How identical the claims must be in the subsequent patent to justify invalidation: sometimes called
the "same invention" double patenting. Here subject matters were not the same.
2. "Obviousness" double patenting: more flexible and less literal test that prohibits the issuance of a
second patent with claims that are not 'patentably distinct' from those of earlier patent. Trial judge
was not given sufficient proof to displace the presumption of validity in the PTA
Comment:
-Again case is about the scope of patents and the purposive approach. Also deals with
the 2 possibilities involved in double-patenting.
-In this case, the holder of the patent, Whirlpool, is presenting an argument that is
contrary to the usual one: instead of arguing that the scope of the patent should be greater,
it is arguing that the scope should be limited to the words used in the claim. Why?
Because there is an issue of double patenting; the limited scope of the first patent would
allow the second patent to be valid. Why does it want this? Because the first patent had
expired. Def was saying that the second patent was essentially the same as the first, that
the second was therefore double patenting and not valid. If this was the case, then since
the first patent had expired, they would not be infringing.

Monsanto Canada Inc v. Schmeiser (appel), 2004, SCC, p. 258:

Facts: Resp are the licensee and owner of a patent that discloses the invention of chimeric genes that confer
tolerance to glyphosate herbicides. Canola containing the patented genes and cells is sold by resp. Appellant
grows canola commercially in Sask. Never obtained permission to plant resp's canola. Test shows that
appel's canola crop is 95-98% that of resp.
Issue: Resp bring action for patent infringement.
Held:
Ratio:
McLachlin CJ and Fish (with 3 others):
-Patent is valid. Resp did not claim protection of the genetically modified plant itself, but rather for the
genes and the modified cells that make up the plant.
-To determine if the appel 'used' the resp's patent as per s. 42 of PTA, ask: whether the def's activity
deprived the inventor, in whole or in part, directly or indirectly, of full enjoyment of the monopoly
conferred by law.
-It is not bar to a finding of infringement that the patented object or process is a part of or composes a
broader unpatented structure or process (here the plant).
-Possession of a patented object or an object incorporating a patented feature may constitute 'use' of the
object. Possession, at least in commercial circumstances, raises a rebuttable presumption of 'use'.
-Here the appel's saving and planting the seed, then harvesting and selling plants that contained the patented
cells and genes was a use within the meaning of the term in s.42.
-Case law shows that infringement is established where a def's commercial or business activity involving a
thing of which a patented part is a component necessarily involves use of the patented part. Infringement in
 48

this case therefore does not require use of the gene or cell in isolation.
-Resp chose accounting of profit remedies: since profit of appel was not higher than they would have been
without the use of the patented cell, resp gets nothing (this is the part of the appeal that was allowed).
Arbour J (and 3 others) dissent:
-Plants as higher forms of life are not patentable. Purposive approach leads to the conclusion that the
'essential elements' of the claim cover the genes and plant cells but not the plant and its offspring.
-Use: is limited by the subject-matter of the invention, and that any acts for a purpose whether foreseen or
not by the inventor may constitute an infringing use. Knowledge element should not be incorporated in the
definition of 'use' since it is a settled issue in Canadian patent law that intention is irrelevant to
infringement. If the person's acts interfere with the exclusive rights granted by the patent, then there is
infringement.
-Lower court erred in construing 'use' to include the use of subject-matter disclaimed by the patentee,
namely the plant.
-Appel, as user was entitled to rely on the reasonable expectation that plants, as unpatentable subject-
matter, fall outside the scope of patent protection.
-Accordingly, the cultivation of plants containing the patented gene and cell does not constitute an
infringement.
Comment:
-Plants and other forms of life cannot be subject to a patent.
-Patent right provides right to exclude others from the use of the patent in whatever form, even if the patent
is incorporated into something else.
-NOTE: for policy reasons, one cannot claim a patent over plants or animals.
-This case, much like Whirlpool and Free World Trust, is about the scope of patents.
Here however, there is also a consideration of the role of the SK.
-The patent claim, Monsanto argues, covers anything that contains/incorporates the patent
(would cover a plant if said plant includes the genes) even if the patent is not on the thing
itself (not on the plant itself). Majority accepts this, which results in significant tension
since one cannot patent a plant.
-Dissent argues that the SK would be aware that a plant cannot be patented, and so would
not allow a claim to effectively, even if not officially, cover a plant. This is the only
reasonable conclusion the SK could reach. Such a conclusion by the dissent is pushing
the boundary of the role of the SK, cause the SK is no longer limited to interpreting the
elements included or excluded in the patent, but to what can be patented or not.
-As a result of this case, with a patent one gets coverage for everything that is the patent
itself or which incorporates the patent.
-Court also observes that in terms of using something patented, intention is irrelevant: if
one uses the patent, whether intentionally or not, one is guilty of infringement. There is
one caveat: if one can demonstrate that one never wanted/intended to use the patent, that
one did not know about the patent and the fact that one was using it, and that when one
became aware that it was using the patent and took positive steps to get rid of the patent,
then one could not be held to have used the patent. This is the only narrow situation
where intention would be considered in determining the use of the patent.

Judith Robinson & Sbastien Jett, "La protection des secrets commerciaux en dehors
de la relation employeur-employ", p. 290:
-Droit exerce une emprise curative sur la protection des secrets commerciaux: a posteriori remde.
-Au Qubec:
CCQ ne dfinit pas la notion de secrets commerciaux.
Dfinition ne se limite pas qu'aux secrets de fabrique, car ce serait trop restrictif. Par exemple,
exclurait les informations commerciales stratgiques secrtes.
Personne victime peut recourir art 1458 ou 1457
 49

Droit la protection des secrets commerciaux: dcoule droit la vie prive, devoir de bonne foi,
droit de la proprit de l'information elle-mme.
Responsabilit contractuelle: au stade des ngociations (entente de confidentialit qui est elle-
mme un K), durant la vie du K (clause de confidentialit incorpore au K) ou encore aprs la vie
du K (clause non-disclosure)
2 articles qui ont attrait aux secrets commerciaux: arts 1472 (exonration sur base de l'intrt
public) et 1612 (facteurs considrer lors de l'valuation des dommages pour divulgation de
secrets commerciaux)
Responsabilit X-K: lors d'espionnage industriel, lors de ngociations non gouvernes par entente
de confidentialit (dcoule alors de la bonne foi et de la loyaut, voir Lac Mineral)
Cour dans Tri-Tex a dcid qu'il n'est pas possible de faire une saisie d'un secret commercial avant
jugement comme si c'tait un bien.

Exceptions:

-How do we understand the boundaries defining the scope of a right?

-Recall CCH Canadian Ltd: in this case one could argue that we are looking into the
justifications for taking away part of a right, but the court disagrees with this perspective.
Fair dealing defense is not taking away from the holder part of his/her right of protection,
but rather suggests that what is covered by fair dealing was never part of the right given
to the holder; his/her right never included what is in the sphere of fair dealing.
-This leads to conclusion that the rights granted are inherently limited because what is
given is only what is useful for the particular objective sought. Limitations are not taking
away from what was granted to the holder, but rather looking at what was never given.

Fair dealing:
-How do we assess what is fair dealing, how can we justify fair dealing (criterions are in
CCH Canadian Ltd case, at para 53):
Purpose of the dealing (research, criticism),
Character of the dealing (how did you use it, multiple copies or just one?),
Amount of the dealing (trivial or substantial?)
Alternatives to the dealing (get to same result without copying, alternatives that
are as good?)
Nature of the work (published or not?)
Effect of the dealing on the work (interfered with mostly economic interest of the
holder? This is one of the most significant factors of consideration)
-Court also considers question of standing: who can claim fair dealing defense, and
against whom can the claim be made? Remember CCH Canadian Ltd: here the library
was not doing the copying, its customers were. Can the library be held responsible for the
actions of its users? In this context, also refer to Society of Composers.
-NOTE: fair dealing involves not only the people doing the copying, but also those that
assist them. This is the logic why the library could perhaps have been held responsible.
-Here the library could not be held responsible for infringement (if there were in fact any,
which was not admitted) because its dealing with the material was fair: providing the
material for research.
-NOTE: Fair use: an equitable doctrine that tries to determine when a use ought to be
allowed. This is discussed in Rogers v. Koons. Essentially an American equivalent to fair
dealing.
 50

-Fair use is a USA doctrine, but note that since decision in CCH Canadian Ltd, the
American and Canadian doctrines are becoming closer to each other.
-There is no inherent limit to fair use, but fair use is disallowed when more of the work is
copied than is necessary. Also consideration of the economic impact that the use of the
work entails.
-Criterions in USA and Canada are fairly similar in determining if a use/dealing is fair,
except in USA dont have specific factors outlined.
-Fair use/dealing is one kind of exception.

Society of Composers, Authors and Music Publishers of Canada v. Canadian

Association of Internet Providers, 2004, SCC, p. 295:
Facts: Respondent (Society) is a collective society which administers in Canada the copyright in music of
Canadian members and foreign members of counterpart societies. Want to collect royalties from Internet
Service Providers (ISP) located in Canada because, it argues, they infringe the copyright owner's exclusive
statutory right to communicate the work to the public by telecommunication and to authorize such
communication. Appellants argue that they neither communicate nor authorize anyone to communicate
musical works because they are merely a conduit and do not regulate the content of the Internet
communications which they transmit.
Issue: Who should compensate musical composers and artists for their Canadian copyright in music
downloaded in Canada from a foreign country via the Internet. Can ISPs be held responsible for the music
that is freely downloaded?
Held: Unanimous (9 member court) on the outcome, 1 disagreement on some justification: NO, ISP cannot
be held accountable.
Ratio:
-In 1988, Parliament added what is now known as s. 2.4(1)(b) to the CA which provides that persons who
only supply "the means of telecommunication necessary for another person to so communicate" are not
themselves to be considered parties to an infringing communication.
-ISPs other than content providers did not constitute 'a communication' for the purpose of the CA and thus
fall within the protection of s. 2.4(1)(b)
-By enacting s. 2.4(1)(b) Parliament made a policy distinction between those who use the Internet to supply
or obtain content such as 'cheap music' and those who are part of the infrastructure of the Internet itself.
Parliament decided that there is a public interest in encouraging intermediaries that make
telecommunications possible to expand and improve their operations without the threat of copyright
infringement. ISPs are not 'users' for the purposes of the CA.
-So long as an Internet intermediary does not itself engage in acts that relate to the content of the
communication, but confines itself to providing a conduit for information communicated by others, then it
will fall within s. 2.4(1)(b).
-NOTE, however, that ISPs are no immune from copyright liability: if it acts as a conduit (content-neutral)
for communication, then it is OK, but if it somehow plays around with the info it is communicating, then it
is not OK.
-An ISP's knowledge that someone might be using content-neutral technology to violate copyright is not
necessarily sufficient to constitute authorization, which requires a demonstration that the def did give
approval to, sanction, permit, favour, or encourage the infringing conduct.
LeBel: agrees with outcome save this comment: "given that Parliament did not intend the Act to have effect
outside Canada, an Internet communication only occurs within Canada where it originates from a host
server located in Canada."
-The essential question was: can ISPs be held responsible for what people download?
Can they be held responsible for their user's infringements on the basis that they provide
the conduit thru which users might infringe? (Note also that to copy a work of music on
personal storage device may not be an infringement: refer to s. 88)
 51

-s.2.4(1)(b): this is an explicit exception in the Copyright Act for purposes of

telecommunication: if one is merely providing the means for the telecommunication, then
one is not actually communicating and therefore cannot be held to infringe.
-NOTE: for internet purposes, if the communication originate or if the end user is in
Canada, than we are dealing with communication in Canada and Canadian copyright laws
apply.
-This case reinforces the notion that limitations/exceptions are not after-thoughts, they are
part of the reason/logic why the right was given in the first place. The rights must be read
in conjunction to the exceptions/limitations in order to define the scope of the right: this
does not involve taking away from the right of the holder, but rather is all about balancing
the interest of society and the holder of the right.

Kirkbi AG v. Titvik Holdings Inc. (Lego), Fed CA, 2003, p. 327:

Facts: Lego blocks: patent for 50 years. After patent expired, Lego attempted to acquire another form of
protection thru the law relating to TMs. This is referred to as the "Lego Indicia TM": argues that the
shaping of the knob configuration of Lego products constitutes a 'distinguishing guise' and thus a TM under
the Act. Note that the TM is not registered.
Issue: whether a TM which is primarily functional in nature can sustain an action for passing-off under para
7(b) of the TMA?
Held: dont know.
Ratio:
-Issue of functionality: "it would be unfair to the public if a patentee could, after the expiry of its patent, use
the TMA to give itself a monopoly over the shape of its invention when that shape is so closely related to
the invention as to be for all practical purposes an element essential to making full use of the invention"
Sexton JA: (dismiss appeal)
-No question that the TM, even if it is valid, is purely functional. But refer to issue:
-Does not believe that to be a valid TM within the Act, the mark/distinguishing guise can be primarily
functional.
-Purpose or policy behind applying this doctrine of functionality is to ensure that no one indirectly achieves
the status of patent holder thru the guise of a TM. Since a TM has the potential of being perpetual, then
person would have essentially perpetual patent: this would be unfair to consumers and competitors.
-That a mark is functional in some aspect is not a problem: it must not, however, be primarily functional
(from Pizza-Pizza)
-Argues that this applies to both registered and unregistered TMs, no reason to make a distinction between
the two, and in this case TM is no good, cause primarily functional.
-Appellants are trying to do exactly what the policy choice tries to prevent: perpetual patent thru TM.
Pelletier JA: (allow appeal)
-Disagrees that because a distinguishing guise is functional it cannot serve as a TM: it can indeed do so but
only for unregistered TM, and not registered one. This comes from the difference in action/remedy/purpose
between registered and non-registered TMs.
Unregistered TM: Protects only the exact copy of the TM. If other elements are present such that it
becomes obvious that the source of the product/service is not the owner of the TM, then no
problem. This is essentially an action in passing-off.
Registered: Protects the use of the TM, no matter if other elements are present, if there is possible
confusion, then its no go. Registering also facilitates evidentiary burden.
-For unregistered TM, we can accept that the functionality of a distinguishing guise is not an impediment to
the validity of guise as TM since only exact copies that have no element whatsoever of distinction would be
subject to an action of passing-off. This in itself would not lead to evergreening (extension of patent
monopoly by successive registrations of minor improvements, or, in this context, the extension of patent
rights by the use of TM law)
-Accordingly, an action in this case can be brought under s. 7(b) of the TMA, as all the elements of passing-
off in are present: 1) existence of good-will, 2) misrepresentation, 3) actual or potential damage to pf.
Comments:
 52

-Case discusses the notion of conversion of patent into TM, unregistered/registered TM, functionality as an
impediment to TM.

-Same logic with TM as above with copyrights: the right is inherently limited, the right
only extends to what is granted, and in order to define the scope of the right, one must
determine what the exceptions/limitations are.
-Argument was that the interlocking parts of the Lego block constituted a TM: identified
in the minds of consumers with Lego company. The interlocking parts are a
distinguishing guise, so Lego argues, and are therefore subject to unregistered TM.
-This is, to some extent, the same kind of argument as in Linoleum, although in the latter
case there was the additional problem that the name of the particular product was also
the name of the product in general.
-Dissent accepts that there was confusion on the parts of consumers, and that passing-off
had occurred. This is based on the recognition of an unregistered TM over the
interlocking system.
-Majority disagrees essentially on the issue of functionality: interlocking system is not a
random signifier, it is used for a purpose. Accordingly, if we allow Lego to have TM on
that system, then we are effectively granting them a patent. They once had a patent, but it
had expired. To allow them to have another one would be abusive and unfair to
consumers and competitors, and would breach the essential K purpose of patents:
exchange of info for absolute protection but only for a limited time.
-NOTE: Mark must be primarily functional, not just functional in some respect, to
disallow a TM.
-From this case it becomes obvious that patents and TMs can sometime covers the same
goods (remember again Linoleum): problem is that patents are inherently limited in time,
whereas TM are possibly perpetual.
-In response to the above, court says that when the thing is primarily functional, then it
falls under patent law, not TM law.

Public Policy limitation/exception:

-Does public policy impose limitation on licensing? Refer to Gillat

-Compulsory licensing is when a state grants itself a right to grant use: normally a fee is
payable for compulsory licensing, but this fee is not always keeping in proportion to the
actual revenues an innovator could make by not licensing and selling product by
him/herself.
-NOTE: when granted a patent, one can choose not to use or produce or sell or license
the right to do so. Compulsory licensing is in response to this.
-Compulsory licensing can be v-a-v patents, copyrights and TMs
-Canada has a compulsory licensing scheme
-Reasons for CL:
Anti-trust concerns: competition, at times, is unfair, and so granting the right to
produce to greater number of producer re-stabilizes the market.
National emergency/concern: such as national defense: may be necessary to force
the hand of an innovator for greater good.
If one product is dependent on another, where the first product is useless without
the use of the second.
 53

Intl emergency: Aids crisis in Africa for example (v-a-v treatment)

More generally, CL is about striking a balance between public access and the
rights of innovators.
-Here, unlike in the case of fair dealing, the exception/limitation, i.e. public policy, is
external to the scheme of the acts themselves.
-Another example of CL: it is permitted, prior to the end of a patent, for generic
producers to study and produce limited quantities of the product patented in order to
make sure that the generic versions will meet standards once the patent is over (cannot
produce on large scale however, as was decided by WTO)

Adi Gillat, "Compulsory Licensing to Regulated Licensing: Effects on the Conflict

between Innovation and Access in the Pharmaceutical Industry", p. 350:
-Balancing public interest and private property rights on one hand, and the interest in affordable public
access to products of innovation on the other hand, is one of the most basic conflicts underlying innovation
policy. Compulsory licensing is perhaps the most dominant mechanism that is expressly allowed under the
current international patent protection standard set in the Agreement on Trade Related Aspects of
Intellectual Property (TRIPS), as ex-post limitation of valid patent rights for the purpose of achieving such
balance.
-Traditional proposition under American patent law is that the patentees are not obliged to license their
patents, or even use them.
-American law, however, traditionally is hostile to the idea of compelling use or licensing of patent rights
because of the adverse effects such schemes have on innovation.
-Variation on the compulsory licensing theme is the concept of 'regulated licensing'.
-Compulsory licensing is a right granted by a govt agency to exploit a patent without the patentee's
authorization. This serves the purpose of balancing public interest in access to innovation with private
concerns in patent rights and the public interest in providing incentives for innovators in the form of such
private property rights. Hostility of American law to compulsory licensing is based on an awareness that
imposing a duty to license on an entity who invested resources into the innovation that has given rise to its
market advantage might serve to chill innovation and development. Note however, that despite this
hostility, US law does apply several constraints on a patent owner's prerogative in using and licensing its
rights, or refusal to do so.
-Compulsory licensing acts to shorten the exclusivity period granted to the patent owner, thus limiting the
potential economic gains expected in the case of an innovation's technical and commercial success. On the
other hand, compulsory licensing decreases prices, and thus enhances public access to the innovative
product.
-An alternative to compulsory licensing may be regulated licensing, but only in cases where the existence
of barriers to competitive entry other than patent protection diminishes the dependency of the innovating
entity on the exclusivity granted under a patent right. For example, where the costs of getting into a
particular industry is such that not many actors will enter, regulated licensing would make the product more
readily available at a lower price (because there would be more than one provider), but will not rob the
innovator of profits (because not that many producers will be around), and so a balance of the interests of
the public and the innovator will be struck.
-Thus the existence of barriers to competitive entry, other than patent protection, diminishes the
dependency of the innovating entity on the exclusivity granted under a patent right. In such cases where
alternative entry barriers exist, intrusion upon the patent right will have a less harmful effect on incentives
to innovate.
Conclusions:
Regulated licensing may be an appropriately cautious tool, enabling both restoration of
competition and maintenance of affordable public access to innovation, while not seriously
threatening innovation incentives.
Regulated licensing, involving the consent of the innovator and his participation in determining
the royalties to be paid under the licensing scheme, largely mitigate the sensitivities of compulsory
licensing, while achieving lower prices and affordable public access to the inventions.
 54

Jan Thompson, "Report of the Committee on Inquiry on the Case Involving Dr. Nancy
Olivieri, the Hospital for Sick Children, the University of Toronto, and Apotex Inc.", p.
380:
-It is in the public interest that physicians be obligated to inform their patients of possible harm from
treatments, whether experimental or not, and that clinical researchers be free to communicate findings of
unexpected risks to trial subjects and others with a right or need to know.
-The present case shows that existing policies are inadequate to protect these interests from improper
pressures by industrial sponsors of research. In this case, a drug manufacturer, Apotex, attempted on the
basis of a K to prevent a clinical professor of medicine, Dr. Olivieri, from fulfilling her obligations and
exercising her rights.
-Apotex's legal warnings were issued principally on the basis of the confidentiality clause in the K for the
randomized comparison trial, which had a one-year post-termination communication ban.
-Professor Soberman (prof of law at Queen's), argues that in light of the jurisprudence: "to the extent that it
prohibits a physician from disclosing to a patient information that the physician has acquired pursuant to
her research (or otherwise), the clause is illegal and void if there is material or significant risk to the
patient."
-The documentary record shows that Dr. Olivieri had a reasonable basis for her concerns. Thus it appears
unlikely that any court would have enforced the confidentiality clause Kin the circumstances central to this
case: disclosing identified risks to patients being treated with the drug.
-Nevertheless, the protection afforded to Dr. Olivieri on the basis of public policy was inadequate, and we
see the tension between public policy as a limitation/exception to IP rights.

Report of the Committee of Inquiry on the Case Involving Dr. Nancy Olivieri, the
Hospital for Sick Children, the University of Toronto, and Apotex Inc, p. 384:
SKIPPED

-Both of the above address the issue of public policy limitation to licensing and more
generally IP rights. Should the well being of society override IP rights? Should significant
advantages that could accrue to society should the licensing be restricted override IP
rights? In both cases, I would say yes, and thus public policy can serve as a limitation
device on IP rights.
-From all of this it is clear that there are various forms of limitation/exceptions that exist.

Remedies:

Cadbury Schweppes v. FBI Foods, 1999, SCC, p. 432:

Facts: Appel and predecessors manufactured Clamato for sell in Canada under license from USA
respondents. Resp terminated license. Appel thereafter misused confidential info related to the Clamato
recipe obtained during the license period to continue to manufacture a rival tomato-based drink.
Issue: Appropriate remedies for breach of confidence in a commercial context.
Held:
Ratio:
-NOTE: appel did not receive the confidence from the resp, but from a now defunct third party. The receipt,
however, was burdened with the knowledge that its use was to be confined to the purpose for which the info
was provided, namely the manufacture of Clamato under license.
-NOTE: court observes that the nature of the info may have significant influence on the appropriate remedy.
-NOTE: this is a case about unauthorized use as opposed to unauthorized disclosure.
-In Lac Minerals, court characterized an action based on breach of confidence as sui generis.
-Resp argue that the policy objectives underlying patent protection apply to breaches of confidence in a
commercial case, where trade secrets constitute the subject matter of the wrongful use or disclosure.
 55

-Court does not believe that a reliance on IP law is of much assistance here: it ignores the bargain that lies
at the heart of patent protection. A patent is a statutory monopoly which is given in exchange for a full and
complete disclosure by the patentee of his or her invention. The disclosure is the essence of the bargain
between the patentee, who obtained at the time a 17 year monopoly on exploiting the invention, and the
public, which obtains open access to all of the info necessary to practice the invention. If a court were to
award compensation to the respondents on principles analogous to those applicable in a case of patent
infringement, the respondents would be obtaining the benefit of patent remedies without establishing that
the invention meets the statutory criteria for the issuance of a patent, or paying the price of public
disclosure of their secret.
-Thus with respect to an action based on a breach of confidentiality, it may not be appropriate to have a
proprietary remedy.
-Ultimate finding: calculate the amount of compensation required to restore to the respondents what the
respondents have lost as a result of the appellants' breach of confidence.
Comments:
-Case is really about what is the kind and nature of the remedy afforded to a breach of confidence, as this is
not covered under IP law (patent, copyright, trademarks).

Property and its Limits:

A) Property

John Moore v. The Regents of the University of California et al., Supreme Court of
California, 1990, pp. 109-119.
Facts:
-Moore had hairy cell leukemia and had cells removed as part of the treatment. Cells were then used by
doctors, without Moores permission, to do research. This research led to a patent and was sold lucratively.
Moore is alleging (1) the breach of a physicians disclosure obligations his fiduciary duty and (2)
conversion the wrongful possession of anothers property as if it were his own (dtournement de bien).
Issue: Are Moores cells his property, thus allowing him to claim conversion (a Common Law tort that
protects against interference with possessory and ownership interest in property)?
Held: Moore did not have a claim for conversion, but did win with respect to Golds breach of fiduciary
duty.
Ratio:
-Appellant did not expect to retain possession of his cells following their removal. To sue for conversion he
must have retained an ownership interest in them.
Majority arguments:
(1) once something is removed from ones body, one no longer retains an ownership interest in it. (2) the
policy argument states that if usage of cells constitutes a property violation, research will be significantly
hindered
(3) California Statute limits patients control over removed cells,
(4) The cell line are an invention and consequently, legally distinct.
Minority: Says what if the cells had been stolen by another research facility, conversion could be claimed
by UCLA. So majority cant say that cells are not property. The patient does have the right to decide
what to do with body part once removed (taken from the Uniform Anatomical Gift Act which allows
you to choose what to do with organ).
Comments:
-In Quebec, this could have been solve using art 22: the article aims for the protection of the integrity of the
person.
-In the context of this class, this case is significant for its discussion of what is property, what may qualify
as property and what may not.
NOTE: DID NOT READ, USED CIVIL LAW PROP SUMMARY
 56

Gould Estates v. Stoddart Publishing, 1996, Ont Ct Gen Div, p. 451:

Facts: In 1956, Glenn Gould has conversation with Jock Carroll (who also took pictures of Gould) for the
purposes of an article in Weekend Magazine. 40 years later, after Gould is dead, Carroll publishes a book
on Gould using some of the pictures and notes of the conversation.
Issue: Estate of Gould seeks damages, claiming: 1) use of the pictures amounts to the tort of appropriation
of personality, the cause of action for which may be asserted by the estate, and 2) copyright in the oral
conversations recorded by Carroll rests with Gould (and now the estate) and as such the conversations may
not be used without the permission of the estate.
Held: both claims dismissed.
Ratio:
-NOTE: it is undisputed that Carroll has the copyrights over the pictures.
-1) Estate argues that Gould was always a private individual and secretive about is private life, and as such
would never have authorized the subsequent use of the pictures.
-Tort of misappropriation of personality also exists in the USA under name 'right of publicity'.
-Since the pictures are used in a book and the act of selling the book is commercial exploitation, then use of
pictures of Gould constitutes appropriation of his personality.
-Essential issue (from USA point of view): "the purpose of the portrayal in question must be examined to
determine if it predominantly serves a social function valued by the protection of free speech. If the
portrayal merely serves the purpose of contributing info, which is not false or defamatory, to the public
debate of political or social issues or of providing the free expression of creative talent which contributes to
society's cultural enrichment, then the portrayal generally will be immune from liability. If, however, the
portrayal functions primarily as a means of commercial exploitation, then such immunity will not be
granted."
-In this context, if the work only uses the personality of the celebrity for commercial purposes, then it
amounts to exploitation. BUT if the work is about the celebrity (such as biography), then it is protected
under free speech. Here the book is about Gould (the man and his music), and so does not fall in the ambit
of the tort.
-NOTE: this right of publicity outlives the death of the celebrity, as it is a form of intangible property, akin
to copyright or patent. But this comment is obiter.
-2)
-Pf submits that spoken words are contemplated within the definition of 'literary works' of s. 5(1) of
Copyright Act.
-This argument runs counter to judicial decisions which have held that for copyright to subsist in a work, it
must be expressed in material form and having a more or less permanent endurance.
-A person's oral statements in a speech, interview or conversation are not recognized in that form as literary
creations and do not attract copyright protection. The person who makes notes or report of the speech is the
author of the report and obtains copyright in the report.
-Here Gould was making offhand comments that he knew would make their way to the public domain.
Conversation was casual, and this is not the type of discourse the CA was intended to protect.

Gould Estates v. Stoddart Publishing, 1998, CA, p. 458:

Facts: Same as above.
Issues: Whether the resp Carroll was entitled, for his own exclusive benefit, to later exploit commercially
the photographs he took of Gould in 1956 and to use his notes and tapes of his interviews at that time to
write other articles on Gould notwithstanding that such later use of the photographs and interviews had
never been discussed with or agreed to by Gould or his successors or assigns.
Held: Agrees with the outcome in lower court, but for different reasons. Appeal dismissed.
Ratio:
-NOTE: lower court never took into consideration that there existed a K between Gould and Carroll
-Court decides the case on conventional principles relating to copyright. The motion judge addressed
Gould's right to preserve his privacy and exploit commercially his own fame, whereas I would address the
proprietary rights Carroll had in the photographs and other material created by Carroll in 1956 and again in
1995.
-Focus of this court is on copyrights. In this context, Gould clearly consented to the pictures being taken
and to the continuing interviews with Carroll. There was no K, implicit or explicit, between them. Only
 57

question is whether Gould or his agent imposed any limitation on that consent. Record does not disclose
any such limitation.
-NO evidence that the material that came out of the encounter between Gould and Carroll would be limited
to the article written for Weekend Magazine.
-Carroll is the author of the pictures, and also the captions under them. Since this essentially is the book,
there remains no issue to deal with.
-Conclusion: Once Gould consented, without restriction, to be the subject-matter of a journalistic piece, he
cannot assert any proprietary interest in the final product nor can he complain about any further
reproduction of the pictures nor limit the author of the journalistic piece from writing further about him.
-The above two cases deal with the limit of proprietary rights: how extensive are they,
what happens when they are assigned, does one retain right to decide the way in which
property is subsequently used when right is ceded etc.

B) Entitlements and Enforcement of Entitlement

Guido Calabresi & Douglas Melamed "Property Rules, Liability Rules, and
Inalienability: One View of the Cathedral", p. 464:
-Whenever a state is presented with the conflicting interests of two or more people, or two or more groups
of people, it must decide which side to favour; the fundamental thing that law does is to decide which of the
conflicting parties will be entitled to prevail. This is done thru entitlements.
I. Three types of entitlements:
1) Entitlement protected by property rule: whoever wishes to remove the entitlement from its holder
must buy it from him/her in a voluntary transaction in which the value of the entitlement is agreed upon by
the seller. State intervenes only to determine to whom the entitlement will go. Least amount of state
intervention.
2) entitlement protected by liability rule: may destroy the initial entitlement if he/she is willing to pay an
objectively determined value for it. Additional stage of state intervention; value is determined by state, not
by parties.
3) inalienable entitlements: transfer is not permitted between willing buyer and seller. State intervenes to
determine who is entitled, the compensation if the entitlement is taken or destroyed and to forbid its sale
under some or all circumstances.
-Issues: (1) Under what circumstances should we grant a particular entitlement? (2) In what circumstances
should we decide to protect that entitlement by using a property, liability or inalienability rule?
II. Entitlements are set for reasons of
(1) Economic efficiency (2) distributional preferences (3) other justice considerations.

1) Economic efficiency:
Simplest reason for granting a particular entitlement: minimizing administrative costs of enforcement.
Pareto optimality: economic efficiency asks that we choose the set of entitlements which would lead
to that allocation of resources which could not be improved upon in the sense that a further change
would not improve the condition of those who lost the entitlement and those who gained it. No matter
what the distribution is within the group; as long as those who are better off could theoretically
compensate the less-favoured, then Pareto optimality has been reached
It is argued that, if there are no transaction costs, i.e., perfect knowledge and the absence of any
impediments or costs of negotiating (no freeloaders, etc.), then Pareto optimality economic
efficiency- will occur regardless of initial entitlement;
(Based on assumption that people are able to set a value on the good and have the money to pay for it;
so: the optimal situation has been reached even if A has $0 and lives on the street, as long as B lives on
top of the mountain in a mansion with lots of capital.)
Distribution of wealth may affect a societys choice of entitlements.
In field of accident law:
1) Econ efficiency alone dictates the entitlements that favours choices between social
 58

benefits and social costs of obtaining them, and the social costs of avoiding them;
2) When the worth of a benefit to society is in doubt, the cost of the activity should be put
on the party best-located to make a cost-benefit analysis,
3) In accidents or pollution, the costs should therefore be put on the party which can most
cheaply avoid them,
4) When unclear who that party is, cost should be put on the party which can act in the
market to correct an error in entitlement with the lowest transaction costs, and induce the party
who can avoid social costs most cheaply to do so,
5) Mkt does not work perfectly in this area; so, there are transactions costs.

2) Distributional concerns:
-2 types (1) distribution of wealth and (2) distribution of (merit) goods.
all societies have wealth distribution preferences; can be on basis of arbitrariness or morality or
efficiency or worthiness or some other organizing principle.
cannot be on the basis of equality for that is impossible: not enough to start everyone off with the same
amount of money; other entitlements will make some richer than others.
how to compensate for all the differences and the various individual valuations of various things?
If perfect equality is impossible, a society must choose what entitlements it wishes to have on the basis
of criteria other than perfect equality. In doing this, a society often has a choice of methods, and the
method chosen will have important distributional implications. A society may force everyone to serve
in the military. It could also entitle people to be free of the military and induce them to join up, or
require all to serve but enable each to buy his way out.
If the choice of entitlements affects wealth distribution generally, it also affects the chances that
people will obtain what have sometimes been called merit goods.
a society which prefers people to have silence, or own property, or have bodily integrity, but which
does not hold the grounds for its preference to be sufficiently strong to justify overriding contrary
preferences by individuals, will give such entitlements according to the collective preference, even
though it will allow them to be sold thereafter

3) Other justice reasons:

-They are reasons which would influence a societys choice of initial entitlements that cannot be
comprehended in terms of efficiency and distribution.
-Example: two neighbors, one likes noise, the other silence. In case of no transaction costs, we know that
Pareto Optimality- economic efficiency- will be reached regardless of whether, say, we chose an
entitlement to make noise or to have silence.
-From a distributional point of view, we are also indifferent as to what the initial entitlement is, because we
do not know whether it will lead to greater equality or inequality.
-This leaves us with 2 reasons on which to base our choice of entitlement. The first is the relative
worthiness of silence lovers and noise lovers. The second is the consistency of choice, or its apparent
consistency, with other entitlements in the society. But how to choose who is worthy? Depending on how
they impact 3rd parties? Is it different from economic efficiency or distribution? Not really. Treat like cases
alike? Choose silence lovers because we choose people who are not violent?
-Thus it may come down to economic efficiency and distributional reasons. For instance, there are good
distributional reasons for this; simplifies task of obedience.
-Justice reasons are ultimately all the reasons; economic efficiency and distributional reasons are a kind of
justice

III. Rules for Protecting and Regulating Entitlements

-Whenever society chooses an initial entitlement, it must also determine whether to protect the entitlement
with a property rule, a liability rule or an inalienability rule.

Property and liability rules:

-Liability rules exist because often the cost of establishing the value of an initial entitlement by negotiation
is so great that even though a transfer of the entitlement would benefit all concerned, such a transfer will
not occur. If a collective determination of the value were available instead, the transfer would occur.
 59

-Ex., Guildacres. A tract of land owned by 1000 owners in 1000 parcels would benefit a neighbouring town.
Each of the 100 000 citizens of the town would be willing pt pay $100 to get it. Transaction would be econ
efficient if owners of land valued it at less than $1000 a tract (what they would get at above price). But even
then, if some of the owners hold out for more b/c they think the buyers will pay more, they will not get it
and transaction will not happen. Sellers will have an incentive to hide their true valuation and the market
will not succeed in establishing it.
-Or, maybe buyers cannot raise enough b/c some are freeloading, expecting others to make up for what they
wont pay. Will lie and hope others will value it more and be willing to pay more. Market will not cause
people to express their true valuations again, desirable results cannot be achieved.
-Liability rule allows society to decide the value collectively and impose it: no more holdouts.
-Also, can charge benefits tax on collective valuation of each citizens desire to have a park: no more
freeloader.
-Are also problems with liability rules: may be lying when we say what value s/t has for us. objective
liability rules may result in over or under compensation. Benefits tax: value of an entitlement to each
individual cannot be determined accurately.
-Accidents: if we were to give victims a property entitlement not to be accidentally injured, we would have
to require all who engage in activities that may injure individuals to negotiate with them before an accident,
and to buy the right to knock off an arm etcsuch pre-accident negotiations would be extremely expensive,
often prohibitively so.
-Nevertheless: the most common [reason] for employing a liability rule rather than a property rule to
protect an entitlement is that market valuation of the entitlement is deemed inefficient, that is, it is either
unavailable or too expensive compared to a collective valuation.
-Efficiency not the only reason: may allow us to accomplish a measure of redistribution that could only be
attained at a prohibitive sacrifice of efficiency if we employed a corresponding property rule.
Inalienable entitlements:
-Also efficiency and distributional goals underlying use
-Limitations on right to engage in transactions may serve efficiency when there would be a high cost to 3rd
parties
-Ex. in cases of sale of land to polluters: neighbour doesnt want me to sell land to polluter, pays me. But if
there are many neighbours, freeloader and information costs make this practically impossible. State could
protect neighbours and let land be sold by letting neighbours prevent sale to polluter by employing liability
rule. But costs could be high: eg. Excise tax on all sales of land to polluters equal to the estimate of the
external cost to the neighbours of the sale.
-Barring the sale to polluters is most efficient because it is clear that avoiding pollution is cheaper than
paying its costs.
-Or external costs cant be measured in acceptable way. Such costs are called moralisms .
-One person cant be allowed to sell himself into slavery b/c of the cost to the other members of society.
Cant be valued in monetary terms.
-Other reasons for forbidding sale: self paternalism and true paternalism
- Self paternalism: decision of individual (or group) not to engage in economic activity; based
on notion that no one knows better than the individual what is best for him or her. May require
certain conditions to exist before allowing a sale, or may explain inalienability, like invalidity
of Ks entered into when drunk or under coercion.
- True paternalism: activities of minors. Others know better than the individual what is good
for the individual.
-Distributional goals also play role: e.g. prohibiting exculpatory clauses in product sales makes richer
those who were injured by a product defect and poorer those who were not injured and who paid more for
the product because the exculpatory clause was forbidden. Favouring the specific group that has benefited
may or may not have been the reason for the prohibition on bargaining. What is important is that, regardless
of the reason for barring a contract, a group did gain from the prohibition. E.g. 2, Prohibiting the selling
of babies.
-Pollution rules: balancing of costs and values can achieve econ efficiency; but often transaction costs are
too high and the market place cannot adjust the balance
-t/f likely to use liability rules when we are uncertain whether the polluter or the pollutees can most cheaply
avoid the cost of pollution.
 60

-inalienability could be used in such cases: moralisms against pollution: expectations of future generations,
etc. This ground for inalienabilty could be strengthened by self-paternalism. State could also restrict
pollution on paternalistic grounds.
-Why criminal liability for theft? Why not liability rule? Because society needs to keep all property rules
from being changed at will into liability rules. We impose criminal sanctions as a means of deterring future
attempts to convert property rules into liability rules.

Comments
Presumption that property rules are the most efficient way of enforcing claim;
Property requires no state role; it is up to the person with the entitlement to say how valuable it is; state
would set an arbitrary value, either under- or over-valuing
If, however, property is inefficient (too difficult, expensive, etc.) move to liability rule
If this is inefficient b/c it affect the interests of too many others (if morally problematic) move to
inalienability rule
Above article does not address initial distribution of entitlements; assumes initial entitlements are
there;
Also ignores moral weight of the protection of an invention; there is no right or wrong; if legre
decided to change protection to 5 years, they would have no opinion.
Dessert/Lockean view of asserting personal oship: makes no sense in C & M context
Public interest in IP
-Protection by liability rule: E.g. on music: royalties: thru legn, societies exist to which a musician
belongs. Radio can play their songs for a fixed tariff, and funnel the money for royalties to the relevant
society; avoids transaction costs of negotiating; musician gives up veto right.
-Or: Compulsory licensing: cant prevent people from copying medications; product can be manufactured
on payment of rble royalty to patent owner.
- or patent right to reproduce can also be protected by a property rule: injunction.
-moral rights are also inalienable rights in IP; in Canada, they are not assignable although they can be
waived (inalienable right combined with liability rule).
SKIPPED CAUSE COULD NOT UNDERSTAND, ASK SOMEONE ABOUT IT

C) Contract

ProCD, Inc. v. Zeidenberg, 7th Cir, 1996, USA, p. 481:

FACTS: ProCD (pf) compile extensive phone directory that it sold on CD-ROM. Charged higher for
commercial users than for personal users (price discrimination). Terms of use/license are inside box and not
readily available/readable when one buys the CD (this is called a shrinkwrap license case). Zeidenberg
bought CD as a personal user, but then made info available on the Web for a price (thus used it in context of
business).
Issue: Is Z bound to pay higher price even if conditions could not be read until after the CD was purchased
and opened? This is really a question of K law.
Held: Yes, Z is bound, injunction is granted so that Z stops re-selling ProCD info.
Ratio:
-Terms of the license pup up every time the user uses CD, so Z aware of the terms of the license.
Furthermore, terms are written inside box. Question is, should Z be bound by those terms if he could only
be aware of them after purchase?
-Z argues that K was complete when he purchased the CD (offer was putting the CD on shelf, his
acceptance was his purchase of the CD). Accordingly, any terms included inside the box cannot be part of
the K, cause could not know them before acceptance.
-One problem: Z aware that the use of the CD was subject to license agreement prior to purchase.
Furthermore, unrealistic to require software merchants to put the entire license agreement on outside of
box, as would have to be in microscopic size.
-Here the court interprets the factual situation as follows: ProCD proposed a K that a buyer would accept by
using the software after having an opportunity to read the license at leisure. This Z did. He had no choice,
because the software splashed the license on the screen and would not let him proceed without indicating
 61

acceptance. So although the district judge was right to say that a K can be, and often is, formed simply by
paying the price and walking out of the store, the Uniform Commercial Code permits Ks to be formed in
other ways. ProCD proposed such a different way, and without protest Z agreed.
-Note also that ProCD extended an opportunity to reject if a buyer should find the license terms
unsatisfactory; Z inspected the package, tried out the software, learned of the license, and did not reject the
goods. As such, he is bound by the terms of the license.
Comment:
-Case is about how IP rights can be protected by traditional K law.

Nimmer, "Breaking Barriers: The Relation between K and IP", p. 488:

-It is often argued that by bringing K to the context of info transactions, Ks will be used to stifle free speech
and comment or to block access to materials that are otherwise in the public domain. This premise, i.e. that
K law and IP are in conflict, is flawed, and the article is aimed at dismissing this premise.
-Essential conclusions:
Most significant insight that one can take from reviewing the relationship of K and IP is that,
rather than fields in newly-found conflict, these are 2 areas of law that have long co-existed.
Copyright and other forms of IP law cannot, and have never been able to, foster active
development and distribution of info products in society without relying extensively on Ks.
Commercialization, which depends on contractual relationships, constitutes one of the core
mechanisms by which info is developed and distributed. It is a central part of the IP law 'bargain'
and should be recognized as such.
-Looks at the myth between K and IP: that K encroaches on IPs private domain; that it tilts the balance
between private domain and public domain by allowing people to tilt the balance in favour of the private
domain (eg. Clause: do not use for educational purposes).
-In response to this concern, Nimmer offers: the K is an integral part of IP, the main justification of IP is on
the economic efficiency basis: namely, giving people IP rights provides incentive for creation and
innovation and K is the way the IP holder realises these benefits: selling or licensing. It is not enough to
have an IP, you want to use it, and the only way tot use it is with K. K is already limited: Unconscionability,
Competitive law,
-Politicians argue that by bringing contract to the context of information transactions, contracts will be used
to stifle free speech or to block access to materials that are otherwise in the public domain. The
fundamental premise is of this view is flawed: K & IP law have always co-existed peacefully and in
interaction between mutually supportive fields.
-Ks provide the means for the development and commercial exploitation of information assets.
-The underlying property rights are often relatively unimportant in the bargaining process. They tend to be
treated as default rules; those rules that state a legal position that exists between the contracting parties
unless the parties otherwise agree. Contract law provides other default rules.
-All of the relationships and distribution choices involved in commercialization of information assets
involve contracts.
-One way to distribute info assets is open form: non-K: involves giving away information and a willingness
not to assert rights, at least to some extent under some conditions.
-Commercialization use (e.g. contracting for) informational assets is another primary means by which
information is distributed.
-It represents that portion of the matrix that yields financial and similar incentives for the creation of new,
and the distribution of existing, information assets. In that sense, the so-called IP bargain does not exist in
the absence of contract law and practice.
-How contract and property interrelate: the 2 bodies of law differ in how they regulate a partys conduct;
the impact of a property right in a marketplace shaped by Kal relationships is most often indirect, with the
rules of property being filtered and adapted through contractual and other relationships; in this marketplace
setting, IP law provides default rules for Kal relationships.
-These are default rules in that by their own terms, the effect of the rule can ordinarily be altered by
contract.
-Contract Law is a party choice regime, emphasizing with few exceptions the ability of the parties to define
their own relationship. In contrast, IP law (with the possible exception of trade secret law) is a vested rights
regime. It defines the relationship of persons to an identified corpus of information in the absence of a
 62

contractual relationship altering that established or vested right.

-K law does not mandate outcomes in a contract relationship. It has three primary functions:
(a) it established when an agreement becomes enforceable in law between the parties;
(b) it provides background or default rules which indicate what the terms of the relationship
are in the event that the parties do not otherwise agree; and,
(c) in limited situations, it provides that particular terms may be unenforceable on the grounds
for example that the term is unconscionable.
-K law relies on the premise that parties, rather than laws, create (or decline to create) a relationship.
Negotiation over the terms seldom occurs in either a mass market or a commercial marketplace: one party
(the vendor or the purchaser) proposes terms and the other party assents or refuses (ex. DuPont offers
cleaning product to janitorial company at specific price with disclaimer of warranties. If janitorial company
is willing to purchase the product, the terms are fully enforceable).
-W/ few exceptions, standard form contract terms are enforceable (consistent w/ K theory), the decision to
market (or offer to purchase) is the vendors and in the seller-dominant scenario, the buyer chooses to
accept the product and terms or to reject them and purchase something else or nothing at all. The phrase
most commonly associated with standard form contracts is contract of adhesion. These are routinely
enforced.
-A common but not completely accurate image of property or vested rights law is that the rules define a
partys relationship to a corpus (the property) in terms independent of any relationship between the rights
owner and a third party.
-Conclusion:
K and other forms of law have never been able to foster active development and distribution
of information products in society without relying extensively on contracts.
Commercialisation, which depends on K relationships, constitutes one of the core
mechanisms by which information is developed and distributed. It is a central part of the IP
law bargain and should be recognised as such.
Points of tension have always been resolved by contextually nuanced analyses of particular
cases and particular claims of abuse.
Comment: Article essentially maintains that K law and IP rights are complementary, not opposite.
This seems logical considering that in the IP regime that we looked at, the foundation of the right that
is granted to the holder is a K/bargain between himself (right to exclude) and the public/society at
large (right to benefit from the invention/work of art.)
DID NOT READ

-Nimmer takes a slightly different approach as compared to Easterbrook J. in ProCD. He

does not tell us that property is irrelevant; rather, that the only way IP rights work is when
we contract them through licensing, or by selling them altogether.
-Contract law is what is going to define what can and cannot be done in IP space to a
much greater degree than property law.
-His view is that property sets out a starting point, but contract fills up IP space.
-Says IP only makes sense in K context. Says that our focus should be on K Law and not
IP
-K allows you to alienate your IP rights. When Property allows alienability, then the
market will set who will get it = he who thinks it is highly valuable.
-Nimmer says that Ks are very flexible and enhance freedom. Eventually, only K will
govern.

J.H. Reichman and Franklin Privately Legislated IPR: Reconciling Freedom of

Contract with Public Good Uses of Information (1999), p. 496:
Synopsis:
-Thinks that courts should play a more active role in discriminating and scrutinizing the K
-Although adhesion Ks are advantageous because of their low transaction costs, they have a lot of
 63

disadvantages: can prohibit public good uses (education uses, Technological innovation (ProCD), Freedom
of speech, reduce competition
-The purpose of this article is to formulate and develop minimalist doctrinal tools to limit the misuse of
adhesion contracts that might adversely affect the preexisting balance of private and public interests.
-There is a need for a uniform set of default rules to validate non-negotiable licenses as a mechanism for
minimizing transaction costs. However, routine validation of non-negotiable constraints on users would
likely convert standard form licenses (contracts of adhesion) into the functional equivalent of privately
legislated IP rights. This would ignore the balance between incentives to create and free competition
recognized in IP laws.
-Author concedes that entrepreneurs should have more contractual powers to control the online exchange of
downstream products without encountering excessive premature gov. regulations.
-It does not follow however that entrepreneurs should have equal autonomy to restrict use of the
information when used for education and science.
-R & F propose a set of countervailing doctrinal tools, collected under a public interest
unconscionability rubric that courts could apply case-by-case rather than invoking the pre-emption
doctrine (see ProCD) from IP law or the public policy exception from standard contract law.
-They advocate public interest checks on standardized access contracts and on non-negotiable terms and
conditions affecting users. They try to preserve the maximum degree of freedom of contract:
-All mass-market contracts, non-negotiable access contracts, and contracts imposing non-negotiable
restrictions on uses of computerized information goods must be made on fair and reasonable terms and
conditions, with due regard for the public interest in education, science, research, technological innovation,
freedom of speech, and the preservation of competitionAffirmatively negotiated terms falling into above-
mentioned categories shall enjoy a presumption of validity.
-This presumption may be rebutted whenever the cumulative harm to the public interest from use, including
repeated use, of the term or terms in question seem likely to outweigh the private and public benefits
flowing from the specific transaction.
-By allowing licensors wide leeway in the name of freedom of contract, we remain confident that market
forces will generate an abundance of information goods and drive them to their highest values.
-However, mindlessly tolerating abuses of that freedom to contract under a model of formation that
dispenses with the requirement of mutual assent could produce unprecedented anticompetitive effects
detrimental to the public interest.
Class Notes:
R & F see the relationship between contract and property quite differently from the Easterbrook J. and
Nimmer.
R & F = property law is the ideal. Property law is the state saying who ought to have what. The
statutory schemes are designed to endure that we allow some commodification so that people can profit
from it but has inherent limitations on it such as fair dealing. K law virtually ignores this balance
between incentive and access. The information holder extends the reach through contract and tries to
get more than what copyright law would give them by making the consumer into the licensee.
All contracts are to be evaluated against the private interest to make money and the public interest to
gain access (see the statement of claim dealing with the anti-virus software on each of our computers).
All of this assumes the centrality of contract.
It is not the IP right that matters; its how you use it.
The property right defines when you can use a right and what rights you have and the contract depends on
the property rights. Property law comes first in order to set up the initial distribution but then contract law
comes in to formalize the rules.
DID NOT READ

Justification for Ordering of IP Space:

Economic Efficiency and Distributive Justice

-Justification for Ordering IP Space: In terms of IP, justification is relatively light

 64

-Basic premise: property needs to be justified, we need to justify the rules governing
property in order that the playing field is leveled for all. The underlying issue is fairness,
what is a fair justification for property?
-Main justification is economics, but there are other justifications.

Economic Efficiency

-Economic justification causes the most difficulties, at least much more than other
justifications. Economists can't even agree on the basis of the economic justification of IP
space. The usual argument in terms of economic efficiency is that economic incentives
spur innovations.
-Some terms/definitions/justifications for IP space:
Market failure: The type of goods that IP regimes protect are non-rival (more
than one person can be a user at the same time: this is opposite to traditional
notion of property where use is rival) and non-exclusive (absent a legal rule an
idea cannot be stopped or limited or one cannot exclude another from using the
idea). IP regimes were designed to respond to the failure of markets to protect the
ideas of, and provide incentives to, creators/investors.
Public goods problem: Legal rules where developed to deal with the above, but
this creates problems in terms of public goods: not all IP should be subject to
private ownership, as this will detrimentally affect the public good. Thus IP must
also provide incentives for people to develop public good remedies
Incentive-access paradigm: IP rights are monopoly rights: can charge more than
would otherwise by virtue of monopoly (just like in any other type of monopoly).
In IP, however, the monopoly is judicially and legislatively limited (only for a
certain pre-defined period of time). This is in response to the need to balance
incentive for creator/inventor with public access to goods.
-Problems inherent in the economic justification of IP:
Mistaken assumptions: if we go thru the economic literature, we can see that
economists disagree as to what the protection for IP should be: there is no
agreement on the level of incentive that is needed. They seem to agree that
incentives [should] change according to the type of industry under consideration
(in terms of length of patent right for example), but this is not presently the case.
Of course, to require various standards of protection for various industries is
problematic: how far can the logic take us: industry by industry standards, product
by product standard? Economic justification has its problems.
Institutional competence: At design level (how to design IP systems) and at
implementation side (how can we expect judges to make informed decisions).

Robert Couter & Thomas Ulen Law and economics 3r Ed, p. 5 (II):
-A property right to the author/creator of an idea helps her to appropriate its value. This comes to the cost
of exclusiveness. There is therefore a tradeoff between the breadth of the scope of the right granted and its
duration and social utility: the greater the breadth and/or the greater the duration, the greater the incentive
on creators, but the higher the costs on society.
Patents: broad or narrow?
-The big question in patents is what is the optimal combination of breadth and duration: Broad patents
encourage fast, duplicative research (by definition a single patent can cover several different claims),
 65

whereas narrow patents encourage slower but complementary research.

-A complication is that the stand-alone value of a pioneering invention may fluctuate. But a pioneering
invention with little stand-alone value might eventually have great commercial value. There is therefore an
incentive problem for pioneering inventions with little stand-alone value.
-Therefore, patent protection for pioneering inventions with little stand-alone value should be broader
(more incentive if cover more things) than patent protection for pioneering inventions with large stand-
alone value (incentive, even if does not cover many things, is already present).
Patents: duration
-In the absence of substitutes, the longer the patent monopoly persists, the greater the social cost. The
benefit is the increase in creativity stimulated by the patent. Extending the life of the patents increases the
amount of investment activity, but at a diminishing rate.
-While it is impractical to grant a different patent life for each invention, the market can approximate the
result: in Germany for instance, patent holders must pay to maintain their patents, and the fee goes up as
time goes by.
-Copyright: There is no reason in principle to limit the duration of a copyright. What limits it are the costs
of tracing the copyright holder
-CR grants writers, composers and other artists a proprietary right in their creation upon demonstration that
their work is an original expression.
-Tracing costs increase with time, as the author becomes more difficult to locate: thus the most significant
limitation may not be in terms of scope but rather duration.
-TM
-The principal economic justification for granting property rights to TM are that they lower consumer
search costs and create an incentive for producers to supply goods of high quality. Can we make the same
economic argument for limiting the duration of the property rights in TM as we did in the case of patents
and copyrights? The answer is no. Limits on the duration of patents and copyrights were justified as
attempts to minimize the social costs of monopoly and tracing. However, TMs encourage competition and
do not impose tracing costs.
-TM are inherently good, they reduce the cost of searching, they also encourage companies to keep quality
high, because a TM is as good as the market goodwill that supports it
-Therefore there are no real reasons to limit TM.

Landes and Posner: TM Law: An Economic Perspective", p. 11:

-TM law is best understood as increasing economic efficiency. Failure to enforce TMs would impose 2
distinct costs - one in the market for TM goods and the other in the distinct (and unconventional) market in
language.
-TM goods:
TM decreases consumer search costs by promoting easy identification (distinction)
This is based on notion that satisfaction consumer gets from product will lead consumer to search
for the TM. This in turn encourages expenditures on quality by producer to start ball rolling or
make sure it keeps rolling.
-TM language:
TM increases pool of new words. TM increase language in 3 ways: a) increase the stock of names
of things, thus economizing on communication and info costs, b)create new generic words, words
that denote entire products, not just individual brands, c) enrich the language, by creating words or
phrases that people value for their intrinsic pleasingness as well as their info value.
Above are small benefits. What is more important is that the goal of communication system is to
minimize the sum of the cost of avoiding misunderstanding and the costs of communicating. This
TM does.
-Therefore TM have a self-enforcing nature that is economically beneficial
-TM a good thing because they add to the amount of language to the world, color our
environment with additional vocabulary.
-That TM law economically efficient because of the above is not a great argument. The
economic argument that it equals the playing field for manufacturer and retailer is more
valid.
 66

Polk Wagner, "Info Wants to be Free: IP and the Mythologies of Control", p. 17:
-Essay challenges a central tenet of the recent criticism of IP rights: the suggestion that the control
conferred by such rights is detrimental to the continued flourishing of a public domain of ideas and info.
This criticism overlooks the contributions that even perfectly controlled intellectual creations make to the
public domain.
-Core contention: critics understate - perhaps dramatically - the contribution that even 'perfect' control of
intellectual creations makes to the public domain, just as they overstate the current and potential
effectiveness of this control. Combining this understanding with the dynamic incentive-effects of IP rights
suggests that such rights (even in strong forms) are likely to increase the content of the public domain
rather than decrease it. Thus, while there are perhaps other reasons to limit the scope and enforceability of
IP rights, concern about the withering of the public domain seems not to be one of them.
-Essentially argues that info cannot be controlled effectively, that even control info generates additional
information which itself is not subject to right of control, that there are circumstances under which people
who control info might choose to make it available, situations were it is impossible or too costly to enforce
control etc. to reach conclusion that IP rights cannot (at least in the foreseeable future) restrict info that is in
public domain: info is free and wants to be free.
-Separates info in 3 types:
Type I is mostly appropriable: it is the information created: the actual work of authorship or
creativity or the actual invention in the patent context. Well delineated and IP laws are at their most
potent there.
Type II is partially appropriable: it is in some way directly derived from the underlying
creation. Typically described as follow-on innovations or cumulative innovations.
Type III is not appropriable: it is only indirectly associated with the underlying creation: that
there exists a class of information that is in some sense derivative, but falls outside the reach of the
intellectual property laws. The relationship between Type I and Type III thus consists of a but-for
causal link, but the relationship is generally sufficiently indistinct and removed so as essentially to
preclude appropriation by the Type I creator and indeed, nay not even be conceived as appropriable. In
other words, Type III is open information, available for widespread use, as an inherent consequence
of the creation of the underlying Type I information. Type III is a direct contribution to the total public
knowledge.
-Author argues that type III info is always generated, so is type II, and as such any IP private right over a
particular info (type I) will be balanced or surpassed by a public right over other info (type II, III).
-Info is stimulative in nature: information begets more information.
-Where Reichman finds that the Public Domain is shrinking, Wagner says that having type I info actually
increases public domain (via type III). The more you innovate, the more Type III you will have.
-There are two benefits of control that seem likely to create conditions wherein additional information can
be created for the public benefit.
1. Fostering Flexibility
2. Reconciling the Market power and incentives
-Adding to the Public Domain: control and coordination:
The extent that the control of intl property allows owners to coordinate the uses of their works to restrict
access, it also enables those owners to coordinate in such a way as to enhance access: two examples: open
source software development and outright dedications to the public domain.
-The idea that the public domain is always increased by IP law is problematic: perhaps
this is true quantitatively but not necessarily so qualitatively.

James Boyd White The Language and the culture of economics in Justice as
Translation, p. 38 (II):
-Doesnt like economic analysis in particular because of its cultural consequences.
-In North America, economic language is often the basis of decisions re intellectual property. The dominant
view seems to be that use of economic analysis and language will yield the best intellectual property
regimes.
-But at the center of economic analysis is the idea that things are convertible into money, and widespread
 67

economic talk conveys in the culture the belief that everything is fungible and reducible to economic
interactions: all individuals are rational economic actors that act in their self-interest, and all resources are
individualized as susceptible of monetary evaluation and are only used in economic transfers. This ignores
values, motivations, purposes, and notions of community where individuals do not act out of self-interest.
-Economists retort that notions like self-interest or rich are only analytical tools with technical
meanings, and are only to be used as a model to predict behaviour, NOT as a statement of the be all and end
all of actual reality. White suggests however that such a characterization of talk only reinforces ordinary
selfishness and greed by depriving terms of their actual meaning. He also argues that as with any other
language and tools of analysis, their use reinforces the notion that they describe reality, and are thus not just
used as models but rather perceived as the way things really are (essentially the economist argument that
language used is merely model is disingenuous).
-Also problematic is the idea that values are reducible to agent preferences, thereby suggesting that moral
choices are sheer matters of taste and just as disposable or subject to change. In fact, the very value-
neutrality claimed by economics is in itself problematic, because all the greatest questions and the greatest
human endeavours are value-driven. For example: the decision to set up democratic institutions is based on
perception of inherent worth of all individuals, which is not reducible to economic terms. In this context,
note that economic perception of behaviour would destroy institution of democracy since it is blatantly
clear that not all actors are economic equals. Furthermore, economics is not devoid of values, cause it sets
up a perception of the way human beings are.
-Economics claims to be fair because it presumes democracy, equality and freedom of choice. But real
people are not equally free in their capacity to make choices, and democracy is based on the equality of
individual rights, not on the equal purchase value of a dollar.
-Even as an economic tool, economics doesnt have much to say. Economists are interested in the
exchange of value, but value can change thru the influence of non-economic factors like culture. The non-
economic background is not stable. It is also very difficult to explain using economic terms why economic
model is to be used: better description of reality? Based on what?
-Further, the end of life is not exchange. Exchange is merely a way to accomplish those ends.
-Some questions should simply not be answered through economic analysis.

Distributive justice

-This section is about the distributive consequences of allocating intellectual property

rights. In other words, what are the effects on the public of those property rights?
-Boyle observes that the protection of intellectual property rights is increasing (e.g.
computer programs were originally not protected, then they got protected by copyright,
and now they are protected by patents, patents are granted on biological material, etc.).
-The prevalent discourse appears to be that increasing the privatization of intellectual
property space means better protection. He criticizes the prevalent discourse.
-Main question is how do we protect the right of the holder and the right of access to info
for the public? Right of property holders and IP rights must be balanced with those of
society at large.
-3 ways of thinking about property:
No property right
Private rights: right to exclude
Common right: right not to be excluded
-In terms of distribution, the axes upon which we should analyze distributive justice are:
Right's holder v. Users
Right's holder v. Personal Property
-NOTE: utilitarian and economic justification of IP is very North American

James Boyle The Second Enclosure Movement and the Construction of the Public
 68

Domain, p. 54 (II):
-Complains of the anti-commons effect of increasing the allocation of intellectual property rights.
Intellectual property gets developed thru collaboration and sharing, and granting more property rights
increases the chance of such collaboration and sharing.
-Thinks that the PD is shrinking: European Database directive is granting rights for indeterminate time for
databases and for that reason, there is an encroachment (in CAD, only an arrangement); IP is progressively
allowing for the appropriation of ideas; Patent holders are starting to get proprietary interest in math
formulas
-Looks at arguments that people make in favour of this movement: these are the traditional economic
arguments: incentive to creation, property induces innovation
-Argues that we are experiencing a second enclosure movement: like the one in England, this enclosure is
limiting access to what was once in the public domain, and this is negative because it restricts people's
freedom and might have significant consequences (like the one in England). Here Boyle observes that
greater IP rights might actually be counterproductive to the purpose of greater IP rights: limiting access will
reduce creativity since most innovations are incremental.
-Boyle notes that enclosure of IP is different from pasture enclosure in a number of respect:
Info in IP is non-excludable: one that possesses common knowledge cannot bar another from
possessing it as well, simply because it is common knowledge.
Info in IP is also non-rival: different people can make use at the same time (many uses of the land
are mutually exclusive but an MP3 file may be used by multiple parties at the same time)
There is also no risk of depravation with overuse.
On the other hand, if info is non-excludable and non-rival, it increases your ability to distribute
and makes it easier for people to make money out of it. It is therefore of no advantage to IP. This is
connected to above.
Individual Property:
-English enclosure movement: the process of fencing off CM Land and turning it into private property: the
conversion into private property of land that had formerly been common property, or outside of the property
system altogether.
-Advantages of privatization:
o Allowed the expansion of productive possibilities
o Allowed the control over exploitation
o Insured that the resources could be used more efficiently
o Strong property rights and single entity control avoid the tragedies of overuse and under-
investment ( tragedy of the commons)
-Although protection of the info commons was the fundamental goal of IP, the new vision is that the info
should be protected for the benefit of the creator of the info, not for people at large (longer CR, expansion
of patentable items).
-The concern is with the ability to exclude: the same tools that allow for swift copying (internet) also allow
us to detect illicit copying (search engines).
-NOTE: when marginal cost of production and marginal cost of transmission approach zero, infringement
are more likely, and, so the argument goes, protection should be greater.
Alternative:
-IP is now generally more important than before: your info output is someone elses input: reducing access
to your info raises the costs and places roadblocks in the way of subsequent innovations.
-Open source software is an example of an alternative system of 'property'.
-New collaborative methods of production are created. For Example: GPL: General Public License in
software: users may add to or modify the code, may build on it and incorporate it into their work, but if they
do so, then the new programme created is also covered by GPL: the result is not only a free gift of the
programme, or a contribution to the public domain, but a continual accretion in which all the gain and the
benefit of the program goes back to the public domain.
-Economists and IP rights enthusiasts would say: there is no adequate incentive to ensure continued
production, yet! e pur si mueve. Motivations may lie with: love of invention, hope and joy of doing a
better job, joy of solving puzzles
-For the GPL (open source) to work, it depends on K: for distribution, way it grows, way it is binding to
future innovations. Does this suggest that best means of IP protection is not property basis but K law?
 69

-NOTE: Propriatization is a vicious cycle: once a new IP has been created over some info good, the only
way to ensure efficient allocation of the good is to give the rights holder still more control over the user or
consumer in the after market so as to allow for price discrimination: need to get rid of anonymity and
need to locate and identify users in order to exert control and to be able to sanction
Recognizing the public domain
-Boyle views the public domain as a zone of controlled freedom rather than as a free-for-all. The public
domain also needs to be controlledsystemic measures must be in placeso as to ensure that the public
domain is perpetuated and the freedom that sustains it is maintained.
-Therefore, the public domain is not a mere left-over, a kind of vacant space that is there. The notion of
public domain is something that must be created to bring together disparate interests and people.
- Boyle likens public domain to the notion of environment, which he says is a construct that helps
addressing disjointed issues that would otherwise remain disjointed, in an increasingly coherent way. Just
as the environment creates a space for new discourse, so public domain brings about a space that would
not otherwise exist

-Regulation of this space does not have to come from granting property rights. It is fine to make ideas
available freely, as long as the public domain space that offers these free ideas has a means of avoiding
free-riding problems. Perhaps in this context K law?
-Because, Boyle argues, the open-source movement is successful, it shows that intellectual goods
production can be fostered without granting property rights and their anti-commons effect. This is what he
calls positive property rights
-Boyle also cites the internet as an example of a space where innovation happens without there being
monopolistic property rights, and where the quality of innovation comes very close to what big
corporations dowithout, once again, the externalities of a property system
-As evidenced by the success of the open-source movement, it is wrong to assume that people are only
motivated to produce intellectual property goods for economic reasons. Therefore, creation doesnt
necessarily need economic incentives. What matters is that peoples own reasons for creating receive some
measure of outside protection so that people keep creating. Licensing is one way to do itat any rate it
works well in the open source movement.
-The more we encourage this organized sharing the more development will occur, the better the public
domain will be protected (thats the positive reinforcement effect mentioned above) and the more new
opportunities will be created.

Personhood

-For Hughes, the personality theory for justifying property stands as the main alternative
to the labour theory of justification.
-Existing law support the credibility of different theories and these theories, in turn,
support the validity of existing laws.
-The main alternative to labour (Lockean) theory is a personality theory that describes
property as an expression of the self (Hegel)

-NOTE: right to ideas is rooted in personal right in Europe, it is a question of self-

actualization and control of the external environment. The latter require dominion over
tangible and intangible objects. In this context, it is easier to justify IP than property
rights, since what could be more personal than writing a novel?
-This second/European justification gives rise to issue of moral rights (remember Snow v.
Eaton Center):
Right of attribution: name associated with the work for EX
Right to integrity of the work: mostly a copyright issue.
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-Moral rights cannot be assigned even if right of copyright or patent can be. One can
waive moral rights however.
-Personhood justification: the 'objects' created are an expression of one's personality: this
is where we get the moral right. Question, how far can we take this justification:
assuming the premise that we need control over the object, how much control should be
allowed? Should some IP rights be protected more than others? Is it fair to make some
distinctions such that some rights deserve more protection than others (rights of artists
more protection than rights of individuals, or those of artists more than those of patent
creators)?

Justin Hughes, "The Philosophy of IP", p. 85 (II):

-Generally, property makes the property owner risk-averse, avoiding decisions that might diminish his
property. It is a conservative concept which stabilizes society. Persons with property are protected from
non-propertied people of greater natural ability or talent.
-Intellectual property, however, is far more egalitarian, in that it is of limited duration and obtainable by
anyone. It shifts power/prop rights to those with more natural ability and talent. On the other hand,
property/wealth still plays a role, cause much IP is produced only after considerable financial investment
(labs, technology, education).
-Thus while IP shares its origins with other types of property, it is more neutral in that its limited scope and
duration tend to prevent the accumulation of wealth inherent with other types of property.
-Different IP legal systems in different nations are more representative of countervailing social policy than
a different conception of IP.
-Universal definition: IP is nonphysical property which stems from, is identified as, and whose value
is, based upon some idea or ideas, with some additional element of novelty (idea being shorthand for
the unique product of cognitive effort).
-IP, like all property, is an amorphous bundle of rights.
-IP rights are subject to limitations, such as fair use (copyright), and judicially created exceptions for patent.
-Limitations serve the primary purpose of IP, which is to promote the progress of the science and
useful arts.

A HEGELIAN JUSTIFICATION & HEGELIAN IP

-The personality justification sees property as a mechanism for (a) self-actualization, (b) personal
expression, (c) dignity and recognition as an individual person.
-Margaret Radin posits that to develop as a person, we need some sort of control over resources in the
external environment property rights fulfill this need for control.
-In IP, the personality justification best applies to the arts.
-For Hegel, the individuals will is at the core of his existence, constantly seeking actuality and
effectiveness. Personality is identified with the wills struggle to actualize itself.
-The will interacts with the external world. For Hegel, the true purpose of property is to allow the will to
seek to appropriate the external world, and impose itself upon it. This is the first step in a persons self-
actualization.
-However, it is not enough to impose our will on the physical world society must acknowledge our
property claims based on some objective social will.
-For Hegel, abandonment occurs easily because the relationship b/n person and property lasts only as long
as the persons will manifests itself in the object. Absent constant reaffirmation, the right is lost. Also, the
will can be actively withdrawn by the individual (alienability).
-Labour is often a means by which the will occupies an object, but labour is not necessary. [Hughes gives
the example of a souvenir rock from a beach the will occupies the object without use or labour].
-There are objective indicia of the wills occupation. A non-exhaustive list includes (1) physically seizing
the object, (2) imposing a form upon it, and (3) marking it. For example, using an object in a manner which
preserves it could count as marking it, as it indicates a desire for continues utilization and enjoyment of
the object.
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-IP does not need to be analogized to physical property.

-You cannot alienate yourself from IP because an intellectual/artistic product is a universal element of
ones self, thus unalienable. You can, however, alienate yourself from copies of that product.
-Hegel admits that IP is the purely negative, though primary, means of advancing the sciences and arts. It
is a capital asset in that it that it provides some economic security.

Problems in Applying the Personality Justification to Intellectual Property.

-The main problem with the idea that property protects personality is that it is difficult to tell when someone
has a particular personality stake in a given object. Also, if such a stake is recognized, to what degree does
the object manifest the personality of the individual? Does more personality warrant more property
protection?
-The personality justification seems to offer little protection to intellectual products which reflect little or no
personality from their creator. Poems, sculptures, paintings, novels, etc. are what Hughes calls receptacles
for personality the personality stake in such objects is obvious.
-The problems for the personality justification arise when dealing with intellectual objects which are not
easily described as a manifestation of the individuals self. For example, computer software, or other more
technical areas of intellectual property. We think of these items more as utilitarian solutions to specific
needs or manifestations of generic insight, not as manifestations of someones personality.
-Note however that it can be argued that even the most technical products may involve some aesthetic
vision, albeit minimal. If there are ten ways to write a computer efficiently, for example, making the choice
could demonstrate personality and thus property rights are justifiable. Thus, no one genre of intellectual
property is devoid of personality.
-The object expresses personality, but also the association people make between object and creator is an
expression of the personality it creates a persona. (i.e. Edison = light bulb, the association expresses
Edisons persona more than the physical light bulb).
-Logically, for Hegel, alienation occurs when the individual removes his will from an object. It is
equivalent to abandonment. We abandon X for Y when we feel that Y better expresses our personality, thus
increasing actualization.
-Alienation of intellectual property can take on two forms: (1) entire alienation [selling all rights at one
time], and (2) partial alienation of the property [ex: limitations on how copies may be used].
-A problem with alienation is that, in most cases, alienation involves some degree of determining the
objects future, even though the personal link to the object is no more. It is difficult under the personality
justification to justify a right to dictate the future of an object, which is theoretically no longer a
manifestation of one's personality.
-Hughes calls this the paradox of alienation under the personality model of property.
-Hegel feels you can alienate yourself from copies of your work, however, while maintaining the whole of
the property and yourself.
-Also, income allows further expression, and alienation of copies allows further exposure to ones ideas,
which leads to non-economic recognition (honor, respect, admiration).
-Two conditions are essential for alienation: (1) the creator of the work must receive public identification,
(2) the work must receive protection against any changes unintended or unapproved by the creator.
-The 2 conditioned mentioned above are recognized in some IP regimes as moral rights. There are no
such provisions in American law.

Civil Rights Support for a Personality Justification

-People often try to bridge U.S. Law with IP protection through defamation claims, such as a playwright
suing a director who degrades the play.
-Hughes posits that civil rights approaches are a better way to protect IP, and elaborates on 2 of them.
The privacy right argument
-Right to privacy should allow people to prevent publication of private documents, even when a would-be
publisher is recipient (letter, for example). Even when part of a work is in the public arena, the creator
should be allowed to keep the rest private. If an author produces a final edited version, the omitted material
should remain private.
-Dicta in many cases has suggested that dissemination of a work under an authors name against the
 72

authors wishes may infringe privacy rights.

-It follows that those who wish to remain anonymous or prevent publications of intimate details about
themselves should have that right.
The freedom of expression argument
-First Amendment freedom of expression is often portrayed as the enemy of IP rights, in that free speech is
often used, for example, as a reason for limiting copyright.
-However, counterargument is that freedom of expression is meaningless without assurances that the
expression will remain unadulterated. Free speech demands that speech be guaranteed some integrity a
guarantee that the speech will not be divorced from the intention of the speaker. The speakers expression
must therefore be protected from distortion.
-When the speaker is powerless vis--vis the distortion, such as a novelist upset with a publishers version,
the legal system can establish protective mechanisms to deal with possible frustration of the speakers
intent.
-Thus, increased property rights such as copyright protection can be justified on the basis that a speakers
expression should not be distorted (this is the free speech argument).
-Note that it is from this conception of IP that moral rights originate: work as extension of
the artist's personality, possessing a dignity which is deserving of protection (integrity
and origin/authorship). Also note in this context the difference in terminology: copyright
(which suggests control of the reproduction of a work) and droit d'auteur (which suggests
not control of reproduction, but some other rights that are special to the artist).

Labour/desert

Justin Hughes, "The Philosophy of IP", p. 188 (II):

-article looks at the Lockean theory of property, and argues essentially that this theory is particularly apt at
justifying IP regimes in light of the non-exclusive and non-competitive nature of IP products.
-Lockean justification of property: 2 interpretation (subsumed under notion of avoidance of labor)
Instrumental interpretation: Society rewards labor [which is unpleasant] with property purely on
the instrumental grounds that we must provide rewards to get labor done (knowledge of reward
before the act encourages the act)
Normative interpretation: says that labor should be rewarded period (after the act, we recognize
the unpleasantness of labor and so reward it with property)
-Locke theory of property is based on:
Notion of "enough": there is enough property out there for everyone to acquire
Notion of "as good": while not every product is equally available to all, alternatives are out there
such that the inability to acquire one product is compensated by the ability to acquire an
equivalent.
Non-waste condition: it is morally wrong to waste products, because it is depriving another of the
ability to meet his need.
In light of the above, IP is particularly suited to Locke's theory, because
Enough: one can always come up with new ideas,
As good: there are always more than one way of doing things,
Non-waste: ideas cannot be wasted, since one person's non-use of an idea does not prevent another
from using the same idea.
-Can justify propertizing ideas under Locke's approach with three propositions: first, that the production of
ideas requires a person's labor, second, that these ideas are appropriated from a common which is not
significantly devalued by the idea's removal, and third, that ideas can be made property without breaching
the non-waste condition.
-Another interpretation of Locke's labor justification can be called the 'labor-desert' or 'value-added' theory
(not same as those under notion of avoidance of labor). This position holds that "when labor produces
something of value to others - something beyond what morality requires the laborer to produce - then the
laborer deserves some benefit for it." The labor-desert theory asserts that labor often creates social value,
and it is this production of social value that deserves reward, not the labor that produced it.
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-The creativity we perceive in an intellectual product may be either in the core idea or in the core idea's
execution. I suggest that when we readily can separate the two, execution always seems to involve labor,
but it is not always clear that the creation of the idea involves labor. Ideas often seem to arrive like Athena-
suddenly they are there, full and complete. (this brings us back to the idea/expression dichotomy, and
explains why it is the expression and not the idea that is protected under IP regimes)
-NOTE therefore that the idea/expression dichotomy is the same as the idea/execution dichotomy, and thus
in all 3 IP regimes we look at (copyright, TM and patents), the ideas are not protected, it is the efforts that
go into their materialization, their actualization, their creation that is.
-IP systems also are more suitable for a Lockean justification than are physical property systems because a
growing set of central ideas are never permitted to become private property and are held in a permanent
common. Ideas that are privatized are in between the two extremes of common and extraordinary ideas: the
extremes are never propertized.

Case Study

Thberge v. Galerie d'Art du Petit Champlain, 2002, SCC, p. 136:

Facts: T is a well-established artist (painter). Seeks to stop the appellants from transferring authorized
reproductions of his artistic works from a paper substrate (or support) to a canvas substrate for purposes of
resale. Appels used a chemical process that allowed them to lift the ink layer from the paper (leaving it
blank) and to display it on canvas.
Issue: Determine the extent to which an artist, utilizing the statutory rights and remedies provided by the
CA can control the eventual use or display of an authorized reproduction of his or her work n the hands of a
third party purchaser.
Held: Appeal is allowed: T cannot limit the resp's right to use/sell his work on a different support.
Ratio:
Binnie J. (majority):
-In my opinion, appels did not reproduce the work.
-process used was within their rights as owners of the physical posters. At the end of the day, no new
reproductions of the resp's works were brought into existence.
-Believes that Gonthier gives to little scope to the property rights of the purchaser who owns the poster, i.e.
the physical object incorporating the copyrighted expression, and excessive rights to the artist who
authorized the printing and sale of the poster purchased.
-CA provides resp with both economic rights and moral rights.
-Resp made it clear in his evidence that his real complaint is more properly characterized as the alleged
infringement of his moral rights and its potential impact on the market for his works.
-Main argument is that to recognize the process used by the appellants as copying gives to many rights to
the copyright holder and not enough proprietary rights to the holder of the material manifestation of the
work. This would be contrary to the purposes of copyrights: balancing of the right of the author of the work
with those of society to use the work to further learning.
-Accordingly, according to Binnie, since the process did not entail that the number of copies of the work
were increased, there was no reproduction per se, and so copyright was not violated.
-the image 'fixed' in ink is the subject matter of the intellectual property and it was not reproduced. It was
transferred from one display to another.
-Reproduction defined as the act of producing additional or new copies fo the work in any material form.
Multiplication of the copies would be a necessary consequence of this physical concept of reproduction.
-Recognizes the possibility of 'metaphorical copying': transformation to another medium: e.g. books to
films, but this is not the case here, for dealing with a case of mechanical transfer of the work from one
support to another, not a reproduction of the work itself
-France recognizes the right of destination (droit de destination): gives the author or artist the right to
control to a considerable extent the use that is made of authorized copies of his or her work. This is not
recognized in our CA: the copyright holder does not by virtue of his or her economic rights retain any
control over the subsequent uses made of authorized copies of his work by third party purchasers.
Gonthier J. (dissent):
-Disagrees with Binnie J that reproduction can only occur if there is multiplication.
-It appears that the primary and essential meaning of the word reproduce as it appears in s. 3(1) CA is
 74

'produce a copy' of or 'cause to be seen again' or 'give a specified quality or result when copied'. In order for
a work to be reproduced, there is no requirement whatsoever to establish that there has been an increase in
the total number of copies of the work.
-Way to understand what Gonthier is saying: for Binnie, reproduce means make a copy. For Gonthier,
reproduce means create again. In this sense, to reproduce need not result in additional copies, simply means
to go thru process of creation to get to same product.
-Producing a work refers to the initial materialization and reproducing it refers to any subsequent material
fixation that is modelled on its first fixation. Reproducing a work in any material form whatever therefore
simply means rematerializing what already existed in a first, original material form. Reproducing a work
therefore consists mainly of the subsequent non-original material fixation of a first original material
fixation. It does not matter if the reproduction results in additional copies or even if it destroys the original,
all that matters is that a new act of fixation occurs.
-thus to determine reproduction, must not count the number of copies of the work in existence after the
rematerialization, but the number of materializations that occurred over time.
Comment:
-Both agree that with respect to the CA, moral and economic rights are distinct rights and are to be treated
separately. This is, to some extent, why they are subject to different articles in the Act.
-This is a case that involves a conflict between title holder of a physical thing and a
copyright holder
-According to both Binnie and Gonthier, the moral rights of Theberge are not an issue.
-There is some discussion about the K arrangement between Theberge and the company
that ultimately sold the posters to the appellants, but again this is not an issue, cause the
'infringement' was by the appellants, not by the licensee (middleman).
-The only issue: balance of rights between the holder of the copyright and the holder of
the physical manifestation of the copyright.
-Interest in the case stems from:
Gonthier focuses on a doctrinal issue: meaning of the word reproduction in s. 3
(technical analysis)
Binnie focuses on a policy analysis: how to interpret the statute in light of the
policy objective of copyrights
In all of this theory is left unsaid.
-Core doctrinal issue is the meaning of reproduction (in whole or in part) in s. 3. 2 views:
1. Binnie: CML approach, look at the case law to conclude that copyright is
about making additional copies. Multiplication of the work is what is
essential. How to do this? Count number of copies before, count the
number of copies after, and if there are more copies after, then there has
been some reproduction.
2. Gonthier: CVL approach: uses a more textual approach; get to the heart of
the CA, analyze the use of the words in the context of the act. To
reproduce means to 'recreate', or cause to be seen again. Accordingly, to
determine that a work is reproduced there is no need to show an increase
in the total number of the works. The issue is the rematerialization of the
work, and so there is no need to count the total number of works before
and after, just count the rematerialization.

-Policy level: Gonthier does not go to policy explicitly, but Binnie does. He is very
explicit on the issue of policy: all property rights involve a balance, because giving a
right is to limit the liberty of another. Balance of competing property interests: those of
copyright and those of holder of physical thing. This is the overriding policy objective:
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must not give Theberge a veto over all possible use of the physical object by the holder of
the object.
-The normative plane for Binnie is a utilitarian analysis combined with an economic
approach: the question is really not about moral rights: the focuses on the economic
implications of copyrights.
-Because Gontier did not go beyond the doctrine, it is difficult to determine what
motivated his judgment about and beyond an analysis of the doctrine. However, it seems
clear that some of the motivation for Gonthier came from the personality justification of
IP: the copyrighted work is an expression of the self, a self-actualization, which deserves
protection in of itself.
-Conclusion: both judgment are consistent as far as they went, but if we take the
arguments of Gonthier outside of the artistic context, the argument might fall (what
would the parallel of reproduction for Gonthier with respect to a painting be in the
context of a patent). Gonthier's judgment also seems to blur the line between the
idea/expression of the work and the physical manifestation of it.

Origins of IP Regimes

Sherman and Bentley, "The Making of Modern Intellectual Property Law", p. 162
-Primary focus of the article is on those factors within the law that helped to shape the particular form that
IP law ultimately took.
-Point: modern intellectual property law was neither natural nor inevitable, nor was it an example of the law
coming to occupy its proper philosophical position. Rather, the separation of IP law into its now familiar
categories was the product of a complex and changing set of circumstances.
-Article looks at the literary property debate: question of the status of perpetual common law literary
property. Argument centred on the idea that both literary works and patents were incorporeal property that
should be afforded the same protection (but authors argued for the perpetual protection of their works even
if patents had a limited lifespan).
-proponents of literary property took position that patents and literary works were different in nature, which
explained why they should be treated differently. Means to distinguish:
Amount of mental labour embodied in the work: patents less, literary works more: more of work
means the object is individualized (associated with author), and so the less property rights could be
diluted by other concerns. Accordingly scale of protection according to the level of mental activity
involved in the creation of the object.
What it took to imitate or copy the intangible property: less effort is required for literary works,
more for objects of patents, so latter already some protection.

-Article then looks at the patent controversy of the middle of the 19th century: question of whether patents
should be abolished. If yes, then patents apologists suggested that copyrights should also be abolished.
-This was a repetition of the literary property argument, but answer provided was somewhat different.
Answer focused on how an invention should be characterized. Pro-patents argued that invention was a
creative process, while anti-patents said it was just a discovery of pre-existing info waiting to be
discovered. As such, protection should not be afforded for long, cause if particular inventor did not come up
with invention, somebody else would have at some point, while if author did not write a particular story,
unlikely that someone else would have.
-While the attempt to abolish patents was ultimately unsuccessful, the juridical nature of patents was
irrevocably changed: invention recast as a form of discovery rather than as a unique creation of an
individual. This establish the opposition: non-creative patents vs. creative copyrights.
-This perception also had a bearing on how infringements were defined: for copyright (since act of
creation), only means of infringing is copying. But for patents and inventions more generally (since only
discovery and not creation), then possible for two individuals to come up with the exact same invention
 76

without copying each other. Thus to afford protection, patents had to cover fortuitous discovery, while
copyright focused on intentional action.
-There seems to be an assumption that IP regimes were always the way they now are.
This is completely wrong. IP law in its modern form is a very modern notion, just over
100 years.
-IP regimes emerged at different times in history in light of different needs.
-Copyright started off as a quasi-patent law: exclusive right to publication, only people
that held copyrights were allowed to publish. This entailed no concern about the writer or
the quality of the work: all that society was concerned about was the right to publish.
Notice in this context term used: copy-right.
-Concern about the author came later: 1690: Lockean theory of labour.
-1710: Statute of Anne, statutory basis of copyright law.
-1774: Donaldson and Beckett: put an end to the debate of the existence of natural right
in CML v-a-v copyright: while such natural rights existed, the statute of Anne precedes
them, and thus supersedes them. Accordingly copyrights only extend for 21 years. NO
more consideration of the natural right of authors (although this was just in England,
debate about natural rights of authors continued in continental Europe, including in the
work of Hegel.)
-Utilitarian base copyright regimes exist and are in effect is all ex-brit colonies.

A) Copyrights

Sherman and Bentley, "The Making of Modern Intellectual Property Law", p. 171
-by admitting that copying need not imply that the works be identical, the law necessarily moved from the
concrete to the abstract, from the relative security of the text or the external appearance of the design and
the machine to the shadowy ephemeral world of the essence of the creation.
-One of the primary tasks that confronts IP law is that of recreating or locating the essence of the creation.
So, for example, before being able to determine whether the property interest has been appropriated the
law first ahs to locate and identify the essence of the intangible property.

Gilliam v. American Broadcasting Companies (1976) Fed Cir., p. 172

Facts:
-Monty Python agreed to allow BBC to license the transmission of its programs overseas.
-Monty Python retained all CR, and requested that any modification of its shows be submitted to them for
approval. BBC licensed ABC / Time Life to broadcast shows in USA. ABC edited the program before
airing, without the approval of MP
Issue: Can MP get an injunction to stop airing of edited shows? Held: yes
Ratio:
-Ability of CR holder to control his work remains paramount in CR law
-CR in underlying script survives intact, despite the incorporation of that work into a derivative work.
-Although licensees are entitled to some degree of latitude, they may not mutilate the work while presenting
it to the public.
-"If the proprietor of the derivative work is licensed by the proprietor of the copyright in the underlying
work to vend or distribute the derivative work to third parties, those parties will, of course, suffer no
liability for their use of the underlying work consistent with the license to the proprietor of the derivative
work. One who obtains permission to use a copyrighted script in the production of a derivative work,
however, may not exceed the specific purpose for which permission was granted." For this reason, claim
that BBC when it licensed the episodes to ABC gave it right to edit is no good: BBC was not entitled to
make unilateral changes in the script and was not specifically empowered to alter the recordings once
made: a grantor may not convey greater rights than it own.
-The cause of action which seeks redress for the determination of an artists work finds its roots in the
 77

continental concept of droit moral, or moral right, which may be summarized as including the right of the
artist to have his work attributed to him in the form in which he create it. Note that such moral right does
not exist in USA, so MP cannot claim it.
-Here, misrepresentation is used in lieu of moral rights: negative passing off was used: edited version by
ABC misrepresented MP to the public. This allows people, like MP, to still obtain protection from distortion
in absence of moral right.
Comments:
-Negative Passing Off: the artist has the right to be linked to his work in its original form bc it otherwise
this would be a misrepresentation: quality of the work might be substantially different and as such, the artist
might be deprived of a potential market.
-This case allows the US to say that they have incorporated the notion of droit moral in their law, and
therefore are in accordance with the Berne convention. However, all this case does is equate the droit moral
with misrepresentation.
-ABC cut out scenes that they thought would offend sensibilities of American viewers.
MP objected and tried to get an injunction and then sought damages: breach of copyright,
mutilation of the work, distortion of the work.
-What did the court do in the USA (since at time no recognition of moral rights)? It
reframe moral rights into economic rights: goal of artist is to make money; need to have
sufficient control of the work to get an audience; must have in the copyright the right to
ensure that the quality of the work is not altered in such a way that would misrepresent
work to potential audience; ABC has breached economic right to accurate representation
for the purposes of gain an audience/following.
-Berne Convention: discussion of the moral rights of authors; Canada is a signatory and
so a moral rights provision was written into our statute. USA has refused to sign the
Berne for a long time (precisely because of the recognition of moral rights), but TRIPS
convention required signatories to comply with Berne convention, so now USA complies
with it, even if it has not amended its CA.
-USA argues that Gillian proves that they comply with Berne convention.
-Gillian is about what is included in the copyright protection, Theberge is about what is
meant by an infringement.

Prise de Parole v. Guerin (1995) Fed. Court Justice, Canada, p. 181:

Facts: Author write North Ontario story in French for gr. 9 students and assigns copyright to Prise. Guerin
incorporates 1/3rd of his story in a book for gr. 8 and publishes. G never got permission from P, so there is
an infringement. In addition, author says that the editing was done in such a way that he felt appalled and
disturbed and did not want to be associated with the work. His sales plummeted but not his speaking
engagements.
Issue/ Held: Is there a breach of CR? Yes, they published the extract without permission of P or the author.
Ratio:
-Injunction and exemplary damages awarded S. 34 ( see BCAA)
- Is there a breach of Moral rights? No, although the author showed that his novel was substantially
modified without his knowledge, he has not shown, objectively, any prejudice to his honour and reputation
= his number of speaking engagements did not plummet, he was not ridiculed by peers etc.
-In this context, author, even if assigned CR, could still claim against G for infringement of moral rights,
cause these cannot be assigned (can be waived, however, which was not the case here).
-Test: To have a case, author must show, objectively, under s. 28.2 (1) that
The work was distorted, mutilated, or otherwise modified
To the prejudice of the authors honour or reputation
-Clearly, he was subjectively hurt, but that is not enough to find moral right violation.

Computer Associates v. Altai (1992) Fed Cir., p. 186:

 78

-Issue: How similar are the two computer programs? More generally, how to determine infringement of a
copyright over a computer program? Difficulty lies in that certain commands are necessary or common to
all computer programs, so need to distinguish what exactly is covered by the copyright.
-Ratio:
TEST:
Determine whether the object is entitled to CR as a whole
Then determine whether the allegedly infringing product is equivalent or represents a substantial
part of the CR program.
Process is abstraction filtration comparison (Applied in Delrina)
In ascertaining substantial similarity under this approach, a court would first break down the
allegedly infringed program into its constituent structural parts. Then by examining each of these
parts for such things as incorporated ideas, expression that is necessarily incidental to those ideas,
and elements that are taken from the public domain, a court would then be able to sift out all non-
protectable material. Left with a kernel or possible kernels, of creative expression after following
this process of elimination, the court's last step would be to compare this material with the
structure of an allegedly infringing program.

Step1: Abstraction test: Upon any work a great number of patterns of increasing generality will fit equally
well, but there is a point in this series of abstractions where they are no longer protected, since otherwise
the author could prevent the use of his 'ideas' to which, apart from their expression, his property is never
extended. Accordingly, the court should dissect the allegedly copied program's structure and isolate each
level of abstraction contained within.
Separate idea from expression
Begin with the code and end with the articulation of the programs ultimate
function

Step 2: Filtration: Process entails examining the structural components at each level of abstraction to
determine whether their particular inclusion at that level was 'idea' or was dictated by other considerations.
Serves the purpose of defining the scope of the copyright in weaving out unnecessary elements.
-Sift out all unprotected material: These are
Elements taken from the public domain (Incorporated ideas and Expressions that
are necessarily incidental to those ideas (Nichols))
Elements dictated by efficiency (there is only one way of expressing those
ideas)- Merger doctrine
Elements dictated by external factors (can the consumer use my program if
written otherwise?)

Step 3: Comparison:
Compare what remains of the allegedly infringed program with the program that
allegedly infringes.
The result of this comparison will determine whether the protectable elements of
the programs at issue are substantially similar to warrant a finding of
infringement.

-1980 saw the extension of copyrights to cover computer programs. Delvino case was
decided recently, but it is not clear where the case (note that it does seems to follow the
US approach).
-Case in US: how was copyright modified in order to accommodate computer programs?
Nichols notions developed: court must do 3 things:
Abstract: look at the program not just at literal code level, but also at basic
functions: map out the different axes of analysis
Filtration: Get rid of stuff that any other program would include: remove the more
obvious levels by looking at the nature of computer programs. Ask what particular
 79

elements involve creativity? If any other computer program would have used
code, then get rid of it.
Comparison: compare the infringing and original program: is there substantial
similarities?
-If did this to other works (such as paintings), copyright would be overprotective: this
analysis only applies to computer programs.
-Note that it does look a lot like what we do for patent infringement: use of person trained
in the art to define the contours of a patent claim.

B) Trademarks

Sherman & Bently, The Making of Modern IP Law, p. 194:

-When modern IP law first took shape in the 1850s, TM law was not recognized or indeed even considered
as a possible candidate for inclusion.
-Over the second half of the 19th c, TM law came to take shape as a discrete and recognized area of law. A
number of factors provided the impetus for the crystallization of modern TM law:
Growing recognition and use of marks in commercial practice led to increased specialization in
this field.
The above heightened the call for recognition of TMs as a separate area of law and for the
introduction of a registration system.
Growing importance of foreign markets to Brit industry required that law be set out in greater
details.
-With the dev of TM law came arguments that it should be included in IP regime of copyright, patents and
designs. 2 reasons were given why this should not be the case:
TM dealt with pre-existing subject matter rather than the creation of new material
TM law is more concerned with regulating fraud than property
 80

Frank Reddaway Co. v. Georges Banham, 1896, House of Lords, p. 198

Facts: Camel Hair Belting is what Reddaway calls his products made out of camel hair. In the trade, it is
now well received that camel hair belt refers to Reddaways products. R therefore has Goodwill and
reputation. Banham, ex-employee of R, now makes his own camel hair belts and calls them by that name.
Issue:
Is Banham passing off his product as Reddaways with the purpose of benefiting from it?
Yes
Is camel hair belt a generic name (i.e. descriptive): no, might have been at first but
acquired secondary meaning over time.
Held:
-there is ample evidence to justify that, amongst those who were purchasers of such goods, the words
Camel Hair were not applied to belting made of that material in general, but belting made by the
particular manufacturer: Reddaway.
Ratio:
-Passing-off is an issue of Commercial Morality
-Test:
When the term is new or the term has acquired secondary meaning, only proof of
misrepresentation/ confusion (passing off ) is necessary
When the term is generic, proof of goodwill is necessary otherwise, you cannot
prohibit others from using the same term if said use is not intended to mislead the
public.
-Focus on the end user (the consumer) to make sure that they are not misled and recognize that the trader
has an interest as well.
-The name of a person, or words forming part of the common stock of language, may become so far
associated with the goods of a particular maker that it is capable of proof that the use of them by themselves
without explanation or qualification by another manufacturer would deceive a purchaser into the belief that
he was getting the goods of A when he was really getting the goods of B.
-a word may acquire in a trade a secondary signification differing from its primary one, and that if it is
used to persons in the trade who will understand it, and be known and intended to understand it in its
secondary sense, it will nonetheless be a falsehood that in its primary sense it may be true.
Comment:
-Case establishes that ordinary words that would not normally be susceptible of protection thru TM law can
acquire secondary meanings over time, i.e. become distinctive as opposed to merely descriptive, and thus
become susceptible of protection.

Institut National des Appellations dOrigine des Vins et Eaux de vie v. Andre Wines,
1987, CA Ont, leave to appeal to SCC refused, p. 203 :
Facts: Pf (Institut) is suing because the def is selling a sparkling wine called canadian Champagne. Pf
argues that the appellation champagne is specific to the region of France where it is produced, and denotes
a particular product of a particular quality. By calling the product Canadian Champagne, the def is passing
off a product that, in the minds of consumers, will be assumed to be of the same quality and process as that
of France. Thus this is not a traditional issue of PO, since the def is not saying that its products are that of
the pf, but rather a modified PO, whereby the def is using a term the pf believes it has exclusive rights to
use. What pf is seeking to distinguish is a particular source, mode of production, origin, and quality over
another; pf fears dilution of label Champagne and confusion.
Issue/Held: Are the defs liable for the tort of passing off pursuant to the use of the name Champagne on
their product? No.
-Ratio:
-To succeed the pf must establish that the def :
Misrepresented their products as being sparkling wines known as Champagne.
The misrepresentation is calculated to deceive the public into thinking the Cdn
product is champagne.
The conduct has or will injure the goodwill of the pf.
-Factual considerations:
-CAD champagne is marked in accordance with Canadian policy (Food and Drug Act 1970 sec 5(1,2))
 81

-Consumer unlikely to be mislead:

100 years of sale of CAD champagne: it has developed its own reputation and
goodwill
Cheaper: Price difference (its competing with other CAD producers, not French)
Consumer more educated now than ever before
Consumer never complained
-Sale of Can Champagne has not hurt the trade of French Champagne
There is no demonstration of actual financial loss
Their sales have increased alongside those of CAD champagne
-The CAD have no intention to pass off their produce as another one. That is evidence of good faith.
-Finally, there has been some dilution of the name champagne already (market in the USA and other place
sometimes used to word: champagne is not consistently used as an appellation specifically referring to the
product of the pf)
-So essentially, the court concludes that there has been no confusion on the part of consumers, and so the pf
failed to prove one of the elements of PO.
Comment:
-There is some discussion in the case of the notion of shared goodwill, which is now accepted by the
courts.
-CAD admitted benefiting from the reputation of Champagne
-Much like there is no evidence of confusion, there is no evidence of a lack of confusion
-Case stands for the idea that passing off is not just a question of advertising ones products as that of
someone else: it really is about the intentional confusion that is likely to result in the minds of
consumers in terms of thinking that they get one product but in fact obtain a different one, regardless of
how this confusion is achieved. Also about the idea that passing off can be recognized in the
depreciation of the goodwill attached to a particular product when the depreciation is the result of
confusion caused by def.

Eli Lilly v. Novopharm, 1997, Federal Court of Canada, Trial Division Ont, p. 224:
Facts: Lilly sells Prozac in capsules that are green and cream coloured. Patent expires, and Novapharm
starts selling Prozac (not the actual one, but a substitute) as a generic replacement of Lillys drug, in
capsules that are of the same colour and size. Lilly sues arguing that the colour and size of the capsule are a
TM and that Novapharm is PO.
Issue: Essentially, is Lillys claim of PO valid?
Has Lilly established that it had goodwill in its product (i.e. that the colour of its pill
became associated in the minds of consumers with its product)?
Is there or would there be confusion if Novopharm was allowed to sell its capsules?
Held: Lilly has failed to prove that it had goodwill, and in any event there would be no confusion between
Lilly and Novopharms capsule.
-Lilly has not established that the appearance of its capsule has acquired the requisite reputation in the
market place as a distinguishing feature of its product. The appearance of the defs capsule does not operate
to lead a customer to request the products of the def rather than those of the pf. The capsules similar
appearances do not increase the likelihood of confusion.
Ratio:
1- Establish Good Will
2- Establish P-O
-Which user might be confused? The physician? The pharmacist? The consumer? Only the consumer in
this case might be confused, but there is no such likelihood as the consumer very often is not aware who the
manufacturer is, and cares even less.
-Lilly failed to provide any kind of statistical evidence showing confusion
-There is also little evidence that the colour of the capsule is associated with the particular product
(medication contained therein). Even if it had been so associated, the defs chose to use the same capsule
colours as the pfs, and they did so for a marketing reason but that reason is to identify the medicine as one
that is therapeutically equivalent to the defs product, not to represent to the public that their products are
the pfs products. This speaks to intent (despite the fact that intention to deceive need not be proven in a
 82

case of PO, all that needs to be proven is the likelihood of confusion).

Comment:
-Case is about TM over get-up (recall Lego and the Reckitt), and in the case of prescription drugs,
colours and shapes of the pills do not qualify as distinctive. Case is also about the consideration of the
appropriate consumer market in order to establish confusion: here it was the ultimate consumers, cause
doctors, pharmacists and nurses are not likely to confuse one drug for another. But the court found that
the ultimate consumer, in terms of prescription drugs where he/she has very little choice in terms of
what he/she purchases (drug is prescribed by doc and stocked by pharmacists), was not likely to be
confused cause most likely would not even know (or care) about the drug company.

C) Patents

Edward Coke, The third part of the Institutes of the Laws of England, p. 244
-Monopolies are contrary to the ancient and fundamental laws, and are punishable by law
-Recognition that a balance must be struck in rewarding privileges to inventor/new manufacturer (so that
the inventiveness may be rewarded and so to encourage others to be inventive) and the public (so that the
public can benefit from the invention)
-The protective period should not be too long to protect the private privilege
-Coke lists 7 terms for the manufacturer to comply with in order to obtain a patent: If any of these are
missing, the patent will be declared void pursuant to the Act Against Monopolies
1. Must be for 21 years or under
2. It must be granted to the first and the true inventor
3. It cannot be an invention which is already protected by patent
4. The privilege cannot be contrary to law. This means it must be a new invention. One cannot
obtain a patent for a mere improvement or addition to a patented invention. The invention must be
completely new (NOTE: this is no longer the case in Canada: one can patent an improvement over
an invention).
5. The invention cannot be harmful to consumers. (Prof. Gold states this is usually never enforced)
6. The invention cannot be harmful to the trade
SKIPPED CAUSE OLD ENGLISH

Sherman & Bently, The Making of Modern IP Law, p. 248:

-Creativity and IP
-Although it was not until the early part of the 19th c that the language of creativity was used with any
degree of consistency, the common denominator which untied patent law, literary property and indeed all
areas of law which granted property rights in mental labour was a shared concern with creativity.
-In addition to being unified by a common concern with creative labour, another important feature of pre-
modern IP law was that the various areas of law also came to embody and share a particular image of what
it meant to create.
-In the same way as literary property law distinguished between ideas and their expression, patentable
inventions were juxtaposed against non-patentable discoveries.
-Webster: a discovery is one thing, an invention another. The discoverer is one who discloses something
which exits in nature, such discovery never was and never ought to be the subject of a patent. It is not
possible to invent a law of nature or a general rule of physics, they can only be discovered.
-What then was required in order to move from the realm of discovery to that of invention? The simple
answer was that it was necessary to show that abstract principles had been reduced to practice, that Nature
had been individualized or activated.
-While philosophical or abstract principles could not on their own be patented, their embodiment in a
material or practical form could. In these circumstances it was clear that in law it was the artificial or
created nature of the final product, its distance from Nature, which ensured that an object became an
invention rather than a mere discovery.
-IN essence, what IP law protected was the creative or human element embodied in the resulting product.
Comment:
-Article talks about the perception that what is patentable is the creative application of general
 83

principles, not the principles themselves. Much like in copyright, what is protected in patents is the
creative aspect, the expression of the principle if you will, not the principle/idea itself.

Sherman & Bently, The Making of Modern IP Law, p. 250:

-A fear of judgment:
-While in its pre-modern guise the law had been more than willing to differentiate between different works
on the basis of their quality, and to exclude what it regarded as trivial or undeserving, over time the law
grew wary of such evaluative processes.
-If we take the case of patents, there were many situations in the 18th c and first half of the 19th c where the
law explicitly passed judgment as to the quality of inventions and where it tried to exclude from its ambit
what were seen as non-deserving creations.
-In the 19th c it was the quality of what was registered that mattered most.
-Similar processes were at play with copyrights and designs.
-It was then asked during the middle of the 19th c whether it was appropriate for the law to engage in such
speculative activities. This grew over time into a fear of passing judgment and a fear about making
qualitative decisions. It was argued that the law should defer from making decisions of this sort completely.
IP law thus came to echo modernisms fear of being tainted by politics, morality and judgment.
-One of the reasons for this change in attitude was the growing belief that the law was ill equipped to
engage in subjective and qualitative decision-making.
-Instead of the law passing judgment on the quality of particular subject matter, such evaluative decisions
were left to entities such as the public and the market.
Comment:
-Why is it that the law no longer considers the quality aspect of an invention (or even a work of art) in
order to determine if it should be subject to legal protection? Cause the law is not equipped to do so.
Whos to say something is useful or artisitic?

NO READINGS DONE BEYOND THIS POINT.

Courts and Institutional Competence

Skipped this entire section
Class Notes: Friday 18 November 2004:
-moving on to introduction of Diamond
-Parker: cannot patent a computer program. 1978-1981: policy change: can patent a
computer program in USA.
-key case between Parker and Fluke (?): Charkrabardy: biological living organism is
susceptible of patenting: bacteria : found pre-existing DNA that had characteristic of
eating oil: put all these characteristics in one bacteria: did not create the DNA, all he did
was take the characteristics and put it in one product.
-Funk Brothers: case from the 50s: family of bacteria to be patented: mixture of bacteria
that could ??? : tried to patent: NO: court says that inventor did not create the bacterias,
they are products of nature, and no matter how you organize them, cannot be patented.
-in both above cases, there is a technological difference in terms of what human
intervention was, but in both cases the action is reorganizing the bacteria that already
existed. Supreme Court decided that C could be patented. Court got around Funk
Brothers: object of PA is to promote invention, by definition Congress cannot know what
the invention will be (otherwise no novelty), and so the PA contemplates inventions that
are unknown, so cannot use legislation to prevent patents: unless legislation expressly
says no patents for this, then one can patent.
 84

-Point of this: unless legislation expressly prohibits a patent over something, then one can
patent as long as human intervention is needed. This was undoing Funk Brothers.
-Diamond: 70s: case deals with DNA: scientific community declare moratorium on
genetic research
-case of C put much pressure on other jurisdiction to reform this aspect of patent law: this
resulted in the development of biotechnology industry.
-Europe started issuing patents over the same material (DNA)

-Harvard College case: application in USA OK, but in Europe no go, cause cannot patent
form of life. This decision reversed by European Patent Office cause can patent life-
forms if not unethical and useful: this is subject to a number of safeguards.
-examiner issued patent, but opposition by Greenpeace:
-US patent: 1986-8, Europe refuses but then Board of Appeal: 1990: can patent under
European Patent Convention. Examiner issues patent 1992 in Europe, but opposition by
Greenpeace 1992-1993, 1998: Directive passed by EU to be implemented by 2000, 2002:
opposition decision released: patent is valid but only over rodents, not over all mammals
as in initial claim (accepted the opposition by Greenpeace but only over non-rodents:
argument was that this was unethical and hurtful to the animals).

-In Canada: decided the issue in 2002: Canada initially rejected the patent (cannot patent
a lifeform: policy decision). Harvard College appealed: lost at trial, won at court of
appeal. SCC decides: December decision: 4-5 split with all civilians on the same side and
common law judges on the other: majority (Bastarache): this is complicated issue, not for
the court, only Parliament can make a judgment call (cause not just a question of whether
or not can patent, but rather if patent under what terms) and so court is not competent to
decide the issue.
-Minority (Binnie): biotechnology is big business, all partners (USA, Japan, Europe) have
allowed this, so should we: allow patents over high forms of life. Note that the fine
determinations should be left to Parliament, but we can decide whether or not life forms
can be patented.
-2 resignations : Lamer and LHeureux-Dube (both part of the majority). Following
resignations, majority became minority and vice versa (this is Schmeiser).

Alternatives to IP Regimes

A) Formal Regulation
-Competition law: seeking to ensure that no one abuses his powers in the market place.
This is not the concern of IP, but when IP is seen as regulating IP commercialization, then
commercial regime comes into play.
-Competition Law has been part of patent law since the very beginning. There used to be
a distrust of monopolies (any property right) refer to the statute of monopolies.
-Change in attitude; competitions bureau came to understand that IP can be seen as pro-
competition: it creates a market for similar products. But in certain circumstances, it can
do the opposite: you can use your IP right in such a way as to prevent competitors from
entering the market. The goal of the competition law is to prevent the illegitimate use of
market power.
 85

-Thus competition law can come into play when granted IP rights are used in un-
competitive and unfair manner, when the rights are abused.

-s. 77 of Competition Act regulates IP, but does so only generally as it does any other
regime. Another more pertinent section is section 32: deals specifically with IP: exercise
of exclusive rights by virtue of Copyrights, Patents, and TM. The mere exercise of your
right to license or not are OK (so says the Competition Office); something that would go
against competition has to go beyond the mere exercise of exclusive rights. Competition
Office looks for something more to give effect to s. 32: have to really interfere with the
market. Not much case law on the subject (Nutrasweet, Time): this is because it is not
often that the exercise of IP rights has an effect on the market such that the Comp Bureau
would intervene.
-Reason why the Competition bureau does not interfere frequently: s. 32 was enacted in
early 20th c: Bureau concerned, at the time, about any monopolies. In 80 and 90s:
exclusive right is seen as promoting competition: innovation increases competition, and
innovation is the cornerstone of IP law: thus allocation of exclusive IP rights is pro-
competition.
-What the bureau looks at is the end result on the market: is there competition in the final
market? If so, then the possession of an exclusive IP right should not be of concern to the
Bureau.
-Note that the perception that exclusive IP rights encourage innovation and competition is
an assumption: there is no empirical evidence that it does so in actuality.

Trebilcock, Competition Policy and IP Rights, p. 315: Conclusions:

-p. 316: The IPR awarded under patent law attempts to strike the appropriate balance between these
competing concerns by limiting the scope and duration of exclusive rights, and therefore the innovators
reward, by restricting certain practices involve IPRs.
-p. 316 : Simply put, the IP grant seeks to protect property rights, and, in so doing, limits competition. In
recent years, this short-run view of competition authorities has gradually been replaced by a longer-term
approach that acknowledges that technological progress contributes at least as much to social welfare as
does the elimination of allocative inefficiencies from non-competitive prices.
-p. ???: IPR and competition policy and complementary ways of achieving efficiency.
-p. 336 : Competition policy should not be based on whether licensing generates too much or too little
reward for the innovators research efforts, but rather on the efficiency merits of the practice.
-p. 336: Just as competition law should not attempt to take on the mandate of patent policy in encouraging
innovation, patent law should not attempt to rule on anti-competitive practices
-p. 337 Based on the fact that the two policies (should) strive to strike the efficient balance between
dynamic and allocative considerations, this framework recognizes that patent rights promote, rather than
hinder, competition. Consequently, unlike the old approach, which undermined patent rights by placing
constraints on contractual arrangements, this framework recommends that competition policy work with
patent policy to provide adequate incentives for innovators to share their discoveries with others when it is
efficient.
o Competition policy should be based on the efficiency merits of the practice as opposed to whether
licensing generates too much or too little reward for the innovators research efforts. The basic
exclusive rights provided by the patent grant should be respected at all points of the analysis.
o IP differs from other property in its public goods nature which leads to a different application of
competition law in certain instances.
o In many cases the application of the law may be the same as in non-patent cases but certain criteria
characteristic of innovations (ex. uncertainty & specific investments) may justify the use of restrictive
practices. IP cases may get more leniency than non-IP cases when applying the same laws
o Competition law should not attempt to take on the mandate of patent policy in encouraging innovation.
 86

Nor should patent law attempt to rule on anticompetitive practices.

o Competition policy should work w/ patent policy to provide adequate incentives for innovators to share
their discoveries w/ others when this is efficient. Patent & competition laws should be complimentary
to strike a balance b/t dynamic & allocative efficiencies.
-Gold: The only thing authorities should look at is whether there is still competition. As
long as there is competition in that market, then the use of IP rights should not concern us
from a competition point of view.

Volkswagen Canada v. Access International Automotive, 2001, FCA, p. 338:

-Case is about the use of TM by Volkswagen to prevent Access from selling Volks parts with the logo on it.
Essentially, the argument of Access is that the use of CR and TM by Volks Canada is a restriction on trade
contrary to Competition Act, s. 32(1). Court decides that Access can make this claim in its statement of
defense.
-Here s. 32 is involved in an indirect way: Volks Canada is a subsidiary of Volkswagen
German Company. Volks Canada has exclusive right to sell car in Canada, including
parts. All IP property belongs to German Volks. Another company, Access Imports, went
overseas to buy Volks parts in sealed boxes, and imported the parts in Canada to sell them
at a lower price than Volks Canada sold them.
-Volks Canada: obtained a transfer of the CR from German company and sued under
copyrights. S. 27(2) CA: infringement of copyright for any person to import in Canada X
to sell into Canada.
-Note that Access is not reproducing the work, but is importing parts that use the logo,
and if they made use of this logo in Canada, it would be reproduction.
-Access says: this is abusive, and this is not permitted by the CA: unfairly limiting
competition thru the CA, so violation of Competition Act. At Federal Court of Appeal:
Access is not allowed to plead Competition act because of procedural requirements, but
here we are in the territory of equity. And so if in breach of competition act, if action is
anti-competitive, under clean hands doctrine, Volks Canada cannot come to court to have
a ruling in its favour.
-Note that Access argued that the only reason for the transfer of the ownership of
copyright from German to Canadian Volks was to limit competition in Canada.
-This is the best case we have on the issue (interaction of IP rights and competition law),
and yet it is still pretty poor.
-Another ex: CRTC regulates Canadian content on TV and Radio: this is limitation of
exclusive rights? Incentive effect on Canadian artists wishing to get their start: incentive
to create: not property or exclusivity rationale

-Volks is also a case about gray marketing: buy a legitimate product in a particular
market, and then sell product in another jurisdiction where one does not necessarily have
the right to sell (this comes from the fact that IP regimes are nationally based): the
product is legitimate, but the act of selling might be infringement of right holder in the
other country. In the casebook, cases dealing with grey marketing are approached under
TM. This is a big issue in terms of pharmaceuticals.

Heinz Canada v. Edan Foods Sales, 1991, Fed Ct Canada, p. 352:

Facts: Heinz Canada produces ketchup using a different recipe than Heinz USA. They have tailored their
recipe to Canadian taste through huge expenditure. Even the packaging is designed differently, with the
CAD consumer in mind. Edan foods bought shipments from the US and distributed them in CAD at cost
 87

saving, in the same stores where Heinz CAD distributes. Heinz CAD is suing for TM infringement and
asking for an interlocutory injunction: it claims that Heinz US is not licensed by Heinz CAD to use Heinz
Trademark in CAD. Heinz CAD buys 40% of Canadian tomatoes.
Issue: Can the exclusive CAD license block the sale of that product in this country? Yes
Held: The TM was under the control of Heinz CAD already (distinction with VW CAD) Ratio: TM
infringement granted because Edan was using Heinzs goodwill to sell its products in CAD.

-Edan purchased ketchup in the USA from retailer that purchased it from Heinz USA, and
then brought it to Canada and sold it despite TM right of Heinz Canada. Heinz Canada
sued: saying we are the TM holder, should not be selling Heinz ketchup in Canada: Egan
has no license to sell it. The Court agrees.
-The situation would have been different if the Canadian TM had been held by Heinz
USA: in such a scenario, there might not have been a problem. But as the Canadian TM
was held by a Canadian subsidiary of Heinz USA, then the import of the ketchup was an
infringement of the TM.

Brecks Sporting Goods Co. v. Magder, SCC, 1976, p. 345:

Facts: Brecks is the registered TM owner of fishing lures. He has exclusive distribution rights to the lures
in CAD. Imports them from France and sells them under the name of Mepps. Magder sold Meppes lures
in Canada in competition with the appellant, obtaining lures elsewhere than from appellant or from the
French manufacturer. Breck brought an infringement action. CAD transferred goodwill and TM of business
to US in 1955. The US transferred back the goodwill to CAD in 1959.
Held: the TM lacked distinctiveness within the terms of s. 2 (f) and s. 18 (1) (b). His wares could not be
distinguished from competitors wares and the French manufacturers wares at the relevant date.
Ratio:
- it is not enough for the pl to rely on its registration mark. At the material date the wares were not
identified with Brecks name but rather still associated with the French manufacturer.
-According to Gold: the goodwill/ distinctiveness belonged in France, so the Magder, by importing the
product from France, was not infringing it. Would the same have been ruled in the VW case had they
brought an action in TM?
-Magder imported products in Canada despite the holder of the TM in Canada.
-The case was decided in 1976: court said: Brecks was selling the products without being
TM holder until 1959. Product was linked to French company, not Canadian company
that imported the product. Nothing changed in 1959 when the Canadian company
acquired the TM: product in mind of consumer was still associated with French company.
-When Magder started importing the products from the French company, no confusion
was created in the minds of consumers, because they though the products they were
buying came from French company, which ultimately was the case. This case exists, but
the tendency of the courts is to go the Heinz way, not the way of this above case.

K LAW AS AN ALTERNATIVE TO IP REGIMES: EX: Domain Names:

-Central problem: the can be only one X.com in the entire world, but one can have the
same TM used in different countries by different actors: because TMs are national in
scope. What is the consequence of this on the Internet? From an advertising perspective,
the domain name identifies the source and so there is a problem if more than one person
wants to register the name X.com.
-Domain name is subject to the same logic as TM: passing off of a similar name that
leads to confusion. Problem is that there is no intl jurisdiction over domain names on the
Internet.
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-Scheme proposed: .com or .ca can only be administered by one agency. One entity
has control over the .whatever.
-ICAN is an agency that regulates the .com domain name: one has to be on ICANs list
of registered owners for people to access a site that ends with .com. If problems arise,
they are solutioned thru K law: ICAN licenses the right to use the domain name, and
people can sue for breach of allocation.
-This is K law because it is a K that allocates the IP rights, not govt regulation. All that
governs the use of the .com or .ca is the K between the individual and the agency
controlling and compiling the domain names.
-Note that this is a K of adhesion: if a person wants the name, then that person must agree
to the K; there is no means of negotiation. Note also that the process of getting approval
for the domain name is usually quite fast.
-Thus thru technology, a private agency can regulate the internet, and there is no real
need of IP to govern domain names. This may however be problematic in terms of
monopoly.

ICANN: Uniform Domain Name Dispute Resolution Policy

- Private K using similar terminology and invoking similar notions as the TM Ct
- DN names facilitate this: there can only be one person who controls/ administers
the DN: a central registry allows the people who control the registry to impose K-
ual obligations: they impose the same ones on everyone else.
- If you DN conflicts with a TM, then the TM owner can complain to an arbitrator
at ICAN: and they will issue a decision.
- This K-ual regime is a fabricated regime.
- The parties were able to take it out of the hands of the state and lobbying groups
- They have instituted provisions to prevent cybersquatters.
- A form of Private control: if you control an access point that everybody has to
pass, you can control Domain Names.

ACPA & IP: The Regulation of Domain Names

o Domain names are unique & are to be used by one party to the mutual exclusion of
another party.
o Corinthians.com cannot be used in the US to post Biblical messages & used in Brazil
for the promotion of a soccer team.
o ICANN: not-for-profit corporation that administers the domain name system
o Cybersquatting: individuals register Internet domain names in violation of the rights
of TM owners.
o Reverse domain name hijacking: TM owners abusively assert their TM rights to strip
domain names from rightful owners. Some TM owners find accusations of
cybersquatting a convenient way to bypass legit disputes over TM rights.

Uniform Domain Name Dispute Resolution Policy (UDRP)

o Governs allegations by 3rd party TM holders asserting that a registrant has engaged in
cybersquatting
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o Registrant is reqed to submit mandatory administration proceeding in the event that a

3rd party asserts, to an ICANN-approved administrative dispute resolution service
provider
1. The registrants domain name is identical or confusingly similar to a TM or
service mark in which the complainant has rights
2. The registrant has no rights or legit interests in the domain name
3. The registrants domain name has been registered & is used in bad faith
-Complainant wins under the UDRP if all 3 aspects listed above are established.

Sallen v. Corinthians Licenciamentos Ltda., 273 F.3d 14 (1st Cir. 2001), p. 357
-Dispute b/t Sallen & CL over Sallens registration & use of the domain name corinthians.com. WIPO
ruled under UDRP in favour of CL.
Issue: Can Sallen invoke US law to reverse the WIPO decision regarding the use & transfer of his
registered domain name? Yes
Notes:
o Should a federal crt declare that Sallen is in compliance w/ the ACPA, that declaration would undercut
the rationale of the WIPO panel discussion
o There is a long discussion of US law & subject matter jurisdiction debating whether US law can quash
the WIPO panel.
o a domain name registrant whose name is suspended in an extra-judicial dispute resolution procedure
can seek a declaratory judgment that his use of the name was, in fact, lawful under the TM Act. This
clarification is consistent w/ other provisions of the reported bill that seek to protect domain name
registrants against overreaching TM owners.
o balance the rights of TM owners w/ the interests of Internet users & to preserve the rights of
Internet users to engage in protected expression online & to make lawful uses of others TMs in
cyberspace.
o The applicable US law here serves to create a protection for registrants to counteract abusive behaviour
by TM holders. Abuses includes administrative dispute resolution proceedings under the UDRP where
the proceedings are intended to strip a domain name from a registrant who has lawfully registered &
used the domain name.
o District Crts decision is reversed (had decided that the court had no jurisdiction to hear the case, but
did not decide on the issue of Sallens claim that his domain name did not violate ACPA) & the case is
remanded.
o The Anti-Cybersquatting Act says that you can always challenge the decision of a dispute panel
through private means
o The goal of the Act is to protect US DN from foreign arbitration and preserve DN in US.
-Some courts have enacted legislation to regulate the various agencies overseeing the
attribution of domain names, but of course such courts and legislation only have
jurisdiction over the agencies that are located within their territory. Accordingly, an
agency cannot be compelled to do something by a foreign govt (so if Canadian tribunal
orders ICAN to remove a domain name, ICAN does not have to do it. But if US govt
orders the same, since ICAN is in the US, then ICAN has to obey)
-In the above case, what was the issue is whether a court has jurisdiction to hear a case
involving parties from different jurisdictions. It was also about whether a national court
can overturn a decision by an intl body. All that was settled in the case was that the court
granted itself the right to hear the case (said it had jurisdiction).

Browne v. Bluebird Industries, 2002, Domain name Resolution Policy, p. 368:

Fact: Browne has created goodwill attached to name Brown. A competitor registered the DN: Browneco.ca.
Issue: Is the domain name registered by the competitor confusingly similar to the TM used by Browne such
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that the DN is likely to be mistaken for the mark?

Held: The competitor has registered the DN in bad faith, for the purpose of disrupting the business of
Brown.
Ratio:
-Passing off does not protect the name itself, passing off protects the business reputation, among customers
and others dealing with the business, which has become attached to the name through actual use of that
name in business activity.
-Use is therefore essential to a passing off action
-It has been concluded that Brown has used his TM and therefore has a right to it.
-Requirements for the complainant to succeed under Domain Name claim:
The complainant must prove, on a balance of probabilities that:
1- The DN is confusingly similar to the TM.
2- DN has to be registered in Bad Faith.
3- The person who registers has no legitimate interest in the DN.
-The DN is confusingly similar to a Mark if the DN so nearly resembles the mark in appearance, sound or
the ideas suggested by the mark as to be likely to be mistaken for the mark.
-Interpretation of Confusingly similar:
a) Similar: to the mark or name or products or business
b) Confusingly:
i) recognizing the wrong of passing off ones product or business for someone elses.
ii) Statute speaks of the likelihood of causing confusion in the mind of the target consumer.
-In passing off law, the inherent lack of distinctiveness of a mark tends to be the threshold question of
whether the complainant can establish any rights in the mark.
Distinctive in passing off or TM law is the capacity of a mark or name used in the marketplace to point to
one, particular product source or business, and so the capacity to distinguish those products or the business
from the products of other businesses or from other businesses.
-If a mark is inherently not distinctive, complainant may adduce evidence of distinctiveness acquired
throughout use: evidence of secondary meaning of the mark (the inherently not distinctive term)
-Secondary meaning in this case overcame inherent non-distinctiveness: the relevant group of internet users
are likely to associate the Registrants domain name with the complainants business.
-The competitor is in bad faith. Does he have an interest in the domain name? Was not used for the purpose
of non-commercial criticism, so he had no legitimate interest in it.

-Competitor of Brown decided to get domain name brown.ca on the idea that people
who would normally go to brown would end up on its site (competitors). Thats a non-
no. Rules that are outlined in the case (for a claim of confusing domain name):
1. The domain name must be confusingly similar to the mark being used by the pf
2. The party that registered the TM must have done so in bad faith
3. The registering party must have no legitimate interest in the domain name.
-All three elements have to be proven for a successful claim. Here the court decided that
all three elements were met: court took the domain name away (prevented the def from
using it) and gave full use to the pf.

B) Informal Regulation

Jeanne Clark, Patent Pools: A solution to the Problem of Access in Biotechnology

Patents, p. 384
Peoples practice:
o ICAN
o Clearing House example
In the music industry, you go to SOCAN (a clearing house). SOCAN
licenses to everyone! Good for the industry because it gets the music on the
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radio and good for the radio because it reduces the transaction cost of going
from singer to singer to obtain the permission to air their song without
infringing their CR.
o Patent pools
Specifically wrt the biotech industry
The technology that anyone needs in the industry in order to compete is
placed at the disposal of everyone.
The holders of the these important patents obtain royalties, regardless of
how important their patent is in comparison with the rest, they will not
obtain more money for it.
A 3rd party expert decides
Essence: in US: most agricultural biotech research is done in universities,
and universities dont grant licenses.
KEYPRO: a quasi-private regime: manages all the patents of the
universities and licenses to researchers who want to use the technology for
humanitarian purposes
KEYPRO is extra institutional.
Other Examples:
o Roosevelts intervention during WWII when he threatened all sides with compulsory
licensing if they didnt pull their act together and made airplane technology available
to everyone for a basic license fee.
o Same for the radio: under pressure
o Same for MPEG and DVD technology: they learned from the VHS and BETA
models:
Sony produced BETA and Panasonic produced VHS. It was of lower quality
than BETA.
Sony refused to license, but Panasonic widely licensed.
Accordingly most consumers got VHS and it killed the market for BETA.
o With MPEG and DVD, it was decided that the approach would be that of Panasonic
with VHS:
Everybody placed everything in the patent pool,
All got access to everybody elses technology because
Those in the pool had an obligation to licence to all
This system is not done through IP, but again, through private means, like ICAN and SOCAN.
It is premised on the fact that you can still compete even while sharing info (competition is
based on the variants that distinguish your product from that of your competitor, even if both
products use the same technology).
The advantage is increased and widespread production and sales (presumable for all).
The control is by the patent pool owners (administered by a 3rd party)
ICAN is formal because it involves formal K-law
Patent pooling is highly informal
Legal guidelines of the regime which are pro-competitive
o Integrates complementary technologies
o Reduces transaction costs
o Clears blocking positions
o Avoids costly infringement litigation and
o Promotes the dissemination of technology
o Increases the likelihood that a company will recover some, if not all, of its costs of
research and development efforts
o Patent pooling is an institutionalized exchange of technical information not covered
by patents: by fostering lines of communication between members, trade secrets
would become less prevalent.
YET patent pools can be anti-competitive as well:
o The excluded firms cannot effectively compete in the relevant market for the good
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incorporating the licensed technologies

o The pool participants collectively possess market power in the relevant market and the
limitations on participation are not reasonably related to the efficient development and
exploitation of the pooled technologies
-Conclusion of article: The use of patent pools in he biotechnology field could serve the interests of both
the public and private industry. Public would be served by having ready access with streamlined licensing
conditions to a greater amount of proprietary subject matter. Patent holders would be served by greater
access to licenses of proprietary subject matter of other patent holders, the generation of affordable pre-
packaged patent stacks that could be easily licensed, and an additional revenue source for inventions that
might not otherwise be developed. The end result is that patent pools, especially in the biotechnology area,
can provide for greater innovation, parallel research and development, removal of patent bottleneck, and
faster product development.

-p. 386: Concern over granting patents on biotechnology: potential lack of reasonable access to that
technology for the research and development of commercial products and for further basic biological
research. Possible solution: patent pool
-p. 368: Public concerns:
Many feel that by allowing genetic information to be patented, researchers will no longer have
free access to the information and materials necessary to perform biological research.
Further, if a single patent holder has a proprietary position on a large number of nucleic acids,
they may be in a position to hold hostage future research and development efforts.
an owner of a patent is likely to make business decisions based upon profitability, and one
element of such is the ability to obtain licenses.
-p. 388: A patent pool is an agreement between two or more patent owners to license one or more of their
patents to one another or third parties.
-p. 389: Law of patent pool: Department of Justice and the Federal Trade Commission have recognized
that patent pools can have significant procompetitive effects and may improve a business ability to survive
this era of rapid technological innovation in a global economy
-p. 392 394 Benefits of patent pools:
Elimination of problems caused by blocking patents or stacking licenses
Potential to significantly reduce several aspects of licensing transaction costs
Distribution of risks
Institutionalized exchange of technical information not covered by patents
-p. 394 395 Criticisms of patent pools:
Inflate the costs of competitively priced goods
Shield invalid patents
Eliminate competition by encouraging collusion and price fixing

Transnational Aspects of IP Governance

A) Jurisdictional problems
-What is the effect of a countrys IP on another country?
-We have international conventions, but obligations under them are fairly minimal.
-TRIPS is one convention that goes pretty far, and allows countries to give substance to
factors that have not been looked into before. For instance, it allows countries to attach a
different meaning to novelty requirement etc
-LDC (least developed countries ) recognize that in the short term, IP rights are a harm
(because limitation effects on markets and other evils that they create: see for example
lack of cheap generic drugs to cure illnesses in LDCs), but in the long run, it is better to
have IP.
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-Developing countries make a lot of money off their patents: have much market power
since there are few competing products.
-Say we have 2 countries, and in one the courts find an infringement, and in the other no
infringement, whose countrys regime is going to triumph?

John Perry Barlow, A Declaration of the Independence of Cyberspace, p. 396:

-Basically argues that cyberspace and the internet is the new frontier, it is not governable in the same way
that other territories are, it is in fact impossible to govern it thru traditional means of legislation since it
does not exist in one jurisdiction in particular but rather cuts across political and territorial boundaries.
-p. 397: Cyberspace consists of transactions, relationships, and thought itself, arrayed like a standing wave
in the web of our communications.
-p. 397: Your legal concepts of property, expression, identity, movement and context do not apply to us.

-Barlow asks if there is anything different about cyberspace, and concludes that
information wants to be free, that the Internet/cyberspace market will regulate itself so
there is no need (nor possibility of) to regulate it. This is part and parcel of the utopian
visions of the internet. Few people would accept this vision now, because of the kind of
stuff that actually is on the Internet: child porn, online gambling etc require, call for,
some regulation of this space, regulation cannot be left to users as some objectives have
to take priority.

David R. Johnson, Law and Borders: The Rise of Law in Cyberspace, p. 399:
-In opposition to Barlow, argues that it is possible to regulate Cyberspace, just that it cannot be done thru
the same traditional territorial/physical regulations.
-Intro:
Global computer-based communications cut across territorial borders, creating a new realm of human
activity and undermining the feasibility, and legitimacy of laws based on geographic boundaries. New rules
will emerge to govern a wide range of new phenomena that have no clear parallel in the nonvirtual world.
-p. 399: Creating a new realm of human activity and undermining the feasibility and legitimacy of
laws based on geographical boundaries.
-p. 399: This new boundary defines a distinct Cyberspace that needs and can create its own law and legal
institutions.
-p. 399: New rules will emerge to govern a wide range of new phenomena that have no clear parallel in the
non virtual world. These new rules will play the role of law by defining legal personhood and property,
resolving disputes, and crystallizing a collective conversation about online participants core values
-Conclusion:
The law of any given place must take into account the special characteristics of the space it regulates and
the types of persons, places, and things found there. [so it will be with laws that will govern cyberspace].
the law of the Net must be prepared to deal with persons who manifest themselves only by means
of particular IP, user account, or domain name.
Traditional concepts such as equality, discrimination, or even rights and duties may not work
as we normally understand them.
The boundaries that separate persons and things behave differently in the virtual world but are
nonetheless legally significant.
If the rules of Cyberspace thus emerge from consensually based rule sets, and the subjects of such
laws remain free to move among many differing online spaces, then considering the actions of
Cyberspaces system administrators as the exercise of a power akin to sovereignty may be
inappropriate.
Law, define as a thoughtful group conversation about core values, will persist. But it will not,
could not, and should not be the same law as that applicable to physical, geographically-defined
territories.
If Cyberspace is to recognize the nature of its subjects, it cannot rest on the same doctrines that
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give geographically based sovereigns jurisdictions over whole, locatable, physical persons.
Similarly, the types of properties that can become the subject of legal discussion in Cyberspace
will differ from real world real estate or tangible objects.
The newly emerging law challenges the core idea of a current law-making authority the
territorial nation state, with substantial but legally restrained powers.
When the persons in question are not whole people. Then their property is intangible and portable,
and when all concerned may readily escape a jurisdiction they do not find empowering, the
relationship between the citizen and the state changes radically.
-Johnson essentially says: if you are going to use the same tools and concepts that are
used in the real world, then dont even try to regulate because the Internet is all over the
place, you cant really pinpoint anybody down in a particular place, and so traditional
forms of regulations would be ineffective. However, it is possible to regulate the Internet
if we develop appropriate/independent/special rules that take into consideration its nature
and scope, the way it functions and operates. Thus it is possible to regulate, just need to
figure out how.
J. Goldsmith, Regulating of the Internet: Three Persistent Fallacies (1998),
p. 417:
-Article looks at three myths that exist about cyberspace in the intl context and the challenges these pose to
national regulation
Fallacy 1: Cyberspace is a separate place
o Territorial govs should not regulate internet transaction since internet providers cannot control their
information flow in territorial space b/c information on the net appears simultaneously in all national
jurisdictions. Problems of spill-over contributes to the argument for self-regulation of the internet.
o BUT, the net is NOT a separate place: The problem is that the Net is not a separate place, and Net
users are not removed from our world. They are no more removed than telephone users, postal users,
or carrier-pigeons users Real-space communication can cause real-world harms. Moreover, the
people harmed by these internet transactions often do not have a voice in the transaction and cannot
exit from the private rule-sets that facilitate it.
Fallacy 2: Territorial governments cannot regulate the non-territorial net
o Claim that restrictive CR will be ineffectual when applied to digital goods on the net. Because
territorial governments with restrictive CR regimes cannot prevent the import of cheap digital goods
made offshore in permissive CR territories (because of high traffic over the internet and difficult
inspection), the restrictive regimes CR restrictions will become useless. Information produces in the
restrictive regimes will be forced to lower their prices in order to compete with the offshore goods
o Says that Dan Burk thinks that territorial governments cannot regulate offshore content producers who
are beyond the states physical control. Second, they think that because territorial governments cannot
stop the flow of information packets across territorial boundaries, they cannot regulate the flow of net
transactions within their boundaries.
o Sees that Burk is underestimating the many ways that nations can regulate the net.
o A nation does not have to inspect every item crossing its borders to effectively regulate the flow of
items within its borders. Instead, it can achieve a great deal of regulatory control over illegal foreign
imports by imposing costs on persons and property within its territory. To the extent that these local
regulations raise the cost of obtaining foreign content, they regulate the foreign content even though
the source of the content is beyond the nations control and the nation cannot stop broadcast signals at
its borders.
o Nations regulate grey marketing the same way: they wait for it to cross the border and then strike.
o Not suggesting that enforcement strategies will eliminate illegal digital imports, but rather that it is
possible to regulate certain aspects of it: the consumers, the providers in the territory. Will not be
100% effective, but then all regulation is imperfect.
o The relevant question is whether these regulatory strategies will heighten the cost of transmitting,
obtaining, copying and using digital goods sufficiently to achieve acceptable control over them.
o How much control is acceptable control? Depends on several factors:
1. The normative commitment of the regulating gov: the importance to the gov. of achieving this type
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of control.
2. The costs the gov is willing to pay to achieve regulation.
o Can regulate thru technology: can block the signal from coming in tech gives you a basis to regulate.
-Once one recalls that the Net consists of people using equipment in a territory, it becomes clear that the
territorial government can exercise force over these people and their equipment to regulate both
territorial and extra territorial transactions.
Fallacy 3: Optimism about cheap, plentiful information
o Some say that the internet will foster tolerance, promote democracy, redistribute wealth, improve
writing skills, destroy trade barriers, & bring world peace! [get real]
o Just because the access to court decisions and legal doctrine from all over the world is now easier, it
doesnt mean that this will facilitate the harmonization and the enforcement of international private and
public law.
o Harmonization = convergence on a single substantive standard for a particular issue by courts and
lawmakers in different territorial jurisdictions.
o While the internet may promote partial harmonization it is by far not going to establish complete
harmonization
o Note that judicial decisions are not made in a vacuum. Thus while some states may join in creating a
global uniform legal system, national interest will still play a role in judicial decision making.
o Judges will be moved by personal or national biases. While some judges are immune from political
pressure, others are sometimes legally barred from following a foreign precedent
o It will not harmonize customary international law (CIL): it is too complex and changing in nature to
ever be harmonized by hundreds of actors internet has probably made the problem worse not better
o Note also that there is the issue of who has access, who connects, and the fact that most users are from
developed or nearly developed countries (e.g.: not many users, proportionally speaking, are from sub-
Saharan Africa). Also, internet may be used for both legit and illegitimate purposes (ex: use of internet
to copy work for a class: not really helping the individual get educated or develop research and writing
skills).

-Goldsmith goes against both of the above articles: cyberspace is NOT special, and it
should be subject to the same kind of regulatory process as anything else.
-While he argues that it would probably not be possible to regulate all the aspects of
cyberspace, this is not a justification for not trying: regulation is always difficult, but not
impossible.
-For example, with respect to illegal imports, the fact that we cannot catch all transactions
is not sufficient reason not to try and regulate/prevent their occurrence. The question is
can we catch enough of the transactions so that they become more costly (protective
measures taken to avoid being caught)? The possibility of increasing the cost of doing
things we want prohibited means that the Internet can, even if imperfectly, be regulated.
-All 3 authors agree that there is some role for the state and intl agreement and
harmonization of cyberspace.
-Note that market pressures and the desire to expand in different markets (thinking
globally is more significant now because of the existence of the Internet) also forces
regulation of Internet: easier to expand if the rules are standardized or harmonized.

-Digital Millennium Copyrights ACT (USA): was enacted in response to the ease in
copying digital media: those that want to prevent the copying may be able to use
technical innovation to prevent the copying (here penalty is imposed for multiple copies
of same product).
-With respect to the Digital Millennium Copyright Act (USA): govt, in early 1990s, was
quite supportive of the music and film industries, and a White Paper on the Internet
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suggested the DMCA to increase the rights of CO holder. Govt tried put forward
equivalent of DMCA but failed.
-The USA govt eventually managed to get DMCA passed as part of an international
agreement implementing WIPO. Why? Cause as a trade agreement, Congress has to
accept the entire package, not just bits and parts of it. Initially failed (DMCA) cause
opposition by academics and students and universities and others, but since passed as part
of intl agreement, then the voice of dissent was lessened.
-This brings back into play the issue of fair use and fair dealing: if technology does not
allow one to make fair use or dealing, then one is limiting the right of the public and
offsetting the balance/convention that is supposed to be at the heart of the relationship
between the copyright holder and the public.
-Speedbump analogy: one does not have to make laws to limit speeding to 30 km/hour if
there are speedbumps along the way. By analogy, this rule applies to IP: no need to make
a law if there are technological speedbumps that affect the same purpose as the law would
(such as the inability to copy material for the purposes of fair dealing or fair use thru
technology). In other words, one does not have to worry about the law as long as there
are effective technological barriers that can affect the same ends. This is really, however,
a half-ass approach that in the long run is not that effective, since technological advances
one way are usually counterweighted by advances in the opposite direction.

Graeme B. Dinwoodie, A New Copyright Order: Why National Courts Should Create
Global Norms, p. 423:
Intro:
-p. 424:
But what does it mean to develop international solutions, and how is such internationalization to
be achieved?
First, copyright law must accommodate and respond to technological developments; second,
copyright law is an essential instrument of national cultural and information policy; and, third,
copyright law affects an ever larger and more diverse set of societal interests.
I conclude in Part II that although classical public international copyright lawmaking affords
great latitude for national heterogeneity, and does not inherently or affirmatively exclude diverse
perspectives, it fails adequately to reflect the first of these concerns [responsiveness/pro-
activeness]. As a result, its backward-looking character, public international lawmaking adopts a
codifying rather than dynamic character.
-p. 425:
I argue, however, that an affective use of WTO dispute settlement proceedings, or more
importantly the adoption of an activist interpretive philosophy by parcels that are convened under
WTO auspices, would be counter-productive. It might supply the dynamism missing from the
classical model, but it would do so at the cost of other relevant concerns, namely national diversity
and pluralistic perspective.
In particular, I stress that the internationalization of copyright law may take forms other than
formal declarations of binding rules of public international law, and suggest that the properly
confined role of public international copyright lawmaking should consciously be supplemented by
private international copyright lawmaking.
-p. 426:
I conclude that the use of cybercontractual arrangements in the supply of copyrighted works
makes arbitration based on ex ante agreement a more likely resource for copyright development
than was previously the case because such arrangements create contractual privity between
copyright disputants typically not found in the breaks-and-mortar world.
I propose that courts should decide international copyright cases not by choosing an applicable
law, but by devising an applicable solution. [] National courts should thus be free to decide an
 97

issue in an international case using different substantive copyright rules that reflect not only a
single national law, but rather the values of all interested systems (national and international) that
may have a prescriptive claim on the outcome.

Conclusion:
-p. 478
We need a broader understanding of international copyright lawmaking.
These include not only the traditional public lawmaking vehicles of the WIPO and other
international copyright institutions, but also private law mechanisms.
National courts have a role to play in the creation, recognition, and enforcement of global
norms.

Wendy A. Adams, Intellectual Property Infringement in Global Networks: The

Implications of Protection Ahead of the Curve, p. 479:
Intro:
-p. 480:
The TRIPS Agreement sought to harmonize intellectual property norms by imposing universal minimum
standards of protection to be implemented within the domestic legal systems of Member states.
The TRIPS Agreement exerts a harmonizing influence, but does not mandate uniform law.
A Member state [] cannot compel other Member states to recognize heightened levels of protection
when domestic goods are subsequently exported to foreign states.
The result would be to return to a Member state to a pre-TRIPS position.
-p. 481: The equally rapid place of technological development, however, particularly in relation to online
commercial activity, calls into question to relevancy of the TRIPS Agreement.
-p. 482:
In applying domestic intellectual property norms to protect the interests of local commercial interests, an
excess of jurisdiction would overcompensate local innovators at the expense of foreign imitators, while a
jurisdictional deficit would reach the opposite result.
The first objective is to refocus attention on a question left unanswered when the TRIPS Agreement was
promulgated [] The second objective is to assess the alternatives available within both private and public
international law to address the adverse impact of regulatory diversity in virtual markets.
-p. 483: Part II of this paper sets out the relationship between territorial intellectual property rights and
minimum standards of protection, demonstrating that in circumstances of jurisdictional ambiguity,
conventional wisdom concerning the efficacy of open-ended standards and viability of protection ahead of
the curve is displaced.
-p. 484:
Part III examines supporting illustrative cases wherein new technologies are accorded heightened levels of
protection relative to prescribed international norms with mixed results.
Part IV considers the viability of private international law to address this perceived enforcement gap
whereby innovators attempt to create conditions of legal certainty in multi-jurisdictional intellectual
property transactions, notwithstanding the presence of regulator diversity.
In Part V, arguments are presented in favor of the WTO as the preferred institutional framework to address
international intellectual property enforcement issues in the context of online commercial transactions.
Conclusion:
-p. 524:
[T]he TRIPS Agreement established comprehensive minimum standards of protection binding on Member
states [ but ] the prescribed minimum standards do no equate to global law.
Thus innovators could protect against competition locally, but could not rely on heightened levels of
protection to establish comparative advantage internationally.
-p. 525:
Domestic courts lack the necessary institutional competence to address the complexities introduced by the
integration of intellectual property within international trade law.
 98

These multi-lateral arrangements nonetheless do possess the necessary institutional competence to balance
the competing interests involved in a manner that both protects the proprietary entitlements of private
actors and addressed the concerns of states located on the less privileged side of the digital divide.
-One countries IP regime may have negative effects on someone elses (high protection
afforded, inability to enter the market). Conversely, ones IP rights can also have a
positive effect on someone elses rights, one can benefit from another countrys IP regime
(higher protection, less chance of reverse engineering).

B) Regulatory institutions

J.H. Reichman, Compliance with the TRIPS Agreement: Intro to a Scholarly

Debate, p. 526:

Michael P. Ryan, The Function-specific and Linkage-bargain Diplomacy of

International Intellectual Property Lawmaking, p. 537
-p. 538: though many observers opined that the TRIPS agreement at GATT indicated that function-specific
intellectual property diplomacy at WIPO was dead, within two years two new treaties were signed at
WIPO, offering excellent contemporary opportunity to assess the function-specific and linkage-bargain
diplomacy of international intellectual property.
-p. 562:
Function-specific diplomacy contributes learning capacity to international lawmaking.
Linkage-bargaining diplomacy contributes multiple policy issues to international lawmaking.
Function-specific diplomacy is the grist of the law-creation mill; linkage bargain diplomacy fixes
the breakdowns.
They will consider both their bargaining rules and technical, functional expertise when planning
future multilateral negotiations.

Laurence R. Helfer, Regime Shifting: The TRIPs Agreement and New Dynamics of
International Intellectual Property Lawmaking, p. 563
Intro:
-p. 563: It contains detailed, comprehensive substantive rules and is linked to the WTOs comparatively
hard-edged dispute settlement system in which treaty bargains are enforced through mandatory adjudication
backed up by the threat of retaliatory sanctions.
-p. 564:
as part of a WTO package deal in which developing countries receive freer access to the markets
of industrialized nations in exchange for their agreement to protect the intellectual property rights
of foreign nationals.
The relevance of TRIPs is highly questionable for large parts of the developing world
-p. 565:
It grants least developed countries an additional ten years before they must protect
pharmaceuticals, and it reaffirms the principle of balanced intellectual property protection already
embedded in various clauses of TRIPS.
I argue that the expansion of intellectual property lawmaking into these diverse international
forum a is the result of a strategy of regime shifting by developing countries and NGOs that are
dissatisfied with many provisions in the TRIPs or its omission of other issues and are actively
seeking ways to recalibrate, revise, or supplement the treaty.
-p. 567:
Part II [] describes the substantive, institutional and relational components of a regime and
explains the diverse constituent principles, norms, and rules by shifting from one discrete regime
to another or between for a within the same conglomerate regime.
 99

Part III analyses the unexpected growth of intellectual property lawmaking in four international
regimes: biodiversity, plant genetic resources, public health, and human rights.
Part IV first revisits the public choice dimension of regime shifting, identifying the domestic and
transnational interest groups who are pressing developing states to engage in intellectual property
regime shifting.
Part V assesses the empirical evidence of this integrationist regime shifting strategy.
Part VI considers the broader consequences of a world in which the principles, norms and rules of
intellectual property protection are created and contested in multiple international regimes.
Conclusion:
-p. 603:
It argues that the recent expansion of intellectual property lawmaking into new international
venues is the result of regime shifting by state and nonstate actors who are dissatisfied with many
of the intellectual property treaty bargains negotiated by WTO members and are actively seeking
ways to revise or supplement them.
In particular, the division of authority and competition among for a regime shifting may engender
creates both opportunities and risks. It opens up lawmaking and dispute settlement to new
perspectives and avenues or influence [] but increases the likelihood of conflicting or incoherent
legal obligations for states and private parties.

Implications of Changes

Robert K. Paterson and Dennis S. Karjala, Looking Beyond Intellectual Property

Resolving Protection of the Intangible Cultural Heritage of Indigenous Peoples, p.605:
Intro:
-p. 605 :
In this case commodification can be defined as the conversion of intangible cultural property into
items of economic worth that can be traded for commercial gain by such means as license, rental
or sale.
The catch-22 is that indigenous property are either forced to commodify their own cultural
property and thereby perhaps appropriate its position in the indigenous community or renounce
commodification, thus allowing other non-indigenous people to appropriate indigenous cultural
traditions.
We conclude that, in many cases, legitimate concerns of indigenous people can be accommodated
without going to the extreme of recognizing new intellectual property rights, either through
modest reinterpretations of existing legal regimes concerning contract, privacy, and unfair
competition law, or through carefully tailored but general statutory amendment or incrementally
developed common law principles aimed at leveling what might otherwise be seen as an unfair
playing field.
First, it affords protection not just to indigenous claimants, though it may be especially suitable to
their needs, but to any person or group whose needs, arising from similar causes, justify specific
legal recognition and protection. Second, it avoids the need for its claimants to define their legal
rights in terms of preexisting category of property rights, thus avoiding charges of debasement and
commercialization that have adhered to such claims in the past. Finally, it respects the
fundamental human rights and social values that are reflected in our democratic traditions and the
carefully articulated social policy balances embodied in intellectual property law for both
indigenous and non indigenous people.
Conclusion:
-p. 623:
Our proposal is to focus on those aspects of indigenous peoples claims that can be addressed
outside the IPR regimes of patent and copyright.
The answer to this problem may be to seek or create legal rights that not only meaningfully
protect against the perceived abuse of indigenous peoples cultural heritages, but that also protect,
at least in principle, anyone who can satisfy its requirements, indigenous or not.
 100

-Multiplicity of institutions and agreements now deal with IP at international level :

World Trade Organization, World Health Organization, Biological Diversity Convention
etc.
-So what is the future of intl IP regulation:
Keep them vague enough that everyone adheres.
Have a multiplicity of agreements that may overlap, contradict each other, which
will almost inevitably ensure that they are not adhered to by all parties
Use WTO: once have the WTO present, then best way to protect property interest
is to use it
-A marked IP trend is to push towards internationalization Why? Because harmonization
reduces transaction costs (applying for rights in every single country is costly in terms of
money and time, and is usually done at times where revenues are not coming in). Private
intl law, public intl law and WTO are some of the mechanisms that facilitate
harmonization of IP regimes
-For CR: Berne Convention is applicable, so no transaction costs: automatic protection,
no cost to enter new markets.
-For other industries, however, particularly those that thrive on patents, there is a desire to
harmonize the markets
-As consumers, it is to our advantage that IP rights be low, while for those that would be
the holder of rights, it is to their advantage that the rights be large and extensive (and the
bigger the company, usually, the greater is the right desired).
-Another trend in IP is the growing awareness that we live in an information economy:
IPs are now recognized as primary assets in this new economy, and so accordingly there
is a growing emphasis on the regulation of these assets
-Another trend: tension between developed and developing world: this divide has
consequence on the markets, and creates problems that affect an entitys ability to sell
domestically and internationally
-The tension may stem from different conception of IP rights and their role. IP is a very
western notion, and this can be a strain on harmonization: not everybody understands IP
regimes to do the same things or be enforced the same way.
-One solution to this problem is to design subject/issue specific treaties: computer
program and digital media treaties

Take Home Exam:

-explain in a clear way what is going on, but use plenty of examples to illustrate that you
master the documents read.
-when refer to a case, can only refer to the point of the fact, what is really going on, but
no need to go over the facts (assume that Gold knows about the case)
-citation: Author, Vol, p#
-make 3 or 4 main points (cause paper is only 5 pages long, double spaced), be succinct