On April 7, 2013, Mr. Gosnell delivered a lecture to students of the Peking University Law School regarding Canadian law of intellectual property protection. This is the PowerPoint presentation he delivered.
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Peking University Presentation (English & Mandarin)
1. Lecture at Peking University Law School
and Intellectual Property School
Delivered April 7, 2013
An Overview of the Canadian Law of
Intellectual Property Protection
3. Sean L. Gosnell, LL.M.
sgosnell@blg.com
Tel: 416.367.6120
Fax: 416.361.2711
This presentation is prepared as a service to the
attendees of this seminar. It is not intended to be a
complete statement of the law or an opinion on any
subject. Although we endeavour to ensure its accuracy,
no one should act upon it without a thorough
examination of the law after the facts of a specific
situation are considered. No part of this presentation
may be reproduced without prior written permission of
Borden Ladner Gervais LLP (BLG).
This presentation is co-authored by Sean Gosnell and
Robert Dewald.
7. PART 1 – A Brief History of Canada
• World’s second largest country
• 35 million population, mostly in a few cities: Vancouver,
Calgary, Edmonton, Toronto, Ottawa, Montréal
• Highly dependent on immigration to maintain and grow
population
9. Fundamental
Political and Legal Structure
• Country is a
federation of
provinces and
territories with a
federal government.
Powers of each
level of government
carefully defined in
original legislation,
which was enacted
by both the U.K.
and Canadian
Parliaments.
11. Jurisdiction Over Intellectual Property
• The ultimate court determining the exact scope of
those powers for the first 100 years of Canadian
history was the U.K. Privy Council. Generally
speaking provinces prevailed over federal
government.
• However, intellectual property law is one of the few
areas that is exclusively within the control of the
federal government and federal courts.
13. Critical Political Events
After Formation of Canada
Depression: 1930-1940First World War: 1914-1918
Population: 8,000,000
Army Size at the Beginning of
the War:
3,000
Army Size During the War: 690,000
Killed: 67,000
Wounded: 173,000
• 20% of population on
government assistance
• Drought in prairies
• GDP down 40%
• Emergence of socialistic
governments in some western
provinces
• Rise of federal government
corporations such as CBC, Air
Canada, CNR.
• Old age pension started in
1927, due in large part to
pressure from veterans
15. FLQ Crisis and Repatriation of
Constitution
1970
• A Québec cabinet
minister was
kidnapped and later
killed
• Hundreds of
prominent figures
arrested
1982
• Constitution revised
and, with consent of
U.K., becomes
exclusively Canadian
• Explicitly provides for a
number of human rights
including various
freedoms. However,
deliberately excluded
protection of property
rights
17. Toronto – One of the World’s
Most Diverse Cities
• Population: 5.5 million;
• About 50% not born in Canada
• About 50% are visible minorities
Source: Wikipedia ―Demographics of Toronto‖
• As of 2006 there were about 540,000 people of
Chinese descent in Toronto
• By 2031 in Canada that number will be in the range
of 2.4 to 3.0 million
Source: Statscan, ―The Daily‖, March 9, 2010
19. Summary
• Gradual replacement of independence and self
sufficiency with large and expensive government
social programs
• Correspondingly high level of taxation and
significant government regulation and involvement
in many areas, such as health care
• Strong historical democratic traditions and rule of
law but little tolerance of challenge to government
institutions
21. PART 2 - Patents
What is a patent and what does it do?
• A patent is an IP right granted by a country to a patent
holder for a specific period of time. It gives the patent
holder the exclusive right to prevent others from making,
using, offering for sale, selling or importing articles
covered by the patent without the patent holder’s
permission. To produce the patented object the patent
holder may be required to obtain other approvals.
• In exchange for this exclusive right granted by a country,
the patent holder must disclose the invention to the
public.
23. Patents - Requirements
• A patent may only be granted for an invention that meets
all of the following conditions:
• Novelty
• Unobviousness (inventive step)
• Utility (industrial applicability)
• Patentable subject matter
25. Patents - Novelty
• To be patentable, an invention must be novel. That is,
the invention must not have been described or claimed
in a previously filed third party Canadian patent
application, and must not have been previously publicly
disclosed by a third party, anywhere in the world.
• A lack of novelty is often referred to as anticipation.
For example: Apple cannot patent the device
inside the Iphone that transmits the call (this has
been anticipated by previous technological
developments), but Apple can patent the unique
design of the Iphone.
27. Patent - Obviousness
• The subject-matter of the invention should not have been
obvious to a person skilled in the relevant art
• To be unobvious, the invention must be more than a
mere workshop improvement. If someone with
general knowledge in the subject matter could ―discover‖
the invention, the invention is considered obvious and
therefore non-patentable.
• Obviousness must be assessed, without the benefit of
hindsight, by considering both the claim and the filing
date.
29. Utility
• To have utility, a patent application must perform as
described or predicted by the inventor .
• It is immaterial that the invention works for a different but
unclaimed purpose
• It is irrelevant that the invention is impractical from a
commercial viewpoint, a nuisance, immoral or a burden
to society
31. Patentable Subject Matter
• For an invention to be patentable, it must be of the
permissible subject matter. In Canada, courts do not
allow patents for non-human higher life forms, for
example, plants and animals
• Patentable:
• Single celled non-human organism with modified genetic material
• An altered plant gene or cell is patentable
• Lower Life Forms (i.e. micro-organisms, yeasts, moulds, fungi, bacteria,
antinomycetes, unicellular algae, cell lines and viruses or protozoa)
• Non-Patentable:
• Multi-Cellular Animal Organisms
• Plants
33. Patentable Subject Matter – Business
Methods
A business method may be patentable if :
• it has a practical application;
• it is a new and inventive method of applying skill or
knowledge; and
• it has a commercially useful result.
For example: Amazon’s 1-Click method allowing online
purchases with a single click, using payment information
previously entered by the user, is an acceptable business
method patent
35. PART 3 - Trade-marks
• Canadian trademark law provides statutory protection to
―marks‖ under the Canadian Trade-marks Act and also at
common law.
• A trade-mark is a word, slogan, logo, symbol, or some
other indicator, or combination of indicators, used to
distinguish one owner’s products or services from the
products or services of others.
• A mark can be protected either as a registered trade-
mark under the Trade-mark Act, or by the common law
action of passing off.
37. Trademarks – Passing Off
• Passing off was first concerned with traders who passed their
business or goods off as another's.
• e.g. an imitation Louis Vuitton purse.
• The notion is now construed more broadly and covers a wide
range of deceptive commercial practices
• e.g. ―mismarketing‖.
• Three essential elements are required to prove passing off:
• Existence of goodwill
• Deception of the public due to misrepresentation; and
• Actual or potential damage to the plaintiff
39. Trademarks - Goodwill
• Reputation/Goodwill – To establish passing off, a trade-
mark owner needs to show that they own a reputable
mark
• Intentional Copying Establishing Reputation -
Evidence of intentional copying establishes prima facie
case of secondary meaning
• Identity of source immaterial - it doesn’t matter that
the public has no idea of the identity of the trade source
41. Trademarks – Deception of the Public
―The proof required to establish a probability of
deception is that there would be a likelihood of
deception in the mind of a substantial number of
persons such as the ordinary purchaser or user (of
the goods or services in question) purchasing with
ordinary caution.‖
[Walt Disney Productions vs. Fantasyland Hotel ]
• Confusion and Damages presumed – if goodwill and a
misrepresentation are established
43. Trademarks – Deception of the Public
Example:
Walt Disney Productions v. Fantasyland Hotel
• Disney Corporation, who owns ―Fantasyland‖
amusement park in Disney World, sued Fantasyland
Hotel in West Edmonton Mall
• Fantasyland Hotel was using of word ―Fantasyland‖ in
association with an amusement park within the mall.
• Evidence showed 8.2% of people in Edmonton thought
there was a connection between the Fantasyland
amusement park and Disney
• As a result, Disney succeeded in its passing-off claim
45. Trademarks - Damages
• Damages include:
• Lost sales
• Lost profits
• Interference with goodwill
• Loss of control of mark,
• Expert opinion re future losses
47. Trademarks – Defence to Infringement
Negate goodwill of trade-mark by showing:
• Absence of reputation or goodwill
• Lack of Distinctiveness
• Descriptive Word or Marks
• Functionality
• Non-Use
Other Defences
• Registration of Trade-Mark
• Use of an Individuals Own Name
49. Trademarks – Statutory Protection
• A mark that has been validly registered gives the
exclusive right to the owner to use the mark throughout
Canada in respect to the wares (goods) and services
specified in the registry, and to sue another party who
uses a mark that interferes with the owner's right.
• Under Trade-mark Act, the owner must have:
• registered the mark,
• used the mark, and
• used it for the sale of identical wares or services.
• If these three criteria are satisfied, the owner may
enforce their trademark rights across Canada.
51. PART 4 - Copyright
• The Copyright Act governs the legally enforceable rights
to literary and artistic works.
• Copyright includes the right to first publish, reproduce,
perform, transmit and show in in public.
• Copyrights do not need to be registered in order to be
enforceable under the Act or at common law.
53. Copyright – What is Protected?
• A ―work‖ must be original and its nature must be one of
the following:
• Literary (i.e. an essay you wrote)
• Dramatic (i.e. a monologue you performed)
• Musical (i.e. a song your band composed)
• Artistic (i.e. a portrait you painted)
• A ―work‖ includes a compilation.
• Copyright is granted the moment the work is created.
• There is no distinction between for-profit, commercial, or
personal use, nor does Copyright distinguish between
the work of a professional and the work of an amateur.
• The ―work‖ must be fixed in a material form.
55. Copyright - Originality
• Resulting from the Supreme Court of Canada decision in
CCH v. Law Society of Upper Canada, the minimum
standard of originality for a work is that it:
1. originates from its author
2. is not copied from another work
3. involves the exercise of skill and judgment
57. Rights Conferred by Copyright
• Copyright is the right to produce or reproduce the work
or any substantial part, to perform the work in public, and
to publish the work, including the right:
• to translate;
• to create a novel from a dramatic work;
• to dramatize a novel;
• to make a sound recording or movie;
• to make a move of a novel, etc;
• to telecommunicate the work;
• to exhibit the work;
• to rent out a computer program;
• to rent a sound recording; and
• to authorize any of the above.
59. Moral Rights
• Moral Rights consist of the right:
• to retain integrity of the work
• not to have the work distorted, and
• to have the author’s name associated or not, as the author chooses,
with the work
• Infringing moral rights requires detriment of the
honour or reputation of the author
• Example of infringement – tying ribbons on a sculpture, or putting
somebody else’s name on a story
• Moral rights cannot be assigned by the author, but
they can be waived
61. Infringement of Copyright
• Primary Infringement – to do something, without the
consent of the owner, that only the owner has the right to
do.
• For Example: it is an infringement to make a substantial copy of a
magazine article, or make a recording of a song in public
• Secondary Infringement – means that there has been
a primary infringement, such as an unauthorized copy,
which a person then sells, rents or distributes, provided
that such person knows or ought to have known, that it
was an infringing copy.
• For Example: A person who rents out a theatre for what they ought to
know is an infringing performance (i.e. screening a counterfeit movie)_
63. The Fair Dealing Exception
• In order to establish a fair dealing defence, the
defendant must show: 1) the dealing was for the purpose
of research, private study, education, criticism or review,
parody, satire, or news reporting and 2) it was fair. Six
factors are considered to determine ―fairness‖ in CCH:
1. The purpose of the dealing;
2. The character of the dealing;
3. The amount of the dealing;
4. Alternatives to the dealing;
5. The nature of the work; and
6. The effect of the dealing on the work.
65. Copyright – Technological Protection
Measures (―TPMs‖)
• Recent changes to the Copyright Act prohibit
circumvention of TPMs
• A TPM is any effective technology, device or component
that:
• controls access to a work (i.e. access control)
• restricts one from exercising the exclusive rights of a
copyright owner or remuneration rights (i.e. copying
control)
• The TPM prohibitions in the Copyright Act could
potentially ―trump‖ or prevail over various exceptions in
the Copyright Act, e.g. the fair dealing exception.
A patent does not grant the right to make, use, offer for sale, sell or import the patented article. The patentholder must comply with laws that affect the manufacture, advertising, use and sale of the patented article.For example, the Food and Drugs Actand its regulations may apply to a biotechnology invention
A patent does not grant the right to make, use, offer for sale, sell or import the patented article.The patentholder must comply with laws that affect the manufacture, advertising, use and sale of the patented article.For example, the Food and Drugs Act and its regulations may apply to a biotechnology invention
for a prior sale or use to anticipate an invention, it must amount to "enabling disclosure" BakerPetrolitean “enabling disclosure” allows a person who is sufficiently skilled in the art to ascertain and work the invention from such disclosure (i.e. reverse engineering is capable of discovering the invention)“mosaicing”, gathering together various references in literature in order to build a composite case of anticipation is not permissible under Canadian Patent law
for a prior sale or use to anticipate an invention, it must amount to "enabling disclosure" BakerPetrolitean “enabling disclosure” allows a person who is sufficiently skilled in the art to ascertain and work the invention from such disclosure (i.e.reverse engineering is capable of discovering the invention)“mosaicing”, gathering together various references in literature in order to build a composite case of anticipation is not permissible under Canadian Patent law
A combination of known elements may make the subject matter obvious.The discovery of a new use for a known compound is patentable. Patents may be granted for the new use of an old compound as there is inventive ingenuity in such discovery. However, the new patent does not grant any rights to the inventor over the claims covered by old invention Inventions can’t be judged based on hindsight - many inventions lose their claims to “inventiveness” once their working or operating mechanisms or principles have been disclosed to the public. As Lord Russell warned, “nothing is easier than to say, after the event, that the thing was obvious and involved no invention” [Non–Drip Measure Co. Ltd. v. Stranger's Ltd.]
A combination of known elements may make the subject matter obvious.The discovery of a new use for a known compound is patentable.Patents may be granted for the new use of an old compound as there is inventive ingenuity in such discovery.However, the new patent does not grant any rights to the inventor over the claims covered by old invention Inventions can’t be judged based on hindsight - many inventions lose their claims to “inventiveness” once their working or operating mechanisms or principles have been disclosed to the public.As Lord Russell warned, “nothing is easier than to say, after the event, that the thing was obvious and involved no invention” [Non–Drip Measure Co.Ltd.v.Stranger's Ltd.]There is no standard for differentiating an invention from a workshop improvement.A scintilla (tiny amount of something) of an invention has been held to be sufficient to support a patent.For example: Shaping a protective piece of metal around a generator to protect from splashes of oil, oil fumes and particles in the ambient air is not an inventive step by an inventor.The solution to the problem facing the inventor was the result of a mere workshop improvement and not inventive ingenuity. [see Gibbney et al.v.Ford Motor Co.of Canada]
Patent Act, s. 2 : “invention means any new and usefulart, process, machine, manufacture or composition of matter, OR any new and useful improvement in any art, process, machine, manufacture or composition of matter.Unicellular transgenic organisms are patentable in Canada. Multi-cellular, animal organisms are not (Harvard College v. Canada)a higher life form is not patentable b/c it is not a “manufacture” or “composition of matter” within the meaning of “invention” in s.2 of the ActThe Supreme Court found that claims to a chimeric gene and a plant cell containing that gene were allowable and enforceable against an infringer possessing an entire plantIt is Parliament’s role and not the role of the Canadian Patent Office or the courts, to determine the question of whether higher life forms are patentable (Harvard College v. Canada)Lower life forms are patentable in Canada since they are formed in large numbers that any measurable quantity will possess uniform properties and characteristics –the same cannot be said for plants
Patent Act, s.2 : “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.Unicellular transgenic organisms are patentable in Canada.Multi-cellular, animal organisms are not (Harvard College v.Canada)a higher life form is not patentable b/c it is not a “manufacture” or “composition of matter” within the meaning of “invention” in s.2 of the Act The Supreme Court found that claims to a chimeric gene and a plant cell containing that gene were allowable and enforceable against an infringer possessing an entire plantIt is Parliament’s role and not the role of the Canadian Patent Office or the courts, to determine the question of whether higher life forms are patentable (Harvard College v.Canada)Lower life forms are patentable in Canada since they are formed in large numbers that any measurable quantity will possess uniform properties and characteristics –the same cannot be said for plants
Small Percentage Ok: 8.2% of the people in Edmonton (that were the test subjects in Walt Disney Productions) were confused about the source of the mark. There was a connection, and this was enough to find substantial number.If you establish goodwill and misrepresentation, confusion can be presumedCourt also notes that damages can be presumed once goodwill and misrepresentation is established, Evidence of actual confusion help the plaintiff’s case; every case of real confusion will be a strong factor in establishing confusion and damagesThe litigation forced the mall's owners to change the Fantasyland amusement parks name, though they were allowed to continue using the name "Fantasyland Hotel" for a hotel in the mall. Fantasyland became “Galaxyland” officially on July 1, 1995
Small Percentage Ok: 8.2% of the people in Edmonton (that were the test subjects in Walt Disney Productions) were confused about the source of the mark.There was a connection, and this was enough to find substantial number.If you establish goodwill and misrepresentation, confusion can be presumed Court also notes that damages can be presumed once goodwill and misrepresentation is established, Evidence of actual confusion help the plaintiff’s case; every case of real confusion will be a strong factor in establishing confusion and damagesThe litigation forced the mall's owners to change the Fantasyland amusement parks name, though they were allowed to continue using the name "Fantasyland Hotel" for a hotel in the mall.Fantasyland became “Galaxyland” officially on July 1, 1995
The final part of the test for passing off is to show actual or potential damage to the plaintiff:This is usually in the form of lost sales. In Canada damages are not taken for granted, need proof.
The final part of the test for passing off is to show actual or potential damage to the plaintiff:This is usually in the form of lost sales.In Canada damages are not taken for granted, need proof.
Absence of Reputation – use survey’s to show TM is not known.Lack of Distinctiveness – if competitors/the public begin to use a TM as a generic work, it can lose its protection. This almost occurred to Kleenex. Kleenex now uses “Kleenex ™ facial tissue” which requires that other competitors should call it “facial tissue”Descriptive Words – trade-marks require inherent distinctiveness. Descriptive words cannot be trade-marked. For example: “Shredded Wheat” was found not to have acquired a secondary meaning and was not distinctive of its source. As a result it was denied TM registrations. Kellog should used/named its TM as: “SHREDDED WHEAT ™ whole wheat biscuits” – then other competitors will call it “whole wheat biscuits” Functionality - purely functional design cannot be basis of trade mark (i.e. cannot TM the shape of lego – especially after LEGO’s patent runs out) (Kirkbi AG vs. Ritvik Holdings Inc)Non-Use - A registration may be expunged under s. 45 if mark has not been in use in Canada during the past three years and there are no special circumstances justifying lack of useTM registration - is a complete defence to a claim of passing off (Molson Canada vs. Oland Breweries Ltd)Use of Own Name – person may use own name to carry on business, but only honest, nonconfusing use. If there is confusion with another business using the same family name, the infringing party may be limited in its ability to advertise. The infringing party can use the name without drawing attention to it. (Kisber & Co. vs. Ray Kisber & Associates )
Absence of Reputation – use survey’s to show TM is not known.Lack of Distinctiveness – if competitors/the public begin to use a TM as a generic work, it can lose its protection.This almost occurred to Kleenex.Kleenex now uses “Kleenex ™ facial tissue” which requires that other competitors should call it “facial tissue”Descriptive Words – trade-marks require inherent distinctiveness.Descriptive words cannot be trade-marked.For example: “Shredded Wheat” was found not to have acquired a secondary meaning and was not distinctive of its source.As a result it was denied TM registrations.Kellog should used/named its TM as: “SHREDDED WHEAT ™ whole wheat biscuits” – then other competitors will call it “whole wheat biscuits” Functionality - purely functional design cannot be basis of trade mark (i.e.cannot TM the shape of lego – especially after LEGO’s patent runs out) (Kirkbi AG vs.Ritvik Holdings Inc)Non-Use - A registration may be expunged under s.45 if mark has not been in use in Canada during the past three years and there are no special circumstances justifying lack of useTM registration - is a complete defence to a claim of passing off (Molson Canada vs.Oland Breweries Ltd)Use of Own Name – person may use own name to carry on business, but only honest, nonconfusing use.If there is confusion with another business using the same family name, the infringing party may be limited in its ability to advertise.The infringing party can use the name without drawing attention to it.(Kisber & Co.vs.Ray Kisber & Associates )
Abandonment – failing to use a TM for 3 years could lead to an abandonment proceeding (if you don’t use it, you lose it).
Abandonment – failing to use a TM for 3 years could lead to an abandonment proceeding (if you don’t use it, you lose it).
A Treaty State is country that has entered into the Berne Convention, Universal Copyright Convention or WTO Member.Note: China and Canada have entered into the Berne Convention and are WTO Members.
The Copyright Act does not define what it means to be original (nor do any multinational treaties) so courts have been required to determine what it means for a work to be original.In the UK, courts developed “Sweat of the Brow” (very low standard for originality) - based on a natural rights theory or Lockean theory in which the author should be compensated for the effort of producing the work.In University of London Press Ltd v University Tutorial Press Ltd exam papers consisted of mathematical problems were deemed to be original literary works as the originality only required that the "work must not be copied from another work...[and] should originate from the author.“In the US, court developed the “Creativity” approach - requires that for any work to be considered original it requires some element of creativity.While the level of creativity required is not high, it excludes mechanical arrangements of facts regardless of the labour expended in compiling and producing them.In the United States this approach is exemplified by the case of Feist Publications, Inc., v.Rural Telephone Service Co., 499 U.S.340 (1991) where the court held that the white pages of a phone directory were not original for the purposes of copyright.The judge held that for a work to be considered "original" in the United States it requires independent creation by the author and "at least some minimal degree of creativity."The Supreme Court of Canada (in CCH), ultimately concluded that the proper approach in Canadian law fell between the "sweat of the brow" approach and the "creativity" approach.
Note: from a policy prospective the amendment to the Copyright Act adding TPM (i.e. digital lock) prohibitions is a drastic change in copyright law. TPMs are new stand alone prohibitions, separate from Copyright law (as it was prior to the amendment to the Copyright Act). The TPM provisions indicate that if any form of access/copy protection exists on a work, the act of circumventing the TPM (even without copying) is now a violation of copyright law. The implementation of the TPM Copyright laws has also caused controversy as previous exemptions to Copyright Law (e.g. fair dealing) are thought not to apply (this has yet to be litigated).Possible examples of TPM circumvention – bypassing copy controls on CDs or encrypted thumb drives. Copying information from a password protected website, or taking screen shots of websites/programs that prevent digital copying. Note: none of these examples have been litigated.
Note: from a policy prospective the amendment to the Copyright Act adding TPM (i.e.digital lock) prohibitions is a drastic change in copyright law.TPMs are new stand alone prohibitions, separate from Copyright law (as it was prior to the amendment to the Copyright Act).The TPM provisions indicate that if any form of access/copy protection exists on a work, the act of circumventing the TPM (even without copying) is now a violation of copyright law.The implementation of the TPM Copyright laws has also caused controversy as previous exemptions to Copyright Law (e.g.fair dealing) are thought not to apply (this has yet to be litigated).Possible examples of TPM circumvention – bypassing copy controls on CDs or encrypted thumb drives.Copying information from a password protected website, or taking screen shots of websites/programs that prevent digital copying. Note: none of these examples have been litigated.
