Class notes
IP - LAW 347 - HOWELL - Fall 2020
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Lecture notes of 31 pages for the course Intellectual property at (Lec notes)
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Intellectual Property|FINAL OUTLINE
*** Complete copyright and partially complete trademark
C ON ST I T U T I O NA L A ND S TA T U T OR Y P RO V I SI O NS
s. 92(13) – Property and Civil Rights
s. 91(2) – Trade and Commerce
s. 91(27) – Criminal Law
S. 406-414 of CC
s. 132 – Treaty Implementation – Fed
Patents
s. 91(22)
Patent Act
Copyright
S. 91(23)
Copyright Act
Industrial designs
Industrial designs Act
COPYRIGH
T
COMPONE
NT
Copyright Act – No copyright, etc., except by statute
historical and 89 No person is entitled to copyright otherwise than under and in accordance with this Act or any other Act of Parliament, but
treaty nothing in this section shall be construed as abrogating any right or jurisdiction in respect of a breach of trust or confidence.
considerations Breach of trust of confidence – trade secrets – military secrets, commercial secrets
No such thing as CL copyright in the sense that we know copyright today in C-Law only existed property in literary and artistic
works
COPYRIGHT TODAY IS THE PROTECTION OF EXPRESSION act is not attempting to protect any breach of confidence
Adherence to Berne and Rome Conventions
91 The Governor in Council shall take such measures as are necessary to secure the adherence of Canada to
(a) the Convention for the Protection of Literary and Artistic Works concluded at Berne on September 9, 1886, as revised
by the Paris Act of 1971; and
(b) the International Convention for the Protection of Performers, Producers of Phonograms and Broadcasting
Organisations, done at Rome on October 26, 1961.
Reformulation of Three key cases in development of copyright – Theberge, CCH, Tariff 22
Copyright by the TB and CCH – refocused and clarified
Supreme Court of o Balancing user interests with rights holders – degree of harmonization with other copyright systems
Canada – Howell o Reposition of copyright to regulator of IT in society need for focus on user interest, identifying copyrightable
– 2004 – paras 1 - material in public domain, limits on CR
16 Tariff 22 – Internet transmission of musical works – position of Internet Service Providers (ISPs)
Underlying theory of Copyright
Prior – SCC focused on statutory interpretation – where ACT was exclusive source
In USA opposite where “promoting the Progress of Science” social contract and incentive to create theory
SCC had caution against adopting USA developments reiterated in CCH but then qualified in context
Theberge – Binnie J for Majority
Formulation of underlying theory for interpretation of Canadian CR
Stipulation of social contract perspective – exclusivity encourages creation
If expired or outside of copyright, then interests of users prevail
Para 31 – Inefficient to overcompensate artists and authors but self-defeating to undercompensate
Para 30 – balance between encouragement and dissemination of works and intellect and obtaining just reward for creator
prevent someone from appropriating benefits
o Relied on judgement from 1769 – Millar v Taylor
Theory is consistent with patent protection 20 years
Trademark -> protection of goodwill based on distinctiveness
Theberge – Goutheir J for Minority
Acknowledged theory of reward for creation – natural right REJECTED IN CCH by unanimous SCC
CCH – UNANIMOUS – McLachlin
Copyright law exhaustive in ACT for owner and user interests
Modern approach to interpretation
Public interest served by incentive theory consistent with TB consistent with USA
Balance between owner and user defence of fair dealing re-characterized as a “users’ right”
o User’s right of fair dealing would seem to be integral part of new incentive theory of CR
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USA – “promotion of progress of science”
Canada – “The encouragement and dissemination of works and intellect”
Theberge Reproduction and “first sale” Relationships: Economic and Moral Rights
TB claimed infringement when owner of poster “lifted” ink lawyer of painting from original substrate and placed it on a canvas
(new substrate)
Majority
No reproduction transfer from one medium to another reproduction requires additional copy of work to be made
Avoided interpreting “produce” in the phrase “produce or reproduce”
Can be remedial only as a moral right infringement separate from economic rights express limitations
Test of reproduction is narrower does not confer on owner the right to control usage of the substrate containing the work
Need to balance between owners and users of corporeal containing the work
Minority would not achieve balance as it gives owner control over physical substrate, blur distinction between economic rights
and moral rights, lessen measure of certainty between infringing and non-infringing activities
Acknowledges moral rights continue after point of sale to control usages distortion, mutilation, or modification (s. 28.2),
need to associate author with any exercise of economic rights under s. 3 where it is reasonable (s. 14.1(1)) consent must
have been obtained
Concerned about “first sale”/ exhaustion theory with respect to ownership and economic rights – moral rights belong to author
Minority
Reproduction occurs is works is fixed elsewhere – no requirement of additional copy – new materialization
Reproduction should be interpreted broadly to encompass new technologies “in any material form whatever” – s. 3(1)
Harmonization with other systems
Copyright act 1921 based on English enactment of 1911
Harmonization can occur as long as within Canadian framework
CCH Relationship between the owner and user of the incorporeal work itself in a context of a clear prima facie infringement by
reproduction
Issue: whether copyright extended to the subject matter and, if so, whether the defendant’s activities fell within the fair dealing
provision
Consistent with USA and Europe and within international conventions
BA S I C E LE M E NT S
Copyright Weak IP right long term – life of author +70
Only expression – not idea
Questions of evidence – have you been copied?
Expression distinguishes copyright from patent
s. 2 definition copyright means the rights described in
(a) section 3, in the case of a work,
(b) sections 15 and 26, in the case of a performer’s performance,
(c) section 18, in the case of a sound recording, or
(d) section 21, in the case of a communication signal; (droit d’auteur)
Copyright of 3 (1) For the purposes of this Act, copyright, in relation to a work, means the sole right to produce or reproduce the work or any
works – s.3 substantial part thereof in any material form whatever, to perform the work or any substantial part thereof in public or, if the work is
unpublished, to publish the work or any substantial part thereof, and includes the sole right
(a) to produce, reproduce, perform or publish any translation of the work,
(b) in the case of a dramatic work, to convert it into a novel or other non-dramatic work,
(c) in the case of a novel or other non-dramatic work, or of an artistic work, to convert it into a dramatic work, by way of
performance in public or otherwise,
(d) in the case of a literary, dramatic or musical work, to make any sound recording, cinematograph film or other
contrivance by means of which the work may be mechanically reproduced or performed,
(e) in the case of any literary, dramatic, musical or artistic work, to reproduce, adapt and publicly present the work as a
cinematographic work,
(f) in the case of any literary, dramatic, musical or artistic work, to communicate the work to the public by
telecommunication,
(g) to present at a public exhibition, for a purpose other than sale or hire, an artistic work created after June 7, 1988, other
than a map, chart or plan,
(h) in the case of a computer program that can be reproduced in the ordinary course of its use, other than by a
reproduction during its execution in conjunction with a machine, device or computer, to rent out the computer program,
(i) in the case of a musical work, to rent out a sound recording in which the work is embodied, and
(j) in the case of a work that is in the form of a tangible object, to sell or otherwise transfer ownership of the tangible
object, as long as that ownership has never previously been transferred in or outside Canada with the authorization of the
copyright owner,
and to authorize any such acts.
Works – s. 5 5 (1) Subject to this Act, copyright shall subsist in Canada, for the term hereinafter mentioned, in every original literary, dramatic,
musical and artistic work if any one of the following conditions is met:
(a) in the case of any work, whether published or unpublished, including a cinematographic work, the author was, at the date of
the making of the work, a citizen or subject of, or a person ordinarily resident in, a treaty country; s. 2 defines treaty country
– most countries in WTO
o Domicile, habitual, or ordinary – need some permanence
(b) in the case of a cinematographic work, whether published or unpublished, the maker, at the date of the making of the
cinematographic work,
o (i) if a corporation, had its headquarters in a treaty country, or
o (ii) if a natural person, was a citizen or subject of, or a person ordinarily resident in, a treaty country; or
(c) in the case of a published work, including a cinematographic work,
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o (i) in relation to subparagraph 2.2(1)(a)(i), the first publication in such a quantity as to satisfy the reasonable
demands of the public, having regard to the nature of the work, occurred in a treaty country, or
o (ii) in relation to subparagraph 2.2(1)(a)(ii) or (iii), the first publication occurred in a treaty country.
S. 5(1.1) - If you publish in non-treaty country, you have 30 days to publish in treaty country to get copyright protection
Definition – 2.2 (1) For the purposes of this Act, publication means
PUBLICATION – s. (a) in relation to works,
2.2(1) o (i) making copies of a work available to the public,
o (ii) the construction of an architectural work, and
o (iii) the incorporation of an artistic work into an architectural work, and
(b) in relation to sound recordings, making copies of a sound recording available to the public,
but does not include
(c) the performance in public, or the communication to the public by telecommunication, of a literary, dramatic, musical
or artistic work or a sound recording, or
o Does this mean you cannot have electronic publication?
(d) the exhibition in public of an artistic work
Terms – s. 6 6 The term for which copyright shall subsist shall, except as otherwise expressly provided by this Act, be the life of the author, the
remainder of the calendar year in which the author dies, and a period of fifty years following the end of that calendar year 70 in
NEW NAFTA
Economic rights Owner of a copyright has exclusive rights over the certain economic benefits derived from the rights
Rights is s. 3(1) – produce, reproduce, present, communicate, publish or authorize works
Pertain to other subject matter:
o S. 18 sound recordings
o Ss. 15 and 16 – performer’s performances
o S. 21 – Broadcast communication signals
Common law focused -
Chart 1 –
Economic Rights
Moral rights Applies to works in s. 5 – literary, dramatic, musical, artistic
Does not apply to other subject matter only performer’s performance
European based – not in UK until 1988
Stipulated in TRIPS agreement and bind members of WTO
Concerned with the author
Categories:
o Rights of association – right of paternity
o Right to remain anonymous – name or pseudonym
o Right in integrity linked with s. 28.2
o Control distortion, mutilation, other modification – or prevent work being used in association with a product,
service, cause, or institution
o Must be a use to the prejudice of the author’s honour and reputation
Moral rights Infringement generally
infringement 28.1 Any act or omission that is contrary to any of the moral rights of the author of a work or of the performer of a performer’s
performance is, in the absence of the author’s or performer’s consent, an infringement of those rights.
Nature of right of integrity
28.2 (1) The author’s or performer’s right to the integrity of a work or performer’s performance is infringed only if the
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work or the performance is, to the prejudice of its author’s or performer’s honour or reputation,
o (a) distorted, mutilated or otherwise modified; or
o (b) used in association with a product, service, cause or institution.
Where prejudice deemed
(2) In the case of a painting, sculpture or engraving, the prejudice referred to in subsection (1) shall be deemed to have occurred as a
result of any distortion, mutilation or other modification of the work.
When work not distorted, etc.
(3) For the purposes of this section,
o (a) a change in the location of a work, the physical means by which a work is exposed or the physical structure
containing a work, or
o (b) steps taken in good faith to restore or preserve the work
shall not, by that act alone, constitute a distortion, mutilation or other modification of the work.
Chart 2 – Moral
Rights
QU A LI FY I N G FO R C OP YR I G H T
Mascot P – mascot registered CR is USA ornamental animal items made of gold-plated metal or crystal
International c Appealed for interlocutory injunction restraining D from infringing P’s copyright pending trial
Harman D says Certificates of copyright do not provide proof of the fact that the items were first published in a convention country
Investments Ltd. under s. 5
– 1993 FCTD Issue:
Qualifying for Whether the existence of a copyright was a serious question to be tried?
Copyright Analysis:
Disagrees with D – Threshold test requires serious issue to be tried
Satisfied that copyright for items subsists
Outcome:
P have established claim for CR infringement which is neither frivolous nor vexatious serious issue to be tried
Notes:
Difficult issue because you don’t actually register a copy
S. 53.2 – certificate of registration is evidence that CR subsists, and the registered person is owner BUT can be rebutted if
doesn’t comply with s. 2.2 of copies made available to public
This was just an interlocutory case did not rule on answer settled outside of court
PU BL I C A T I O N
The Act S. 3.1 – ECONOMIC RIGHT OF PUBLICATION if work is unpublished
To publish hasn’t been interpreted same as 2.2
Oscar Trademark Academy opposed trademark registration in the word “Oscar” adjacent to a silhouette of the Oscar statuette
(1980) High court Opposition because trademark was infringement of Academy’s UK CR in Oscar statuette as an artistic work
of Justice Issue: whether the statuettes had been issued to the public?
Must ignore exhibition of statuette at Academy awards and unauthorized representations
1,300 made since inception of Academy – awarded to named individuals NOT AMOUNT TO PUBLICATION
Outcome:
Not amount to publication – only issued to winners and use by winners is carefully controlled
Cannot be said to be an offer of reproduction to the public
Unpublished works of USA have been given CR protection in UK since 1915
Infofabrics Ltd v P had CR in previously published fabric design used in manufacturing shirts
Jaytex Ltd – 1985 D used design in Hong Kong to ship to UK
– HL P asserted publication of fabric design constituted infringement
COA held that acts of importation and sale constituted infringement by publishing
Issue:
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