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Archive for the ‘Intellectual Property’ Columns

Model Protective Order for Federal Court

The Federal Court is trying to clarify the scope and typical terms of confidentiality and protective orders for use in the court. Keeping confidential information can be a key consideration in intellectual property proceedings where the adverse party is often a direct competitor and the subject matter of the dispute touches on trade secrets and business plans.

Since my previous column on this subject (see Protecting Your Confidential Intellectual Property Information in Court, May 2017), a split between various Prothonotaries and Judges led to significant uncertainty as to the preferred options for keeping information confidential in court proceedings.

In . . . [more]

Posted in: Intellectual Property

CRTC Enforces CASL in Case of Malware Distribution

While there has been controversy about the enforcement of the electronic communication provisions of Canada’s Anti-Spam Law (CASL) due to the ambiguities of the complex scheme, there is widespread support for the anti-malware provisions. The Canadian Radio-television and Telecommunications Commission (CRTC) recently enforced those anti-malware provisions against .Mr. Revesz and Mr. Griebel, the partners of Orcus Technologies, pursuant to section 22 of CASL, for a total penalty of $115,000.

The defendants have 30 days to file representations with the CRTC or pay the penalty.

The CRTC alleges that Orcus Technologies developed, distributed, promoted, and sold a Remote Administration Tool called . . . [more]

Posted in: Intellectual Property

Federal Court Issues Site Blocking Order for ISPs

In Bell Media Inc. v. GoldTV.Biz, 2019 FC 1432, the Federal Court dealt with a novel motion in Canada for a “site-blocking order”. The broadcasting company plaintiffs sought an interlocutory mandatory injunction against the innocent third party Internet Service Providers [ISPs] seeking to compel the ISPs “to take steps to block their customers from accessing websites and Internet services operated by the anonymous Defendant”.

The plaintiffs allege that the defendants are infringing copyright by operating unauthorized subscription services that provide subscribers access to the plaintiff’s programming content over the Internet.

The innocent third party respondents are the major Canadian . . . [more]

Posted in: Intellectual Property

Keatley Surveying v. Teranet: It’s Time for a Blanket Statutory Obligation Exception

In Keatley Surveying, the small issue of whether a statutory regime of land titles registration involving the filing and dissemination of land surveys was addressed through a much larger question of copyright ownership of those land surveys. Ownership in the copyright of land surveys became the basis for maintaining the integrity of a land titles system when it could have been addressed through the statutory obligation exception in the Copyright Act.

Teranet is a statutorily empowered third party manager of Ontario’s land registry system. Land surveys registered on title are scanned and digitized, then made available to the . . . [more]

Posted in: Intellectual Property

Transborder Data Flow Consent Standard Is Reaffirmed

The Office of the Privacy Commissioner of Canada (OPC)’s report, Personal Information Protection and Electronic Documents Act (PIPEDA) Report of Findings #2019-001, issued April 9, 2019, into the Equifax hack, created controversy as the report suggested that the existing law on the level of consent necessary for Canadian organizations to engage in transborder processing of personal data had changed and that the OPC was now asserting that a new standard of express consent was required.

In para. 111 of the report, the OPC stated “we acknowledge that in previous guidance our Office has characterized transfers for processing as a ‘use’ . . . [more]

Posted in: Intellectual Property

New Era in Canadian Trademarks

On June 17, 2019, Canada overhauled its trademark regime, allowing Canada to accede to three treaties standardizing our trademark system with some our of global trade partners. The Singapore Treaty, the Madrid Protocol and the Nice Agreement, relate to categorizing trademarks by the type of goods and services and allow a process akin to a ‘global trademark’.

The changes, made through amendments to the Trademarks Act (including renaming it from the Trade-marks Act to the Trademarks Act), and accompanying Trademark Regulations, came into force June 17, 2019.

One of the more controversial changes was to remove the requirement that a . . . [more]

Posted in: Intellectual Property

It’s Time to Stop Copyright’s Violation of the U. S. Constitution

The jurisdiction in which it makes the most sense to reform copyright law so that it supports, rather than deters, access to research and scholarship is the United States. After all, the country’s Constitution empowers Congress “To promote the Progress of Science and useful Arts, by securing for limited Times to Authors and Inventors the exclusive Right to their respective Writings and Discoveries.” The only other thing the Constitution seeks to “promote” is the country’s “lasting Welfare.”

Yet U.S. copyright law today violates this constitutional imperative. The evidence that copyright law is not promoting the progress of science comes from . . . [more]

Posted in: Intellectual Property, Legal Publishing

Intellectual Property Licenses in Bankruptcy Scenarios

Intellectual property licenses will have additional certainty regarding their status when recent amendments to the Bankruptcy and Insolvency Act and Companies’ Creditors Arrangement Act come into force. Licensees may preserve rights under intellectual property license agreements, as long as they continue to perform their obligations even if the licensor goes through insolvency, bankruptcy or arrangement in various circumstances.

These changes were included in Bill C-86 Budget Implementation Act that received Royal Assent in December, 2018. These changes add to changes that were implemented in 2009 that also addressed intellectual property license agreements.

The 2009 amendments (s. 65.11(7) of the . . . [more]

Posted in: Intellectual Property

Facilitating Fair Copyright Compensation in Canadian Universities

During the first week of June this year, Canada’s Standing Committee on Industry, Science and Technology issued its Statutory Review of the Copyright Act Report, after an exhaustive and expensive Canada-wide polling of opinion. The result of a legislated five-year review of copyright, the report’s first recommendation is to strike this review mandate from the legislation. More than one witness pointed to how the conventional legislative reform process is working just fine.

That duly noted, if with a touch of irony, I’d like to focus my attention on a pair of consecutive recommendations, beginning with number 16: That the . . . [more]

Posted in: Intellectual Property, Legal Publishing

Obituary Piracy Assessed

Thomson v. Afterlife Network Inc., 2019 FC 545, is a Federal Court decision in which the Court considers the existence of copyright in obituaries used in an e-commerce context.

DT was the representative plaintiff in a class action lawsuit claiming that posted obituaries and photographs, that were authored and taken by the plaintiff and other class members without their permission and thereby Afterlife infringed the copyright and the moral rights of the class members.

Afterlife operated a website that contained over a million obituaries in Canada and on which Afterlife reproduced obituaries and photos from the websites of Canadian . . . [more]

Posted in: Intellectual Property

Registering Documents With CIPO

A frequent interaction with the Canadian Intellectual Property Office is the registering of documents ‎against pending or granted patents and trademarks. Assignments of intellectual property rights, changes of corporate ‎name, reorganizations and security interests are all commonly registered. As part of changes expected ‎later this year, this practice is likely to change, reducing some formalities.

For the approximately 23,000 patents granted in 2018, around 20,000 of these types of documents ‎were registered. With a government fee of $100 per document, around $2 million in government fees ‎were paid to register various documents against the granted patents. ‎

‎Currently, for patents, . . . [more]

Posted in: Intellectual Property

Applying the Logic of Intellectual Property Incentives Outside the Law

One common interpretation of intellectual property law is that it is not so much about protecting a creator’s natural law property rights (as is the case with bicycles and beachfront properties). Rather, intellectual property law is about motivating individuals to create and invent for the benefit of all. It has been carefully structured and revised over the years, by this reading, to spur on individual and corporate investment in fostering and consuming novelty. In the eighteenth century, when intellectual property took its modern legislative form, the intent was boldly declared to be the encouragement of learning and to promote the . . . [more]

Posted in: Intellectual Property, Legal Publishing