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Archive for the ‘Intellectual Property’ Columns

CRTC Assesses Conspicuous Publication Basis of Implied Consent in CASL Enforcement Decision

The CRTC released a compliance and enforcement decision, CRTC 2016-428, October 26, 2016 in which it found that Blackstone Learning Corp. (Blackstone) committed nine violations of paragraph 6(1)(a) of Canada’s Anti-Spam Legislation (CASL) by sending commercial electronic messages (CEMs) without consent, and imposed an administrative monetary penalty of $50,000 on Blackstone.

The decision is noteworthy as it give more details and analysis than the CRTC’s prior press releases of enforcement action. As a result, it give a glimpse into the process used by the CRTC in an enforcement action. Importantly, it also confirms the CRTC views on the requirements to . . . [more]

Posted in: Intellectual Property

Impending Importance of Patent Office Procedures to Canadian Patent Litigation?

A recent decision of the Federal Court explicitly and repeatedly criticized a lottery ticket patentee for taking a “remarkable” “breathtaking” position on construction in an infringement action that was “entirely opposite” with prior representations to the Canadian Patent Office. At the same time, the court refused any inference of a “greater presumption of validity” because the patent had withstood 12 protests over 13 years brought by the impeacher/alleged infringer, and surprisingly (although reluctantly) accepted the patentee’s “new” construction approach in any event. The court found Scientific Games’ patent for lottery ticket codes to be obvious, ambiguous and not infringed by . . . [more]

Posted in: Intellectual Property

Additional Deference in the Federal Court

An unusual five-member panel of the Federal Court of Appeal re-considered the appropriate standard of review in the Federal Court. The decision simplified the standard of review by focusing on the Housen standard described the Supreme Court of Canada (see 2002 SCC 33). The court also emphasized the importance of prothonotaries in the Federal Court, which is of particular significance to intellectual property proceedings which are almost always case managed by a prothonotary.

The court decided to expand its usual three member panel to a five-member panel in order to revisit its earlier Aqua-Gem decision (Canada v. Aqua-Gem . . . [more]

Posted in: Intellectual Property

Stairway to Heaven, Blurred Lines & the Unpredictability of Music Copyright Infringement

When does one pop song infringe the copyright of another pop song? US case law on the topic – which more or less mirrors Canadian law – shows the unpredictability of how music copyright infringement determinations are made. In two recent high profile US cases, one jury found for the plaintiff where the two songs had almost nothing in common (Gotta Give it Up and Blurred Lines) whereas in the other case, the jury found for the defendant even though there was significant borrowing from the plaintiff’s composition (Taurus and Stairway to Heaven).

There are many . . . [more]

Posted in: Intellectual Property

Naughty Secrets – Findings in the Ashley Madison Breach

A quote attributed to FBI Director Robert Mueller is “There are only two types of companies: those that have been hacked and those that will be”. The assessment of the Ashley Madison cyber-attack has lessons for all organizations who may face this risk.

July 15, 2015 a website run by Avid Life Media Inc. (ALM), called Ashley Madison targeted at people seeking a discreet affair, was breached by a group or person calling themselves The Impact Team. The personal information of members was threatened to be exposed unless ALM shut down the Ashley Madison and another ALM website. ALM did . . . [more]

Posted in: Intellectual Property

Is File History Estoppel Coming to Canada?

The use of patent prosecution history is a standard part of analysing patents in the United States but the courts in Canada have resisted using the prosecution history for parsing the words of patent claims. A recent decision highlights a situation where the use of the patent prosecution history would have resulted in a different analysis in Canada and the trial judge asks whether it is time to consider the prosecution history and imposing consequences on parties that argue differently at court than before the patent office.

During the patent filing process, the applicant, through their patent agent, often makes . . . [more]

Posted in: Intellectual Property

Do KODI Boxes Infringe Copyright?

The Federal Court recently issued a temporary injunction on the sale of pre-loaded TV set-top boxes (known more popularly as KODI boxes) that allegedly encourage or enable copyright infringement. The relatively simple issue of whether an injunction should be granted (currently under appeal) masks the complexity of the underlying facts and legal issues at play. In what follows I discuss these complexities in connection with the two main bases of potential liability: (1) authorizing infringement and (2) enabling infringement.

KODI boxes are a multidimensional technology

The first complexity is the technology itself. These pre-loaded boxes are multidimensional both in . . . [more]

Posted in: Intellectual Property

Managing Copyright Issues With Successive Designs

Given that copyright arises automatically upon the creation of an original work fixed in a tangible form issues can arise when a first work is used and subsequent works are made after earlier designs. The Supreme Court of Nova Scotia considered these issues in MacNutt v. Acadia University, 2016 NSSC 160 in a case that illuminates some of the issues and the roles of designers and architects.

Acadia University was planning a possible expansion to its Alumni Hall. The existing hall is a modified Georgian style and the applicable architectural guidelines dictated a Georgian style for the addition.

Acadia . . . [more]

Posted in: Intellectual Property

5 Questions About Digital Copyright Law

Much has happened with copyright law over the past few years. New amendments to modernize the Copyright Act for the internet age were added in 2012. As well there have been several court cases interpreting the impact of digital technologies on copyright doctrine. It is now possible to speak of “digital copyright” as an area of law. In the newly released book Digital Copyright Law published by Irwin Law, I track and analyze these developments. Below I discuss 5 prominent issues which are raised by these changes and that are elaborated upon in the book:

1. What is a . . . [more]

Posted in: Intellectual Property

Crucial Patent Experts

Patent cases focus on the expert evidence. In many cases, the key issues of claim construction, the applicability of the prior art and infringement all turn on the evidence provided through the opinions of expert witnesses. There are several interesting issues arising recently in the use of experts in intellectual property cases.

The Federal Court of Appeal has recognized the unique position of expert evidence in patent cases, stating: “the practical reality is that a court nearly always reads a patent through goggles supplied by the experts whom the judge considers to be credible and accurate” and “The skilled reader . . . [more]

Posted in: Intellectual Property

Sound Prediction Update – Federal Court Continues to Disagree on Fundamental Disclosure Aspect of Test

Utility is a basic requirement set out in the Patent Act, yet Canadian courts over the past year have continued to approach this concept from very different points of view. The “disclosure” requirement for sound prediction has been both wholly adopted and rejected by the Federal Court. The pro-disclosure side requires that the sound line of reasoning and factual basis be in the patent, whatever the nature of the invention.[1] The anti-disclosure side only requires any explanation in the patent where the invention is directed at a new use[2]. Otherwise the sound prediction may be satisfied . . . [more]

Posted in: Intellectual Property

Competition and Tech Patents

On March 31st, the Canadian Competition Bureau released new Intellectual Property Enforcement Guidelines (IPEGs). These guidelines directed to explain the Bureau’s approach to enforcing competition law with respect to intellectual property, particularly patents.

Patents are an exclusionary right; the owner has the right to exclude others from practicing the claimed invention (see Section 42 of the Patent Act) as an incentive for innovation and new technology. This exclusivity can, in some circumstances, run counter to the goals of competition law to maintain vigorous rivalry among firms. The courts have looked to “something more” than merely exercising or . . . [more]

Posted in: Intellectual Property