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Archive for the ‘Intellectual Property’ Columns

Copyright and Generative AI

The use of generative AI to produce text and image has raised many questions about how the law of copyright applies to these systems. There are two important aspects of these tools which implicate copyright: i) using training data obtained from third parties; and ii) the authorship and ownership of the output.

Generative AI typically refers to the use of artificial intelligence systems to produce text or images based on prompts or other inputs. Some popular examples are the DALL-E image generator and the ChatGPT chat system both from OpenAI.

In Canada, copyright is governed by the Copyright Act and . . . [more]

Posted in: Intellectual Property

Learning to Campaign for Copyright Reform

I’ve come to realize that I’m in the early stages of a political campaign to amend copyright for open science. It didn’t start out as a campaign. It began as a series of talks and meetings that followed from an (open access) book on copyright reform that I published this fall. Having worked out a proposal for copyright reform, I wasn’t interested in promoting the book so much as learning more about what was involved in advancing open access through such a process. Very early in the process, it was made clear to me that the law is not an . . . [more]

Posted in: Intellectual Property, Legal Publishing

CRTC Targets the Dark Web Using CASL

The “dark web” sounds mysterious and dangerous. The dark web is described as a set of pages on the internet that cannot be indexed by search engines, further can not be viewed in a standard web browser, and typically require specialized software or network configurations in order to access. These pages commonly use encryption to provide anonymity for users.

There are marketplaces on the dark web where individuals buy and sell illicit goods and services.

One of the largest dark web marketplaces in the world was the Canadian Headquarters (or Canadian HQ). This site sold spamming services, phishing kits, stolen . . . [more]

Posted in: Intellectual Property

Patent Life Cycle

Patent applications are filed, work their way through the patent office, some are granted and after twenty years, they expire. How many patents are actually granted, and now many make it to expiry?

I tracked the 42,000 or so patent applications filed in Canada with a 2001 filing date. All of these patents expired by the end of 2021. Overall, about 43% of the original applications were granted, about 18,000. About 105 were involved in litigation in the Federal Court.

Only about 17% of the original patent applications were granted and still enforceable in 2021 when they expired. About 30% . . . [more]

Posted in: Intellectual Property

Two Senses of a Right to Research

I have championed ways of increasing the public availability of research and scholarship in these Slaw columns for well over a decade under a variety of names, from open access to the catchy right to research (R2R). I picked up R2R, as I’ve noted, from the inspiring Program on Information Justice and Intellectual Property at the American University Washington College of Law in an initiative led by Sean Flynn. What I’ve now realized about R2R is that it can be read in two historically significant ways, with the difference between them neatly capturing what sets Prof Flynn’s and my current . . . [more]

Posted in: Intellectual Property, Legal Publishing

The ‘Making Available’ Right

When Canada signed the WIPO Copyright Treaty in 1997 it required Canada to give copyright owners the exclusive right to make their works available to the public in such a way that members of the public may access these works from a place and at a time individually chosen by them.

This was implemented in 2014 by adding Section 2.4(1.1) to the Copyright Act. Section 2.4 (1.1) modified the definition of sSection 3(1)(f) by holding that a work is communicated to the public as soon as it is made available in a way “that allows a member of the public . . . [more]

Posted in: Intellectual Property

Software and Patent Infringement

Establishing patent infringement can be difficult at the best of times but when the technology alleged to infringe a patent is primarily software, there can be extra hurdles for the patent owner. Some recent court decisions reveal some of those challenges.

To prove infringement, a patentee has to show that the activities of the defendant fall within the scope of the claims of the asserted patent. Photos, and engineering drawings or even samples of the product can be used to prove the features of the product or process at issue.

When the patent relates to a particular a software implementation . . . [more]

Posted in: Intellectual Property

The Broader Impact of a Court’s Historic Decision

In overturning Roe v. Wade on June 24, 2022 in Dobbs v. Jackson Women’s Health Organization, the U.S. the Supreme Court signaled a radical break with the history of the Court, executed in the name of an historicist “originalism.” David Cole, the National Legal Director of the American Civil Liberties Union, noted in the New York Review of Books (August 18, 2022) that “never has the Court eliminated a constitutional right so central to the equality and autonomy of half the nation.” But then he also observes that “never has so much changed in a single year” for the . . . [more]

Posted in: Intellectual Property, Legal Publishing

CASL Computer Program Prohibition Enforcement Benefits From Forensic Evidence

Section 8(1) of Canada’s Anti-Spam Law (CASL) prohibits the installation of a computer program on another person’s computer system without express consent. Compliance and Enforcement Decision CRTC 2022-132 dated May 19, 2022, indicates that this analysis is very technical and may in some circumstances require forensic computer evidence to make out a prosecution under this section of CASL.

In 2015, CRTC enforcement staff identified five Canadian Internet Protocol (IP) addresses linked to 1882914 Ontario Inc., operating as Datablocks Inc. and 2348149 Ontario Inc., operating as Sunlight Media Networks Inc. that appeared to be redirecting users to webpages hosting exploit kits. . . . [more]

Posted in: Intellectual Property

Federal Court Provides Guidance on Computer-Implemented Inventions

In a recent decision, the Federal Court was asked to instruct the Canadian patent office on the proper framework for assessing whether inventions are patentable subject matter. The court held that the three part test proposed by the Intellectual Property Institute of Canada (IPIC) that includes asking whether the construed claim as a whole consists only of a mere scientific principle or abstract theory that should be rejected as unpatentable, or a patentable practical application that may employ a scientific principle of abstract theorem.

This decision, Benjamin Moore & Co. v. Canada (Attorney General), 2022 FC 923, arose . . . [more]

Posted in: Intellectual Property

Retailer Settles CASL Violation Allegations for $200,000

On December 6, 2021, Gap Inc. (Gap) entered into an undertaking under Canada’s Anti Spam Law (CASL) to address allegations that it violated CASL.[1]

The undertaking resolves the allegations against Gap and its subsidiaries Banana Republic and Old Navy. Alleged were that Gap (and its subsidiaries) had sent commercial electronic messages without the consent of the recipients. A further allegation was that the messages did not include an unsubscribe mechanism that could be readily performed.

The terms of the undertaking require Gap to commit to updating its compliance program addressing the sending of commercial electronic messages. Elements of a . . . [more]

Posted in: Intellectual Property

Indemnity Claims in Federal Court IP Disputes

As a statutory court, the Federal Court only has the jurisdiction provided to it under federal legislation, which includes shared and exclusive jurisdiction in the area of intellectual property. In 2020, the Federal Court of Appeal concluded that the court has jurisdiction to handle contractual issues touching on intellectual property. A recent reported decision has applied this to indemnity claims against third parties.

When determining liability for infringement of patent, trademark and copyright, the intention of the defendant is typically not relevant. A party that uses an infringing product may still be liable for patent infringement even if they merely . . . [more]

Posted in: Intellectual Property