Intellectual and Industrial Property

Intellectual and Industrial Property

Winter 2008 –Professor Piper and Professor Gold

Intellectual and Industrial Property

Winter 2008 – Professor Piper and Professor Gold

TRADEMARKS – Legislation and Policy Matters

Reckitt & Colman Products Ltd. v. Borden Inc., [1990] (H.L.), CB II p. 177

Mattel, Inc. v. 3894207Canada Inc., [2006] 1 S.C.R. 772

Kirkbi AG v. Ritvik Holdings Inc., 2005 SCC 65

Veuve Clicquot Ponsardin v. Boutiques Cliquot Ltée, [2006] 1 S.C.R. 824, 2006 SCC 23

Euro-Excellence v. Kraft Canada – 2007 SCC 27

COPYRIGHT

Theberge v. Galerie d’Art du Petit Champlain inc. [2002] SCC

Feist Publications Inc. v. Rural Telephone Service Co. Inc – US

Rogers v. Koons [1992] US

Nichols v Universal Pictures Corporation [1930] US

Metro-Goldwyn-Mayer Studios Inc. v. Grokster Ltd. [2005] US

Computer Associates Intern Inc. v. Altai Inc. [1992] NY CA 2

Gilliam v. American Broadcasting Companies Inc. [1976] US

University London Press Ltd. v. University Tutorial Press Ltd. [1916] UK

Eldred v. Ashcroft [2003] US SC

PATENT

I. Purpose of the Patent Act

II. Patentable Subject matter

1. Living Organisms – Higher Life forms

Harvard College v. Canada (Commissioner of Patents) 2002 SCC 76

Diamond versus Chakrabarty, 44 U.S. 303 (1980)

Monsanto Canada Inc. v. Schmeiser [2004] 1 SCR 2004 902, 2004 SCC 34

2. Other than higher life forms

Schlumberger Ltd. v. Canada (Patent Commissioner), [1982] 1 F.C. 84, 56 C.P.R. (2d) 204, 38 N.R. 299

Diamond versus Diehr, 450 U.S. 175 (1981)

III. Novelty

Tennessee Eastman C. v. Canada (Commissioner of Patents) [1974] SCR 111

IV. Interpretation of the Claim - Infringement

Free World trust v. Électro Santé inc. [2000] 2 S.C.R. 1024

Case Study 1: Think Creativity

Study 1-1. W Fisher, ‘Theories of Intellectual Property’ – pdfp2

Study 1-2. Besen and Raskind, ‘Law and Economics of Intellectual Property’ – pdfp30

Study 1-3. Stephens and Dennis, ‘Engineering Time: Inventing the Electronic Wristwatch – pdfp50

Study 1-4. HA Simon, ‘Creativity in the Arts and in the Sciences’ – pdfp60

Study 1-5. Bentley, Rodriguez and Gonzalez, ‘Honduran Campesinos and Natural Pest – pdfp66

Study 1-6. Fennell, ‘Group Identity, Individual Creativity, and Symbolic Generation in a BaKongo Diaspora’ – pdfp71

Study 1-7. L Aronson, ‘African Women in the Visual Arts’ – pdfp77

Study 1-8. E von Hippel, chapter 1 of Democratizing Innovation – pdfp80

Study 1-9. Adarves-Yorno, Postmes, Haslam, ‘Creative innovation crazy irrelevance? The contribution of group norms and social identity to creative behavior’ – pdfp89

Study 1-10. Fried, ‘Wilt Chamberlain Revisited: Nozick's "Justice in Transfer" and the Problem of Market-Based Distribution’ – pdfp96

Study 1-11. Dennett, ‘Memes and the Exploitation of Imagination’ – pdfp101

CASE STUDY 2: Myriad Genetics: patents, policy, practices and institutions

Part 1: In the beginning

Part 2: Enter Myriad Genetics – exclusive provider of BRCA testing.

Part III – The Eye of the policy storm

Part VI – Analysis

Case study 3 – The Olympics

Study 3-1: Bill C-47 – pdfp2

Study 3-2: San Francisco Arts & Athletics, Inc. v. Olympic Committee – pdfp19

Study 3-3 INUIT PRAISE LOGO – pdfp25

Study 3-4 : Is Canada ready for the Vancouver Winter Games? – Juda Strawczynski – pdfp26

Study 3-5: Committee evidence for Bill C-47 – pdfp42

Cynthia Rowden (Past-President: IP Institute of Canada)

Jeff Bean (Olympian)

Mr. Brian MacPherson (Chief Operating Officer, Canadian Paralympic Committee):

Mr. Roger Jackson (Chief Executive Officer, Own the Podium 2010; also, president of Canada Olympic Committee--COC):

Ms. Jasmine Northcott (Athlete Forums Director and Operations Manager, AthletesCAN):

Study 3-6 Ambush Marketing and the 2010 Winter Games” -Powerpoint Slides (VANOC): - pdfp49

Study 3-7 : Art and the Olympics – Sally McCausland – pdfp74

Study 3-bonus : The friend nobody likes – Jane Armstrong – pdfExtra

CASE STUDY 4 - INTELLECTUAL PROPERTY:

STUDY 4-1 : TREATIES AND STATUTES – pdfp2

STUDY 4-2: Kamil Idris, Intellectual Property, A Power Tool for Economic Growth, chapter 2 (p. 3-18).

STUDY 4-3: Innovation, Creativity, Knowledge & Nation’s Success In the 21st Century, Kamil Idris and Hisamitsu Arai, (p. 19-28).

STUDY 4-4: CIPIH: Use of Flexibilities in TRIPS & Access to Meds (p.29-42).

STUDY 4-5: US Seeks Review of WHO Publ Policy, US Trade DEALS (p. 43-45).

STUDY 4-6: Letter from US Dept. Health & Human Services to WHO (p. 46-47).

STUDY 4-7: The Least Developed Countries Report, 2007 (p. 48-64).

STUDY 4-8: IPRs and Innovation in Developing Countries (p. 65-74).

CASE STUDY 5: CREATIVE SOLUTIONS (PATENT AND COPYRIGHT)

Websites to visit:

Patents:

Public Intellectual Property Resource for Agriculture (

BiOS: Biological Open Source Agreements: supporting public policy initiatives to increase open access to patented technologies for public benefit (

Copyrights:

Creative Commons: allows artists to share their work and reduce their rights

GNU operating system: free software

Noank Media Inc: “limitless media content flow”

Other

Science Commons

PATENT

Study 5-2a: PMPRB Annual Report 2006 – pdfp3

Study 5-2b: Gold “Advance Market Commitments” – pdfp23

Study 5-2d: Love and Hubbard “The Big Idea: Prizes to Stimulate R&D for New Medicines” – pdfp32

Study 5-2c: Gold, Piper, Morin “Patent Pulls: Pooling Patents to address access to medicines” – pdfp47

Study 5-2e: Graff and Zilberman “An IP Clearinghouse for Agricultural Biotechnology” Nature 2001 – pdfp54

COPYRIGHT

Study 5-3a: Lessig “The Future of Ideas” (Lessig is founder/CEO of Creative Commons) – pdfp56

Study 5-3b: Thomson “New Music Industry Models” – pdfp80

Study 5-3c: Doctorow “Down and out in the Magic Kingdom” – pdfp82

Some definitions

TRADEMARKS – Legislation and Policy Matters

Purpose of Trademark Protection:

- Protect the goodwill attached to brands.

- Prevent passing off: a form of commodity protection, not regulation of use. There is no fair use exception in trademark law.

What can be trademarked? (TA s. 2)

- Marks and guises identifying source of goods and services.

- Distinguishing guises: the exact boundary is not clear: works, phrases, designs, colours, and sounds.

- Must be in use to be trademarked. Non-use can lead to loss of trademark. (TA s. 45(3))

- Marks must be distinctive, not descriptive (TA s. 12(1))

Scope of Trademark

- Use: the mark looses protection once the connection between it and the product is lost through non-use.

- Generic (s. 18(1)): marks lose distinctiveness if they become a generic term: e.g. Kleenex.

Wares and Services (s. 4(1),(2))

- Two defining sections of what can be trademarked.

- There is a debate over where advertising falls in these two categories.

Certification Marks

- Certifications of quality standards.

Distinguishing Guises

- Generally covers packaging of products, not functional aspects.

- Can be registered only after it has become distinctive through use (TA s. 13(1))

Names (TA s. 12(1))

- Must be more than primarily the name of a living or recently deceased person.

Secondary Meaning

- An essential part of the distinctiveness test: has the mark’s initial meaning been replaced in the mind of the consumer so it is connected with the product?

Passing Off - Tort Action(s. 7)

- Protects against misrepresentation (esp. to sell competing products) not dilution.

- Does not require registration.

Three essential elements:

- Plaintiff must demonstrate goodwill attached to a goods or services.

- Misrepresentation leads others to the believe that goods are those of the plaintiff.

- This misrepresentation must cause damage to the plaintiff.

Trademark Infringement (ss. 19 (imitation), 20 (Confusion), 22 (Dilution))

- Called “Passing Off Plus”: Broader protection than Passing Off.

- Requires Registration.

Protections:

- Nationwide: Not limited to local geography.

- Does not require damage.

- Protects against use of similar marks even if applied in different goods/services.

- Protects against dilution.

Exact Imitation (s. 19)

- Once registered, use of the mark becomes an exclusive rights of the trademark holder.

Confusion (s. 20)

- Must create market confusion, but does not require exact imitation.

- Uses a reasonability standard. Reasonable person is the casual consumer somewhat in a hurry.

Test: How likely is it that confusion will arise? Considerations include but aren’t limited to s. 6(5):

• Inherent distinctiveness of the marks and extent to which they have become known
• Length of time the marks have been in use
• Nature of the wares or services
• Nature of the trade or commerce
• Degree of resemblance between the marks in appearance, sound or ideas suggested by them

Dilution/Dispargement/Depreciation of Goodwill (s. 22((1))

Four Requirements:

• Use of the mark, even if not competitive
• Mark sufficiently well-known so as significant goodwill
• Mark used in a way likely to have an effect on goodwill
• This use will likely disparage goodwill

Exceptions

Good faith use of a personal name:

Resales: Marks on particular objects are exhausted after they are sold. E.g. You can resell a Rolex Watch by putting “Rolex Watch” in an ad. Even if this contradicts the Act, judges allow it in practice.

Intersection of Trademark and Patent

- Unlike patents, trademarks don’t expire: incentive to move from patent to trademark (See Lego).

Intersection of Trademark and Copyright

- The two can exist concurrently with different recourses and applications (see Euro-Excellence)

CASES

Reckitt & Colman Products Ltd. v. Borden Inc., [1990] (H.L.), CB II p. 177

Facts:
-Rspdts sell lemon juice in lemon shaped bottles under the brand name JIF
-Aplts tried to sell lemon juice in similarly shaped containers with a different label
-Rspdts brought action in passing off
Issue: Is the lemon-shaped bottle so “functional” as to not be entitled to protection in passing off? Alternatively, is the lemon-shaped squeeze bottle tantamount to a “descriptive term”?
Held: No.
Reasoning:
Ptf in passing off action must prove three elements:
1)Establish goodwill or reputation attached to the goods such that the “get-up” [trade name or packaging] is distinctive.
2)Misrep to the public (intentional or not) likely to lead the public to believe that goods are those of the ptfs
3)Damage flowing from the misrep
Is the “get-up” functional?
-Aplts argue that allowing action in passing off would be tantamount to protecting an object (the domain of patent) rather than merely protecting an insignia or trade name.
-Court acknowledges that the bottle does serve a functional purpose in the sale of lemon juice but those purposes could be served by a variety of distinctive containers other than this one. Since its primary characteristics are not necessarily functional, it is entitled to protection in passing off.
Is the use of the plastic lemon merely an embodiment of a descriptive term which is common to the trade?
-The lemon-shaped container has acquired secondary significance. It indicates not merely lemon juice but specifically JIF lemon juice
Have the aplts taken sufficient steps to distinguish their product from that of the rspdts?
-No. Aplts tried to argue that a customer would not be deceived. Judge says their standard of the average consumer is too high.

Mattel, Inc. v. 3894207Canada Inc., [2006] 1 S.C.R. 772

Facts: Mattel (aplt) opposes an application to register a trademark on Barbie’s Restaurants in Montreal.
Issues: Does the use of the name Barbie cause confusion between the restaurant and the doll?
Holding: No. (1) The products/services are too distinct form each other to cause market confusion. (2) The restaurant doesn’t use any connection to Mattel in order to market its services.
Ratio:
No resemblance between the products is required; the issue is whether the second product somehow uses the recognizability of the first. Each case is highly fact dependent since trademark depends on actual use.
Since Barbie is a common name and the restaurant does nothing to connect itself to the fame of the doll, there is no likelihood of confusion here.

Kirkbi AG v. Ritvik Holdings Inc., 2005 SCC 65

Facts: After its patent expires, Lego claims that its system of interlocking blocks is an unregistered trademark, “the Lego indicia”. It then accuses MegaBlocks of passing off its compatible blocks.
Issue: Has MegaBlocks infringed Lego’s trademark over the design of interlocking blocks?
Holding: No.
Ratio: (1) The interlocking blocks are a functional feature of Lego, not a distinguishing feature. Protection of this aspect of Lego is reserved to patent law.
(2)Trademark law cannot be extended to protect subjects that are reserved for patent law.
Potential contradiction with Euro-Excellence: if trademark and copyright can overlap, why not trademark and patent? Court suggests Lego is undermining the Patent Actrather than looking for complementary protection.

Veuve Clicquot Ponsardin v. Boutiques Cliquot Ltée, [2006] 1 S.C.R. 824, 2006 SCC 23

Facts: Appellant (Veuve) seeks to stop respondent from using the name Cliquot on its chain of retail stores.
Issue: Is the respondent creating confusion with the appellant’s product (s.20); if not, is it diluting the appellants’ goodwill by attaching its high-end association to a mid-range store (s.22)?
Holding: No.
Ratio: Onus of proof for both confusion and dilution are on the appellant.
Confusion is largely a matter of fact based on the criteria in TA s. 6(5).
In this case, there is no chance of confusion arising between the store and the champagne. The wares in question are too remote from each other to create confusion in the mind of the average consumer.
To prove dilution under s. 22, appellant must show the four condidions set out in TA s. 22(1) (see above).
- Respondents never actually used the appellants’ mark: average consumer would not connect the store to the appellants’ product. Since there was no actual use of the mark, there can be no damage to goodwill. Also, there is no evidence of depreciation.

Euro-Excellence v. Kraft Canada – 2007 SCC 27

NOTE: This is a case about the intersection of trademark and copyright. Product logos receive dual copyright and trademark protection. Kraft relies on copyright law because it primarily deals with economic gains resulting from unfair use.
Facts: Kraft obtains an exclusive licence to distribute Toblerone in Canada from its parent company; Euro purchases the bars in Europe and legally imports them to Canada. To prevent Euro from further importing Toblerones, Kraft accuses Euro of copyright infringement under CA s. 27(2), relating to imported goods. Note that Euro never actually makes copies of the logo; it obtains the bars from the legitimate copyright holder in Europe.
Issues: Did Euro secondarily infringe Kraft’s licenced copyright?
Holding: No. Copyright Act cannot be used to block the importation of these products.
Ratio:
Rothstein:
- To prove an infringement, Kraft would first have had to show that the use of the copyrighted logos in Canada would have constituted a “primary infringement”.
- Since Kraft only held a licence to use the copyright, not an assignment of copyright, through its parent company, there was no infringement in Euro’s use.
Fish concurring:
- Agrees with Rothstein but stresses that the CA was never meant to be used in an issue which is really about trade control.
Bastarache concurring:
- Instead of just interpreting the CA, these judges create a doctrine of “legitimate economic interests”.
- The CA is meant to protect legitimate economic interests of copyright holders; it can’t be used to protect or advance all economic interests.
- Stresses that copyright law must confined to certain legal issues (CCH) and that a copyright holder’s rights are inherently limited (Théberge).

COPYRIGHT

Theberge v. Galerie d’Art du Petit Champlain inc. [2002] SCC

BINNIE J for the majority:

- very physical view of the work, focus on the reus rather than on the author – CML approach: the work is not the core of abstraction, but the physical substantiation of it: acknowledges from the very beginning that this is his approach – when making the difference between CVL and CML as fundamental to the conflict in the case: CVL focuses more on the author than on the reus  indirectly focus on idea, on abstraction // CML: copyright  focus on copy, on the reus.

-nature of the CR: CR is creature of statute and rights and remedies it provides are exhaustive. There are some conceptual differences between civilian approach (droit d’auteur) and the English CM law approach. Binnie believes that it is this distinction that lies at the center of this misunderstanding. [Droit d’auteur of CVL, and English CR tradition]

- issues addressed:

(1)Balance between econ. interest of CR holder and proprietary interest of the purchasing public would be altered to the public’s detriment.

(2)proposed test would depart from general principle that breach of CR requires copying,

(3)there was no reproduction “in substantial part”

(4)Qc CQ test of “unanticipated market” similarly exceeds CR limits

(5)proposed test would undermine the distinction between moral rights and economic rights contrary to legislative intent

(6) “Droit de destination” would be introduced into our law w/out any basis in the CR Act

(7)Proposed test would conflict with precedent from other comparable jurisdictions

(8)The US concept of a “recast, transformed or adapted” derivative work would be introduced into our law w/out any legislative basis.

Conclusion: in Canada there is no equivalence to “any form in which a work may be recast, transformed or adapted”. Cannot read that in – would be work of Parliament not courts.

Feist Publications Inc. v. Rural Telephone Service Co. Inc – US

- this is a case where the distinction between copyright and unfair competition (between protection of creativity and protection of trade) becomes apparent: an unfair competition action might have been acceptable – the court even mentions it – because no creativity is required, the action protects trade, and maybe ‘sweat of the brow’. In a copyright action, however, some degree of creativity is required – the ‘sweat of the brow’ is not sufficient to require protection.

Rogers v. Koons [1992] US

-Art. 1 §8 of the US Constitution seeks 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”.

-Idea v expression: The ideas, concepts, and the like found in the common domain, are the inheritance of everyone. What is protected is the original or unique way that an author expresses those ideas, concepts, principles or processes. Some ideas and concepts are the inheritance of everyone. Hence, in looking at the works of art to determine whether they are substantially similar, focus must be on the similarity of theexpression of an idea or fact, not on the similarity of the facts, ideas or concepts themselves.

-The Fair Use Doctrine:Equitable doctrine which permits other people to use copyrighted material w/o the owner’s consent in a reasonable manner for certain purposes.

-Parody or satire as fair use: Koons claimed his work was a form of social criticism. A comment or criticism of a work might be a fair use.

-Parody/satire = one artist, for comic effect or social commentary, closely imitates the style of another artist and in so doing creates a new art work that makes ridiculous the style and expression of the original. Parody entitles its creator under fair use to more extensive use of copied work than is ordinarily allowed under the substantial similarity test. In this case it did not constitute a parody of the original work - because sought to make general social commentary rather than call attention to the copied work.