IP Osgoode and the  (IPIC) are thrilled to announce the winners of the 2024 edition of .��

In the Law Student category, won for his entry, “Shortcomings of the Trademarks Act in the Frontline against Counterfeit Goods”.��

Pasha is a 3L student at Queen's University's Faculty of Law.

In the Graduate Student category, ��won for his entry, “AI & IP – Anticipating Obvious Issues for the Pharmaceutical Drug Industry”.

Nick recently graduated from Osgoode's Professional and is an Associate at .

The winners will be receiving a prize of $1000 and, in addition to having their winning article showcased here on the IPilogue, the article will be considered for publication in the Canadian Intellectual Property Review (CIPR) or the Intellectual Property Journal (IPJ). 

We would like to thank our esteemed intellectual property experts who served as judges for this year’s Writing Challenge:��, , and our own .

But above all, on behalf of the judges and IPIC, we thank all of the authors who submitted their excellent papers for consideration. We are grateful for the opportunity to support a vibrant public policy discussion on all facets of intellectual property law and technology in Canada.

Stay tuned for more information about these award-winning papers!

��

The post Announcing the Winners of Canada's IP Writing Challenge 2024 appeared first on IPOsgoode.

Photo by AbsolutVision ()

Emily Prieur is an IPilogue Writer and a 3L JD Candidate at Queen’s University Faculty of Law.

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Online privacy is, without a doubt, an area of growing concern. As technology takes a greater presence in our lives, lawmakers are right to turn their minds to its potential deleterious effects. However, with the new Liberal government proposal, and law students alike are left wondering if the Canadian Online Harms proposal will do more harm than good.

What is the online harms proposal?

In July 2021, the Canadian government released its plans for addressing online harms. The proposal was presented in two parts: outlining the government’s intent to regulate social media platforms, and a outlining details of the proposed law. The objective of the proposal is to reduce harmful content online. The government has a narrow focus, targeting content related to 1) child sexual exploitation, 2) terrorism, 3) hate speech, 4) non-consensual sharing of intimate images, and 5) content that incites violence. This proposal is consistent with the government’s previous content regulation efforts, such as and the proposed legislative changes to the . Canada is not the only government paving the path towards a more tolerant online community. In fact, the European Commission launched their own “” in May 2016.

How does the proposed legislation target online harm?

The proposed legislation requires online platforms to proactively monitor all user speech and evaluate its potential for harm within the five categories of regulated harmful content outlined above. Additionally, any person in Canada may flag content as harmful and online platforms . If successful, the legislation would require online��communication services like Facebook and Twitter to report content falling within the five categories of regulated harmful content to law enforcement.

The proposal bestows additional responsibilities upon the Digital Safety Commissioner, a . These responsibilities include the power to hold hearings on any complaint made to it, any detected non-compliance, or any matter within its jurisdiction under the Act, especially if the Commissioner believes it would be within the public interest. The language within the Act is worrisome, stating that the Digital Safety Commissioner may also conduct inspections of online platforms at any time, either on routine or ad hoc basis “” Ultimately, the language delineating the Commissioner’s responsibilities is unclear, creating concerns that the not-yet-appointed Commissioner may have unfettered power over online communication services.

The legislation also proposes penalties for non-compliance. The proposed monetary penalties are astonishingly high; online communication services could face fines of up to if they do not comply with the new rules. Companies like Facebook and Twitter may also foot the bill to recover the costs of such a proposal (e.g., the cost of a new Commission and Digital Safety Commissioner), as the legislation grants the Digital Safety Commissioner the power to implement as part of the cost to monitor online harm.

How would successful implementation of the proposal negatively impact privacy rights?

In essence, the Canadian Online Harms proposal gives rise to increased surveillance powers to the state.

The first issue surrounding the proposal is with respect to the increased surveillance associated with passing any rules outlined in the proposal. The requirement to monitor all user speech online is alarming, given the government’s proposal evades any potential restrictions on monitoring. Many argue that such a proposal could allow the government to increase their surveillance powers, and representatives at the go so far as to call this aspect of the proposal “”. Emily Laidlaw, the Canada Research Chair in Cybersecurity Law at the University of Calgary, . Laidlaw stated, “You’re essentially saying that a private body needs to actively monitor and surveil all of the different communications on its platform.”

Additionally, the proposal encourages the use of machine learning to identify harmful content, stating that “” The Canadian government recently had issues with their use of machine learning technology and facial recognition software, as discussed in .

Looking forward

Given the increasing use of online platforms, the Government of Canada is justified in their efforts to curb online harm. However, a certain skepticism towards government efforts is reasonable, especially in the wake of controversy. Although their efforts to curb online harms are noble, the government must also consider any harms that their efforts may have on Canadians’ privacy.

The post Does the Canadian Online Harms Proposal Increase Privacy Risks? appeared first on IPOsgoode.

Screenshots from and .

Claire Wortsman is an IPilogue Writer and a 2L JD Candidate at Osgoode Hall Law School.

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As the election nears, my colleague Shawn Dhue and I are looking at the major parties’ plans for Canada in IP-related areas. This article will cover the platforms of Erin O’Toole and the Conservative Party of Canada as well as Jagmeet Singh and the New Democratic Party. For information on the Liberals and Green Party, check out Shawn’s article. Below are select pieces of and that address the CPC and NDP’s plans for Canadian IP and related areas respectively.

COVID-Related Trade Policy

• Reinstate the tariff on imported PPE.
• Support the Trade-Related Aspect of Intellectual Property Rights Waiver (TRIPS) to waive IP rights for COVID vaccines and ensure technology transfer between nations.

Media Policy ��

• Introduce a digital media royalty framework to ensure platforms like Google and Facebook compensate Canadian media outlets for the sharing of their content. This will include a robust arbitration process and the creation of IP right for article extracts shared on social media platforms.����
• Make sure that Netflix, Facebook, Google, and other digital media companies play by the same rules as Canadian broadcasters.

Privacy Policy

• Pass strong legislation to protect privacy more effectively.
• Work to strengthen privacy protections for Canadians by updating privacy legislation to include a digital bill of privacy rights and boost the powers of the Privacy Commissioner to make and enforce orders, as well as levy fines and penalties.

Data Policy

• Create a technology task force within the Competition Bureau to examine whether dominance and anti-competitive behaviour of big tech is damaging to Canadian industries.
• Examine how algorithms and data give big tech an advantage over Canadian businesses, as well as how fintech and new technologies could foster competition.
• Prioritize the collection of race-based data on health, employment, policing and more with the goal of improving outcomes for racialized communities.

Innovation Policy

• Launch a review of innovation programs at Innovation, Science and Economic Development Canada and across the government and, among other things, implement requirements:
  • All recipients demonstrate that IP, production, ownership, and profits are likely to stay in Canada; and
  • All IP developed with the support of the Canadian government is held by a Canadian entity and that recipients agree to pay back the subsidy if they sell the IP to a foreign buyer.
• Invest $5 billion over the next 5 years to fund programs in: Use of hydrogen; Small Modular Reactors; Private sector innovation in the space sector; Electric vehicle development and manufacturing, including electric trucks, micro-mobility, batteries, and parts manufacturers; and pharmaceutical research and production.
• Restore the Automotive Innovation Fund and make contributions to automakers tax-free.

Jobs/Labour Policy

• Pay up to 50% of the salary of new hires for 6 months following the end of the Canada Emergency Wage Subsidy
• Invest in forestry innovation and support value-added Canadian wood products – and the good jobs that go with them.
• Support more options for women to build careers in the trades and other non-traditional fields like agriculture, innovation, research, and STEM.
• Support paid sick leave and prescription drug coverage.

Environmental Policy

• Implementing an affordable carbon price: Starting at $20/tonne and increasing to $50/tonne but no further.
• Work with the provinces to implement a national Personal Law Carbon Savings Account that consumers can pay into each time they buy hydrocarbon-based fuel. They can then put this money towards things that help them live a greener life (e.g., buying a transit pass or bicycle).
• Make Canada an innovation leader on methane reduction in areas such as:
  • Real-time monitoring for a leakage detection;
  • Ensuring that provincial methane regulations are genuinely equivalent with the federal regulations; and
  • Increasing the ambition of those targets in the 2025-30 period.
• Create a National Crisis Strategy to help communities reduce and respond to climate risks, as well as a new Climate Corps of young workers to respond to climate impacts and build an equitable clean-energy economy.

Foreign Policy

• Protect Canadian IP with a strengthened that includes, among other things:
  • A presumption against allowing the takeover of Canadian companies by China’s designated state-owned entities; and
  • A reformed “net benefits” test to better account for the potential effects of a transaction on the broader innovation ecosystem with a particular focus on protecting IP and human capital.
• Revoke visas of Chinese nationals identified by national security agencies as conducting espionage or stealing IP.
• Adopt measures to stabilize the Canadian steel market and protect the sector from predatory practices of foreign producers who are shut out of other markets.

The post The Parties’ Plans for IP: CPC & NDP appeared first on IPOsgoode.

This post was originally published on YSpace.

The Collision Conference is North America’s fastest growing tech conference – taking a forward-looking approach to connect the tech industry with every other industry in the world. Typically, attendees must pay $79 to attend this annual event. For the second year in a row, Innovation York and the Student Success Office are joining forces to offer York students the exclusive opportunity to claim one free ticket (with 100 total tickets available on a first-come, first-served basis). The event will take place on April 20-22, 2021.��

To claim your free ticket, you must become a �첥��Ƶ Digital Ambassador!

To become a YU Digital Ambassador: complete the 3 steps, and the form below by 11:59pm – Friday March 26, 2021.��

1. Follow at least 2 of these accounts on Instagram: @yspaceyu, @ellawomenyu, @schulichstartups, @bestlassonde, @studentlifeyu, @yorkulaps, @c4.capstone, @lassondeschool, @collisionconfhq or follow @IPOsgoode on Twitter
2. Subscribe to at least 1 of these newsletters:
   5. (scroll to the bottom)
3. Post your best startup/business idea on Instagram, Twitter, or Facebook with the hashtags #YUDigitalAmbassador and #CollisionFromHome and tag @yspaceyu and @collisionconfhq (@CollisionHQ on Twitter and @collisionconf on Facebook)

Once you have completed the 3 steps above, to receive your FREE 2021 Collision Ticket.

Tickets will be distributed on a first-come, first-served basis while quantities last, so act fast!

The post COLLISION CONFERENCE 2021 – HOW TO CLAIM YOUR FREE TICKET appeared first on IPOsgoode.

The hundredth meridian is the longitudinal line that roughly separates the semi-arid, rural regions of Western Canada from the humid, more urban regions of the Central and Atlantic provinces. But for many, the term was first brought to life by the beloved Canadian rock band, The Tragically Hip.��

About the Lawsuit
On February 9, 2021, over the Toronto-based brewery’s “100th Meridian Amber Lager”. The band released its hit single “At the Hundredth Meridian” in 1992, which currently has nearly on its official music video alone. The Tragically Hip claims that Mill Street Brewery has engaged in a course of conduct to “ride on the coat tails of one of the most beloved bands in Canadian music history by marketing its beer with reference to The Tragically Hip and one of its many quintessentially Canadian chart-topping tracks”.

The Problem
A concern with Mill Street Brewery’s “100th Meridian” branded beer is the effect and implied association that the band’s fans may have with the product. In naming the beer after one of The Tragically Hip’s most popular tracks, fans may incorrectly assume a connection or association between the two. Indeed, a certain sense of injustice seems to come with the idea of Mill Street Brewery selling beers to consumers in a way that hints at a (non-existent) partnership. As such, The Tragically Hip is alleging that Mill Street Brewery has “directed public attention to its good [...] in such a way as to cause or be likely to cause confusion in Canada,” and has made “representations to the public that are false or misleading”.��

This claim is made in tandem with various passing off, trademark infringement, and copyright infringement allegations. Notably, The Tragically Hip has claimed that . In 2015, Gord Downie, The Tragically Hip’s late lead singer, was diagnosed with terminal brain cancer, spurring one last national tour across Canada the following year. On August 20, 2016, the day of the final show of the “Man Machine Poem” farewell tour, Mill Street Brewery published a photograph on its Instagram page of its 100th Meridian branded lager among four of The Tragically Hip’s album covers, which were clearly visible. The Statement of Claim outlines numerous such instances of Mill Street Brewery’s promotion of its “100th Meridian” branded beer that may lead consumers to infer a connection, collaboration, and association with the band.�� ����������������������������������������������������������

According to the Statement of Claim, Mill Street Brewery’s purported justification for its “100th meridian” branded beer is that , and does not refer to The Tragically Hip’s song, reputation, and goodwill. After all, the hundredth meridian (in the geographical sense) existed long before The Tragically Hip popularized its name. However, there does seem to be a disconnect between Mill Street Brewery’s claims and the driving force that backs their marketing efforts. One may certainly argue that, at least in the minds of the public conscience, the “100th meridian” would not bear the meaning it does at all if not for its notoriety as part of The Tragically Hip’s hit single.��

Additionally, The Tragically Hip has claimed that if the use of “100th meridian” was indeed solely a reference to the place of origin, the in 2015 would be invalid and should be expunged, as they are either clearly descriptive or deceptively misdescriptive of the place of origin of the goods, given that the goods do not originate from solely west of 100°W.��

Paying Homage or Infringement?��
Mill Street Brewery may also try to contend that the marketing of the lager with reference to The Tragically Hip on social media was intended as an homage to the band’s legacy, and that the right to use of the band’s brand in doing so should be liberated. There is, however, a fine line when it comes to using intellectual property under the guise of “paying homage”. For instance, in 2015, , alleging that the song had copied numerous aspects of Gaye’s 1977 song “Got to Give It Up”. In that case, both Williams and Thicke testified to have drawn “inspiration” from works like that of Gaye’s. The final jury-verdict, however,��suggests that creating music “reminiscent” of an era, or that pays homage to the musical greats of the past, . In the present case, The Tragically Hip may argue that they alone should be able to autonomously manage their own brand, image, and associations.��

What’s Next?
The Tragically Hip has requested an order compelling the defendant to remove all posts referencing the band, an order compelling the defendant to publicly deny any association between their product and The Tragically Hip, and various claims for damages, including $500,000 in punitive, aggravated, and exemplary damages.��Clearly, taking this dispute to court will not be a painless maneuver for Mill Street Brewery, especially considering the amount of press the lawsuit has already received. Professor Pina D’Agostino, founder and director of IP Osgoode at Osgoode Hall Law School, shared with that she expects Mill Street Brewery will want to settle.

What might this lawsuit mean for breweries and bands in the future? If ruled or settled in its favour, The Tragically Hip would set a precedent with respect to the consequences that unassociated parties may face in branding their products in a way that benefits off of the reputation of another without permission. More broadly, this lawsuit should serve as a reminder to brand owners to thoroughly assess and develop products and marketing strategies that comply with others’ intellectual property rights, and if there is a grey area, to strategically assess whether consumers may misconstrue a branding tactic as something that it is not. With proper collaborations and partnerships in place, there is in creating mutually beneficial products.��

Written by Emily Xiang, Osgoode JD candidate and IPilogue Contributing Editor, and Alessia Monastero, Intellectual Property and Branding Lawyer and IPilogue Senior Editor.

The post Of Bands and Breweries: The Hip Sues Mill Street Over “100th Meridian” Beer appeared first on IPOsgoode.

The Push: It seems inevitable for facial recognition technologies to evolve for use beyond unlocking smartphones, and Tamir agrees with this hypothesis. He notes that the technology has improved substantially and will be able to provide a new level of efficiency at the border. For one, facial recognition has become cheaper overall, notably in relation to the cameras necessary. This renders these technologies affordable for large-scale security use at the border.

A basic example of current usage is an online passport application process adopted in the UK, through which a facial analytic process checks the quality of the images and rejects the ones that do not meet the requirements. Though this example a rudimentary, Tamir projects this to be the mere beginning of such technology use at airports. He specifically speaks to a pilot project that may result in facial recognition technology eliminating the need to check travellers’ passports. Instead, their .

The Pull: Facial recognition technology must still overcome a demonstrable capacity for error before it can be widely adopted. Tamir acknowledges that the current technology has reached a general level of accuracy that renders it useful for the government to implement, but it is still not perfectly accurate. Alarmingly, even an error rate of 1% would result in thousands of errors per day when considering the mass flow of people in and out of an airport daily.

Of more concern here, however, is that these errors are not evenly distributed among the population. Tamir identifies two specific forms of errors: false positives (whereby someone is erroneously matched as an individual they are not, which is of primary concern if an innocent individual is falsely matched as a suspect/wanted criminal), and false negatives (whereby the technology cannot match an individual to a genuine photo of them). A particular challenge with regard to these errors is racial bias: facial recognition systems have a harder time matching people of darker skin tones. If airports implement facial recognition technologies, members of visible minorities would face an unfairly greater risk of a false negative.

The magnitude of such errors can be seen within the aforementioned UK passport application process, which . Though not mentioned on the podcast, examples of false negatives have also .�� Tamir notes that such biases would severely affect immigration where an individual would lack the necessary means to dispute errors in the system. Conclusively, large-scale border use of facial recognition technology presents a genuine danger of inflicting more harm on some people than others.

The Peril: Zooming in more closely on Canadian law, Tamir notes that our current legal toolkit is inadequate. Canada does not have much regulation on facial recognition specifically. The central privacy protection we have is the , which was enacted in 1983 and has not been meaningfully updated to accommodate rapidly changing facial recognition technology. More specifically, we would require laws that prioritize transparency. The public should be able to access information about facial recognition technology and its error rates, or other possible downfalls. If we are to implement facial recognition technology at our borders, we need a legal framework that touches upon these issues.

The ongoing pandemic has halted many pilot projects surrounding facial recognition at airports. Considering these technologies are currently at somewhat of a standstill, now is a great time to engage in discourse regarding the future of facial recognition technology, which appears to be evolving faster than the law can keep up. In considering whether or not we are ready for widespread facial recognition use, Tamir’s insights help us understand how we can prepare to be ready before facial recognition lands at our airports, and this podcast is therefore a worthwhile listen.��

Written by Saumia Ganeshamoorthy, a second-year JD candidate at Osgoode Hall Law School and a contributing IPilogue editor.

The post Facial Recognition: Are We Ready for It? appeared first on IPOsgoode.

With Canadians' mounting frustration��and the dwindling prospects of exiting��this pandemic any time soon, it is vital that we unite as a nation to innovate. How Canada continues to respond to the pandemic will also define how we respond to future global challenges. Leading the development of new vaccines, more effective personal protective equipment, and new and improved systems��of distribution and administration of the vaccine are just some instances of what is necessary now. This pandemic has highlighted our societal inequalities and our fractured innovative landscape.

The university, one of Canada’s cradles of innovation, must continue to innovate out of this crisis and future crises. With innovation more critical than ever, how do we increase collaboration, coordination, and access to salient data and information during prolonged isolation?

Intellectual property (IP) is a powerful legal tool to foster innovation. It merits a context-specific approach on when, and whether, to protect assets from the inventor/ startup stage to the scale-up phase. However, COVID-19 has amplified the challenges faced by our brightest researchers and innovators. They are unable to access laboratories, have limited access to funds to start up a company, lack the know-how and support, and do not know where to go to obtain the needed help to protect their inventions. Under these conditions, IP can go undetected until it is too late. Patents, trademarks, and copyrights protecting valuable work are not well understood, and often never see the light of day. Finally, when IP is detected and advised to be protected, the innovation costs are prohibitive, starting with the patent pro- cess costing upwards of $20,000 to protect a single patent.

It is no wonder then how Canada, a country with so much talent and potential, is still playing catch up to other countries’ patent filings and, importantly, commercialization successes in the form of licensing deals, startups, and scale-ups from their own valuable IP.

As a response, closer partnerships between universities and industries��are becoming commonplace. Take as��an example the University of Oxford��and AstraZeneca trailblazing partnership to tackle the global pandemic with a COVID-19 vaccine. While these university-industry partnerships can help, they also risk a power imbalance between Canadian universities and multinational companies. There is no guarantee that Canadian jobs will be generated and retained in Canada, even though they may be founded on Canadian science and innovation.

Another promising mechanism is the use of university commercialization clinics such as the IP Innovation Clinic at �첥��Ƶ’s Osgoode Hall Law School. The clinic is the first of its kind, where law firms supervise law students who work directly with clients to formulate an IP strategy. This initiative accounts for more than 6,000 hours of pro-bono work, saving innovators close to $2-million to date during a nascent stage where resources are scarce.

One of the clinic’s success stories is Skygauge Robotics, a drone robotics company that landed a $3.3-million funding deal, and did so during a pandemic through the clinic’s support. Skygauge’s ambition is to build a company that keeps people innovating and working in Canada — a perfect example of how providing a friendly and supportive innovation ecosystem can be a game-changer to Canada’s innovation economy.

Seeing the need to continue innovating, especially during the pandemic, the IP Innovation Clinic, seized on the possibilities of artificial intelligence (AI). Enter Isaac Pewton, the IP Innovation ChatBot that��can now answer any number of intellectual property questions. Powered by AI, the ChatBot learns and becomes smarter the more questions are asked of it. The goal is to balance the informational asymmetry in the innovation ecosystem and make valuable IP knowledge accessible to everyone for free.

This ChatBot is more important than ever to underrepresented communities, including women and Indigenous peoples who have typically not fared well in our in- novation ecosystem, and whose conditions are exacerbated from the pandemic. The ChatBot empowers these disenfranchised and remote communities with valuable information and direct access to the clinic for further services for free.

The ChatBot itself is an innovative example of a successful university-government-private partnership. Funded by Innovation, Science, and Economic Development Canada’s IP Clinics Program, pursuant to the federal government’s National IP Strategy and developed by a team of lawyers and technical experts at Norton Rose Fulbright Canada LLP, and Osgoode Hall Law School, the AI-powered ChatBot, by providing highly valuable IP information, can help Canadian entrepreneurs scale and learn quickly to innovate us out of this crisis and help future proof Canada against the next one.

Prof Giuseppina D’Agostino is a senior fellow with CIGI’s International Law Research Program (ILRP), effective November 2016. She is��the Founder & Director of IP Osgoode, the IP Intensive Program, and the Innovation Clinic, the Editor-in-Chief for the IPilogue and the Intellectual Property Journal, and an Associate Professor at Osgoode Hall Law School.

The post Asking ‘Isaac Pewton’ to Innovate Out of a Crisis appeared first on IPOsgoode.

Alibaba's Tmall Luxury Pavilion is an invite-only e-commerce platform for luxury brands. Though consumers have comfortably shifted to online shopping, many luxury brands have been hesitant to venture into e-commerce, concerned about selling their products alongside brands whose image and quality of goods are not of the same caliber. Though Alibaba's Tmall Luxury Pavilion where “luxury brands can deliver the same kind of exclusivity and custom-tailored shopping experience online as they offer in their brick-and-mortar stores,” Gucci waited three years since Tmall launched in 2017 to finally join the platform.

Kering, the French Luxury group that owns the Gucci brand, has also announced plans to against Alibaba. In the lawsuit, which has been ongoing for five years, Kering sued Alibaba for alleged counterfeiting. In an agreement between Kering and Alibaba in 2017, the two companies agreed to to protect Kering’s brands (which also includes Saint Laurent, Bottega Veneta, Balenciaga, Alexander McQueen), and utilize Alibaba technology to help regulate and remove counterfeited products from the platform. A notes that the companies have “come to a groundbreaking agreement to cooperate in their efforts to protect intellectual property and take joint enforcement actions online and offline against infringers in order to provide the best consumer experience and a trusted environment.”

Alibaba has faced various allegations in the past that its online shopping sites do not proactively prevent the sale of copyright-infringing products, which has been a significant concern for luxury and everyday brands across various e-commerce platforms. In October 2020, priced over $100 in order to address counterfeiting issues. The seller will now be required to send the sneaker to an independent third-party authentication facility for a comprehensive inspection before shipping. After verification, eBay will use expedited shipping to send the sneakers to the buyer. Forbes from Jordan Sweetnam, the SVP and General Manager of eBay in North America: “eBay operates the world's most diverse sneaker marketplace—with the widest selection and best prices—and by removing any uncertainty with the buying process, our community can buy and sell with total confidence.”

The Consumers Council of Canada , highlighting the concerns faced by brand owners and consumers alike with respect to the counterfeiting and pirating of consumer goods and services. Strikingly, the report notes that law enforcement agencies have reported an increasing concern that distributors of counterfeit goods are associated with organized crime and terrorist groups.����������

A notes that "in 2018, Gucci chief executive Marco Bizzari said during BoF’s China Summit that he was reluctant to partner with China’s e-commerce platforms due to concerns regarding counterfeits." Though counterfeit products continue to remain a pressing concern for branded goods, innovation, and consumer health and safety, with the COVID-19 outbreak pushing retailers to move online, it is unsurprising that Kering's Gucci brand has moved in the direction of partnering with Tmall.

Alessia Monastero is an Intellectual Property and Branding Lawyer and IPilogue Senior Editor.

The post Gucci Joins Tmall e-tailer, Kering drops lawsuit against Alibaba for Counterfeiting appeared first on IPOsgoode.

DRAMATIS PERSONAE: ����������������������

Justice R. Bitter, judge (J)

Sue N. Ewon, plaintiff (P)

Wigmore Cross, plaintiff’s counsel (PC)������������������������������������������������������������������������������������

Chick Fowler, defendant (D)

Ms Chiff Maker, defendant’s counsel (DC)

PARTIAL TRANSCRIPT OF CROSS-EXAMINATION OF PLAINTIFF SUE N. EWON:

DC: So, Ms Ewon, you say the defendant’s chicken-plucker infringes claim 1 of your patent?

P: Yes.

DC: Because it includes chicken-pluckers with a widget, and the defendant’s plucker has that widget?

P: Yes.

DC: Did you ever tell anyone that claim 1 doesn’t include chicken-pluckers with a widget?

PC: I object, what plaintiff thinks her claim means is irrelevant. That’s for the judge.

J: Yes, I think that’s right. Ms. Maker, I decide questions of law.

DC: All right. (To P:) When you applied for your Canadian patent, did your patent agent write to the examiner to say that pluckers with widgets were excluded?

P: I’ve no idea.

DC: I show you Exhibit K. You recognize that letter from your patent agent to the examiner?

P: Yes, she sent me a copy.

DC: You see where it says “Enclosed is a new claim 1 that corresponds substantially to the claim submitted in prosecution of the related United States patent application”?

P: Yes.

DC: You did have such an application in the United States, didn’t you?

PC (to J): With respect, Your Ladyship, I have no idea where this is all heading.

J: Nor do I, but I’ll cut Ms. Maker some slack for the moment.

DC: Thank you. (To P:) I repeat, you did have an application filed in the United States for the same invention as in this case, didn’t you?

J: Yes.

DC: Are you aware that the attorney handling your American application wrote to the American examiner, saying that a new claim 1 he was submitting would overcome the examiner’s objection that chicken-pluckers with widgets were known to the prior art?

PC (to J): I object most strenuously to that whole question. Even if my client personally wrote to the American examiner saying that, it is inadmissible here.

J: Why? Because it wasn’t said in Canada to a Canadian examiner?

PC: Yes.

J: Would it have been admissible had your client written the same thing to the Canadian examiner?

PC: I don’t believe anything said anywhere else than in a Canadian prosecution has anything to do with this case. May I draw Your Ladyship’s attention to the Court of Appeal’s reasons in CanMar at paragraph 70? The Court there said you should be “wary” about allowing anything other than Canadian prosecution history in. And then at paragraph 71, the Court went on to say you should “tread carefully” in admitting extrinsic evidence to interpret a patent claim. And once again in that paragraph, “Opening the door to allowing foreign patent prosecution history into the analysis might lead to overly contentious and expensive litigation.”

J: Well, I am treading carefully and warily, and I haven’t turned the door knob yet. Hasn’t this litigation been contentious and expensive enough anyway? Aren’t you making it more expensive and contentious by raising these sorts of objections? I can’t see why a statement that would be admissible and relevant if made in Gatineau becomes inadmissible and irrelevant if made in Alexandria. What happens in Virginia doesn’t have to stay in Virginia.

PC: With respect, it is not Your Ladyship’s role to question the wisdom of Parliament. Both Justice Manson and the Court of Appeal said very clearly that section 53.1 applies only to communications to the Canadian Patent Office.

J: I am not questioning Parliament’s wisdom, only the awkward statutory language used to translate it. Hasn’t one of my colleagues just decided that even Canadian history isn’t admissible if it’s the licensor rather than the patentee who sues, even where the patentee is a defendant (Allergan Inc v Sandoz Canada Inc, at [126])? Why couldn’t section 53.1 just have said that any prosecution history from wherever is admissible, but its weight is for the court? Is section 53.1 based on any other country’s legislation?

PC: Not that I know, Your Ladyship. It is homegrown, although I accept there may be a few weeds among the roses.

J: What I am saying, I guess, is much what Justice Manson said in CanMar. Here we have the extraordinary circumstance that the Canadian communication expressly refers to the corresponding US application and the clear inference is that the Canadian claim is being replaced precisely to overcome the actual or anticipated citation of the same prior art against the Canadian application.

PC: With respect, that is exactly the same situation as in CanMar, and the Court of Appeal explicitly overruled Justice Manson’s admission of the American file.

J: We have this anomaly then, haven’t we? If the Canadian patent had been granted unchanged and without reference to the US application, your client could have asked for it to be reissued with the changed claim under section 47 of the Patent Act because of an inadvertent mistake. Foreign prosecution history has long been admitted on a reissue application to show there was a mistake and that the reissued patent would be for the same invention. Why allow the foreign file to be admitted to show the reissue was justified, but exclude it to show what the claims now mean?

PC: If that was the position before section 53.1 took effect, then I submit that such foreign history can no longer be admitted in reissue.

J: What do you say, Ms. Maker?

DC: Section 53.1 states that it specifically applies to reissue and no intent to change current Patent Office practice appears. Nor is there any apparent attempt to overrule long-standing cases such as Northern Electric Co v Photo Sound Corp, , where the whole case depended on foreign prosecution history. If foreign history is admissible in reissue to determine the scope of the invention, as I submit it was before and is after s. 53.1, then I cannot see why it is inadmissible where an ordinary patent is involved.

J: Well, it’s a brave trial judge who says the Court of Appeal has decided something per incuriam and should not be followed.

DC: May I make one further point? The Court of Appeal in CanMar relied on a decision of the United States Federal Circuit Court of Appeals to say that the reference in the plaintiff’s letter to the Canadian examiner to “a related United States patent application” wasn’t specific enough to incorporate the corresponding US file. The point on how specific a cross-reference must be to allow another document to be read has not been decided by the US Supreme Court, and I would point out that the Federal Circuit Court of Appeals is a court with one of the highest reversal rates before the US Supreme Court, and especially so in patent cases.

What our Court of Appeal should have done was to apply the general law in Canada on when documents can be looked at together. Cases on the Statute of Frauds are the most obvious source. The Statute requires contracts, such as guarantees or sales of land, to be evidenced by a memorandum in writing, and ever since the 19th century, it has been held that two or more documents can form a single memorandum. Supreme Court of Canada authority going back a century says, and I quote, “parol evidence may be given to connect two documents together which do not expressly refer to each other, but which connection and reference is a matter of fair and reasonable inference:” Doran v McKinnon, , 53 SCR 609 at 611. I can say that is also the law in most Commonwealth countries and state courts of the United States. Not to put too fine a point on it, the US Federal Circuit has gone rogue by making up its own rule of incorporation and ignoring the general law of the majority of state courts.

I submit that in our case the reference to the US application is plain enough in the letter to the Canadian examiner. It is also distinguishable from CanMar in two respects. First, our letter refers to “the” US application, whereas the Canmar letter referred only to “a” related application. We are very specific. Second, the US application in CanMar was abandoned, whereas here the plaintiff’s application specifically claims priority from the corresponding US application which was granted. It is open to the Court to hold the US history admissible on either of these distinctions, since the Court of Appeal specifically refused to express any “firm view on the broader issue of whether foreign prosecution history can be considered under section 53.1.” I ask for Your Ladyship’s firm views now. ��

PC: I submit this case is covered exactly by the Court of Appeal in CanMar and the foreign history cannot be looked at.

D (intervening): You mean Sue can lie to a Canadian judge where she wouldn’t dare to an American one? [Scuffle breaks out.]

J: Ms. Maker, could you kindly restrain your client? [Order resumes.]

Thank you, counsel.

I propose to admit the statement in the US patent file into evidence. I shall not at this stage indicate what weight it deserves or what use I may make of it. This case is not covered by CanMar because the Canadian patent here relies for its priority on a stated US patent. The plaintiff cannot blow hot and cold by then dismissing the very patent from which it claims priority and on which it may well depend for validity in Canada.

The Court of Appeal thought it “a stretch” to incorporate a US patent file on language as general as that which points to “a” related United States application. There is no “stretch” at all here since, as defendant’s counsel submitted, the letter to the Canadian examiner points to “the” related US application, not merely “a” related one. I nevertheless must say that, at a time when we are all urged not to subject patents to “the kind of meticulous verbal analysis in which lawyers are too often tempted by their training to indulge” (Catnic Components Ltd v Hill & Smith Ltd, [1982] RPC 183, 243 (HL)), I would be reluctant to have to read the documents leading to the grant of a patent more meticulously than I would read the patent itself.

I am also not sure that incorporation is the mot juste for the ability to follow a signpost and explore the destination to which it points. There is no difficulty in identifying that destination off the face of the Canadian file. Canadian patent law is no Alsatia where the general law stops, nor is it one where the US Federal Circuit’s writ runs. To adapt L.P. Hartley’ s words in The Go-Between, patent law should not be a different country where they do things differently. Law under the Statute of Frauds lets two documents be read together where their “connection and reference is a matter of fair and reasonable inference:” Doran v McKinnon, , 53 S.C.R. 609, 611, which I note was recently applied to a series of emails in Druet v Girouard, at [34]. Canadian patent law should let patent files be cross-referenced that way too. The location of the second file should not matter, any more than it does under the Statute of Frauds. If a multimillion dollar guarantee or land contract can be interpreted and enforced by means of such a connection, so should a patent.

None of the parade of horribles trotted out by the Court of Appeal (CanMar at [71]) is present here. There is no translation problem with the US file, and the Court of Appeal specifically said at [72] that “one should not underplay the public interest in keeping those who have previously disclaimed elements from their patent from re-claiming them in future infringement cases.” I do not expect that the plaintiff will ask me to take such a course, which Locke J (now JA) in Pollard Banknote Ltd v BABN Technologies Corp, at [237] described as “breathtaking.”

I would only add in passing that, when the Court of Appeal comes to take a “firm view” on foreign prosecution history and section 53.1, it may well have to take account of the long-standing practice, sanctioned by consistent Supreme Court authority, of relying on evidence of such history to decide when the reissue of a defective or inoperative patent under section 47 of the Patent Act is warranted or valid.

Ruling accordingly

Prof David Vaver is a Professor of Intellectual Property Law at Osgoode Hall Law School and Emeritus Professor of Intellectual Property & Information Technology Law at University of Oxford. This is an abridged version of a Comment that will appear in the Intellectual Property Journal.

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