Emily Xiang is an IPilogue Writer, a Senior Fellow with the IP Innovation Clinic, and a 3L JD Candidate at Osgoode Hall Law School.

What do a company in the business of mining and selling construction equipment, and an athletic-wear and sporting accessories brand, have in common? Apparently, the cat has been let out of the bag on this one. On January 10th, 2023, the Federal Court of Appeal released one of its first trademark of the year in .The Federal Court of Appeal held in favour of the construction machinery and equipment company over Puma’s use of the trademark PROCAT in association with footwear and headgear.

Puma first applied for the trademark PROCAT in 2012 for its sub-brand of youth sporting accessories. Caterpillar shortly opposed the application, asserting that, inter alia, the PROCAT mark was confusing with Caterpillar’s own CAT & Triangle Design [shown below]. Caterpillar’s CAT & Triangle Design was also registered in association with footwear and headgear. Specifically, the design was related to a line of work and sport footwear that the company had been operating in Canada since 1994. When the matter was brought before the , the hearing officer held that there was no reasonable likelihood of confusion between the marks. The officer explained that Caterpillar had failed to show that they possessed sufficient control over the character or quality of the goods sold in association with the CAT & Triangle Design through its licensees.

On , Caterpillar submitted new evidence in order to demonstrate requisite control and that it had accrued benefit from its licensees’ use of its marks. The court found the new evidence  to be material. Moving on to the likelihood of confusion analysis, the court agreed with the hearing officer that the two marks were indeed similar in appearance and sound due to the word “CAT.” But the court also found Puma’s prefix “pro” to be suggestive or laudatory of the company’s goods. Therefore, the prefix was not enough to distinguish it from Caterpillar’s CAT. Puma had also submitted 13 other trademarks to evidence that the “CAT” element had little distinctiveness in the marketplace and should therefore be subject to a smaller ambit of protection. When elements appear over and over again in trade, is generally acceptable in order to allow for fair competition. However, the court in this case found Puma’s evidence to be insufficient in demonstrating the state of the register. The Federal Court therefore overturned the decision of the hearing officer and found that there indeed would be a reasonable likelihood of confusion between the two CATs. 

Unfortunately for the sporting brand, the court of appeal did not have much to say by way of correction either. In appealing the decision to the , Puma argued that the FC judge had erred in her findings. In Puma’s view, the FC judge had failed to consider each of the marks as a whole, and contended that it would be impossible for a consumer that was not “” to be confused as to the source of the two companies’ respectively marked goods. The sporting brand also tried to rely on its other cat-nominative trademarks, such as its better-known “jumping cat” design, as evidence of brand recognition, though this was still insufficient to sway the courts. 

The Federal Court of Appeal was therefore unable to find any palpable or overriding error in the FC judge’s decision. For Puma, its with regards to its use of PROCAT in association with footwear and headgear beyond a trivial level proved detrimentally determinative. Ultimately, Puma’s evidence and arguments were not enough to go up against Caterpillar’s prior registration and surprisingly long-standing presence in the Canadian market.

The post ‘It’s Raining Cats and Caterpillars!: How a Lack of Evidence Killed the CAT’ appeared first on IPOsgoode.

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

The Ministry of Energy, Commerce and Industry of the Republic of Cyprus (“Cyprus”) lost its latest attempt to obtain trademark protection for its famous cheese, “Halloumi,” in a dated January 20, 2023. The Quebec Court of Appeal (QCCA) dismissed the appeal and agreed with the trial judge, ruling in favour of the Canadian dairy company, Saputo Produits Laitiers Canada S.E.N.C. (“Saputo”).

Halloumi, also commonly spelt as “Haloumi” or “Halomi”, is often associated with the Mediterranean island of Cyprus where it was first manufactured . It is the second most important export for Cyprus and its popularity in Canada has over the past 20 years, with many Canadian dairy manufacturers, including Saputo and President’s Choice, producing and selling halloumi cheese.

In 1995, Cyprus filed an to register “Halloumi” as a certification mark for cheese of the following defined standard: “the cheese is produced only in Cyprus using the historic method unique to that country, namely: traditionally, it has been produced from sheep's and/or goat's milk. In the case of mixtures, cow's milk is also allowed.” are a type of trademark that can be licensed to manufacturers as an indication to consumers that its products meet the owner’s defined standard. Common examples of certification marks include for Ontario wine, , and .

While this certification mark was registered in the , the Trademarks Opposition Board (TMOB) the mark on the basis that there was evidence of commercial use of “Halloumi” or similar terms in Canada already and thus, the mark is not distinctive to cheese “produced only in Cyprus.” The TMOB’s decision was upheld by both the and , with leave to the dismissed in 2012.

Cyprus entered into a with Saputo in 1999 and 2004, stipulating that Saputo “shall not use the trademark HALOMI on its products, or any other trademark confusingly similar with HALLOUMI or HALOMI.” Cyprus Saputo for breach of contract and requested a permanent injunction preventing Saputo from making further use of “Halloumi” or similar marks on its packaging. The Superior Court of Quebec ruled in favour of Saputo given that the law in Canada is settled that “Halloumi,” or similar words, could not be used as a trademark and therefore, the above contractual provision does not apply. On appeal, the QCCA agreed with the trial judge.

Canada’s rejection of trademark protection for “Halloumi” raises important questions surrounding cultural appropriation, a controversy recently brought up in the UK for the trademark “Taquería” (see ). Halloumi cheese is integral to Cyprus’ since its preparation is “directly linked to the traditional rural life and social solidarity that characterizes even today the villages of Cyprus.” However, the now widespread recognition of halloumi cheese in Canada presents a significant hurdle to Cyprus in protecting its historic cheese-making methods. To distinguish halloumi produced in Cyprus from that of Canadian retailers, Cyprus will likely need to seek a more fanciful certification mark that goes beyond the mere description of “Halloumi” (or similar terms).

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Anita Gogia is a IPilogue Writer and a 2L JD Candidate at Osgoode Hall Law School.

On on the intriguing case. engages novel issues of trademark infringement, trademark dilution, and cybersquatting (MetaBirkin.com domain name in this case) by artists in the metaverse.

Rothschild that depicted the Hermès Birkin bag in digital fur instead of leather, seemingly present in luxury handbags. The NFTs were on every further sale. After Hermès took down the NFTs from OpenSea, Rothschild moved to a different marketplace and “MetaBirkin” on Discord. Rothschild argued that “” and that the NFTs were a “” under First Amendment protection. Essentially, he argued that “MetaBirkins” were .

The jury found that Rothschild’s “MetaBirkin” NFTs . The key issue was whether the “MetaBirkin” was artistic expression under First Amendment protection, or a commercial product that causes consumer confusion. The jury concluded that while artistic expression was present, Rothschild intended to confuse consumers.

During the trial, Hermès provided evidence of actual consumer confusion which included about if “MetaBirkins” were connected to Hermès. Rothschild rejected these claims by providing that he to his website clarifying that the “MetaBirkins” were not connected with Hermès in any way and that his .

The jury was also influenced by Judge Rakoff’s reasons to deny the motion for summary judgment, and his exclusion of expert testimony. Judge Rakoff held that the test for artistic works applies where the key inquiry is This test was applied as opposed to the test, . Thus, Judge Rakoff held that the artistic relevance was present. Blake Gopnik provided expert testimony that Rothschild brought forth in this case. Had this been admitted, the jury ; thus aligning them in the artistic expression context.

Following the decision, Rothschild’s legal team that the dispute is “.” The team also pointed out Hermès’ hypocrisy as a luxury fashion brand who claim they care about artists but “.” This case has been followed by many to observe how the court resolves the issue of NFTs using intellectual property for the purpose of artistic expression. It is unknown whether this decision stands as precedent since intellectual property right disputes are significantly context-based. After this decision, artists can only conclude for certain the importance of obtaining legal advice before using IP in their NFTs, even if it is in the name of artistic expression.

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

On December 26, 2022, the Japanese IP High Court dismissed an appeal from Christian Louboutin (“Louboutin”), a shoe designer known for its iconic red-bottom heels, in its action against Japanese shoe designer, Eizo Collection Co., Ltd. (“Eizo”), to shut down Eizo’s use of red soles on high-heeled shoes.

In May 2019, Louboutin sued Eizo under the Unfair Competition Prevention Law, seeking a permanent injunction against Eiko’s production of red-soled high heels and damages of approximately CAD 43,500. The Tokyo District Court ruled against Louboutin by finding red soles insufficient as a source indicator, and that the likelihood of confusion among consumers is therefore low. The IP High Court affirmed the judgment and placed particular emphasis on the to assess the likelihood of confusion:

1. The relevant consumers in the Japanese shoe market (women from their 20s to 50s) are likely to try on multiple shoes before purchasing ones that fit in a physical store;
2. The market can be divided into three categories: (i) luxury brand products, (ii) affordable brand products, and (iii) inexpensive no-name products;
3. The shoes in question, as well as most high-heeled shoes, bear a brand name or logo on the insole so that consumers can distinguish between trade sources; and
4. E-commerce websites post images of ladies’ shoes and identify the trade source for the respective goods in advertisements ().

While Louboutin’s products retail for and over and fall within the luxury brand market, Eizo’s shoes occupy the affordable or no-name brand markets, with an average retail price of JPY17,000 ($130). As such, the court ruled that, despite the resemblance of the colour of Louboutin and Eiko’s outsoles, the likelihood of confusion amongst consumers is low since each company occupies a different position in the market.

Relying on the fact that Louboutin is not the exclusive supplier of red-soled high heels in Japan and only 51.6% of targeted women in their 20s to 50s residing in major Japanese cities recognized Louboutin at the sight of a red-soled high-shoe, the IP High Court Louboutin’s assertion of its remarkable reputation amongst consumers. The court also took with Louboutin’s market research. The 3,149 individuals surveyed were luxury retail shoppers and were only presented with Louboutin’s products, not Eizo’s.

This loss for Louboutin follows several years of from the Japan Patent Office (JPO) and JPO Appeal Board to register its trademark for a colour mark consisting of a red (Pantone 18-1663TP) coloured in soles for use in high heels filed on April 1, 2015 (TM App no. ). In April 2015, Japan opened the gate for non-traditional trademarks, including colour, sound, and motion . As of November 2020, however, the JPO only registered out of 543 applications for colour marks. The JPO based on Article 3(1)(iii) of the Japan Trademark Law, stating that Louboutin’s colour mark lacks distinctiveness to be deemed as an indicator of source for Louboutin in the Japanese market.

(Alt Text: EIZO shoes with red soles; Source: ()

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Ariel Goldberg is a 1L JD Candidate at Osgoode Hall Law School.

Usually, a dog toy’s squeak echoes throughout a home. A Jack Daniel’s bottle-shaped dog toy called “Bad Spaniels” will be heard at the U. S. Supreme Court and could bark for trademark use in expressive works. Will it bite?

Jack Daniel’s Properties, Inc.’s (“Jack Daniel’s”) petition to the U. S. Supreme Court explains that the case addresses a significant reoccurring tension in trademark and trade dress protection under the U. S.’s Lanham Act: VIP Products LLC (“VIP Products”) runs the e-commerce website . Under the shopping category “”, VIP Products sells an array of dog toys that parody existing brands’ trademarks and trade dress including a Mountain Dew bottle that reads “”, a Baileys bottle called “” and, the toy at issue, a nearly identical Jack Daniel’s Old No. 7 Brand Tennessee Sour Mash Whiskey bottle altered to say “.”

Image from .

Initially, that the “Bad Spaniels” dog toy likely causes consumer confusion and tarnishes Jack Daniel’s marks. On appeal, the decision holding that the likelihood-of-confusion test would not apply because the toy is an expressive work with First Amendment protection of freedom of speech. The Ninth Circuit applied the Rogers Test from the Second Circuit’s (1989) decision. free speech and trademark protection by allowing the use of trademarks in expressive works if artistically relevant and not explicitly misleading. Here, the trademark use was artistically relevant to the , the toy was not explicitly misleading because VIP Products altered the trade dress. The toy had a disclaimer on the back of the toy that stated that Jack Daniel’s was not affiliated.

Jack Daniel’s petition argues that the Ninth Circuit’s “” decision allowing for companies similar to VIP Products to tarnish trademarks and create mass marketplace confusion. Jack Daniel’s that the courts of appeal are divided on this issue, specifically that the Ninth Circuit’s use of heightened First Amendment Protection for humorous trademark use conflicts with the decisions of other Circuit courts. . These circuits have not used the First Amendment and instead applied the traditional likelihood-of-confusion test with consideration towards the humor or parody as a factor against the mark holder. For example, in , the Fourth Circuit held that Haute Diggity Dog’s “ successfully parodied Louis Vuitton’s handbags through applying the likelihood-of-confusion test with humour as a factor.

Essentially, Jack Daniel’s wants the U. S. Supreme Court to create a higher bar for parody works which would create more ease for mark holders to address consumer confusion and dilution from parodies. The main concern is the use of humour to gain immunity. , the academic director of Fordham University Fashion Law Institute, that “every brand with a beloved trademark is worried about seeing cheesy versions of its primary corporate asset used to sell not only dog toys, but also  a vast range of other novelties that, over time, could cheapen the perception of the brand.” In addition, that dog toys are expressive works because its purpose is to be played with by dogs.

However, the argument to raise the bar for parody works is contentious. , a professor at Harvard Law School and author of a brief opposing Jack Daniel’s , highlights that trademark law exists to protect consumers from fraudulent products rather than clear humorous uses of existing trademarks and trade dress. expressions on a canvas are not meaningfully legally distinctive from expressions on a dog toy.

The U. S. Supreme Court decision will be a significant precedent. In Mason Rothschild claimed his fur-covered Birkin bag NFTs, MetaBirkins, satisfied the Rogers Test by being artistically relevant and not explicitly misleading. Clearly, the humorous use and reworking of existing trademarks and trade dress is here to stay making Jack Daniel’s shot at heightened First Amendment protection highly relevant. Time will tell if Jack Daniel’s is barking up the wrong tree.

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Alice Xie is an IPilogue Writer and a 1L JD Candidate at Western University’s Faculty of Law.

The intellectual property rights victory in Canada for the footwear company Crocs is a timely reminder to keep fleece clogs in mind for your winter wardrobe. Famous for its easily-recognizable design of breathable and water-friendly clogs, Crocs was founded in 2002 in the US by . Though it started out as comfortable boat shoes, Crocs now boasts . Crocs are popular in part because they walk the fine line between functionality and fashion. The clogs appeal to both the practical public with their comfortability, as well as those who see them as a fashion statement, including celebrities. With Crocs’ level of global popularity, knock-offs are inevitable.

The Battle Over Fleeced Clogs

As early as 2006, Crocs has been in numerous intellectual property battles against companies Crocs claims are selling knock-offs. While most of Crocs’ lawsuits are in the US, the battles have also crossed the border into Canada, such as Crocs’ October 21, 2022 victory in . Crocs Canada is a licensed distributor of the US company, and Double Diamond Distribution Ltd is a direct competitor for clog-style footwear operating under Dawgs and Canada Dawgs.

Released on October 21, 2022, this case decision concerned the validity of the industrial design rights for Crocs’ MAMMOTH line of fleece clogs (“939 Design”). rights protect the visual features of an article, including its design, shape, pattern or ornament, or any combination of these features. Crocs targeted the Fleece Dawgs footwear, claiming that they were unlawful imitations of the 939 Design. One of the issues the judge examined in this case was whether the design of Fleece Dawgs footwear differed substantially from the 939 Design under .  Notably, the judge recognized the of the fleece clogs design that Crocs developed and commented that there was nothing like it previously in the market, which entitled the design to a broad scope of protection under industrial design rights. In finding that there was an , the judge determined that the two designs in question were not substantially different in their key features. The features mentioned included the overall shape, the fold over the fleece collar, the decorative discs, and the inner lining of the fleece clogs. In addition to a declaration that Dawgs has infringed the 939 Design, the judge also awarded Crocs around $700,000 from Dawgs’ profits and pre-judgment interest.

A Look at Crocs’ Other Battles

Beyond the industrial design victory in Canada, Crocs has other wins in its long battle to protect its intellectual property rights from copycats.  The US Patent and Trademark Office’s Patent and Trial and Appeal Board, after three rejections, held that the Class Crocs clog design patent was in 2019. In a mass intellectual property protection effort, Crocs in 2021 for trademark infringements. Among these lawsuits was one against a wholesaler for . Crocs has since settled claims with Walmart and a few other companies. Crocs against Daiso this past June 2022, a Japanese dollar store in California, for selling lined casual clogs that are virtually identical to Crocs’ clogs for $3 to $3.50. In its claim, Crocs argued that the design infringement has led Daiso to enjoy gains and profits in misleading consumers. As Crocs continues cracking down on copycats,  the accumulation of legal victories like  Crocs v Dawgs will strengthen the company’s argument for ownership over its registered designs, patents, and trademarks.

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Areeb Daimee is a 2L JD candidate at the University of Western Ontario Faculty of Law.

With the rise of significant non-fungible token (“NFT”) trademark disputes taking place in the United States, Canada is looking towards the outcomes of those cases in order to interpret Canadian trademark law in relation to NFTs. These disputes are a recent and growing issue in intellectual property law that requires Canadian courts’ examination.

When focusing specifically on prominent trademark infringement disputes, two significant American cases come to mind.

Nike’s suit against StockX

��������� StockX for trademark infringement in February 2022 for selling NFTs of Nike’s products on the StockX online platform. Nike argues that StockX told consumers that tokens would be redeemable for physical shoes.��������� claims that this trademark infringement by StockX is , negatively effecting Nike’s plans to release a line of virtual products.

StockX has made minimal comments on the matter but makes it clear that Nike’s “lacks merit” and is  “a mischaracterization of the service StockX offers” through NFTs.

Hermès’ suit against artist Mason Rothschild

Hermès is in a trademark dispute with artist Mason Rothschild after Rothschild sold multiple digital handbag NFTs. Hermès has for trademark infringement, trademark dilution and false designations of origins and representations amongst other claims against Mason Rothschild.

In response, Rothschild has that he has protection under the First Amendment, describing the NFTs as just “ “a playful abstraction.”

The Future of Canadian Trademark Law

Both cases are still ongoing and Canadian courts and IP lawyers are waiting for the outcomes of various NFT disputes from ‘south of the border’ to better understand how to apply trademark law to NFT disputes in Canada.

George Kondor, partner at Oyen Wiggs Green & Mutala LLP, explains how significant the outcomes of these cases are for the future of Canadian trademark law.

Kondor that “"there’s nothing in Canadian legislation related to NFTs because they’re generally so new” and that court cases are the best way to crystallize what rights people have with regards to NFT issues. Canadian courts may need to wait for a concrete answer from their U.S counterparts. Kondor did also make clear that nothing is for certain: “”.

What the Future May Hold

The multitude of NFT disputes taking place in U.S Federal Courts will likely influence Canadian courts to follow suit and apply similar interpretations of trademark law. The U.S courts will establish influential decisions which assist Canadian courts in swimming through uncharted waters. Only time will tell what direction the U.S and Canadian courts take in dealing with these unique disputes.

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

Vogue’s publishers have rappers Drake and 21 Savage for unauthorized use of Vogue’s trademarks and false representations in marketing their newest album, “Her Loss”. This follows Vogue’s controversial asking a small English pub called “The Star Inn at Vogue” to change its name.

Condé Nast, the owner of Vogue Magazine, filed a for trademark infringement and false advertising against Drake and 21 Savage on November 7, 2022, in the United States District Court after the artists released a parody promotional cover of the widely acclaimed Vogue Magazine, featuring a photo of Drake and 21 Savage atop the Vogue logo and multiple fake story headlines. The magazine was part of a , including a fake NPR Tiny Desk Concert and a fake Saturday Night Live performance. Drake and 21 Savage jointly promoted the fake magazine on their Instagram with the caption:

“Me and my brother on newsstands tomorrow!! Thanks @voguemagazine and Anna Wintour for the love and support on this historic moment”

The artists also mimicked Vogue’s promotional activities by distributing copies of the fake magazine in North America’s largest metropolitan areas, including New York, Los Angeles, Atlanta, Miami, Houston, and Toronto, and plastering posters of the counterfeit cover along streets and buildings in these cities.

This lawsuit followed a week of repeated demands to Drake and 21 Savage from Vogue and its counsel to cease their allegedly infringing activities and take remedial actions to curtail further public confusion. Given that the artists refused to take action and continued to benefit from the social media posts, Vogue requested and was immediate injunctive relief to prevent Drake and 21 Savage from using fake covers to promote their album. This injunction also prevents Drake and 21 Savage from using Anna Wintour’s likeness, including a doctored photograph of Vogue’s long-serving editor-in-chief and Drake, a full-page feature in the fake magazine. Vogue also requests statutory damages of up to $4 million US, though the court has yet to address these damages.

Though the post containing the counterfeit magazine was taken down from Instagram and the posters of the counterfeit cover along streets and buildings were removed because of the injunction, distributed copies of the fake magazine remain and are now being sold for upwards of on e-commerce sites. Ample evidence demonstrates that this false representation caused confusion, including various online articles from which claim that Drake and 21 Savage landed the December Vogue cover and social media posts indicating users’ excitement for the fake cover.

U.S. District Judge Jed Rakoff agreed with Vogue and Condé Nast that there was sufficient proof that consumers were being confused and the publisher had been "irreparably harmed”, a temporary injunction for the production and distribution of the fake magazine. On Drake and 21 Savage agreed to this preliminary injunction and also agreed to stop using Vogue trademarks for their album promotion.

The counterfeit marketing that went into promoting “Her Loss” may have paid off, with the album reaching during its first week and a . However, it is unclear if these sales can offset the potential damages of up to $4 million US requested by Vogue and other remedies that NPR and NBC may seek for the artists’ fake Tiny Desk and Saturday Night Live performances, respectively.

(Photo Credits: ) (Alt text: Screen capture of Drake’s now-deleted Instagram post containing multiple copies of the impugned magazine cover)

The post Drake and 21 Savage May Have More (Legal) Issues Than Vogue appeared first on IPOsgoode.

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

On October 25, 2022, following a string of antisemitic remarks and hate speech from Ye (formerly known as Kanye West) on social media, Adidas their decision to terminate their co-branding partnership with Ye and end production of all Yeezy branded products. The termination of this seven-year partnership, most famously known for its development of the Yeezy sneakers, raises important questions about IP ownership when business collaborations collapse.

While Ye’s company, Mascotte Holdings Inc. (“Mascotte”), owns a portfolio of 160 trademark applications in the US connected to the “Yeezy” brand, Adidas solely owns all design rights to existing products, as well as previous and new colorways under the partnership. This includes at least eight filed by Adidas in 2016 that claim the ornamental design of the Yeezy sneakers. A licensing agreement between Mascotte and Adidas exists for the “Yeezy” trademarks. The dissolution of this contract will rely on the termination clauses that stipulate the division of IP between the parties or whether any “moral” clauses allow early termination of the contract.

Adidas intends to take advantage of its design rights by selling the Yeezy sneakers using its own branding. Adidas has the right to continue to manufacture identical sneakers to Yeezys, so long as they do not use the trademarks owned by Ye. However, the inherent link between Ye and this distinguishable sneaker design may prove problematic to Adidas regardless of the name etched onto the shoes.

How can businesses protect their public perception in co-branding partnerships?

The success of Ye and Adidas’ co-branding partnership demonstrates how cross-licensing IP, including industrial designs and trademarks, can be a strategic marketing scheme to tap into different markets or classes of consumers. Ye and Adidas join the rank co-branding fails including the for Pepsi with Kendall Jenner that was pulled back 48 hours after release; the partnership between Lego and Shell, which due to Shell’s negative environmental reputation; and, more recently in Canada, the of Lululemon and Peloton due to alleged unfair competition from Peloton. These examples stress the need for companies to protect their public perception through strategic negotiation and drafting of co-branding licensing agreements, particularly through “moral” clauses.

Moral clauses hold contracting parties to a behavioural standard so as not to bring scandal to the other party. These clauses should address the potential for “tarnishment, loss of goodwill or reduction in brand value that may stem from reputational damage experienced by either party” (). Remedies for breach of such clauses include corrective advertising, damages, and contract termination.

Before entering into co-branding agreements, especially those involving celebrities, contracting parties should also ensure their shared goals and values are aligned to mitigate the risk of negative backlash or future fallout. For Adidas, a risk assessment of entering this partnership with Ye in 2016 may have involved balancing the precarious public perception of Ye against the potential commercial market for Yeezy-branded shoes.

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Emily Xiang is an IPilogue Writer, a Senior Fellow with the IP Innovation Clinic, and a 3L JD Candidate at Osgoode Hall Law School.

Is technology’s rapid rise really a great equalizer for improving social welfare globally? 

Professor Ruth L. Okediji is the Jeremiah Smith Jr. Professor of Law at Harvard Law School, where she teaches contracts, international IP, patents, copyright, and courses on Biblical Law. She is also the Co-Director of Harvard University’s Berkman Klein Center for Internet & Society. Her research and scholarship focus on examining innovation policy, the digital economy, and global knowledge governance. On September 29th, students and staff at Osgoode Hall Law School were honoured to welcome Professor Okediji in person at Osgoode, where she delivered a lecture on ‘’.��

The paradox is outlined as followed: while the existence of intellectual property (IP) protection is often justified by its contributions to improving human welfare (such as incentivizing innovators to create public goods), the benefits of technological improvements protected by these same systems are, in reality, not, experienced equally. .  Legal regimes, including the IP system, often work to facilitate and increase global inequality by accruing wealth for their holders in the global north. However, this system often decreases the value of labour and unilaterally defines protectable subject matter based on imperialist norms.

In the tech sector, “skill-biased” advancements increasingly reduce opportunities for low-skilled workers, while elevating the productivity and earnings of high-skilled workers. Increasing prices of technology have only served to further disparities in access and skill development. The evolution of artificial intelligence (AI) systems, along with the effects of the recent pandemic, have also played significant roles in displacing human labourers. In terms of overall welfare, IP injustice is almost exclusively felt from the bottom-up.

In her lecture, Professor Okediji briefly charted the history of technological imperialism, and highlighted the structural, demographic, geographic, and cultural inequalities that arise from the modern IP regime. IP protection may no longer be said to primarily generate rewards and incentives for creativity and innovation. Instead, the structure of the modern IP system lends itself to be used as a vehicle to accumulate wealth and investment for the already affluent. Individuals and companies commonly  engage in the strategic purchasing of critical blocking patent portfolios. For example, the rise of patent trolls, who litigate cheaply-bought patents, use the IP system as a legal weapon. Moreover, damage demands in litigation cases involving IP are rising. In 2021, for patent infringement relating to chip-making technology – one of the highest ever patent damage awards in the US. As modern IP regimes continue to tend towards serving purely economic interests, one cannot help but concede to the significant role that the modern IP system plays in perpetuating economic inequality. 

The global IP system is also ill-suited for the needs of developing economies. Not only is it inherently embedded in colonial traditions, even modern agreements such as TRIPS that seek to tie IP protection with trade policy effectively coerce developing nations into accepting stronger IP standards that are ill-suited to their needs. . Formal IP protection requirements such as standards of fixation, originality/novelty, individual ownership, or limited terms of protection, are all deeply rooted in Western ideals and norms, and often preclude valuable conceptions of innovation and creativity from Black and Indigenous populations in particular. 

Emerging scholarship increasingly demonstrates how inequality is embedded in the very foundations of IP law. In considering proposals for doctrinal reform in order to address these inequalities, Professor Okediji emphasizes the need to thoroughly explore related institutional and technological trade-offs, and advocates for radical transformation. Exceptions to international IP standards, enforcing mandatory licensing provisions, or speaking about “access” as the primary measure of equality may no longer be enough. Instead, we should focus on engendering educational reform in law schools, boosting literacy, improving the quality of education in marginalized communities, or developing and ameliorating community healthcare systems. Just as the problem is deep-rooted, the solution must be as well.

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