Canada’s IP Laws – Amiss and A Mess

I am delighted to be returning to Osgoode as Professor of Intellectual Property Law after a decade at the University of Oxford as the Reuters Professor of Intellectual Property & Information Technology Law and Director of the Oxford Intellectual Property Research Centre.

The draw was Osgoode’s establishment of a program devoted to research in IP and technology law. I came because the Dean and the Faculty thought I could help develop the program as a place for fresh thinking on innovation policy for Canada, as well as internationally. I worked on IP research and policy advice during the 15 years I was at Osgoode in the 1980s and 1990s, and continued working on it in Europe and internationally.

Governments everywhere accept that innovation and creativity are major drivers of the economy. Canada is at the forefront here: its writers, researchers and inventors are well-known as international leaders. Maintaining an environment that gets the most innovation and creativity out of Canadians is critical. Law has a key role here. Well-designed laws can stimulate innovation and creativity. They can help people fulfil their potential and let the products of their ingenuity benefit society. Laws also can help resolve disputes quickly, efficiently and cheaply.

So part of what I want to do at Osgoode is run seminars to equip students to understand critical areas of IP law better and to engage in law reform. I plan to run seminars on IP and health care, on international and comparative IP law, and on IP reform with students doing hands-on work drafting a model IP law. That is in addition to talking about and continuing my research on improving our IP laws.

Canada has recently been engaged in a vigorous debate on Bill C-61 proposing amendments to the Copyright Act. The reforms contained in the Bill are certainly worth discussing but the danger is that we overlook more basic problems with all our IP laws. Put simply: these laws are a mess.

IP laws – particularly the central ones dealing with copyright, patents, trade-marks and trade secrets – regulate how the economy works in key business and cultural sectors. It is uncontroversial to say that such laws should be clear, just and efficient. Our main trading partners are not perfect on this score but Canada is, I fear, far behind most of them.

We can argue at length about the justice of the laws, but let us consider simply the issues of clarity and efficiency.

A case that occurred a few years back – 1983, to be exact – involved a company marketing cocktail juice under licence, which quit the arrangement and developed its own competing juice. The licence agreement let the firm compete but it was sued anyway for wrongly using trade secrets it had gained from the licensor during their relationship. Eleven years later, after a 5-week trial, the company was found to be in the wrong. In 1998, one appeal and five years later, the case was argued before the Supreme Court. After nine months gestation, the judgment came out requiring the firm to compensate the licensor for the year’s head start it had got from using the secrets. Back the case went to the trial court in British Columbia for the figures to be worked out. Nothing more was heard. Everyone must have been thoroughly sick and tired, so the case must have been settled. The legal costs must have been enormous, probably in the millions.

Whose fault was it that a dispute which did not look particularly complicated took 16 years to resolve? Blaming the courts is easy, yet misleading. The parties and the lawyers themselves took their time getting into court and going through their motions, but part of the problem was unclear law. Trade secret law belongs to the provinces, yet no common law province has passed any legislation about it, despite having plenty of models available to choose from. So the lawyers and the courts had to struggle with a mass of conflicting precedents going back to the mid 19th century. In professional terms, the Supreme Court judgment is, as one would expect, thoughtful and well written. To any non-lawyer, it is an utter mystery. (If you want to check, it’s on the internet: just google “Cadbury Schweppes FBI”.) What the parties, who ultimately paid for all this, would have understood from it, I cannot imagine. Is this our best effort at an economic law that affects the daily conduct of business in Canada?

It’s not just the provinces that are at fault. IP is mainly federal jurisdiction, and Canada’s IP laws trace back to before Confederation. They were not well written then and they are not much better written now, although they are certainly longer and more detailed. Uncertainty is rife. In 2002, the Supreme Court had to decide if a genetically modified mouse qualified as an “invention” that could be patented in Canada. Again, the case took some 17 years to get from the application in the Patent Office to a final decision from the Court. A 5:4 majority, reversing a 2:1 decision of an earlier appeal court, decided the mouse was not patentable, and that is how the law still stands. Maybe the Court would have split, however “invention” was defined in the Patent Act but the definition certainly did not help. It was essentially the same as the one taken by pre-Confederation provinces from the United States patent law of 1793. Guessing the “intention of Parliament” here is similar to soothsaying, and not just for laymen. Unfortunately, this level of drafting is endemic to IP laws – copyright, trade-marks and the rest. They are not user friendly for lawyers or for those whose conduct is supposed to be regulated by them – inventors, authors, business, and the general public. Laws like these are a costly dead weight on the economy.

We need to rethink the current substance and detail of most of these laws. Over time, the rights granted to IP holders internationally have expanded bit by bit through legislation and litigation, but less attention has been paid to basic rights of competitors and the general public.

For example, how far competitors and researchers can experiment on patented products to see if they can be improved or developed is not well addressed in the Patent Act, and judges do the best they can to leave space for genuine researchers, not let patent holders control the direction in which technology develops, and yet still ensure holders may get a decent return from their patents.

There is pressure on the trade-marks registry to allow sounds, smells, taste and indeed any sensory perception to be registered as a trade-mark, as sometimes occurs in other countries. Is this a good idea or not? The drafters of the Trade-marks Act did not think of this 50 years ago. Shall we leave it to courts to decide this basic question of policy, or should the Act itself make the point clear?

In many cases, IP rights overlap. A computer program can be protected under patent law for 20 years; a logo can be protected by trade-mark law for as long as it is used, potentially forever; an industrial design can be protected under the industrial design law for 10 years; yet all three can also have copyright protection for the life of their author plus 50 years. Is that sensible policy? Does it encourage better logos, designs or computer programs?

Such are among the hundreds of issues lurking round the IP laws, and this is before we even get round to copyright.

If we are serious about having laws that encourage innovation and creativity, we should be developing a single integrated intellectual property code that encourages activities that benefit Canada’s economy. It should provide enough protection – but no more – so that everyone has a chance to benefit. That is not presently how Canadian or international IP laws are written. But Canada could take the lead here, as it has in other fields, instead of being stuck with a set of unreadable, uncertain and unbalanced laws that cost the economy dearly.