2019 IP Year in Review

As we enter the new decade, we look back on the most notable 2019 IP developments that set ground for many ongoing changes in copyright, patent and trademark matters. 2019 was a year of big changes, whether motivated by international agreements such as the Canada-United States-Mexico Agreement, or domestic cultural shifts like the recent legalization of cannabis. There are so many changes to reflect upon from this past year, and it looks like our readers were keeping up with all of them! Take a look at the list below of the Top 10 most read IP Osgoode blogs of 2019. Then, keep reading for a tidy summary of the most notable IP developments of 2019.

Top 10 Most Read Blogs of 2019

• AI for Lawyers Conference Highlights: Exciting and challenging AI technology developments in litigation, immigration, and transactional law
• Athletes asserting their IP rights: Kawhi Leonard gets set for a not so Kawhi’et off-season
• Reversing the Clock: Climate Engineering and IP Rights
• Just Trademark It: Athletes Turning to Trademarks to Gain Competitive Edge
• Press “A” to Ready-Up: Insight into the Growing Industry of Esports
• Remuneration Models for Musicians: A Focus on the Reversionary Right
• ICYMI: Highlights from Part 2 of IP Osgoode’s Bracing for Impact AI Conference Series
• Enforcing Your Crypto Contracts and Avoiding Criminal Transactions
• Personal Privacy in a Digital Age: Examining Current Intellectual Property & Privacy Obligations
• Combination of patent law, copyright can protect AI innovation, panel suggests

 

COPYRIGHT LAW

Canada-United States-Mexico Agreement

One of the most anticipated developments in intellectual property law in recent history was the Canada-United States-Mexico Agreement (CUSMA). On December 10^th, 2019, representatives from the three countries finally agreed on amendments to CUSMA, moving the new trade deal closer to completion. Initially signed on November 30^th, 2018 by all three countries, CUSMA’s IP objectives aim to protect and enforce intellectual property rights in a way that promotes innovation and balances the rights and obligations of the parties involved. One highlight of the agreement is the extension of the copyright term in Canada from 50 years to 70 years after the death of author, bringing Canada in step with the United States (US) and European Union (EU) in this area. Regarding online copyright infringement, CUSMA maintains Canada’s Notice and Notice Regime. It remains to be seen what other legislation will be brought forward in 2020 as ratification draws near.

Shifting Paradigms and the Statutory Review of the Copyright Act

2019 saw the release of two Parliamentary reports important to Canadian creative industries and those interested in the modernization of the Copyright Act.

The Standing Committee on Canadian Heritage (CHPC) released their report entitled Shifting Paradigms, which addressed many of the issues artists face in the current marketplace, favouring the copyright term extension outlined in CUSMA for the protection of artists and the creative industry in Canada.

Shortly after, in June 2019, the Standing Committee on Industry, Science and Technology  (INDU) completed and released their long anticipated Statutory Review of the Copyright Act. In conducting the review, the INDU heard from over 260 stakeholders and witnesses across more than 50 meetings. Returning 36 common-sense recommendations intended to assist with any potential future updates to the Copyright Act, the INDU’s report appears to reflect the federal government’s interest in ensuring the protection and enforcement of creators’ rights without stifling innovation.

While the INDU has confirmed that their report did not officially consider the CPHC’s findings, the reports together provide a lot of material for the government to work with as they contemplate potential policy updates in the future.

Canadian Copyright Case Law

The year kicked off with Federal Court case Pyrrha Design Inc. v Plum and Posey Inc., which was decided on January 30, 2019. The court held that copyright protection of the wax seal jewellery design of Pyrrha Design Inc. was not infringed by the defendant. Pursuant to the Cinar decision, the question of the copying of a “substantial part” is assessed by holistically and qualitatively analyzing the similarity between the copyright protected work and the potentially infringing work. The court in Pyrrha noted that both parties had used a common method to create the wax seal jewellery, however each party had used different pre-existing wax seal impressions available in the public domain to create their jewellery design. Therefore, the defendant could not be said to have copied a substantial part of the plaintiff’s work, and there was no infringement.

More recently, in September 2019, the Supreme Court of Canada (SCC) heard Keatley Surveying Ltd v Teranet Inc. Keatley deals with copyright protection held by the Crown under section 12 of the Copyright Act, a section that is over a century old and has been rarely applied. Section 12 of the Act states that the Crown has copyright in what it creates or publishes and also has copyright where the Crown controls what someone else prepares or publishes. In this case, Keatley Surveying Ltd. launched a class-action on behalf of land surveyors in Ontario against Teranet Inc. Teranet Inc provides a management service to the government for Ontario’s electronic land registry system. Keatley claimed that Teranet infringed surveyors’ copyright in survey plans by copying and storing survey plans, as well as making them available electronically on behalf of Ontario. On September 26, 2019, the SCC decided that Ontario has copyright in survey plans filed in the province’s land registry, pursuant to s.12 of the Copyright Act.

In the class action copyright infringement case Thomson v Afterlife Network Inc., the representative plaintiff Dawn Thomson claimed that Afterlife Network Inc. had reproduced the obituary she had written for her father as well as a photo she included in the obituary without her consent. The Federal Court found that the obituaries written by class members were original works and Afterlife had infringed copyright in those works by reproducing them.

In Bell Media Inc. et al v Goldtv.biz et al., the Federal Court ordered the first ever site-blocking order. Internet Service Providers (ISPs) were ordered to block access to two pirate Internet streaming sites “GoldTV.biz” and “GoldTV.ca” for distributing infringing television and motion picture content through subscription streaming services. This was the first instance of a site-blocking order in Canada, though the practice is commonly used throughout the EU.

PATENT LAW

Patent Legislation Updates

On October 30, 2019, the Patent Rules and Patent Act were updated to ensure harmonisation with the Patent Law Treaty, which has been ratified by 42 countries, and which Canada only ratified in July 2019. The most significant changes Canada has made to ensure harmonisation are the processing of late national PCT applications, relaxed requirements for obtaining a Canadian filing date, modified timelines for requesting examination, responding to Official Actions and for late payment of maintenance fees, new ‘due care’ requirements for abandonment and reinstatement, and the inclusion of third-party rights during abandonment or lapses in a patent. The new changes represent a shift more in practice than substance, and therefore only time will tell what the magnitude of their impact will be on the day-to-day practice of patent prosecution.

Developments in Patent Case Law

2019 also saw the first consideration of the new “file wrapper estoppel” provision. The Federal Court ruled in Canmar Foods Ltd v TA Foods Ltd that evidence from foreign patent prosecutions could be admissible in certain circumstances. However, the court limited the admissibility of such evidence to “extraordinary circumstances” where claims are amended to be “substantially the same” as in the foreign jurisdiction being referenced, and where “the amendments have limited the scope of the claims in order to make the claims novel and non-obvious.” Canmar Foods presents a curious development, and the establishment of its ratio as a lasting doctrine remains uncertain.

Patents and Politics

Lastly, patents were also a noteworthy discussion point in the Canadian federal election. While there was much discussion about the timing of the Conservative Party of Canada’s platform release, the platform made interesting references to ‘green patents’ as a component of a climate change policy. The incorporation of ‘green patents’ in the platform is an interesting example of the intersectionality of intellectual property law, innovation, and climate policy. Perhaps it can be a starting-off point for considering more thoroughly the role that intellectual property has in both the causes and potential solutions to anthropogenic climate change (a good place to start in contemplating this topic would be our post from earlier this year).

TRADEMARKS LAW

New Trademarks Legislation Comes into Force

In an effort to make investing in Canadian IP as competitive and easy as possible, Canada ushered in many long-awaited amendments to the former Trade-Marks Act (now Trademarks Act) in June 2019. The implementation of three trademark treaties (the Protocol Relating to the Madrid Agreement Concerning International Registration of Marks, the Singapore Treaty on the Law of Trademarks, and the Nice Agreement Concerning International Classification of Goods and Services) resulted in several changes to the Trademarks Act and relevant regulations, including:

• Applications no longer require a date of first use;
• An expanded definition of a trademark, including giving protection to scents, sounds, colours, and anything that functions as an indicator of source;
• Applications no longer need a Declaration of Use;
• New registrations will have a 10-year renewal term;
• Adherence to the Madrid Protocol;
• Adoption of the Nice Classification of Goods and Services; and
• An associated fee-per-class for trademark applications.

 

The most notable of the changes is that applications no longer require an applicant to demonstrate “use” prior to filing with the Canadian Intellectual Property Office. This amendment inevitably led to fear of trademark “trolls”. However, new provisions under s. 38(2)(a.1), which allows for opposition to trademark applications and expungement of registrations on the basis that the application was filed in bad faith, might be enough to dissuade trolls from abusive trademark filings.

Cannabis Marks: A Sticky Situation

While the definition of a trademark may have expanded under the new amendments, those in the cannabis industry must consider that not all marks that are registerable under the Trademarks Act will comply with the Cannabis Act.

The new expanded definition of trademark now includes scent, taste, texture, and anything that functions as an indicator of source. However, the Cannabis Act stipulates that packaging, labels, or promotion of cannabis and cannabis accessories and services may not display brand elements if there are reasonable grounds to believe it could be appealing to young persons. Further, the regulations include provisions that prohibit the depictions of people, characters or animals, whether real or fictional on packaging, labels, or promotions. Lastly, the packaging must be opaque or translucent, it must contain no brand element or image, must be a single uniform colour without being metallic or fluorescent, and it must have a smooth texture without any raised features, embossing, decorative ridges, bulges or other irregularities.

Despite the restrictions on packaging and promotion, this has not slowed the number of cannabis related marks filed in the last year. Leading up to legalization on October 17, 2018, only 339 registered trademarks contained the word “cannabis” or “marijuana” in their applications. Since legalization, there have been 4,686 applications filed containing the word “cannabis” or “marijuana”.

Trademarks Take on Fake News

In 2017, the term “Fake News” became the American Dialect Society’s word of the year. In 2019, the word continued to make headlines after a Calgary advertising agency teamed up with the Florida Chapter of the Society of Professional Journalists and applied for trademark protection for “Fake News”. The application was a part of a campaign directed to spread awareness about what fake news really is. While the campaign is intended as satire, the Superior Court of Quebec also dealt with the issue of fake news in 2019.

In Média QMI Inc v Murray-Hall, the court assessed whether the defendant’s use of the mark “Le Journal de Mourréal” for a satirical newspaper caused confusion and depreciated the value of the goodwill of the mark “Le Journal de Montréal”. In citing United Airlines Inc v Cooperstock, Justice Perrault affirmed that parody is not a defence to trademark infringement under the Trademarks Act.

Noteworthy, however, is how the plaintiff emphasized the current similarities and tensions between real and fake news to demonstrate how the confusingly similar mark threatened their goodwill and credibility.

Trademark and Copyright Overlap

The Trademark Opposition Board confirmed in Pablo Enterprises pte. Ltd. v Hai Lun Tang that an applicant is not entitled to use a mark if such use would infringe upon copyright registration under the Copyright Act.

On the eve of the NBA final in June, former Toronto Raptor Superstar Kawhi Leonard found himself in a similar situation. After receiving cease and desist orders from Nike, Leonard entered a lawsuit with Nike over the Kawhi “Klaw” design. The design was originally sketched by Leonard in college and later perfected by Nike in 2014. While Leonard has trademark rights to the logo, Nike maintains previous copyright protection. Nike has since countersued, and the case remains unresolved.

 

Giuseppina D’Agostino, 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.

With contributions from IPilogue Editors: Summer Lewis, Elif Babaoglu, Jared Sues, Lauren Chan, Meghan Carlin, Alexandre Dumais, Peter Werhun and Rachel Marcus.