The International Association for the Advancement of Teaching and Research in Intellectual Property (ATRIP) was founded in Geneva in July 1981, with the support and assistance of the World Intellectual Property Organization. This professional academic association now includes hundreds of intellectual property professors and researchers from around the world.

As the final contribution to the “ATRIP Passes 30″ Symposium, which collects the reminiscences of the past and current ATRIP presidents, this short essay provides, in chronological order, some key information about all the pre-ATRIP Round Tables and ATRIP Congresses. This short history not only documents the historical origins, rapid growth and past accomplishments of an important transnational professional association, but also reflects the rapid development of the intellectual property field in the past three decades.

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This symposium collects the reminiscences of the past and current presidents of the International Association for the Advancement of Teaching and Research in Intellectual Property (ATRIP). As shown in this collection, the World Intellectual Property Organization (WIPO) has played an instrumental role in both the formation of ATRIP and the development of intellectual property as a field of teaching and research. In the past three decades, WIPO has also offered important and continuing support to ATRIP Congresses. It not only has made available its staff (including members of the WIPO Academy), but has also provided generous funding support to ATRIP delegates from developing countries.

Given the close and longstanding ties between WIPO and ATRIP, it is logical for The WIPO Journal to pay tribute to the latter and to document the historical origins and noted accomplishments of this transnational professional academic organisation. Through a trip down memory lane, we not only can learn more about the organisation’s rapid growth and past challenges, but can also better understand the development of the intellectual property field in general. This symposium should be of great interest to all intellectual property professors and researchers, in particular past and present ATRIP members.

Of great interest are the historical origins of ATRIP (including WIPO’s role in the early and much lesser known Round Tables), the focus of its early annual meetings on the teaching of and research in intellectual property (in particular the discussion and dissemination of syllabi of intellectual property courses),[1] the subsequent exploration of intellectual property issues relating to universities and other academic institutions, the relationship between the Agreement on Trade-Related Aspects of Intellectual Property Rights (TRIPS Agreement) of the World Trade Organization (WTO) and the session on national reports (which remains active and is often held on the last day of an ATRIP Congress) and the emergence of specific conference themes in the mid-2000s (which now lend themselves to books published in the ATRIP Series by Edward Elgar Publishing).

In addition, the symposium contributions reflect both the foresight and pioneering effort of WIPO and ATRIP leaders, many of whom have now become elder statesmen in the intellectual property field. The contributions also vividly capture the camaraderie among intellectual property professors and researchers—a trait that, sadly, is not always present in the legal academia. Perhaps because the intellectual property field did not come of age until two decades ago, scholars in this field have always been more open, collegial and supportive of each other, even when they disagree on key issues and developments.

Featured here is the beginning of a paper by Peter K. Yu, IP Osgoode Research Affiliate, Kern Family Chair in Intellectual Property Law and Founding Director of the Intellectual Property Law Center at Drake University Law School. Born and raised in Hong Kong, Professor Yu is a leading expert in international intellectual property and communications law. He also writes and lectures extensively on international trade, international and comparative law, and the transition of the legal systems in China and Hong Kong. The full article can be found here.

Posted in events, Feature Post, General, IP, IP Reform, Patents, Trademarks, WIPO
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Watch out, patent trolls – the Attorney General of Vermont is coming to get you. Vermont recently became the first US state to enact an anti-”patent trolling” law.

Synopsis of the Law

The new law, H.299, or Bad Faith Assertions of Patent Infringement, is to be codified at 9 V.S.A. § 4195-4199. It is the first piece of state legislation in the United States that cracks down on patent trolling. One definition of patent trolling is “the practice of making deceptive claims of patent infringement in the hopes of collecting licensing or settlement money.” Simply put, patent trolling means alleging patent infringement against an individual or business for the purpose of extorting money, where a legitimate case is not likely to exist. The new law is an amendment to the state’s consumer protection law which is, arguably, a quiet way to introduce a patent law without seeming to encroach on federal jurisdiction. How does the new law work?  It basically sets out a list of guidelines for judges to determine whether an assertion for a patent is legitimate or illegitimate. For example, to weed out bad faith assertions, a judge may consider whether the claimant is demanding too quick a response or too much money, or whether the potential litigant is making meritless assertions with little factual basis. Conversely, a judge may find that an assertion of patent infringement is legitimate if the claimant is the original inventor or if the individual has successfully enforced the patent in a different court. In lieu of providing hard and fast definitions, the new law essentially sets out a list of factors against which a court might assess the particulars of a case to see whether the allegation is being made in good faith.

Question of Authority – The Limits of Federalism

One of the more debated issues is whether Vermont has legal authority to regulate patent activity. On the one hand, Vermont is stepping right into federal jurisdiction. That is, due to federal pre-emption laws, states are not allowed to enact their own patent laws. As such, Vermont’s new law may be struck down in its nascent stage.  Furthermore, the new law is arguably not entering uncharted territory either. Congress has already taken significant steps with cracking down on patent trolling at the federal level by introducing additional bills such as the SHIELD Act, the Patent Quality Improvement Act and the End Anonymous Patents Act.  Simply put, if Vermont’s new law oversteps its boundaries and overlaps in purpose or effect, it may have a challenge ahead in terms of establishing its legitimacy. On the other hand, it could also be argued that the new state law fills a gap that has yet to be addressed in the existing federal legislation. Legal scholar Camilla Hrdy takes this route in suggesting that the US Patent Act does not directly address threats from “patent trolling” by Patent Assertion Entities (PAEs) and that the Federal Circuit has sanctioned “baseless” lawsuits in the past which indicates a potential need for a tighter net, perhaps at the state level. She argues that while federalism may benefit patent law to a certain extent, states must also be given enough autonomy to “use state law to grow local innovation ecosystems, like California has with Silicon Valley.” In short, the new VT law has created at least two distinct camps: one side seems to champion a traditional approach through federalism, whereas the other side proposes an alternative vision of federalism that is, arguably, closer to a bottom-up approach to anti-patent trolling law.

A Canadian Perspective

How might such a situation play out in Canada, which has its share of big-time patent trolls? Federals courts do not have inherent jurisdiction, whereas provincial superior courts do, which may potentially give the latter lee-way to overlap in subject matter jurisdiction with the federal courts. Generally though, in Canada, like in the US, patent law is under the jurisdiction of federal power and cases are decided at the federal court level which has statutory authority to hear intellectual property disputes. Adam Tracy from Canadian IP firm, MBM Intellectual Property Law, suggests that it is generally “difficult to predict” the effects of a state law in the IP sphere given the lack of precedent both in the US and in Canada. Tracy points out that a likely consequence will be that cease and desist letters will become more expensive to come by, going forward, in the state of Vermont. As such, potential litigants are likely to take more time at the front-end considering whether to enforce their rights. On the one hand, the law would likely disincentive frivolous and vexatious lawsuits; on the other hand, rights holders with bona fide claims will see the cost of litigation increase, contrary to Hrdy’s prediction, as previously discussed. What is certain is that industry players, academics and bloggers on both sides of the border will keep an eye on how the new Vermont law interacts with existing federal legislation as an indicator of the way in which similar legislation might play out in other provinces and states. In the meantime, happy hunting Vermont.

Ying Cheng is an IPilogue Editor and a JD Candidate at Osgoode Hall Law School.

Posted in Blogs, Infringement, IP, IP Reform, Jurisdiction, Patents, Regulatory Policy, Uncategorized, US
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As social media becomes increasingly prolific, the perils of its use are becoming increasingly apparent. Yet another case has highlighted that the information you place in the online sphere is liable to harm you in a court of law.

A Northern Ireland court recently discussed the confidentiality of Facebook comments in Martin & Ors Gabriele v Giambrone. These proceedings related to failed investments by the plaintiffs made through the defendant in his capacity as a solicitor. Following a hearing on the matter, Mr. Giambrone posted the following comment on his Facebook site, “they thought they knocked me down, now they will see the full scale of my reaction. F*** them, just f*** them. They will be left with nothing.”

On the basis of this comment, a Mareva Injunction, which prevents the liquidation of assets, was obtained against Mr. Giambrone. In response, the defendant suggested that using his comment in this way constitutes a breach of confidence since he ensured that his profile was accessible to “friends” only.

The court stated that even if the post was confidential, such a determination would not preclude it from disclosure as part of the discovery. The court went on, however, to comment that notwithstanding their acceptance of this post as evidence, the use of his comment in order to obtain an injunction does not constitute a breach of confidence.

The test for breach of confidence in Ireland requires that the information be:

(1) Confidential and/or private, and

(2) The plaintiffs must have known that it was confidential and/or private.

The court determined that the information was not confidential because it was posted to the Internet and therefore in the public domain. Even if the comment was only accessible to his “friends” it was posted with the knowledge that his “friends” could forward the post to anyone. Regarding the second stage of the analysis, when someone receives information and knows or ought to know that it is fairly and reasonably confidential, a duty of confidence arises. The court determined that none of his “friends” could have understood that this comment bound them to a duty of confidence and were more likely to the come to the conclusion that this post was a statement of defiance. As a result, it was decided that the use of this comment to obtain an injunction would not constitute a breach of confidence.

In Canada the test for breach of confidential information is drawn from Lac Minerals v International Corona Resources Ltd. This is a three-part test, which requires:

(1) The information was confidential (based on an objective standard),

(2) The information was communicated in a relationship of confidence (express, implied by customs, or implied by law), and

(3) The information was misused by the party to whom it was communicated

The similarities between the tests make it likely that no breach of confidence would have been found, had the case been determined by a Canadian court. Information will be considered confidential if it is subject to measures to protect its secrecy; however, simply limiting your profile so that only “friends” can view comments may not be enough to be considered confidential on an objective standard. Additionally, a Facebook comment is unlikely to produce an express or implied relationship of confidence. While “misuse of information” may be found, as misuse has been understood as being any use not requested by the confider, it appears that this allegation would likely fail the first two requirements of this test.

This case serves as another demonstration of the possibilities for legal liability that are found on the Internet. It is essential to recognize that although it is easy to believe that only your friends will be reading your posts and comments, any information you provide on social media sites are likely to be considered in the public domain.  Before posting comments on your friend’s Facebook wall, it may be worth taking a moment to consider whether you are willing to see it again in a court of law.

Posted in Internet, Jurisdiction, Privacy, Reputation Management, Social Media, UK
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Posted in Advisory Board, Announcements, Blogs, events, Feature Post, General, IP, Technology
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On May 22nd, 2013, the Supreme Court of the United Kingdom (“UKSC”) decided the case Verstergaard, and in doing so created an important precedent concerning the relevance of subjective aspects of personal liability when misusing trade secrets and confidential information.

In the case, Mrs. Trine Sig ceased her employment as a sales and marketing assistant at Verstergaard. Along with two other former employees of the company, she formed companies to manufacture and commercialize insecticidal bednets (a product made by her former employer). Within the suit filed by Verstergaard for misuse of trade secrets, the evidence demonstrated that Mrs. Sig, while contractually obligated to maintain the confidentiality of the information and knowledge acquired while working for the company, (i) did not have any access to technical information related to the production process of Verstergaard´s insecticidal bednets during her period of employment, and (ii) did not appreciate that the new companies misused Verstergaard´s trade secrets when developing their own products.

Given these facts, the first-instance judge held Mrs. Sig liable for misuse of trade secrets due to breach of confidence.  The judge reasoned that “a person can be liable… even if he is not conscious of the fact that what he is doing amounts to misuse of confidential information”. From this judgment, the subjective mind of the offender (actual knowledge of the trade secret and awareness of the infraction) plays little, if any, role in determining personal liability. Instead, objective knowledge of the infraction (the possibility of having access to the trade secret) in conjunction with strict liability terms implied in the contract were enough to find Mrs. Sig liable.

This decision was reversed by the Court of Appeals, which did not recognize an implied term imposing strict liability and held that there was “no business reason to imply a term of that harsh extent”. This appeal decision was upheld by the UKSC, which stressed the relevance of the previous knowledge of the trade secret by the offender and of his consciousness in the misuse of the trade secret:

“Given that she did not learn of any relevant trade secrets owned by Vestergaard when she was employed by them, and did not appreciate that any such secrets were being used by an employee of the company of which she was a founder and director, it would be oppressive to hold Mrs Sig (as opposed to the employee or the company) liable to Vestergaard for breach of confidential information, whether or not she had previously worked for Vestergaard pursuant to a contract containing a standard sort of provision aimed at protecting Vestergaard’s trade secrets”.

This decision by the UKSC raises questions about objective and subjective knowledge in cases of liability for misuse of trade secrets - the answers to which do not enjoy sufficient legal certainty in several countries. In fact, the regulations on trade secrets at the international level do not specifically cover the extent to which parties should know of a misuse. Article 39.2 TRIPS, for example, in which the protection of trade secrets is codified, does not provide details on the level of duty of care the offender would owe to escape liability. At the national level, the Uniform Trade Secrets Act in the USA and Canada does not specifically rule which are the cases where a person “has reason to know” that a trade secret has been misused. In view of this uncertainty, the legislature and the adjudicators are charged to form plausible solutions from general principles of justice, which may lead to discrepancies from the applicable provisions.

In my opinion, the decision of the UKSC is equitable and appropriate.

From a legal perspective, the decision does not allow the involuntary extension of objective knowledge of breach of contract to situations in which the potential offender did not have access to confidential information and is completely unaware of trade secrets being misused. If a party does not have any knowledge of the trade secret and of their misuse, then there is no duty of care with respect to confidentiality and, therefore, that party cannot be held liable. In this case, the implicit and explicit obligations under the contract are recognizable by all parties, fully observing basic contractual principles.

At an economic level, the different interests involved in the protection of trade secrets have to be balanced in order to achieve a fair solution. On the one hand, we can not ignore the importance of the protection of trade secrets for the purpose of encouraging innovation and maintaining competitiveness in small and mid-sized companies in the market, for which intellectual property rights (like a patent) might be too costly to manage. In this sense, the European Commission stressed in its public consultation on the protection of business and research know-how that “the protection of confidential business information as a trade secret is, for many businesses, often the only or the most effective way to protect their intellectual property” (see also here). Appropriate legal protection of trade secrets is therefore economically efficient and desirable.

On the other hand, the protection of trade secrets naturally restricts horizontal competition, since competitors may not use trade secrets obtained improperly to develop competing products and projects. An excessive protection of trade secrets may stifle competition unreasonably, which is contrary to the purposes of competition law, and induces economic inefficiency. This, in addition to imposing strict liability for misuse of trade secrets may have negative impacts on the economy. In view of this, the UKSC held in this decision that “the law should not discourage former employees from benefiting society and advancing themselves by imposing unfair potential difficulties on their honest attempts to compete with their former employers”.

Therefore, the subjective knowledge of the potential offender have to be considered, in order to observe the contractual principles of law and to achieve an fair economic balance of different interests when dealing with the protection of trade secrets.

Pedro Henrique Dias Batista is an IPilogue Editor and a PhD student at Ludwig Maximilian University of Munich.

Posted in Competition, Competition Law, Contracts, Trade Secrets, UK, UK
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On May 23rd, 2013, the Office of the Privacy Commissioner of Canada (“OPC”) released a report entitled “ The Case for Reforming the Personal Information Protection and Electronic Documents Act” (the “Report”). The Report proposes a number of changes to the Act by identifying four main “pressure points”.

The Commissioner’s thesis is that the Personal Information Protection and Electronic Documents Act (“PIPEDA”) is currently outdated and ineffective due to the rapid changes in technology. Information technology currently allows organizations to collect, store, and use Canadians’ personal information in order to create new products and services. This poses several challenges with respect to the security of data but also with respect to the way this data is handled by those organizations. Risks of theft and hacking are increasing and putting Canadians in danger.

The Report calls for the following four key changes to PIPEDA:

1.      Enhancing the enforcement powers of the Commissioner

Under the current version of the Act, the Commissioner’s powers are limited to those of an administrative investigator. The Commissioner has the power to initiate investigation of breaches of PIPEDA and to name and shame organizations who contravene the Act. No direct enforcement powers exist in order to enable the Commissioner to incentivize protection of personal data. The Report makes it clear that under the existing powers accorded to the Commissioner, its position becomes more and more deficient in protecting Canadians’ personal information in the digital era. The Commissioner makes three suggestions in that respect:

• Introduce statutory damages which will be administered by the Federal Court when certain PIPEDA provisions are being breached.
• Give the Commissioner order-making powers. The Commissioner would be able to order organizations that contravened certain PIPEDA provisions to comply with the Act. In the event of an organization’s failure to obey the order, the Commissioner could have it enforced by the Federal Court as its own order under the court’s contempt powers.
• Give the Commissioner the power to impose Administrative Monetary Penalties (“AMPs”). The purpose of the AMPs would be to encourage compliance with PIPEDA and would not have a punitive character.
  
  

2.      Obligation to report breaches and notify affected individuals

The Commissioner argues that under PIPEDA, organizations are not obliged to report any breaches, further risking potentially affected individuals. Further, the Commissioner reports that the current law permits inequality among the organizations; some organizations report breaches voluntarily and as a result will incur damage to their reputation, while others may purposely fail to report in an effort to avoid such penalties. The Report calls for a mandatory reporting and notification system that would require these groups to report any breaches to the Commissioner and notify the affected individuals.

3.      Obligation to report unlawful disclosure to authorities

Section 7(3) (c.1) of PIPEDA currently allows organizations to disclose personal information to governmental authorities and institutions for the purpose of enforcing any law of Canada. The Commissioner argues that the present system lacks transparency since there is no available data regarding how often this provision is used to access information and what kind of personal information is being provided to governmental authorities. Therefore, the Commissioner recommends that a more transparent regime be established. It suggests that organizations be required to publicly report, on a quarterly basis, the frequency of disclosures being made to government institutions without the knowledge or consent of the individuals affected and without judicial warrants.

4.      Demonstrating accountability; Incorporation of “enforceable agreements”; and Broadening the scope of Federal Court review

The Report argues there is a lack of resources with respect to monitoring the compliance of organizations. The Commissioner recommends the modification of the accountability principle so that a requirement to demonstrate accountability be put in place. Organizations should be able to show that they have a modern and functioning privacy program. Further, the Report argues for the introduction of the concept of “enforceable agreements”. Under this system, an organization that has been put under investigation would have to agree, at the end of the investigation, to comply with the Commissioner’s recommendations and to demonstrate such compliance within a specific period of time. An organization’s failure to do so would result in action taken by the OPC. Lastly, the Commissioner calls for the expansion of the scope of the provisions under section 14 that the Federal Court can review.

Comments and Analysis

The world is becoming all-the-more interconnected through the use of social media, and as a result, we are developing into a virtual society in which the sharing of personal information is the norm and not the exception. At the same time, people demand more transparency and accountability with respect to the handling of their personal data by private and public organizations. The way this data is used has so far been, intentionally or not, vague with respect to privacy, and the majority of public and private organizations’ attempts to rectify the problem have been superficial.

Bill C-12, the government’s own bill to amend PIPEDA, sits stagnant in Parliament for the time being.  Under this Bill, businesses can decide whether or not to inform affected individuals and report to the Commissioner only when a breach is considered material. Furthermore, the Commissioner only has the power to investigate complaints. Evidently, Ottawa is reluctant to move any privacy reform forward.

The Commissioner’s report is a significant start for serious reform because it openly addresses major problems in Canada’s data protection legislation.  The recommendations found in the report are not novelties. They exist and have been implemented in other legislative texts in some Canadian provinces and abroad. Expanding the powers of the Commissioner and requiring businesses and organizations to report security breaches would promote the aims of PIPEDA and make it an effective legislative tool in the advancement of privacy protection in the era of “Big Data”. It remains to be seen whether Parliament will take any further action to translate the Commissioner’s recommendations into law.

Georgios Andriotis is an IPilogue Editor and a law student at Université de Montréal.

Posted in Canada, Jurisdiction, Privacy
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IP Osgoode is proud to announce that Professor Victor Nabhan has been selected as a Genest Global Faculty member for the 2013-2014 academic year at Osgoode Hall Law School. IP Osgoode and Osgoode’s Office of the Associate Dean, Research, Graduate Studies, and Institutional Relations have teamed up to make his particular appointment happen.

Osgoode students will benefit from Prof. Nabhan’s extensive experience in the area of international intellectual property law. He taught at Laval University as a full time professor until 1999. He has advised the Canadian Government with respect to the drafting of four revisions of the Copyright Act, as well as the Quebec Ministry of Culture on Copyright matters. From 1999-2005, he served as a WIPO consultant and assisted a number of developing countries in drafting their Copyright laws in compliance with TRIPS, WCT and WPPT. Since 2005, he has been a guest professor at the University of Ottawa, Institut des Etudes Politiques in Paris and Nottingham University in the United Kingdom. Since 1996, Victor is Chairman of ALAI (Association Littéraire et Artistique Internationale). And recently, also delivered the closing remarks at our conference “Can Canada Learn Anything From Europe?”

While at Osgoode, Prof. Nabhan will be teaching a new course entitled “International and Comparative Copyright Law.” This course includes a presentation of the international legal framework of copyright and related rights protection, with a comparative law approach. Its purpose is to allow an understanding of the origins, foundations, evolution and basic principles of the international intellectual property system. Students will study international copyright treaties, including the Berne Convention, the Rome Convention, TRIPS, WCT, WPPT, etc. Current issues debated at international level will also be discussed, such as copyright exceptions for the visually impaired, the adequacy of the current regime vis-à-vis the needs of developing countries, the Comprehensive Economic and Trade Agreement (CETA), the Trans-Pacific Partnership (TPP), etc.

Also, IP Osgoode is pleased to be working with Prof. Nabhan on an upcoming symposium. Further details on the symposium will be announced in the near future on our website and in our weekly e-newsletter, the IPIGRAM.

If you would like to reach out to Prof. Nabhan while he is here, please feel free to contact iposgoode@osgoode.yorku.ca.

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The Pierre Genest Memorial Fund: the fund was established to honour the memory of Pierre Genest, who died in 1989.  He graduated from Osgoode Hall Law School in 1954 and became one of the finest counsel in Canada, respected not only for his gifts as a lawyer and an advocate, but also for his honourable and generous personal qualities.

The Pierre Genest Memorial Fund supports the invitation of distinguished legal scholars who are integrated into the academic life at Osgoode Hall Law School. The Genest Global Faculty teach a series of intensive workshops, lectures and seminars at the Law School on cutting-edge research topics. Through the Genest Global Curriculum, Osgoode students enjoy a unique learning experience from a comparative and transnational perspective, taught by some of the World’s finest legal scholars.

Posted in Announcements, Feature Post, General, IP
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Last month, the Supreme Court of Canada (SCC) denied leave to appeal in the case Eli Lilly Canada Inc v Novopharm Ltd, passing on an opportunity to clarify the controversial “promise of the patent” utility requirement for Canadian pharmaceutical patents.

The “Promise of the Patent” Doctrine and its Latest Interpretation

The interpretation of what is considered “useful” as a requirement of patentability in the Patent Act has been at issue over the last few years, with jurisprudence over the last decade seemingly taking us away from the “scintilla of utility” benchmark that has been used historically. As set out in the landmark SCC decision in Apotex Inc. v. Wellcome Foundation, in the context of pharmaceutical patents, there is frequently an estimation or “promise” at the time of filing that sets out the pharmaceutical’s clinical effectiveness before it has been (or can be) factually demonstrated.  The jurisprudence has set out that, in order for the patent to subsequently be held valid, one must be able to factually establish this promise of utility or alternatively, establish it through the doctrine of sound prediction. The sometimes difficult and somewhat paradoxical requirement of demonstrating a “promise” of utility at the time of filing as set out in Wellcome has created a judicial environment that has seen many pharmaceutical patents recently being invalidated for lack of utility, much to the chagrin of the innovative pharmaceutical industry.

The case Eli Lilly Canada Inc v Novopharm Ltd, revolves around Eli Lilly’s claim that Novopharm infringed their patent for the schizophrenia drug olanzapine. Over a long course of litigation, the case was eventually remanded back to Federal Court where the patent was found invalid for utility. In the court’s judgment, it was held that the patent had a “promise” that olanzapine was “substantially better” in the treatment of schizophrenia than other known anti-psychotics, and that the individual advantages asserted in this comparison with other compounds “form the foundation for the overall promise of the patent”  (paras 124-125). The court goes on to conclude that at the time of filing, “there is no sound and articulable line of reasoning, or a prima facie reasonable inference, that would have led the inventors from the evidence available at the relevant time to the explicit promise of the substantial advantage set out” (para 267), and subsequently found the patent invalid for lack of demonstrated utility. An appeal to the FCA of the decision was dismissed from the bench, and the most recent leave to appeal to the SCC was denied with no reasons given, even after the court granted leave to hear oral submissions on the application, a rare occurrence.

What is most interesting about the Canadian “promise of the patent” doctrine is that it is not explicitly found in the Patent Act or in legislation from other jurisdictions like the US or the EU. In fact, both the UK and US courts have come to contrasting decisions on the same olanzapine patent held by Eli Lilly, both courts choosing not to adopt the Canadian “promise of the patent” approach to utility. In doing so, these courts declined to invalidate the patent on these grounds. This judicial interpretation requires a higher standard in demonstrating utility for pharmaceutical patents from patent applicants in Canada than any of the country’s largest trade and political partners

Criticism of the Doctrine at an Important Time

The extra hurdles that are presented by the “promise of a patent” utility requirement have been criticised by both the innovative pharmaceutical industry and Canada’s trading partners. The conflict has spilled out of the courtroom and into the political sphere when Eli Lilly served a Notice of Intent to submit a claim to arbitration under chapter 11 of the NAFTA agreement. Eli Lilly claims that the promise doctrine is non-statutory judicial law-making, violating Canada’s treaty obligations by invalidating useful pharmaceutical patents. In addition, a recent United States Trade Representative report criticized the heightened utility requirements of Canadian pharmaceutical patents, putting pressure on a Canadian government that is in final negotiations for the landmark Comprehensive Economic and Trade Agreement which purportedly involved extensive intellectual property reform. 

Choosing Not to Address the Issue: An Expression of Deference to the Executive Branch?

It is odd and perhaps disheartening that the SCC has not chosen to clarify the issue and lay out a clear judicial test for the contentious “promise of the patent” utility requirement. It is difficult to imagine that resolving this issue, one that has garnered so much scholastic and political attention, would not be in the public’s best interest. It could be that the SCC is trying to stay out of – what it views to be – an issue for the legislature, and is waiting for the outcome of political maneuvering before attempting to determine the issue according to its own reasoning. Although something like the NAFTA tribunal has limited powers and could not make direct amendments to legislation, the precarious political climate that Canada is currently facing means that any outcome of this issue is sure to have large diplomatic ramifications.

On the other hand, as this doctrine is seemingly one of judicial interpretation outside the explicit text of the Patent Act – and is clearly a heightened utility requirement when compared to the US and the EU – one may feel that the SCC has an obligation to give a definitive justification and clarify the promise doctrine. If Canada is to be the “lone rebel” with this doctrine, the SCC must come out and address this issue. Delaying or avoiding this will only further the deleterious effects that uncertainty will have on all parties involved in these disputes.

Adam Falconi is an IPilogue Editor and a JD Candidate at Osgoode Hall Law School.

Posted in Canada, European Union, Infringement, IP, Jurisdiction, Patentability, Patents, Pharmaceutical Drugs, Regulatory Policy, Supreme Court of Canada, UK, UK, US, US-Canada Relations
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The IPilogue is seeking additional members for its summer editorial team.

Call for IPilogue Editors (Summer 2013)

The IPilogue is the first blog of its kind populated with entries from student editors at Osgoode Hall Law School and other law schools across Canada and around the world, as well as postings from expert bloggers from across the globe. The IPIGRAM is our weekly e-digest of IPilogue content.

The blog contains comments and thoughts about current pressing intellectual property, technology, privacy and related legal issues and has a wide-ranging following in Canada and internationally from government, industry, academia and from other expert groups and members of the general public.

Many student posts have enabled greater employment opportunities for students, sparked informed debates on various issues, and led to publication in leading journals and a following in a number of law and policy forums.

IP Osgoode invites applications from law students, Osgoode and non-Osgoode alike, for the IPilogue Editor position.

Successful candidates will start immediately.   The position will last until the end of August with a possibility to continue on during the 2013-2014 academic year

Click here for more information on how to apply for the position.

Posted in Uncategorized
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Embarrassing marketing gaffe or reasonable exercise of legal rights?  Nintendo issues “Content ID match” claims on “Let’s Play” (LP) videos featuring their game franchises. Prolific YouTube user Zack Scott speaks out against the move.


What is Content ID?

Content ID is YouTube’s system that automatically detects uploaded videos that infringe copyright.  It works by creating an ID File for copyright protected audio and video material and stores it in a database. When a video is uploaded, it is checked against the database and flags the video as a copyright violation if a match is found.  When this occurs, the content owner has the choice of (1) blocking the video (making it inaccessible), (2) tracking the video’s viewing statistics or (3) adding advertisements to the video.

According to YouTube, Content ID is “very accurate in finding uploads that look similar to reference files that are of sufficient length and quality to generate an effective ID File.” In its early days, however, the automated removal system drew criticism because (1) the algorithm did not account for fair use provisions and (2) there was no appeal process.  Currently, if a YouTube user disagrees with a decision by Content ID, it is possible to dispute the decision.

What are LPs?

“Let’s Play” (“LP”) videos generally provide reviews and commentary of video games. Early LPs, known as “Screenshot LPs,” consisted of audio comments voiced-over still screenshots of games while they were being played. More recently, LPs have evolved to include full video captures of the game during the narrator’s play (known as “play-throughs”). Scott’s LP of Nintendo’s “Luigi’s Mansion: Dark Moon,” for example, features 14+ hours of play-through footage accompanied by good-humored commentary and critiques of the game’s flow and “playability.”

Many producers of these video reviews (or “LPers”) make money off the advertisements on their LP channels. Zack Scott’s reviews, for example, have received millions of views to date and his LP channel, ZackScottGames, has over 200,000 subscribers.  A conservative estimate (assuming his ad rate is at the low end of the YouTube monetization spectrum – $1.50 per 1,000 views) puts his earnings at about $200,000 to date. While this may seem like loose change compared to Nintendo’s annual revenues, the volume of copyright material that Mr. Scott has used, combined with his channel’s large audience, has attracted the attention of Nintendo’s market researchers.

Copyright Analysis: Does the Use of Play-Through Footage Fall Under an Exception to Infringement?

While game developers and publishers have the right to control the use and distribution of the media in their games, LPers, like Zack Scott, have argued that the use of video footage in critical reviews should be considered fair use (the rough US equivalent to Canada’s “fair dealing” provisions) since LPs provide critical review. In a public message posted to his Facebook page, Zack Scott supported his position with the following:

“Video games aren’t like movies or TV. Each play-through is a unique audiovisual experience. When I see a film that someone else is also watching, I don’t need to see it again. When I see a game that someone else is playing, I want to play that game for myself!”

While this might seem like a sensible argument to those in the gaming community, Mr. Scott should be aware that, in Canada at least, he is more likely to succeed by structuring his argument using the two part analysis set out in paras 49 to 50 of CCH Canadian Ltd. v. Law Society of Upper Canada.

First, Scott could point out that he used the play-through footage for the purpose of criticism and review which does not constitute infringement under s 29.1 of the Copyright Act. Moreover, given that he attributes the footage to Nintendo in each LP, he is protected under s 29.1 (a) of the Act.

Second, Scott would have to argue that his dealing with the protected footage was “fair” by showing that his use of play-through footage fits the six criteria set out in paragraphs 54 to 59 CCH Canadian Ltd. v. Law Society of Upper Canada.

(1) Purpose of the dealing: His role as an LPer, one could argue, is to “research and review” games for the gaming community. Thus, objectively speaking, he must be able to use some of the copyrighted works to illustrate his critique.

(2) Character of the dealing: While his use of the protected work is widely distributed (a factor that weighs against fair dealing), the fact that it is the custom of most LPers to include some play-through footage in their reviews could swing this factor back in favor of fair dealing.

(3) Amount of the dealing: While Scott does have over 14 hours of Nintendo play-through footage on his channel, he could argue that this is actually a small fraction of the total time taken to play through games like Luigi’s Mansion, weighing once again in favor of fair dealing.

(4) Alternatives to the dealing: Nintendo could point out that the existence of “Screenshot LPs” amounts to a reasonable alternative to “Video LPs” and weighs against fair dealing. Scott could counter this by arguing that the LP market had become crowded with LPers who use play-through footage. This resulted in a lack of alternative to his dealing.

(5) Nature of the Work: While Scott did not have permission from Nintendo to use the play-through footage in his LP, the game had certainly been “published” as it was available for purchase by the public. This would weigh in favour of fair dealing.

(6) Effect of the dealing on the Work: It is not clear what effect LPs have on the market value of the game under review.  Just how much influence do LPers have on sales?  Some would argue that LPs actually add market value to featured games because they encourage other gamers to buy them. Meanwhile, others argue that LPs decrease market value of the games since passive gamers can simply watch LPers complete the game online. Without more detailed market analysis, however, this point is unclear.

Nintendo could just as easily argue that Scott’s use of play-through footage is not fair dealing (arguments attacking factors 2, 4, 5, and 6 in particular come to mind). It is worth noting, however, that after Scott’s public complaint, Nintendo lifted the blocks on his LPs and chose instead to append its own ads to the videos.

Cost-Benefit Analysis of Nintendo’s LP Crackdown

Legal musings aside, the real issue is whether the LP ad revenues appropriated by Nintendo is worth the loss that could result from LPers who stop reviewing the company’s products.  In his public message, Zack Scott stated:

“I’m a Nintendo fan. I waited in the cold overnight to get a Wii. I’m a 3DS ambassador. I got a Wii U at midnight when I already had one in the mail. I’ve been a Nintendo fan since the NES, and I’ve owned all of their systems.

… I love Nintendo…. But until their [ContentID] claims are straightened out, I won’t be [reviewing] their games [on my LP channel]. I won’t because it jeopardizes my channel’s copyright standing and the livelihood of all LPers.”

Given Nintendo’s recent disappointing earnings report, one would not fault the company for attempting to herd consumers towards more tightly controlled promotional channels in an effort to maintain control of its brand. However only time will tell whether this move actually results in a further dip in sales due to the loss of exposure through LPers.  Were there gold coins in those brick blocks known as LPs?  Nintendo seems to think not.   

Beatrice Sze is an IPilogue Editor and a JD Candidate at Osgoode Hall Law School.

Posted in Commercialization, Copyright, Fair Dealing, Gaming, Infringement, IP, Ownership, Trademarks
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