Amanda Carpenter is a JD Candidate at Osgoode Hall Law School.

The US Court of Appeals for the Federal Circuit has recently held that the U.S. Postal Service should compensate the sculptor of a column of marching soldiers at the Korean War Veterans Memorial in Washington for an image on a 37-cent stamp. A photo of this famous memorial can be found here, and the stamp can be found here.

The court found that the sculptor Mr. Gaylord was the sole author of the soldier sculptures, that his sculptures were not exempt from copyright protection under the Architectural Works Copyright Protection Act (AWCPA), and that the United States Court of Federal Claims had erred in holding that the stamp made fair use of the copyrighted soldier sculptures.

The photo of the column of marching soldiers found its way to the postal service by the work of a photographer who took the photograph of the Memorial as a retirement gift for his father. The photographer visited the Memorial on a few occasions, one such occasion being just after a snowstorm during which he took the disputed photograph. In 2006, Mr. Gaylord sued the photographer for copyright infringement. The photographer settled the dispute and agreed to pay Mr. Gaylord 10% of his net sales. In 2002, the Postal Service decided to issue a stamp commemorating the 50th anniversary of the armistice of the Korean War. The Postal Service selected the photograph taken just after a snowstorm for the stamp and paid the photographer $1500 for its use. The photographer told the Postal Service that it would need the permission of the owner of the copyright of the underlying work, which they did not get. The Postal Service acknowledged that it received over $17 million from the sale of nearly 48 million stamps. Mr. Gaylord then sued the government alleging infringement of his copyright.

In rejecting the argument that the use of the photo constituted fair use, the court rejected the argument that the work was ‘transformative’. A transformative work “adds something new, with a further purpose or different character, altering the first with new expression, meaning, or message”. If the work is transformative the courts will more likely judge the work to constitute a fair use because the goal of copyright – to promote science and the arts – is generally furthered by the creation of transformative works. The Court of Federal Claims concluded that this factor weighed heavily in favour of fair use because the stamp was transformative. The court explained that the photographer transformed the three-dimensional sculpture with his photograph by “creating a surrealistic environment with snow and subdued lighting where the viewer is left unsure whether he is viewing a photograph of statues or actual human beings”. The Court of Appeal disagreed, and held that although the stamp altered the appearance of the Memorial by adding snow and muting the color, these alterations did not give a different character to the photo. They stated that “nature’s decision to snow cannot deprive Mr. Gaylord of an otherwise valid right to exclude”. The court rejected the argument for fair use even though Mr. Gaylord conceded that the stamp actually increased the value of the Memorial, a decrease in which is a factor in determining that a work does not constitute a fair use.

Turning to whether the Memorial was a joint work, the court rejected the argument that since the government commissioned the work the Memorial would be a joint work as a result. Also, even though government entities had Mr. Gaylord change minor points such as the position of the first soldier in the Memorial from “a celebratory squatting pose to standing”, this did not constitute evidence of joint authorship with the government “but rather of suggestion and criticism”. The government also asserted that it should escape liability because the Memorial is an architectural work, since architectural works are not afforded full copyright protection. The Court of Federal Claims unsurprisingly found that since the Memorial isn’t a building, it is therefore not an architectural work and thus afforded full copyright protection.

The dissenting judge found that the majority’s finding contravened national policy governing access to public monuments. He stated that under the statute under which Mr. Gaylord brought this suit, even if Mr. Gaylord held a valid copyright enforcement against the United States, it is barred by the terms of this statute for the sculptures were prepared “in the service of the United States” and “Government time, material, or facilities were used”. Many commentators side with this dissenting judge. In particular, they are troubled by the court’s finding of what constitutes a transformative work. They are also concerned about the chilling effects that this decision might have on commissions for public art. If works of public art cannot be photographed and displayed, the reason for commissioning such works is diminished. They also cite the confusion that stems from the government leaving the rights associated with the memorial with the artist and then displaying the artwork in public.

Many would say that the more they think about this decision, the more wrong it becomes. Thus, many predict that it may not be long before this case ends up before the United States Supreme Court to finally decide this matter or for Congress to take action and enact a separate exception for photographs of public art.

Posted in Copyright
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Patrick Hui is a J.D. candidate at Osgoode Hall and is taking the Patent Law course.

Innovator companies have long founded their business plans on the search for blockbuster drugs. Blockbuster drugs are products that generate more than $1 billion in annual revenue for pharmaceutical companies and are the lifeline of these businesses. By allocating the majority of R&D resources to blockbusters, innovator companies have engaged in a high risk-high reward practice that to date, has largely paid off. However, as many innovator patents near their twenty year expiration date, large pharmaceutical companies are turning to a rapidly developing area of science in nanotechnology that will undoubtedly dominate the pharmaceutical industry for decades to come.

Nanomedicine is defined as a controlled manipulation of particles at the nanoscale level resulting in medical benefits. To pharma companies, it has a wide range of applications including drug delivery, diagnostics, detection, imaging, and devices. Current pharmaceutical and life science operations will continue to benefit from this developing field as it has the potential to increase effectiveness while enhancing drug delivery systems. A simple example of these benefits is the production of an aspirin tablet that works twenty times faster. Similarly, researchers have begun working on treatment approaches using nanoparticles that allow for gene delivery into human cells. As both small and large pharmaceutical companies have started to invest in these areas, a crucial question will be the protection of patent rights in such a rapidly developing and novel field. Vivek Koppikar, a USPTO Examiner, has published his thoughts on the trends and issues that American nanotech patents face.

In his article, he cites both administrative and substantive issues that could arise. Administratively, the USPTO will have to deal with the “patent land grab” phenomenon – that is – the attempt by innovator companies to state patent claims as broad as possible in order to secure the most amount of IP. This phenomenon can be attributed to the need for innovators to showcase their IP in an attempt to sway venture capitalists to invest in such a high-risk field. Moreover, as innovator companies file their claims, the process is further burdened by the USPTO’s historical inability to meet the high-volume demands of competent examiners in a developing area. Taken together, Koppikar argues that USPTO’s inability to adapt to nanotechnology patents will follow the same inefficient cycle it once did when DNA technology was first introduced.

More importantly, Koppikar cites numerous patent issues that relate to size-based patentability. Many breakthroughs at the nanomedicine level are simply compounds or devices that already exist at the relatively larger sized micro scale level. Consequently, it may be argued that nanotech inventions could all be deemed anticipated by their larger-sized counterparts. In accordance with the recently clarified doctrine of anticipation in Apotex Inc. v. Sanofi-Synthelabo, the prior art must enable a person skilled in the art to perform the invention without undue burden. While the idea of creating a nanocompound may come easy to a person skilled in the art, I would contend that the actual process of miniaturization requires extensive work and experimentation and thus would not render nano-patents anticipated.

Koppikar also suggests that overcoming obviousness may be a burden to nano-patents. Paraphrasing Apotex Inc. v. Sanofi-Synthelabo, a patent will be invalidated when a person skilled in the art compares the “state of the art” with the inventive claims and finds it obvious. During the early stages of developing nanotechnology, many claims will be found non-obvious as the state of the art will be in its infancy. However, as more patents are claimed, it will be increasingly difficult to overcome the obviousness burden as the state of the art will be far more knowledgeable and harder to distinguish from inventive claims. This trend illustrates the importance of securing as many patents as possible in the early stages of new and developing technologies.

Lastly, applicants drafting broad claims in an attempt to secure the most IP may have difficulty under s.27(4) of the Patent Act. This provision provides that the specification must end with a claim or claims defining distinctly and in explicit terms the subject-matter of the invention for which an exclusive privilege of property is claimed. Where claims are broad or vague, Courts may invalidate the patent. However, as we have learned in Jansen-Ortho v. Novopharm, Courts are reluctant to invalidate patents where a person skilled in the art could resolve the ambiguity without too much effort.

Several hurdles exist in overcoming size based patentability that will likely be case specific. However, it is undeniable that nanotech patents are a growing trend. It would be wise for innovators to be cognizant of both the administrative and legal issues that could arise when prosecuting patents that will undoubtedly shape our future.

Posted in Cross Border Issues, Patentability, Patents, Pharmaceutical Drugs, Technology
Comments: 0

Abolade Owoeye is at Osgoode Hall and is taking the Patent Law Course.

Prosecution history estoppels also known as File-wrapper estoppel is a term used when an inventor has filed a patent application, but during prosecution of that patent application, the inventor amends the application in order to overcome a prior art. That inventor is subsequently estopped from claiming infringement of the claims that were amended at a later time based on this doctrine.

Different supreme courts of different countries either favor this doctrine or reject it. The United States Supreme Court blesses the use of doctrine of equivalence as enunciated in the case: Festo Corp. v. Shoketsu Kinzoku Kogyo Kabushiki Co., 535 U. S. 722 (2002).  In contrast, doctrine of equivalence is frowned upon by the Supreme Court of Canada. See, Free World Trust v. Électro Santé Inc., [2000] 2 S.C.R. 1024, 2000 SCC 66. These decisions raise the questions: should file-wrapper estoppel be employed by countries that don’t use it? Or is it against the fundamental principles of fairness and justice and does it aid towards the goal of patentability?

In Festo Corp. v. Shoketsu, the U.S. Supreme Court vacated the judgment of the Federal Circuit that created a bar to equivalent elements that had being narrowed by amendment during prosecution.  In so doing, the U.S. Supreme Court reasoned that a patentee’s decision to narrow a claim in order to comply with the Patent Act “assumes surrender of the territory between the original claim and the amended claim.” However, the Court still saw fit to place the onus on the patentee to show that the equivalents were not surrendered. Thus, it seems the U.S. Supreme Court is protective or gives deference to the patentee so that as long as the patentee can establish or submit evidence that “there was some reason why the patentee could not have recited the equivalent in the claim,” then the patentee will succeed in the infringement action.  This reasoning maybe beneficial to encourage inventors, that their patents will not be infringed merely by a conceivable equivalence. If that is the rationale, then it harmonizes with the goal of patents as expressed in the U.S. Constitution, which is to “promote the progress of science and useful arts.” 

However, Canada’s Supreme Court in Free World Trust v. Electro Sante Inc., emphatically rejected the doctrine of equivalence for previous claim negotiations with the patent office. Although the Court acknowledges that “it is obviously an important public policy to control the scope of ‘substantive infringement,’. . . [and that] a mere inconsequential variation in the device [may allow one] to appropriate the substance of the invention,” which the Court concluded will be “unfair to the public and unfair to competitors.” On the other hand, the Court did not want to “risk conferring on the patentee the benefit of inventions that he had not in fact made, but which could be deemed with hindsight to be ‘equivalent’ to what in fact was invented.”  The Court decided to restrict the patentee within the confines of their claims stating that the “Patent Act promotes adherence to the language of the claims” and “adherence to the language of the claims in turn promotes both fairness and predictability.” So, it seems the Court prefers to err by on the side of caution by not trying to construe whether the patentee conceived of an equivalent that is not stated in the claims or that has been dropped during prosecution.

It seems a more equitable balance can be achieved that is neither too lenient nor too restrictive. A mere substitution of equivalent elements may benefit an infringer, since the equivalent element is not stated in the body of claims of the patent. Also, a patentee should not be able to stretch their invention to cover every possible equivalent that they can now think of in hindsight. Nonetheless, a strict per se rule that disfavors any sort of equivalence while adhering to the strict letter of the law may not promote the spirit of the law.

Posted in Patents
Comments: 0

Alexander Gloor is a JD candidate at Osgoode Hall Law School.

Fashion powerhouse Louis Vuitton has sued car maker Hyundai for trademark infringement stemming from a Super Bowl advertisement. Before reading on, try and spot the alleged infringement. If you paid attention, you may have noticed the design on the basketball, appearing for all of one second in the spot.

Now, it is interesting to ask what exactly it is that Louis Vuitton finds offensive. Certainly, LV has gone to enormous lengths to promote and protect its image. The company associates with the rich and famous, refuses to hold discount sales, has endless battles with counterfeiting and will even (albeit unsuccessfully) sue the makers of parodist dog toys. Yet, Hyundai’s commercial, entitled “luxury”, promotes the image of LV that it has tried so hard to create and maintain. So why is LV concerned?

In fact, LV may not actually “take offence” to the basketball. It may even be the case that they know that they will not win; or at least, they may not really care whether they win or not. In reality, LV quite possibly brought this action out of necessity. This is because the Louis Vuitton brand has become so synonymous with luxury and wealth that it risks losing its distinctiveness by becoming a generic symbol. This is particularly true with respect to the famous LV monogram as well as the pattern at issue. Examples of genericized marks include nylon, aspirin (in the United States) and Pilates. Other brands, such as the Band-Aid brand and Xerox, have been successfully saved from genericism by extensive and smart campaigns.

OK, so does LV stand a chance? Officially, complaints were filed under four headings: common trademark infringement, registered trademark infringement, false designation of origin and trademark dilution. It is the dilution claim, which reads “Hyundai’s conduct is likely to both dilute the distinctiveness and tarnish the reputation of the LVM marks”, that is seen as the most meritorious.

Dilution claims in the United States are governed by the 2006 Trademark Dilution Revision Act, and can fall under two headings. Both of these are included in LV’s claim. The first heading is “tarnishment”; claims may succeed if the use of a mark is seen to tarnish its image. This is unlikely to succeed in this case. As noted previously, Hyundai is using the mark to promote the “luxurious” image that LV itself worked so hard to establish and goes to great pains to maintain. Second is the heading of “dilution by blurring”. This takes place when the mark in question becomes associated with another good, so as to “blur” its actual association and possibly harm its image. While there is no bright line test for determining when dilution by blurring occurs, factors to consider include the similarity of the marks, whether any association between the marks was either actually created or intended to be created by its use, the extent of the use of the mark and the degree of distinctiveness of the mark. The marks are undoubtedly similar, and it is clear that Hyundai was trying to convey a certain image through its use of the mark. However, the fleeting use of the mark and the fact that people would associate the use of the mark with a humourous imitation rather than a serious LV product may well be enough to prevent liability.

In Canada, it is likely that any similar dilution by blurring claims would be prevented by statutory authority. Dilution claims in Canada are captured under the “depreciation of goodwill” test as set forth in paragraph 46 of the Supreme Courts’s 2006 Veuve Clicquot decision, a test that is guided by section 22(1) of the Trade-marks Act. Note that in order to fulfill the test one must “use” the mark, as per section 4(1). In order for goods to be considered “used”, there must be a commercial transfer “in the normal course of trade”. As Hyundai’s use of the basketball in the commercial does not meet that description, s. 22(1) could not be met and LV would have no depreciation of goodwill claim in Canada.

Beyond any monetary reward, Louis Vuitton would certainly like to succeed in its dilution claim to affirm itself as the sole proprietor of the distinctive mark in question. However, win or lose, this action can be seen from Louis Vuitton’s perspective as a necessary reminder to others that a steep price will be paid by those who try and piggyback on their success.

Posted in Famous Marks, Trademarks
Comments: 0

Ron A. Bouchard is an Associate Professor in the Faculties of Medicine & Dentistry and Law, University of Alberta.  Professor Bouchard has a new article available on SSRN and describes it below.

One of the most strongly contested aspects of pharmaceutical policy concerns the role of intellectual property rights in providing economic incentives to firms and in shaping the agenda for basic medical research. A relatively new addition to the basket of intellectual property rights is a novel form of legal ordering referred to as “linkage regulations.” So named because they tie patent protection for marketed pharmaceuticals to the drug approval process, linkage regulations enable pharmaceutical firms to list as many patents as are deemed relevant to a marketed product on a patent register. Each patent must be demonstrated in litigation to be invalid or not infringed for generic market entry. In Canada, this occurs under the aegis of the Patented Medicines (Notice of Compliance) Regulations (NOC Regulations).

Canada’s linkage regime for pharmaceuticals was enacted under intense political pressure to harmonize the nation’s intellectual property law with those of other developed nations. The original policy intent of the regulations was two-fold: first, to encourage the development of new and innovative drugs, and second to facilitate the timely market entry of generic drugs. The NOC Regulations were expressly intended to balance the goals and objectives of food and drug law with those of patent law. Prior to the linkage regime coming into force, drug regulation and drug patenting represented distinct goals and policy objectives. Under the terms of the linkage regime, there must be a specific functional nexus between approved drugs and patent protection for those drugs pursuant to the NOC Regulations.

In choosing the words “the development of new and innovative drugs” to be one half of the balance linking patent law to food and drug law, the federal government articulated a clear public policy goal that pioneering drug development is desired in exchange for the unusual protections afforded to the pharmaceutical industry by the linkage regime. In choosing the words “timely market entry of their lower priced generic competitors” the government articulated a second public policy goal of cost savings, triggered by expiry of specific patents on specific drug forms that are no longer new and innovative. Thus the “balance” sought to be effected by the NOC Regulations is not just a qualitative balance between two poles, but also a quantitative balance. The more reward there is on the private side of the ledger, the more there must be on the public side in order to maintain legal equilibrium.

It has now been almost two decades since the regulations were enacted. Given the continuing public debate over high drug prices, the large fraction of research and development carried out by publicly-funded institutions ultimately enveloped within commercialized products, and wide criticism of the failings of the patent system to promote innovation, it is an excellent time to assess whether the NOC Regulations have in fact satisfied the twin policy goals of encouraging new and innovative drug development and the timely market entry of generic drugs.

We recently completed three empirical studies on the linkage between drug approval and drug patenting under the NOC Regulations. The empirical work was designed to investigate whether and how the NOC Regulations have encouraged the development of new and innovative drugs since being enacted. The importance of empirical studies to assessing the efficiency and effectiveness of policy levers such as intellectual property law and regulations cannot be overstated. As noted by some of the most prominent scholars of the economy, innovation and patenting over the last decades, robust conclusions regarding the consequences for technological innovation of changes in patent law and policy are few and far between. This is due primarily to a fundamental lack of relevant empirical data. The same applies in the reverse, as governments have specific legal and policy goals in mind when drafting law and regulations that are reviewable by the courts in judicial review proceedings.

The first study focused on the type of brand-name and generic drug approvals over an eight year term following the coming into force of the linkage regime and leading up to the debate on progressive licensing of drug products. The second was an analysis of patenting characteristics for therapeutic products before and after the coming into force of the NOC Regulations. The study also involved a detailed analysis of patent and therapeutic classes in which multinational drug companies are focusing their attention and how these can be used to support various types of new and follow-on drug development. The third was a more nuanced analysis of the innovative nature of new and follow-on drugs approved by regulators over this time frame coupled with an investigation into how patent monopoly periods for pharmaceuticals were extended via the linkage regulations.

The empirical findings reviewed are at odds with the goals of stimulating the development of new and innovative drugs and facilitating the timely entry of generic drugs. Questions as to the validity of the NOC Regulations arise when a purposive patent-specific approach to interpreting the NOC Regulations is taken, as stipulated by the Supreme Court of Canada in its leading patent jurisprudence. Taking this approach to analysis of the linkage of drug approval and drug patenting in the specific context of s. 55.2(1) of the Patent Act, one could argue that the concept of early working does not refer to the working of any patent at any time. As suggested by testimony by the federal government before the Legislative Committee on Bill C-91, the early working provision was intended to refer to a specific patent on a specific drug so as to allow generic firms to prepare for timely market entry in relation to that drug and that patent. A second element of a patent-specific analysis is that a drug referred in s. 55.2(1) is not a new and innovative drug for the purposes of all time. It is a drug that is new and innovative at a particular time in history. The moment when this drug is no longer new or innovative, for example when it becomes the basis of SNDS submissions and follow-on drugs, constitutes the moment in history when patents are no longer in relation to “new and innovative” drugs and thus the moment which may reasonably trigger “timely” generic entry.

Data such as those reviewed in the article suggest that blending of industrial and health policy goals may be ineffective and possibly counterproductive in terms of public health outcomes. There is no question that established and emerging drug regulatory regimes have great potential to increase the efficiency of public health provision by placing both new and innovative and older blockbuster remedies in clinical environments sooner. However, growing evidence such as ours seems to indicate that the efficacy of this approach can be weakened through inadequate monitoring and supervision, such that pharmaceutical firms perceive a higher incentive to exploit existing patented technologies in new ways rather than increasing the flow of new technologies. At a more general level, the data lend empirical substance to an emerging consensus that, in many circumstances, intellectual property rights may be an inhibitor of innovation.

Professor Bouchard’s full article “I’m Still Your Baby: Canada’s Continuing Support of U.S. Linkage Regulations for Pharmaceuticals” is available for download on SSRN here.

Posted in IP, Innovation, Patents, Pharmaceutical Drugs
Comments: 0

On March 16, IP Osgoode and the Nathanson Centre on Transnational Human Rights, Crime and Security are presenting a workshop on “Media Suppression: Life and Livelihood”.

This unique half-day workshop will touch on topics such as digital rights contracts, libel chill, the Internet in totalitarian states, and legal recourse for the torture, kidnapping, and murder of journalists.

The workshop is free and open to the public to attend.  Further information on the speakers and the agenda may be seen here.

Please RSVP to iposgoode@osgoode.yorku.ca  (RSVPs are not necessary, but are appreciated)

Posted in General, events
Comments: 0

Heather Hui-Litwin is a J.D. candidate at Osgoode Hall and is taking the Patent Law course.

In patent litigation, claim construction is an extremely important aspect in the analysis of a patent. Findings of infringement and validity ultimately depends on the construction. The leading cases on claim construction is Free World Trust v. Electrosante (2000 SCC 66, [2000] 2 S.C.R. 1024)  and Whirlpool Corp. v. Camco Inc., (2000 SCC 67, [2000] 2 S.C.R. 1067), which upheld the doctrine of “purposive construction”. 

In Free World Trust, the court enumerated the proper steps in construing claims, which include, amongst other things, interpreting the patent through the eyes of an ordinary person skilled in the art, prior to any validity and infringement analysis, with regard to the intent of the inventor. Furthermore, in Whirlpool, the court endorsed what Dickson J. said in Consolboard Inc. v. MacMillan Bloedel ((Sask.) Ltd., [1981] 1 S.C.R. 504) that “We must look to the whole of the disclosure and the claims to ascertain the nature of the invention and methods of its performance” (Whirlpool, para. 49)

With the arrival of purposive construction, one wonders if the primacy of claims still hold, as the court held that one must look to the disclosure for meaning of the claims.  This raises some anxiety in patent analysis.  One used to be able to discern the boundaries of what is claimed in the claims themselves. With purposive construction this does not hold any more!  The court tells us to read the patent as a whole, rather than look solely to the claims, to determine what is claimed.  Furthermore, this holistic approach would appear to give the patentee flexibility in arguing the exact scope of his claims.  It has been argued that claims themselves ought be unambiguous.  They should give certainty to the public just what is fenced off.  To allow a patentee to rely also on the disclosure is to introduce uncertainty into the claims, which would allow the patentee to claim more than what was in the claims themselves.  Are these concerns justified?

When I first read Whirlpool, I was not sure if I liked this new way of construing claims. The case turned on the construction of the word “vanes”.  When I read the claim in question, I thought it was clear: the device included “vanes”, which in my mind, not being a person skilled in the art of washing machine manufacture, meant any kind of vane.  The expert for the patentee actually testified that at the date of the patent, the only kind of vane contemplated was rigid.  Hence, the construction accepted by the court of the word vane by a person skilled in the art is a rigid vane.   That, to me, almost seems to be adding in words to the claim itself! Really, when the patentee meant rigid vane, why did they not say so? Surely it is the duty of the patentee to be crystal clear about what it is they are claiming. They should not be allowed to broaden or narrow the claims as they please by being allowed to refer back to the disclosure for further definition of their claims.

Even so, I believe this approach makes more sense than a literal or dictionary approach to claim construction, where the claims themselves are dissected with merciless scrutiny,  without context to the patent disclosure.  What the court is trying to say, I believe, is that it only makes sense to read any patent as a whole.  The English language has inherent weaknesses, such as words that have multiple meanings. (Even the word “construction” has multiple meanings, and of course, in this blog, we are not talking about building houses!) Occasionally the grammar in a claim raises difficulties in interpreting the claims. It only makes sense to read the patent as a whole.

I do not believe it is the court’s intention to give the public extra burden in having to read the whole patent.  Nor is it the court’s intention to give unfair flexibility to the patentee in allowing them to claim beyond what is noted in their claims by relying on the disclosure.  Rather, the approach is to ensure a fair reading of the patentee’s invention and what he is claiming.  An unfair expansion of what is in the claims would be where the claim actually read “rigid vane” explicitly, and yet, the patentee argues that because the disclosure included all shapes and sizes and flexiblities of the vanes, that the claim must be read to include these elements.  Binnie J. noted this would not be permitted in FWT (patentee’s own mistake).

The advantage of the purposive approach was clearly demonstrated in a more recent case of Pfizer Canada Inc. v Canada (Minister of Health) (2005 FC 1725). There, the claim was written in such a way as to introduce ambiguity.:

1.     An injectable, ready-to-use, sterile, pyrogen-free, anthracycline glycoside solution which consists essentially of a physiologically acceptable salt of an anthracycline glycoside dissolved in a physiologically acceptable aqueous solvent therefore at an anthracycline glycoside concentration of from 0.1 to 50 mg/ml, which has not been reconstituted from a lyophilizate and the pH of which has been adjusted to from 2.5 to 5.0 solely with a physiologically acceptable acid.

Here, there is issue in whether the phrase “which has not been reconstituted from a lyophilizate” refer to solution or the active ingredient.  Now, one can see right away that this is a grammatical inquiry.  Clearly, the infringing party is engaged in analyzing the actual claim itself in every detail.  Justice Hughes notes that this is just the kind of analysis that the court has warned us not to apply.  If one had read the whole patent, and asked a person in that field about the active ingredient, one would understand the background to this invention: that is, the patentee has invented a safer way of providing the delivery of the drug, which is highly poisonous, and had always required extremely delicate handling by nurses.  The lyophilized active ingredient had always been around, therefore, it makes no sense for the claim to be speaking about the lyophilization to the active ingredient itself.  Imagine if the claim was found invalid for ambiguity, which would allow infringers free access to the invention. It is unfair to the inventor, who disclosed to the world in clear terms the details of his invention, only to be deprived of the monopoly of his invention, solely on the basis of technicality of bad grammar of his claim.

Posted in IP, Patents
Comment: 1

Virgil Cojocaru is a JD candidate at Osgoode Hall Law school.

Choreography is about dance moves. It is the arrangement of dance moves, usually in patterns, accompanied by music. Are these dance moves protected by copyright? The argument out there is that they are, even when placed in games.

In order for choreography to be protected it has to be fixed to another medium, usually a tape, paper, DVD, etc. An alternative to recording the actual dance moves on a tape is to describe these moves precisely and record those descriptions. However, choreography does not have to tell a story, nor does it have to be performed in front of an audience. Even so, it needs an original expression of an idea. For an interesting summary on choreography please click here.

Pastor v. Chen shows the interplay of originality, expression, and fixation. Armando Pastor (claimant) alleged that he choreographed dances in the Cuban genre. Following some classes, the claimant thought that Roger Chen (defendant) had talent so he invited him to some intermediate tutorials. Afterward, he invited Mr. Chen to take part in a performance involving La Reuda dance moves. Based on one of the claimant’s witnesses, La Reuda is a Cuban way to dance salsa, which is difficult to perform because it involves multiple couples. After some performances, the defendant told the claimant he was not interested in dancing. Soon after, he left the claimant’s group.

However, a few months later, Mr. Chen started teaching La Reuda to other instructors and students in Vancouver, even though he had signed a Confidentiality Agreement (agreement) with the claimant. According to the claimant, the agreement applies because there is no other way to learn La Reuda, other than by being taught. For instance, one cannot pick it up by simply watching a video. The claimant was the only one in Vancouver who knew how to perform it. Over time, the defendant’s conduct allegedly led to a loss of business, as other instructors became proficient in this dance. Eventually, the claimant could no longer attract any students to take his dance classes in La Reuda. It is important to note that his financial decline began around the time the defendant started teaching this dance style to other instructors—the claimant’s competitors.

The claimant stated that he had made his own style of La Reuda, as any expert in this field does. Hence, Mr. Chen was not just teaching the general theories or moves of La Reuda that are in the public domain, but rather the specific choreographed moves developed by the claimant over his career. Mr. Chen admitted that he had taught some of the claimant’s moves to others, but he never performed them in public. He stated that most of the moves he taught he learned from one of the claimant’s videos and his travels to Montreal and Toronto.

Granted, the agreement could apply to the situation, given it is unlikely Mr. Chen learned those moves on his own. However, before the claimant can make use of it, several things need to be established. First, is the agreement a barrier to trade? The restrictions imposed by the claimant turn out to be reasonable for the protection of his business (the restriction extended to teaching and performing La Reuda). Mr. Chen could have sought the claimant’s permission, however he did not. The next issue is whether the claimant’s moves were in the public domain. Based on the evidence of the claimant, defendant, and other witnesses the Court concluded that the choreographic moves (the expression) are original and fall within copyright.  Even so, it is worth pointing out that the Court does not address the dichotomy of idea and expression. How close is the expression to the idea? If the idea is too close to the expression, the protection of the latter will stifle the use of the idea, reducing innovation.

Posted in Contracts, Copyright, IP, Infringement, Originality
Comments: 0

Stuart Freen is a JD candidate at Osgoode Hall Law School.

South Australian parliament recently came under fire for passing a new anti-anonymity amendment to its electoral act. Described by the Australian media as “draconian”, the new law would require online commenters, bloggers and even talk radio show callers to fully identify themselves before providing political commentary on an upcoming March 20 state election.

The ill-thought-out move sparked a massive internet backlash, prompting Attorney-General Michael Atkinson to publically renounce the law. Nevertheless, it raises some interesting issues around anonymity on the internet, and could indicate an increasing concern among western politicians with controlling online speech.

The new s. 116 of the SA Electoral Act reads:

A person must not, during an election period, publish material consisting of, or containing a commentary on, any candidate or political party, or the issues being submitted to electors, in written form, in a journal published in electronic form on the Internet or by radio or television or broadcast on the Internet, unless the material or the programme in which the material is presented contains a statement of the name and address (not being a post office box) of a person who takes responsibility for the publication of the material.

Violators would be liable to face stiff fines of $1250 (for individuals) or $5000 (for corporations). It is however unclear how the law would actually be enforced, or what would stop individuals from using fake identities.

The amendment seems to have been motivated by the AG’s concerns over corporations planting fake commenters and bloggers in an attempt to sway public opinion. Mr. Atikinson specifically called out Adelaide based news blog Adelaidenow.com.au, calling it a “sewer of identity theft and fraud.” Mr. Atkinson also said, in hansard: “You want to know that a real person of a real address is publishing the material and takes responsibility for it.” Interestingly, the amendments were actually supported by the opposition SA Liberal party.

Perhaps predictably, a huge internet backlash erupted, prompted in part by an editorial in The Advertiser, one of SA’s largest newspapers and the owner of Adelaidenow. After thousands of comments were posted to Adelaidenow in opposition to the law, the AG begrudgingly announced that the law would not be enforced and would be repealed after the election.

Though undoubtedly an ill-advised political misstep, this episode may tell us something about governments’ willingness to dabble in controlling internet speech. It is unclear whether Mr. Atkinson’s concerns over Adelaidenow planting fake comments were true, but it likely would not surprise many citizens. While perhaps cynical, it is worth noting that the same organization that Mr. Atkinson singled out for creating fake, fraudulent comments ultimately led the charge against the new amendments. Media companies are not known for being apolitical and it’s not inconceivable that they would resort to such cheap tricks. Even here in Toronto, one city counselor recently accused a “citizen” of being a plant from a local conservative talk-radio show (in an angry outburst, no less).

Clearly the internet provides fertile grounds for free speech and grassroots political activism, and anonymity plays a big part of that. Yet, there is a very real concern that the internet is being hijacked by corporate lobbyists who merely want it to look like their causes have grassroots support. The practice has even been given a quirky name: “Astroturfing.” Get it? Corporate interference in politics has become a big issue in many western countries, including the United States where President Obama recently admonished the Supreme Court over a judgment which would allow unlimited corporate campaign spending.

There will almost certainly be a trend in the coming years for governments to try and limit faux-grassroots activism, yet if this South Australian episode teaches anything it is that it will be a tough sell. Restricting the ability of businesses to post political commentary online anonymously almost necessarily restricts the rights of real people, too, something which internet users have thus far been unwilling to accept.

Posted in Human Rights Issues, Internet, Privacy
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Jamie Goodman is a J.D. candidate at Osgoode Hall and is taking the Patent Law course.

Facebook, a website whose primary platform is based around the notion of sharing, recently received an exclusive patent on its focal “News Feed” layout, which could very well hinder many other social networking sites from sharing information in a similar fashion.  News of this patent award has resulted in a mild internet panic among commentators concerned with Facebook’s ever-increasing domination of social networking websites, and their newfound potential to unfairly attack competing websites with infringement claims. 

When put under a legal microscope, though, it becomes apparent that the strength of this patent might be refuted on the basis of subject-matter patentability and a lack of any true inventive step.  Yet, even if the protection afforded to the News Feed patent proves to be minimal, Facebook’s acquisition of this exclusive right is reflective of how, in a given industry, the patent system may be manipulated to serve defensive business tactics instead of fostering innovation and rewarding ingenuity (the actual rationales behind the patent system).

The patent, applied for in 2006 and granted on February 23rd, 2010, covers the website’s method for automatically presenting up-to-date information about users’ activity within the Facebook community; in fact, the patent applies only to “implicit actions” (for example, publishing a notice that John Doe is now friends with Jane Doe) and so other user-generated-content websites who employ similar streaming displays (such as Reddit) will likely be unaffected by the patent, since their displays typically provide links to outside sources and other websites; meanwhile, Twitter (a networking website which is, basically, one large News Feed) and other social networking sites (MySpace, Buzz) might feel threatened by Facebook’s patent, should the circumstance arise whereby infringement litigation is pursued.

If Facebook were to take its competitors to court for using similar “News Feeds,” the first line of defense would be to critique the validity and strength of the patent itself, whereupon two arguments immediately spring to mind.  The first approach would be to attack the strength of the patent on the grounds of its subject matter, for traditionally any method, especially a method for displaying information, would be given minimal legal protection (if any at all).  On the other hand, the patenting of any software code (in turn, the patenting of any mathematical method for computer translation) is still a relatively new (and very gray) area, and so it can be assumed that the novelty of this patent type might be sufficient enough to overcome its vague subject matter.  Moving on then, a second approach in defending against an infringement claim by Facebook would be to attack the patent on the grounds of obviousness.

Certainly, the News Feed patent passes the fundamental criteria of novelty (assuming the code behind it was original) and utility (the News Feed is arguably one of the most popular features of Facebook, although interestingly enough it was vehemently opposed by users when it was first introduced), however it can still be argued that the patent lacks an inventive step (or rather, is obvious).  Indeed, the application is so simple that many software programmers might find the News Feed to be too simple of a jump from previous information-display methods so as to merit any strong legal protection.  Apparently, prior to Facebook’s patent application there were various mechanisms on the internet used for automatically displaying user content, only they were rather disorganized and random as compared to the News Feed which is streamlined and orderly; taking this into account, could it really be said that the News Feed was a stroke of inventive genius?  According to Gene Quinn of IP Watchdog, the answer seems obvious, as he astutely notes that: “Invention cannot and should not reside in being the first to implement something by merely pulling together known and readily understandable pieces of prior art.”

Thus, from a legal perspective, the News Feed patent may not be as dreadful as initially thought, given the unlikelihood of Facebook successfully using it to take injunctive action against its competitors.  Given this revelation, though, it seems quite plausible that Facebook applied for the patent with no intention of ever using it as a catalyst for instigating aggressive litigation, but did so as a defensive effort to ward off its current and future competitors (by deterring other websites from using similar layouts).  By all means, Facebook is entitled to apply for a patent over its software (and if that patent is granted, then so be it), but given the weakness of this particular patent application in combination with Facebook’s increasingly-expansive business model, this move appears to be little more than an old fashioned land-grab.

Posted in IP Course Topic, Infringement, Internet, Patentability, Patents
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