A preeminent Canadian artist named Ann Phibian. Her shaded-in line drawing of a leaping frog titled “50 Shades of Green” and the public domain painting it was based on titled “One Giant Leap”. A graphic designer named Baron Greenback. The problem for the 2016 annual Harold G. Fox Moot was packed with as many amphibious puns as there were copyright law issues. The Fox Moot rotates its problem each year through the three major areas of intellectual property law—copyrights, trademarks and patents—and landed this year on two major themes in copyright law: copyright infringement and moral rights.
Ann Phibian v The Canadian Frog Association
The hypothetical scenario devised by the moot’s sponsor, Dimock Stratton LLP, raised several novel copyright issues. The plaintiff, Phibian, licensed 50 Shades of Green to the defendant, the Canadian Frog Association (“CFA”) for promotional use. Phibian revoked her licence upon her discovery that one of CFA’s conservation programs, aptly titled “Switch and Bait”, resulted in the death of frogs belonging to an over-populated species.
After complying with Phibian’s request to nullify the licence, the CFA contracted Greenback to replace Phibian’s work. Using a Photoshop-like editing program, and One Giant Leap as a mutual source, Greenback generated a suspiciously similar logo for the CFA. Outraged by the similarity between her work and Greenbacks, Phibian sued for copyright and moral right infringement.
Among many novel copyright questions raised, the primary issues concerned:  the correct current approach to substantial similarity analyses of two works which borrow heavily from the public domain;  the admissibility of expert testimony and the role it should play in comparing two works;  the correct current approach to prove a work was copied; and, regarding moral rights,  the appropriate test for evaluating the potential prejudice to an author’s honour or reputation and how to apply that test.
The problem was drafted craftily and left certain key facts ambiguous (for example, there is no image of either leaping frog design found in the problem), so counsel for either side had ample wiggle room to devise and frame unique and creative arguments.
After nearly five months’ of preparation, the Osgoode Hall Law School team attended the Moot on Friday February 19 and 20 at the Federal Court of Canada, along with eight other teams from law schools across Canada. The team was comprised of Alicja Puchta, Keton Motta-Freeman (Appellants), Jordan Fine, Ran He (Respondents), and Asad Akhtar (Researcher, both sides).
The competition opened midday Friday with a keynote speech delivered over lunch by the Honourable Mr. Marshall Rothstein, former Justice of the Supreme Court of Canada (and current Distinguished Visiting Professor at Osgoode). His lecture, titled “The Value of Copyright: Applying the Principles of Technological Neutrality and Balance”, focused on the recent Supreme Court decision CBC v SODRAC 2003 Inc, 2015 SCC 57 [SODRAC], Justice Rothstein’s final written decision before his retirement.
The SODRAC decision is contentious. The majority’s endorsement of technological neutrality in copyright has been argued as outdated and anti-technology. It was recently the subject of a recent symposium, organized by Osgoode and the University of Toronto, where three panels dissected and debated the decision’s potential impact on the principle of technological neutrality, reproduction rights, tariffs, the copyright board, collective management organizations, and all other industries, institutions and organizations who create, use, license, and manage copyright works.
Justice Rothstein discussed the reasons behind his majority opinion and the dissenting opinions by Justice Abella and Justice Karakatsanis. In particular, he focused on legislative language, statutory interpretation and the intentions of Parliament (or lack thereof) which supported his decision that the Copyright Act should not be interpreted or applied to favour or discriminate against any particular form of technology. The team discussed the lecture and SODRAC during our breaks, and while some of us were unsatisfied by the result of the decision, we were all persuaded by Justice Rothstein’s sound reasoning. His presence on the bench and contributions to matters of Canadian IP law will be missed, but we are proud and thrilled to have him join the Osgoode community.
The preliminary rounds shortly followed the luncheon at the Federal Court building in downtown Toronto. Each team was required to participate in three rounds. At this stage, the panels were composed of three members drawn from the judiciary and IP bar.
The Appellants kicked off the competition for Team Osgoode with submissions to Justice Victoria Chiappetta (Ontario Superior Court of Justice), Mark Biernacki (Smart & Biggar LLP) and Mario Bouchard (Former General Counsel of the Copyright Board of Canada). Despite a persistent barrage of hard hitting questions, the Appellants stood strong. Their second submission on Friday was argued in front of the panel consisting of Justice Allan Diner (Federal Court), Allyson Nowak (Norton Rose Fulbright LLP), and Trent Horne (Bennett Jones LLP). The final submissions for the Appellant Team were made on Saturday morning to Mario Bouchard, Alexandra Peterson (Torys LLP), and Michael Charles (Bereskin & Parr LLP). Having received strong praises from the Moot Bench, Keton and Alicja’s strong performances in all three rounds placed them first among Appellant teams at the close of the preliminary rounds.
The Respondent Team began their rounds on Friday with submissions to Justice Paul Perell (Ontario Superior Court of Justice), David Aitken (Aitken Klee LLP), and Sana Halwani (Gilbert’s LLP). The Respondents argued two rounds on Saturday Morning: the first was argued to a panel consisting of Justice James O’Reilly (Federal Court), Heather Watts (Deeth Williams Wall LLP), and Brian Gray (Norton Rose Fulbright LLP); the latter to Jek-Hui Sim (Chairperson, Patent Appeal Board), Stephen Selznick (Cassels Brock LLP), and Essien Udokang (Baker & McKenzie LLP). Despite their vigorous delivery of oral arguments, Jordan and Ran finished in a tight fourth place among the fierce competition of Respondent teams, and just shy of making the playoff rounds.
The Osgoode Appellants moved on to the semi-finals, where they faced the University of Ottawa (last year’s defending champions). Their panel consisted of three judges: Justice David Brown and Sharpe from the Ontario Court of Appeal, and Justice Gauthier from the Federal Court of Appeal. The round began with early rapid-fire questions from the judges, who peppered all four mooters throughout their submissions. With regards to the copyright issues, the judges were particularly interested in specific points of law, and whether, on the facts of the case, copyright infringement had truly been made out. The moral rights discussion was far more policy-infused: the judges asked questions at length about the appropriate test for demonstrating prejudice to an artist’s reputation. Everyone held their ground admirably, with both teams offering each other their heartfelt congratulations. The Osgoode team was ecstatic to see Justice Gauthier attend the final round to show her support (and even help offer a few last minute tips!) The team was also lucky enough to speak at length with Justice Brown later that evening at dinner, which was certainly one of the day’s highlights.
The Osgoode Appellants made the finals and faced respondents from the University of Toronto. The two teams argued in front of a panel of five judges: Justice Suzanne Côté and Justice Rothstein of the Supreme Court of Canada, Justice David Stratas of the Federal Court of Appeal, Justice Kathryn Feldman of the Ontario Court of Appeal, and Justice Roger Hughes of the Federal Court. The judges asked tough questions, forced counsel to jump back and forth quickly between their submissions, and had them recall specific details from case law and decisions of the fictional lower courts. Neither of the teams crumbled under the pressure and the competition appeared close when the round closed.
At the gala that evening, during a three-course meal at the stately University Club, the winners were announced. The respondents from the University of Toronto (Stefan Case and Victoria Hale) took home first place and best respondent’s factum award, and the appellants from Osgoode (Alicja Puchta and Keton Motta Freeman) took home second place and best appellant’s factum award. Stefan Case from the University of Toronto won best oral advocate and best mooter in a non-graduating year. Members of the awards committee described at length how impressed they were by all mooters that day.
The Fox Moot was an incredible experience. A lot of work went into our written and oral arguments, and we would all agree that in addition to improving our legal skills and understanding of IP legal principles, we had a lot of fun along the way. A special thanks is owed to our coaches from Cassels Brock & Blackwell LLP: Steven Kennedy, Eric Mayzel and Peter Henein. Our success is a result of their tutelage and patient willingness to endure frog puns.