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Balancing the legal teetertotter : finding the appropriate weight for creator and user rights in cyber.. Cavalier, Kenneth Richard 2006

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B A L A N C I N G THE LEGAL TEETERTOTTER: FINDING THE APPROPRIATE WEIGHT FOR C R E A T O R A N D U S E R R I G H T S IN C Y B E R S P A C E  by KENNETH RICHARD CAVALIER L L . B . , University of British Columbia, 2000 P h D . , Northwestern University, 1989 B . A . , University o f British Columbia, 1974  A THESIS S U B M I T T E D IN P A R T I A L F U L F I L L M E N T OF T H E R E Q U I R E M E N T S F O R T H E D E G R E E OF  M A S T E R OF L A W S  in  T H E F A C U L T Y OF G R A D U A T E STUDIES  U N I V E R S I T Y OF BRITISH C O L U M B I A  August 2006  © Kenneth Richard Cavalier, 2006  Abstract This study represents a "quantum analysis" L a w Reform approach to the adoption and evaluation o f Canadian and international legal regimes aimed at the protection o f intellectual property rights (IPRs) such as copyright, patent and trade-marks in cyberspace. Related intangible property rights such as privacy, publicity, performance, exhibition, moral rights, P2P file-sharing, "grey marketing" and protection against misappropriation are therefore considered. Beginning with a review o f appellate level case law to identify areas o f uncertainty and new developments i n contemporary IP law, especially on the Internet, the history and the philosophical justifications for granting o f traditional IPR protection o f limited duration to creators are noted. The nature o f the IPRs granted and the remedies available to enforce them are presented A review o f current IP practice and remedies notes the trend o f the Supreme Court o f Canada to strive for balance among the stakeholders, both creators and users, o f the intangible property. The post-1994 TRIPS agreement and globalization are discussed and the intersection between IP law, national sovereignty, and international trade through the WTO is considered. Canada's capability to fashion its own legal response i n the face o f her international responsibilities and TRIPS pressure to harmonize IP law is assessed. A discussion o f the merits o f sui generis IP laws for use i n the new digital knowledge-based economy environment rather than the extension o f traditional IP laws to remove current uncertainties follows. The study concludes with a list o f fifty recommendations for characteristics o f any legislative solution proposed for IPR protection on the Internet. The requirement o f a balanced regime is affirmed.  Table of Contents Abstract Table of Contents Preface Acknowledgments Dedication  '.  ii iii xii xxi xxiv  ..  C H A P T E R 1 Identifying the Wobbles in Intellectual Property Rights Law: Current Cases Indicating Uncertainty in the Law  1  1.1 1.1.1 1.1.2 1.1.3 1.1.4 1.1.5 1.1.6  Introduction Method What are Intellectual Property Rights (IPRs)? Incentive for Progress i n the Useful Arts and Sciences Statutory Monopolies Moral Rights Recent Developments in the Protection o f IPRs  1 1 2 3 3 4 4  1.2 1.2.1 1.2.2 1.2.3 1.2.4 1.2.5 1.2.6  Copyright and Patents Types o f Interests Theberge v. Galerie d'Art du Petit Champlain Inc CCH v. Law Society of Upper Canada Erosion o f the Idea/Expression Dichotomy Broadening o f Definition o f Expression to include Neighbouring Rights Retrospective Extension o f Term o f Copyright Protection  5 6 6 8 10 12 13  1.3 1.3.1 1.3.2  Widened Definition o f "Contributing to Infringement" "Authorizing Infringement" i n Canadian Cases Compared SOCANvCAIP  14 15 16  1.4 1.4.1 1.4.2  18 19  1.4.3 1.4.4  N e w Developments i n Patent L a w Patent Formalities Broadening o f Definition o f "Invention": Business Methods, L i v i n g Organisms (Higher and Lower Life Forms), and the Doctrine o f Equivalents Harvard Mouse Case in Canada (a Different Approach) Erosion o f Compulsory Licensing Provisions in Canada  20 21 25  1.5 1.5.1 1.5.2 1.5.3 1.5.4  N e w Developments i n Trade-mark L a w U . S . Famous Marks Legislation (Protection from Cybersquatting) Canadian Responses Preserving the Value o f G o o d w i l l through " D i l u t i o n " Prevention Erosion o f Distinction between Trade Dress and Function  28 30 32 34 37  1.6  "Sui Generis" Evergreen Provisions and the Diminishing Public Domain  38  :  1.7 1.7.1 1.7.2 1.7.3 1.7.4 1.7.5 1.7.6 1.7.7  Evidence o f Strengthened "Creator Rights" A m o n g Traditional IPRs Increased Duration o f Copyright Outside o f Canada Posthumous IP Rights and Bequeathing Extensions o f Copyright to include Adaptations or "Derivative W o r k s " Adoption o f Neighbouring Rights Inalienable M o r a l Rights o f Creators Droits de suite R e Droits de Destination  39 39 39 40 42 43 43 44  1.8 1.8.1 1.8.2 1.8.3  Strengthened "Creator Rights" in Traditional IPR Protection The Function and Purpose o f Intellectual Property Rights The Intersection o f IPRs with the Free Flow o f Information Ramifications o f Strengthened IPRs for Creators at the Expense o f User Rights  46 46 47  1.9  User Rights and a Protected Public Domain  49  1.10 1.10.1 1.10.2 1.10.3 1.10.4  Problem: Identify the Appropriate IPR Protection Regime for the Internet Responding to Needs o f A l l the Stakeholders in Cyberspace Stakeholders Authors, Inventors, and Creators Public Domain Bureaucrats and Judiciary  52 53 54 54 55  1.11  A r e the Traditional IPRs Appropriate i n the new Cyber Age?  57  1.12  W h o Owns Copyright in the Digitalized Version?  58  1.13  Possible Misuses o f N e w Legal Regimes as a T o o l o f the Real Politik  60  1.14  Rights Holder Hyperbole  62  1.15  Network Externalities  64  1.16  Upheld Limits o f IPRs Feist (U.S.) and Tele-Direct (Canada)  66  48  C H A P T E R 2 H i s t o r y and Philosophical Justifications of T r a d i t i o n a l I P R s  67  2.1  Patents, Copyrights and Trademarks and Their Original Use  67  2.1.1 2.1.2 2.1.3 2.1.4 2.1.5 2.1.6  A B r i e f History o f Copyright L a w Copyright as a T o o l o f Censorship Extension o f Copyright as a Tool o f Censorship Parody and Unfavourable Fair Comment Requirement for Grant o f Copyright I: "Sweat o f the B r o w " Requirement for Grant o f Copyright II: " M o d i c u m o f Creative A c t i v i t y "  67 70 72 74 76 79  iv  2.2 2.2.1 2.2.2 2.2.3 2.2.4  Trade-mark L a w as a T o o l o f Censorship The Madrid Protocol and International Trade-marks Extension o f Trade-mark L a w as a Tool o f Censorship Defence o f Goodwill... Lego v. Megabloks and the Doctrine o f Functionality  82 83 88 90 92  2.3  Patent, Copyright, Trade-mark Laws as Statutory Monopolies.....  97  2.4  Ramifications o f Strengthened Traditional IPRs for Creators  99  2.5  Intersection of Traditional IPRs with the Free F l o w of Information  100  2.6 2.6.1 2.6.2 2.6.3 2.6.4 2.6.5 2.6.6 2.6.7 2.6.8  Philosophical Justifications for Traditional IPRs Utilitarian Social Bargain Incentive Characteristic o f Time Limited Legal Economic Rights Natural Rights and John Locke Locke's Privileging of Labour Locke's Limits to the Reach o f Labour Locke's Proviso ..: Locke's Applicability to Intellectual Property Public Good vs. IPRs  101 101 101 103 104 106 106 107 108  2.7 2.7.1 2.7.2 2.7.3 2.7.4 2.7.5 2.7.6  Natural Justice and Authors' Rights Justifications for IPRs II: Personality Rights and Hegel Kant's Theory o f "Persona" Inalienable Personal Rights included in the IPR Bundle Equitable Right of "Paternity" over the W o r k Association with Romantic Era Notion o f the Genius o f the Artist Inali enable P ersonal Rights  113 113 115 117 118 120 121  2.8  The Question o f Time Limited or Unlimited Copyright  121  2.9 2.9.1 2.9.2 2.9.3 2.9.4 2.9.5 2.9.6  Injunctiveand Prospective Relief for Equitable Rights Restitution and Retrospective Damages Relief for Legal Rights Bundle of Rights Theory Legal/Economic Rights: Exclusive Ownership Strict Liability for Infringement Alienbility to Enable Economic Exploitation Restitution through Damages  122 123 123 124 124 125 125  2.10 2.10.1 2.10.2 2.10.3  Equitable Rights. M o r a l Rights of Attribution and Integrity o f the W o r k Moral Rights o f Anonymity U . S . Tort of "Unfair Taking" or "Misappropriation"  127 127 127 128  2.11  Nature of Rights: Exclusive Individual vs. Collective  129  2.12  Role o f the Author or Artist  131  2.13  A r t "Objects" versus Art " W o r k s "  135  2.14  Rivalrous vs. Non-rivalrous Ownership  136  2.15  Value from Rarity vs. Network Externalities  138  CHAPTER 3 Characteristics of Existing Traditional IPR Protection Regimes  140  3.1  Introduction  140  3.2  Necessary Formalities for Traditional IPRs  140  3.3  Registration for Patents  141  3.3.1 3.3.2 3.3.3 3.3.4 3.3.5 3.3.6 3.3.7  T i m i n g o f Patent Applications: First to Register versus First to Invent International Patent Treaty and Jurisdiction o f the Patent Office Full Disclosure o f Best Method Improvement Patents Patentability/Non-patentability o f Inventions Illegal Inventions Maintenance o f Fees and Registration  3.4 3.4.1 3.4.2 3.4.3 3.4.4 3.4.5 3.4.6  Registration for Trade-marks Contesting "Use" in a Jurisdiction Confusion with Already Existing Marks Disclaiming Elements o f the M a r k Disallowed or Ineligible Marks Genericide Expunging Registration for Non-payment o f Fees  3.5 3.5.1 3.5.2 3.5.3 3.5.4  Registration for Copyright Blue Crest Music and the Nature o f Copyright Formalities : Fixation Theberge and Fixation  3.6  Distinction from Industrial Design  3.7  Patent Duration  3.8  Copyright Duration  164  3.8.1 3.8.2 3.8.3  TalfourdAct 1842 "Dickens " Provision Single Term Posthumous Rights  164 165 166  ;  143 143 ....144 145 146 149 150 151 151 ....153 153 154 154 157 .158 158 159 160 161  :  162 :  ...163  vi  3.8.4  Reversionary Copyright  169  3.9  Trade-marks Duration  174  3.10  Cease and Desist Letters  175  3.11 Digital Rights Management and Other A R M Systems 3.11.1 "Tech Fixes" 3.11.2 Privacy Concerns  176 .'. 177 178  3.12 Cross-licensing Agreements 3.12.1 Licensing 3.12.2 Requiring the Licensee to Defend the Marks  179 179 181  3.13  Proving Infringement  182  3.14  Patent Causes o f Action  182  3.15  Trade-mark Causes o f Action  183  3.15.1 3.15.2 3.15.3 3.15.4 3.15.5 3.15.6 3.15.7  "Passing o f f Confusion False Light Endorsement Tarnishment Trade Guise Unregistered Marks Grey Marketing and Piracy  3.16 . 3.16.1 3.16.2 3.16.3 3.16.4 3.16.5 3.16.6 3.16.7 3.16.8  :  183 184 184 -185 188 189 190  Copyright : 191 Access and Substantial Similarity 191 Derivative W o r k 191 Plagiarism 192 "Contributing to Infringement" compared with "Authorizing Infringement".... 192 "Unconscious Copying" •. < 193 Piracy 195 Downloading. : -196 Doctrine o f First Sale in the U . S . 198  3.17 Remedies 3.17.1 Damages 3.17.2 Forfeiture and Seizure o f Infringing Copies  200 202 203  3.18  204  Changing the Registers  3.19 Interlocutory Prescriptive Injunctive Relief Anton Piller Orders 3.19.1 Cease and Desist Orders 3.19.2 Fines for Contempt o f Court and Punitive Fines  204 205 206  3.20  Compulsory Licensing  206  3.21 Defences 3.21.1 Patent Infringement Defences  206 207  3.22 Registration Opposition 3.22.1 Trade-mark Infringement Defences 3.22.2 Grounds for Striking a M a r k from the Trade-Marks Register  207 208 208  3.23 3.23.1 3.23.2 3.23.3 3.23.4 3.23.5 3.23.6 3.23.7  209 209 210 211 212 212 214 215  Copyright Fair Dealing i n Canada and Fair Use i n the U . S Lack o f Creativity (TeleDirect i n Canada and Feist i n the U.S.) Idea/Expression Dichotomy Lack o f Fixation Translations and Digital Translations The Problem o f " T h i n Copyright" Digital Translations ,  CHAPTER 4 Canada's International Obligations to Protect IPR: Treaties and Agreements  217  4.1  Introduction  217  4.2 4.2.1  Pirate Nations Historical Connection o f I P R Protection with International Trade  220 223  4.3 4.3.1 4.3.2  IPRs as Granted Monopolies and the Abuse o f Dominant Position Competition Act, s.32 The Competition Bureau  4.4 4.4.1 4.4.2  International Treaties under which Canada has Obligations TRIPS, WIPO and the WTO WIPO, TRIPS and International Harmonization  228 229 230  4.5 4.5.1 4.5.2 4.5.3 4.5.4 4.5.5 4.5.6 4.5.7  The Road to TRIPS: Bilateral and Multinational I P R Agreements British Imperial and Commonwealth L a w Statute of Monopolies (1623) English Patent L a w U.K. Imperial Copyright Statute of 1911 NAFTA E U Directives European Database Directive concerning Privacy Protection U . S . Safe Harbor Compromise  232 233 234 235 236 239 240 241  4.6 4.6.1  International Conventions Madrid Protocol for International Trade-mark  243 243  224 225 .....227  4.7 4.7.1 4.7.2  Berne Convention on Copyright Berne Convention Berlin (1908) Berne Convention Rome (1928)  4.8  4.8.1 4.8.2  M o r a l Rights in Canada and the U . S . U . S . Visual Artists Rights Act ( V A R A ) Canada's Status of the Artist Act  4.9  Berne Convention Paris (1971): M i n i m u m Standards for T R I P S  4.10  Rome Convention for the Protection of Performers, Producers of Phonograms and Broadcasting Organizations  244 245 246 ....247  248 250 250  251  4.11  Paris Convention for the Protection of Industrial Property  4.12  Integrated Circuit Topography Act  253  4.13  Universal Copyright Convention (UCC) 1952  253  4.14  International Union for the Protection of New Varieties of Plants  4.15  W I P O Administered Treaties  4.15.1 WIPO Copyright Treaty... 4.15.2 WIPO Performances and Phonograms Treaty (WPPT) 4.16  International Patent Treaties  4.16.1 Patent Cooperation Treaty 4.16.2 Budapest Treaty 4.17 National Treatment Requirements 4.17.1 National Treatment in TRIPS 4.17.2 Most Favoured Trading Nation Status Under WTO  4.17.3 TRIPS and WIPO  4.17.4 The use o f the WTO to enforce IP rights for Foreign Nationals 4.17.5 The N e w Imperialism  4.17.6 U . S . Digital Millennium Copyright Act (DMCA 1998) 4.17.7 Trade Sanctions and U . S . "Special 301" Designations 4.17.8 Non-Tariff Barriers to Trade  252  254 256  256 258 262  262 263 264 264 266  266 268 269 270 272 273  4.18  WTO and WTO Trade Dispute Panels  274  4.19  International Treaties and Canadian Obligations  275  4.20  Canadian Sovereignty Versus WTO Free Trade i n Cultural Industries  277  ix  4.21  Canada as a Trading Nation  4.22  Other Costs o f G o i n g It A l o n e Internationally  278  4.23  Benefits o f a Canadian W a y  280  4.24  Is Globalization Dead, or "Merely Resting?"  280  ;  277  C H A P T E R 5 Stretching Old Laws for Contemporary IPR Protection or Creating New Laws for the Digital Era? Stilling the Wobbles: Conclusions and Recommendations  282  5.1 5.1.1 5.1.2 5.1.3 5.1.4 5.1.5  Summary o f Chapters 1 -4 Chapter 1 Chapter 2 Chapter 3 Chapter 4 The M y t h o f Harmonization: Existing Unique National IPR Laws  282 282 283 285 287 289  5.2 5.2.1 5.2.2  Canadian Patents Harvard Mouse The Monsanto Decision  290 290 291  5.3 5.3.1 5.3.2 5.3.3  Canadian Trade-marks Parallel Importing : Smith & Nephew and Coca-Cola v. Pardhan Canada's Failure to Implement the Madrid Protocol  293 293 295 297  5.4 5.4.1 5.4.2 5.4.3 5.4.4 5.4.5  Canadian Copyright Reversionary Rights and the Heirs of Lucy Maud Montgomery Decision Non-alienable but Waivable M o r a l Rights The BMG and the SOCAN v. CAIP Decisions and ISP Liability Authorizing Infringement, the C C H Decision Failure to Pass B i l l C-60 Copyright "Reform"  298 299 299 299 300 301  5.5 5.5.1 5.5.2 5.5.3  N e w Canadian Sui Generis IPR Protection Regimes Sui Generis Protection for Databases and Cyberspace Integrated Circuit Topography A c t ( I C T A ) PBRA  301 301 302 303  5.6 5.6.1 5.6.2 5.6.3 5.6.4 5.6.5 5.6.6  United States' Experience with Unique IPR Protection Laws 304 Tort o f Misappropriation: the INS Decision 305 FTADAct .' ....307 "Sweat o f the B r o w " and the Feist Decision 308 U . S . Rejection o f 6bis Berne Convention 310 Retrospective Copyright Term Extension and the Eldred v. Ashcroft Decision..310 Digital Millennium Copyright Act 312  5.6.7 5.6.8 5.6.9  "Doctrine o f First Sale" and the Napster/Grokster Decisions Safe Harbor, The Patriot Act and Privacy Protection Special "301" Responses  312 313 314  5.7 5.7.1  European Database Directive Time-limits and the Evergreen Provision  314 315  5.8 5.8.1 5.8.2 5.8.3  Sui Generis or Traditional IP Law? " N e w " Multilateral International IPR Protection Recognition The Berne Convention before U . S . Ratification i n 1989 The Universal Copyright Convention before T R I P S  315 316 316 317  5.9 5.9.1 5.9.2 5.9.3 5.9.4 5.9.5 5.9.6 5.9.7 5.9.8 5.9.9  Concerns about National Sovereignty and Globalization National Treatment versus Citizen Protection Phil Collins v. Imtratt Copyright Case National Cultural Policy versus W T O Policies Canadian Split-Run Magazine Case Concerns about Non-Tariff Barriers to Trade against Third W o r l d Economies Concerns about Increased Costs for Countries Importing IP A I D S / H I V Epidemic in Africa versus the Pharmaceutical Rights Holders Australia KaZaa Decision Contrasted with C C H "Sui Generis " IPR for Cyberspace  317 318 318 319 320 .320 321 321 322 323  5.10  Conclusions  326  5.10.1 50 Selected Recommendations for Future I P R Protection Regimes i n Canada ..326 5.11  The Inequity o f Perpetual Copyright  337  5.12  Achieving the Balance: Characteristics o f Balanced I P R Protection Regimes ..339  6.0  Selected B i b l i o g r a p h y  6.1  Selected Cases  6.2  Selected Statutes  352  6.2.1 6.2.2 6.2.3 6.2.4 6.2.5  Canada U.K U.S Australia Europe  352 353 354 355 355  6.3  International Treaty Agreements  356  6.4  Secondary Sources  356  6.5  Other Sources  367  343 ••  343  xi  Preface This study began to take shape many years ago while I was an art historian/archaeologist. In preparing m y research for publication I was confronted with the need to pay for copies o f copyrighted photographs o f archaeological works that had long been in public domain. If I could take m y own photo, there was no copyright issue, but i f the institution did not allow visitors access to their collections for the purpose o f photographing the objects, the only photos available would be those taken by the museum or gallery staff photographers. The copyright for these reproductions o f ancient art objects would invariably be owned by the institution. The cost for permissions to publish such photos became more and more expensive while access to the works in the collections to take one's own photos became less and less common. When I later became a Gallery Director, I came to understand that in tight economic times the revenue gained from insisting on the use o f only the institution's photos represented a revenue stream that would continue to grow in importance. O f course, the official justification for restricting photography o f the collection could be for conservation purposes and, to be fair, i n some cases this was legitimate. Conservators all know that extensive or intense light exposure can and does damage art. Y e t the use o f copyright to extract ever-higher fees from scholars unpaid for their writings in the Humanities seemed and seems to me to be a misuse o f the copyright regime. I set out to try to understand copyright law. I came to understand that i f I took m y own photographs I owned m y own copyright. I learned that under "fair use" provisions in U . S . law (and to a lesser degree under "fair dealing" provisions in Canadian law), a scholar could claim an exemption for copyright infringement i f the infringing copies were to allow for the study and criticism  o f the copyrighted work. But as a professor o f art history, I also learned that the use o f photographic representations o f art objects (whether they were copyrighted or not) did not escape infringement liability unless the use o f the visual images i n the lecture was intended to teach the audience about the quality o f the reproduction, not illustrate the art work under discussion. W h i l e the art work could be in the Public Domain, the photograph o f the work was not. A s many faculty at universities and colleges found out to their chagrin i n the 1990s, the "thin" copyright in the photograph owned by the photographer (or the institution i f the photograph was commissioned by them or done b y the photographer as an employee o f the institution) was sufficient to create a need to pay royalties or license fees. W i t h the advent o f the Internet after the m i d 1980s, the question o f rights to use reproductions and digital imagery became all the more acute. I became very aware o f the restriction o f access to intellectual property afforded b y IP law. Given m y experience with diminished access to reproductions o f art in the Public Domain afforded by the granting o f new protection under copyright or trade-mark I became concerned about the potential for rights holders (often no longer the authors or inventors who had sold their rights early in their careers before the true worth o f their creations could be known) who could restrict access to the expressions. I noted with some alarm that almost all knowledge was being translated into a digital format that could be "read" only with the aid o f computers and that the translators and computer manufacturers were i n a position to become the new gatekeepers o f the sum o f human knowledge. W i t h descriptions o f the new knowledge-based economy to come I realized that this control o f access to knowledge was, perhaps, the single most pressing issue facing society today.  W i t h the controversy in music that arose from "sampling" i n contemporary music I became aware o f the difficulties that IP law could present for artistic inspiration. From the perspective o f an art historian I knew that "progress" i n the fine arts had often involved derivative works that owed much to art objects that had come before. Manet's famous Le Dejeuner sur I 'herbe exhibited i n the Salon des Refuses o f 1863 was derived from a group o f classical deities from an engraving by Marcantonio Raimondi (The Judgment of'Paris, c. 1520) done after a design supplied to h i m by Raphael. Raphael -was, in turn, inspired b y ancient Roman reliefs such as the River Gods detail from the 3  r d  Century A . D . now in the V i l l a de M e d i c i . The entire history o f art academies was replete with art students using the process o f "copying the great masters" to develop their skills as an artist. H o w would new artists be taught i f copying was precluded by IP law? Similarly such laws could and have been used to censor artistic expression on the basis o f the exclusive right o f the original artist or copyright holder. Parodies o f famous works o f art made no sense unless the parody could evoke the original art objects. I realized that rather than encouraging progress i n the arts, IP laws delayed or restricted artists from progressing. I had written a dissertation i n A r t History drawing a distinction between the art object, an expression created by the artist, artisan, architect, builder, author or performer and the art work created between the audience (usually but not always including the maker o f the art object) and the art object. I had learned i n m y study o f aesthetic theory that the aesthetic relationship created between the audience and the art object beheld could be entirely different from what was intended by the maker.  xiv  A s an archaeologist I found myself studying many objects where we had absolutely no idea who the maker was and what his or her intention had been i n creating the object. W h i l e we often wished we knew, it was obvious that that knowledge was not critical for an aesthetic relationship to be formed between subsequent audiences and the object. In many instances we had no idea what the original function o f an artifact might have been,. W e often identified these items as cult objects o f "religious significance" until subsequent study clarified the picture (when it did!). B y studying art works over time I realized that as the audience changed, the art worked in an aesthetically different manner. I came to realize that the aesthetic life o f an art object could and usually did transcend its origins as an art object. A Victory Stele ofNaram  Sin from 2300-2200 B . C .  had originally been intended to tell viewers about the powerful Akkadian king who claimed to be the K i n g o f the Four Quarters (the Universe). It was transformed into war booty by the Kings o f U r , the eventual destroyers o f the Akkadian culture, and taken as a prize o f war to Susa as proof o f their superiority over the Akkadians. H o w much richer and fuller the life o f the art work could be than that o f the original art object. Further studies o f art historiography and modern and contemporary art illustrated for me that the changing o f the audience and or context o f any object, or any expression, could give it an entirely new meaning. Michelangelo and countless earlier artists depicting Moses (1513-15) would put "horns" on the O l d Testament figure's head because o f a misapprehension o f the translation o f the description o f Moses with horns coming from his forehead after he received the Commandments. A better translation o f the original biblical expression would have described two "rays" emanating from his head, rather than two horns.  XV  Whole movements i n western art such as the Neo-classical movement could be based upon totally erroneous impressions o f the art o f the past. (Eighteenth and nineteenth century Neo-classical sculptors avoided the polychromy o f ancient classical Greek statuary assuming the sun-bleached examples they knew were examples o f a "more pure" aesthetic that celebrated unpainted white marble.) W h o l e cultures could be interpreted in archaeological reconstructions to fit the hopes and aims o f the modern excavators o f their ruins. So the M i n o a n culture o f Crete discovered by Arthur Evans against the backdrop o f the terrible conflicts o f the first and Second W o r l d Wars was contrasted as "peace-loving" when compared to the "warlike" Mycenaean culture o f the Greek mainland. Evidence o f Mycenaean occupation o f Knossos following the contraction o f the Minoan culture led to a scholarly controversy whether the Minoans inspired the Mycenaeans or the Mycenaeans were responsible for the destruction o f Minoan culture. More recent excavations have revealed a less idyllic Minoan culture than envisioned by Evans, and that the Mycenaeans may have merely occupied the power void left after the demise o f the Minoan culture. The point is that as a modern audience we make o f the art objects and artifacts what we w i l l in a new perceptual or aesthetic relationship. However, we need not rely only on ancient civilizations and the passage o f time to erase or erode the artist's central role i n the production o f art works. The Modern A r t Movement has also demonstrated the importance o f audience reception studies i n aesthetics. After the Salon des Refuses i n 1863, we saw the development o f new ideas i n the arts that stressed the importance o f abstraction and diminished the importance o f both artistic subject matter and the role o f the artist i n the production o f modern art.  XVI  Urinals could be signed with a pseudonym (R. Mutt), re-titled as The Fountain and placed on display as fine art by Marcel Duchamp in 1917. Other "found objects" such as a reproduction o f Leonardo's Mona Lisa, defaced with a mustache and goatee and re-titled L . H . O . O . Q . (French pun for "she has a hot ass") could be made into examples o f fine art by Duchamp and other modern artists simply by changing the context o f the original object. Bicycle seats and handlebars could be reshaped into the form o f a Bull's Head i n 1943 by the Spanish artist Picasso. Marcel Duchamp would create his first Bicycle Wheel sculpture in 1913 by putting the wheel and front forks upside down on a painted wooden stool. H e would exhibit a snow shovel i n 1915 called In Advance of the Broken Arm.  M a n R a y would create his sculpture Gift by attaching a  number o f tacks to the bottom o f a laundry iron in 1921. N e w aesthetic possibilities were created b y the artists by altering the perceptual context o f the audiences. There were bicycle manufacturers who created the original "found objects" used b y Picasso and Duchamp to create their works, ceramicists who created the original urinal that became Duchamp's Fountain i n 1917, bottle rack manufacturers who created the raw material for his 1917 Bottle Rack and even some photographer who reproduced Leonardo's Mona Lisa for a poster at the Louvre, who were all the original creators o f the art objects we have just discussed. Without them the objects would not have been made. However, it was the subsequent aesthetic use o f their manufactured objects that "created" the art works that are so famous today. The maker o f the object, necessary for its generation, disappears behind subsequent creators to arrive at a creative expression. When we consider artist Judy Chicago's Dinner Party done between 1974-79, we encounter a work executed by many volunteers, but credited only to artist Judy Chicago. Similarly i n the  xvii  past great artists such as Rubens established ateliers where apprentices, artisans and assistants may have been the actual makers o f objects, but the credit for the art work is usually given to the Master. Reconciling the atelier system with IP law is difficult unless all such work is determined to be done i n the course o f employment or by commission i n the atelier. The question o f who should own the IP rights, especially i n a collective ownership situation becomes complicated. It occurred to me that i f we regard the granting o f a limited term monopoly to the artist as payment for their contribution and the Public Domain as the ultimate employer or "Master o f the Atelier", we are forced to consider the copyrighted work as the intellectual property o f the Public Domain. In addition, i f we consider the role o f the audience or subsequent audiences in the creation o f the art work, we must privilege those audiences as at least equal to (and possibly exceeding) the maker o f the object in terms in deserving credit for the creation o f the art work. It was at this point that I met Professor Bob Paterson and discovered that issues such as this, among others, were being discussed i n the law. I decided to enter L a w School and embark on a career as a lawyer. I was inspired by Professor B o b Howell's summer programme i n IP L a w at U v i c , and further study with Professor Joe Weiler underlined the importance o f IP law for Entertainment and Sports L a w as well as Cyber L a w . After finishing m y L L . B in two years I entered the L L . M programme at U . B . C . where I continued m y research and study o f the component elements o f IP law, i.e. copyright, patent, trade-mark, torts, trade secrets, competition, media and regulatory law. A l l o f these studies added to m y understanding o f the problem as one that needed a sort o f "quantum analysis" o f all these component legal sub areas rather than the  narrowly defined scholarly analysis of any single element. This study would not be just another on the minutiae o f copyright or patent law. It would attempt to explain the need for balance among all the laws intended to protect the rights to the use and enjoyment o f intangible property. It would attempt to avoid the problem o f piecemeal legal reform (at the expense o f what I advance as an existing system of IPR protection) wrought by response to individual situations and legislative developments in the component constituents. The study would try to explain why the limitations o f traditional patent, copyright and trade-marks law need to be understood before developing any new regime. The impact o f the arrival o f the TRIPs, the rise o f mass media and the Internet, the development o f the "knowledge-based economy" and the recognition o f the rise o f the importance o f categories o f non-rivalrous ownership and the effect o f network externalities on the value o f such properties were just four of the factors complicating the use o f traditional I P R protection regimes and creating an imperative for the development of new legislation i n the protection o f IPRs at this time. Obviously this would mean a very ambitious and lengthy thesis, but it was clear to me that an overview with an appreciation o f the entire system o f intellectual property law was required. Articling with entertainment lawyer, M r . Arthur Evrensel, at Heenan Blaikie L L P and then clerking for M a d a m Justice Karen Sharlow at the Federal Court o f Appeal in Ottawa strengthened m y resolve to address this topic i n this thesis. In addition teaching IP law with Professor Joe Weiler in his Entertainment Law, Cyber L a w , Sports L a w and L a w of the Olympics course gave me time to allow the thesis ".. .to grow i n the telling" far beyond the normal L L . M thesis length and scope.  This thesis is the result o f  xix  this history and frequent reference i n the press to issues germane to it is proof o f its current relevance.  Acknowledgements N o thesis or dissertation is ever written without the support and help o f many people. This thesis is no exception to that rule. I owe much to many o f the faculty i n the Faculty o f L a w at both U B C and U V i c (where I studied i n Professor B o b H o w e l l ' s summer program i n Intellectual Property L a w during the summer o f 1999). If it had not been for the inspiration and encouragement o f many people at U B C I should never have been able to produce this opus for a L L . M . thesis. These include: Professor B o b Paterson at U B C with whom I studied Cultural Property L a w and audited Corps I; without his encouragement I might not have taken up the study o f law i n the first place. Were it not for the understanding and generosity o f the Faculty o f L a w at U B C granting me a year's leave from m y studies during m y annis horribilis o f 2004/5 when m y mother died while I awaited hip surgery, I doubt that this project could have come to fruition. Similarly necessary in the completion o f this thesis was the encouragement o f m y fellow students; m y principle, M r . Arthur Evrensel o f Heenan Blaikie L L P Vancouver; " m y " justice Madam Justice Karen Sharlow, who supervised m y clerkship at the Federal Court o f Appeal i n Ottawa; Professor Joel Bakan who ran the Graduate Seminar in m y year; Professor Bob Dieboldt, who let me audit. Secured Transactions and for whose 1 year st  Contracts Class I was a teaching assistant i n m y first year o f Graduate Studies; Professor Steve Wexler, who encouraged a curiosity about all aspects o f law, ancient and philosophical and let me audit Succession with h i m ; Professor Wes Pue, who encouraged me to present m y research at scholarly conferences; Professor L i z Edinger, who let me audit Conflicts o f Laws with her; Professor Keith Farquar, who let me audit Trusts with him; Professor Robin Elliot who taught me Charter, Professor Ian Townsend-Gault, who introduced me to International L a w ; and Professor Jon Festinger, who was m y colleague  xxi  teaching Entertainment and Sportslaw, and who involved me in the first ever offering o f a course on the L a w o f Videogaming taught at both U B C and U V i c by teleconferencing. However, the three people without whose support, encouragement and editorial help I could not have written this are: m y industrious second reader Professor Tony Sheppard, whose many discussions about the laws o f Equity and Equitable Remedies spurred a real interest i n that area; m y advisor Professor Joe Weiler; and m y wife, Sharon Cavalier. They were the only three people who have been subjected to reading all o f this study i n its earliest drafts. Academically I owe the most to m y two readers, Tony Sheppard and Joe Weiler. Professor Sheppard's sharp eyes alerted me to many o f the inevitable typos, format problems, split infinitives, and sentence fragments o f a first draft. The thesis is much stronger for his input. However, it was Professor Weiler who took me under his wing and became my academic mentor after I studied the law o f cyber space, entertainment law, sports law and the law o f labour policy with him. H e gave me the opportunity to participate in the offering o f these courses i n subsequent years and he invited me to participate in the development and offering o f the first ever course on the L a w o f the Olympics. H e gave me lots o f leeway to create this thesis i n a form that I hope can be exploited as a book. H e encouraged m y research and thinking i n a manner exemplary to other graduate thesis supervisors. H e tried to find me experiences, helping me secure an articling student position at Heenan Blaikie with Arthur Evrensel, and taking me on as a colleague teaching Cyber, Entertainment and Sports L a w at U B C , that would strengthen m y expertise in this area. H i s gentle but firm hand has guided me to the completion o f this thesis.  xxii  The third person to w h o m I owe the most personally is m y wife, Sharon Cavalier. She has been remarkable i n her unwavering support for m y completion o f this degree. It may not be uncommon for the wives o f graduate students to help in the preparation o f a Ph.D dissertation or a Master's thesis, but to do both in two separate disciplines really goes beyond the call o f duty. M y wife has seen me through m y even lengthier P h . D dissertation and now, m y L L . M thesis that "grew i n the telling". She has proof read drafts, listened to m y ramblings, critiqued and improved m y expression, endured the "hell of uncertainty" that is the student's lot, and waited patiently for me to "finish school" someday. To her I owe the most love and gratitude and to her I am most thankful. A l l o f the people I have mentioned above contributed to the strength o f this study with their support and inspiration, but the flaws that are inherent in the thesis are strictly my own.  xxiii  Dedication  This thesis is dedicated to m y mother, M i n n i e Josephine Cavalier, who passed away during its composition. A good woman o f uncommon strength, she successfully steered me away from the worst o f her vices and failings while setting an impossibly high standard with her virtues and character for me to emulate. A woman with little formal education, without whose support and encouragement I should never have embarked on m y ongoing voyage o f discovery, she is sorely missed. This one is for you mom!  xxiv  Chapter 1 Identifying the Wobbles in Intellectual Property Rights Law: Current Cases Indicating Uncertainty in the Law 1.1  Introduction This thesis primarily represents a L a w Reform approach to the adoption and  evaluation o f Canadian and international legal regimes aimed at the protection o f intellectual property rights i n cyberspace. Chapter 1 begins with an analysis o f recent developments i n the realm o f Intellectual Property (IP) L a w and evidence for new concerns in that area. It is intended that the concerns raised w i l l help identify necessary characteristics o f the optimal regulatory regime for the protection o f intellectual property rights in cyberspace. After identifying these current concerns it w i l l be necessary to discuss the philosophical justification for intellectual property law in Chapter 2 . Chapter 3 examines the history o f currently existing intellectual property regimes. Chapter 4 considers new international developments in the regulation o f relationships i n cyberspace. A n d finally, Chapter 5 offers a discussion o f the future o f intellectual property i n cyberspace based upon the conclusions drawn from the earlier chapters. I w i l l argue that any future regulatory regime w i l l have to balance carefully the legal and social interests o f all parties involved, both creators and users. 1.1.1  Method This first chapter o f the thesis involves examining recent appellate level cases to  identify those areas o f intellectual property law that demand clarification. Looking at the recent commentary by the members o f the Supreme Court i n Canada about the function and purpose o f the provisions o f the acts protecting intellectual property we can identify some o f the necessary characteristics o f any proposed intellectual property regime. B y  studying the recent cases we can determine how new circumstances are straining existing traditional law surrounding intellectual property. Current legal regimes o f intellectual property protection must be examined from a doctrinal position to determine ambiguities i n the law arising i n cyberspace. This is a necessary prerequisite to determining whether the current regime is appropriate i n the new environment o f cyberspace and the "new information economy". W e begin with a reexamination o f the rationale for the protection o f intellectual property rights from a Law and Society point o f view. It w i l l also be necessary to determine which public and legal policy issues are at stake and to predict the form future Canadian laws should take regarding the protection o f intellectual property rights. A s well, Canadian international treaty responsibilities w i l l need examination with regards to intellectual property protection from both a post-colonial and a postmodern perspective. This is necessitated both by a need to understand just what legal and political capacity Canada has to construct a legal regime o f its own and i n order to contextualize Canada's role in the geopolitik o f the new information economy. In addition, the introductory chapter w i l l demonstrate the crucial distinctions between tangible and intangible property rights and it attempts to cool the rhetoric and thereby escape from the hyperbole o f the adversarial language most often used by advocates to describe intellectual property disputes today. The use o f loose terminology such as "piracy" and "theft" elevates elements o f disputes beyond a contest o f competing rights to one o f moral wrong marked b y compulsion and deprivation o f the rights owner. 1.1.2  W h a t are Intellectual P r o p e r t y Rights (IPRs)? Let us begin by discussing the definition o f Intellectual Property Rights (IPRs).  2  Traditionally IPRs are legal rights o f exclusive ownership surrounding the production o f intangible property such as copyright for original fixed expressions, patent for fully disclosed new inventions and trademark for the use o f marks or labels enabling consumers to know the origin and likely quality o f goods and services offered for purchase. 1.1.3  Incentive for Progress in the Useful Arts and Sciences These legal rights are intended to serve as incentives for creation. They must be  alienable to allow economic exploitation by the owner. It is the profit from economic exploitation that produces an incentive for the creation o f new and useful works. Normally, the exclusive ability to exploit invention, expression or use o f the author/artist's creation enhances the value o f profits that can be realized. That exclusive right leads to greater incentives for the creation o f more such inventions, expressions or use o f the intellectual property. The incentive is seen to further the progress o f society i n the development o f new and useful arts and sciences. 1.1.4  Statutory Monopolies The granting o f statutory monopoly to the owner o f intangible property has  traditionally been an indication that society acknowledges these rights. These legal rights in the law can be enforced by remedies made available to the owner b y operation o f statute, during the period o f protection granted against would-be infringers o f those exclusive rights. So traditionally IPRs are most often recognized as exclusive rights to exploit economically the fruits o f one's invention by means o f a time-limited statutory monopoly. In Canada, for patents, this is usually a 20-year period o f protection (Canadian Patent Act s. 44) with the payment o f annual fees; for copyright a minimum o f  3  life o f the author plus the end o f the calendar year and an additional 50 years (Canadian Copyright Act s. 6) in the case o f authored works; and for trade-marks usually 15 years per renewable term (Canadian Trade-Marks Act s. 46) provided the goods or services remain i n use. O f course there are variations i n the term o f protection for commissioned works, for jointly authored works, and for unpublished works, but the statutory monopolies granted are not perpetual. However, these are not the only IPR granted to authors, artists or inventors. 1.1.5  Moral Rights  .  Often associated with these rights o f exclusive ownership are personal rights o f  association or non-association o f the author, artist, inventor, or goods and services provider with the examples o f their creation i n fixed form. These are sometimes referred to as the moral rights o f the creator. These involve the right to be credited with invention o f the intangible property or the right to remain anonymous; the right to demand maintenance o f the integrity o f the work, and the right to prohibit or disassociate from alterations o f the work that could harm the creator's reputation. It is this right to prohibit the use o f intangible property that enables IPRs to be categorized as potential tools o f censorship. 1.1.6  Recent Developments in the Protection of IPRs Having defined IPRs, it is necessary to look at recent developments in the  protection o f IPRs. A s we shall see, the ratification o f the Berne Convention by the U . S . in 1989 has led to several international developments in the protection o f IPRs worldwide. The establishment o f the World Intellectual Property Organization  (WIPO) and  the adoption o f the minimum standards o f the multilateral Agreement on  Trade-Related  4  Aspects of Intellectual Property Rights, Including Trade in Counterfeit Goods (TRIPS)  agreement in 1994 have led to several modifications in the traditional intellectual property law of many countries as they attempted to harmonize with international standards. Much of this process has been called "globalization". Globalization of intellectual property law will be more fully examined in Chapter 4, but for the moment suffice it to say that globalization has caused many nations to reexamine their IPR protection regimes over the past decade or so. In addition, the ubiquitous Internet, and the use of computers and digitalized data have elevated the need to consider what future IPR protection regimes will look like. Let us begin with an examination of recent developments in the traditional intellectual property protection regimes. 1.2  C o p y r i g h t and Patents  Of the traditional IPR regimes, copyright and patent are oldest and perhaps best known. Both started with similar time limited exclusive statutory monopolies and necessary formalities of registration or deposit to obtain the protection, but over time, copyright has extended the duration of protection and diminished the formalities required for protection to the point where it is potentially the most restrictive grant for the longest period of time. Patents were originally granted to encourage the use and full disclosure of how new inventions worked by providing inventors with compensation for such disclosure, while copyrights were originally granted to provide authors with compensation and with credit for their creative expressions. It is this dual function of copyright, incentive and acknowledgment of authorship that has led to some confusion about the content of the bundle of rights granted by the statutory monopoly, their appropriate duration and the question of access to the work by others.  5  1.2.1  Types of Interests Recent Supreme Court of Canada cases involving copyright have wrestled with  the notion of types of interest included in the "bundle of rights" granted by the Canadian ' Copyright Act.  1.2.2  Most prominent have been two cases heard in 2002 and 2004.  Theberge v. Galerie d'Art du Petit Champlain Inc. In the seminal Theberge case of 2 0 0 2 t h e Supreme Court o f Canada concerned  itself with the content of the bundle of rights and the appropriate remedies available to a rights holder against an alleged infringer. While the rights holder sought relief under the Canadian Copyright Act against the making unauthorized copies of their work, a 4-3 divided Court found that the exclusive economic right to make copies of a work necessitated the manufacture of new manifestations of the work in addition to the original. In this case the original was destroyed in the process of creating a new work, so the protection against " c o p y i n g " did not come into play. A s the action was based upon unauthorized copying it failed, despite the possibility of a claim for an infringement o f moral rights caused by the destruction of the integrity of the original work. M r . Justice Binnie wrote the majority opinion for the Court in which he emphasized the importance of distinguishing between economic and moral rights in the Canadian Copyright Act. B y so doing he indicated the concern for the balancing o f rights between both creators and users of copyright material. H i s identification of this concern would later be echoed by majority decisions of the Court when they cited Theberge with approval. A s Binnie J stated:  Theberge v. Galerie d'Art du Petit Champlain Inc., [2002] 2 S.C.R. 336, 2002 SCC 34 (CanLII), 210 D.L.R. (4th) 385; 17 C.P.R. (4th) 161; 23 B.L.R. (3d) 1, [hereinafter Theberge}. See McLachlin C.J. below at CCH Canadian Ltd. v. Law Society of Upper Canada [2004] 1 S.C.R. 339 [hereinafter cited as CCH] at para 8. 1  2  6  Economic vs. moral rights 59 The separate structures i n the A c t to cover economic rights on the one hand and moral rights on the other show that a clear distinction and separation was intended. Professor Ysolde Gendreau is one o f those who have drawn attention to this rather rigid compartmentalisation: Unfortunately, the present text o f the Copyright Act does little to help the promotion o f the fusion o f moral rights with the economic prerogatives o f the law, since there is no comprehensive definition o f copyright that embodies both. Section 3 o f the Act, which is drafted as a definition o f copyright, only refers to the economic dimension o f copyright. M o r a l rights are defined and circumscribed i n entirely distinct sections. This absence o f cohesion leads to the separate mention o f "copyright" and "moral rights" whenever Parliament wants to refer to both aspects o f copyright law and to the near duplication o f the provision on remedies for moral rights infringements. ( Y . Gendreau, "Moral Rights", i n G . F. Henderson, ed., Copyright and Confidential Information Law of Canada (1994), 161, at p. 171) (See also R. G . H o w e l l , L . Vincent and M . D . Manson, Intellectual Property Law: Cases and Materials (1999), at p. 383.) This is not to say that moral rights do not have an economic dimension (e.g., there may be an economic aspect to being able to control the personality-invested "moral" rights o f integrity and attribution) or to deny that there is a moral rights aspect to copyright (e.g., a critic may reproduce parts o f the text o f a book when reviewing it, but it w i l l be considered a breach o f the author's economic rights unless his or her authorship is attributed). However, i n terms o f remedies, the distinction i n the A c t between the two sets o f rights is clear. 60 M y view is that Parliament intended modification without reproduction to be dealt with under the provisions dealing with moral rights rather than economic rights. To adopt a contrary view, i.e., to treat the modification o f the substrate here as the violation o f an economic right, would allow copyright holders other than the artist to complain about modification (despite the non-assignability o f moral rights). It would allow an artist who objected to a "modification" o f an authorized reproduction both to sidestep the independent evaluation o f a judge i n unleashing a pre-judgment seizure i n Quebec, and to sidestep at a trial anywhere in Canada the important requirement o f showing prejudice to honour or reputation in order to establish an infringement o f moral rights. 61 Could the economic rights o f the sculptor o f the descending geese at the Eaton Centre be said to be infringed (quite apart from his moral rights) because the seasonal "combination" o f geese plus Christmas ribbons could be considered a "reproduction"? The be-ribboned flock incorporated the original artistic work i n more than "substantial part", no doubt, but there was no "reproduction" i n any  7  legal sense, any more than there was "reproduction" when the appellants i n this case contributed blank canvas to the "combination" o f ink layer and canvas. The sculptor rightly invoked his moral rights against the Eaton Centre, not economic . rights. 3  It should be noted that Theberge was a split decision, with three justices o f the civiliste tradition dissenting i n 2002. Apparently these three justices were not persuaded b y Justice Binnie's distinction between moral rights requiring proof o f damage to the artist's reputation and legal copyright associated with the manufacture o f infringing new copies o f the artist's protected works. The civiliste tradition sees copyright ant moral rights as indistinguishable, hence the moniker o f "artists' rights countries." However, another seminal copyright case that followed Theberge at the Supreme Court o f Canada i n 2004.  1.2.3  CCH v. Law Society of Upper Canada This was a case discussing whether or not the provision o f an unsupervised  photocopier i n the library amounted to an authorization o f copyright infringment. The Supreme Court o f Canada again found against the copyright holder. However, as this case did not involve moral rights the decision was unanimous. M c L a c h l i n C J held that:  6 W i t h respect to the main appeal, I conclude that the L a w Society did not infringe copyright by providing single copies o f the respondent publishers' works to its members through the custom photocopy service. Although the works i n question were "original" and thus covered by copyright, the L a w Society's dealings with the works were for the purpose o f research and were fair dealings within s. 29 o f the Copyright Act. I also find that the L a w Society did not authorize infringement by maintaining self-service photocopiers i n the Great Library for use by its patrons. I would therefore allow the appeal. 7 O n the cross-appeal, I conclude that there was no secondary infringement by the L a w Society; the fax transmissions were not communications to the public and the L a w Society did not sell copies o f the publishers' works. In light o f m y finding on appeal that the 3  Binnie J Theberge at paras 59-61.  8  L a w Society's dealings with the publishers' works were fair, it is not necessary to decide whether the Great Library qualifies for the library exemption. This said, I would conclude that the Great Library does indeed qualify for this exemption. Finally, i n light o f m y conclusion that there has been no copyright infringement, it is not necessary to issue an injunction i n this case. I would dismiss the cross-appeal. 4  In this case the divisions o f opinion at the Supreme Court seem to have been reconciled concerning the goals and aims o f copyright law. Importantly for the purposes o f this thesis, the Chief Justice went on to discuss the goal and aim o f copyright law b y citing Binnie J. from Theberge with approval:  9 In Canada, copyright is a creature o f statute and the rights and remedies provided by the Copyright Act are exhaustive: see Theberge v. Galerie d'Art du Petit Champlain inc., [2002] 2 S.C.R. 336, 2002 S C C 34, at para. 5; Bishop v. Stevens, \ 19901 2 S.C.R. 467, at p. 477; Compo Co. v. Blue Crest Music Inc., [1980] 1 S.C.R. 357, at p. 373. In interpreting the scope o f the Copyright Act's rights and remedies, courts should apply the modern approach to statutory interpretation whereby "the words o f an A c t are to be read i n their entire context and i n their grammatical and ordinary sense harmoniously with the scheme o f the Act, the object o f the Act, and the intention o f Parliament": Bell Express Vu Limited Partnership v. Rex, [2002] 2 S.C.R. 559, 2002 S C C 42, at para. 26, citing E . A . Driedger, Construction of Statutes (2nd ed. 1983), at p. 87. 10 Binnie J. recently explained i n Theberge, supra, at paras. 30-31, that the Copyright Act has dual objectives: The Copyright Act is usually presented as a balance between promoting the public interest i n the encouragement and dissemination o f works o f the arts and intellect and obtaining a just reward for the creator.... The proper balance among these and other public policy objectives lies not only i n recognizing the creator's rights but in giving due weight to their limited nature. In interpreting the Copyright Act, courts should strive to maintain an appropriate balance between these two goals. 5  4  5  McLachlin C.J. CCH at para 8. McLachlin C.J. CCH al paras 9 and 10.  Theberge and CCH are watershed cases i n recent Canadian copyright law advancing the notion that there are competing creator and user rights to be considered i n any copyright infringement action and that a balance o f those rights is to be attained. One example o f how such a balance might be tipped too far i n favour o f the creator is the widening o f what qualifies for protection under copyright law.  1.2.4  Erosion of the Idea/Expression Dichotomy In U . S . copyright law "(b) In no case does copyright protection for an original  work o f authorship extend to any idea, procedure, process, system, method of operation, concept, principle,  or discovery regardless o f the form in which it is described, explained,  illustrated, or embodied in such a work." Probably the seminal case on the difference 6  between protectable expression and unprotectable ideas was Baker v. Selden, which concerned a book on book-keeping written b y Charles Selden. The Court found that "blank account books are not the subject o f copyright; and that the mere copyright o f Selden's book did not confer upon him the exclusive right to make and use accountbooks, ruled and arranged as designated by h i m and described and illustrated i n said book."  7  In CCH Chief Justice M c L a c h l i n cited well established principles concerning the idea/expression dichotomy i n Canadian copyright law: Copyright law protects the expression o f ideas in these works; it does not protect ideas i n and o f themselves. Thorson P. explained it thus in Moreau v. St. Vincent, [1950] E x . C R . 198, at p. 203: It is, I think, an elementary principle o f copyright law that an author has no copyright i n ideas but only in his expression o f 6 7  17U.S.C. §102(b). Bradley J in Baker v. Selden U.S. Supreme CourtlOl U.S. 99 (1879). {as cited in Merges ibid., p. 356.  10  them. The law o f copyright does not give h i m any monopoly i n the use o f the ideas with which he deals or any property i n them, even i f they are original. H i s copyright is confined to the literary work i n which he has expressed them. The ideas.are public property, the literary work is his own. It flows from the fact that copyright only protects the expression of ideas that a work must also be in a fixed material form to attract copyright protection: see s. 2 definitions o f "dramatic work" and "computer program" and, more generally, Goldner v. Canadian Broadcasting Corp. (1972), 7 C.P.R. (2d) 158 (F.C.T.D.), at p. 162; Grignon v. Roussel (1991), 38 C.P.R. (3d) 4 (F.C.T.D.), at p. 7. 8  Copyright law since 1989 (when the U.S. became a Berne Convention signatory and the Universal Copyright Convention [hereinafter referred to as U. C. C] requirements were largely abandoned) has fewer required formalities for the recognition o f copyright. Broad definitions o f "derivative work", and the question o f copyright established by either "sweat o f the brow" or low standards o f what constitutes an "original" work, have enabled some copyright holders to bring actions for infringement that might best be characterized as an erosion o f the idea/expression dichotomy o f copyright law. In the CC/Ycase M c L a c h l i n C J discussed the controversy between advocates o f "sweat o f the brow" (evidence o f labour) and "creativity" requirements o f an "original work" as follows: 15 There are competing views on the meaning o f "original" in copyright law. Some courts have found that a work that originates from an author and is more than a mere copy o f a work is sufficient to ground copyright. See, for example, University of London Press,  Ltd. v. University Tutorial Press, Ltd., [1916] 2 Ch. 601; U & R Tax Services Ltd. v.H&R Block Canada Inc. (1995), 62 C.P.R. (3d) 257 (F.C.T.D.). This approach is consistent with the "sweat o f the brow" or "industriousness" standard o f originality, which is premised on a natural rights or Lockean theory o f "just desserts", namely that an author deserves to have his or her efforts i n producing a work  8  McLachlin C.J. CCH at paras 6 and 7.  11  rewarded. Other courts have required that a work must be creative to be "original" and thus protected b y copyright. See, for example, Feist  Publications Inc. v. Rural Telephone Service Co., 499 U.S. 340 (1991); Tele-Direct (Publications) Inc. v. American Business Information, Inc., [1998] 2 F . C . 22 ( C . A . ) . This approach is also consistent with a natural rights theory o f property law; however it is less absolute in that only those works that are the product o f creativity w i l l be rewarded with copyright protection. It has been suggested that the "creativity" approach to originality helps ensure that copyright protection only extends to the expression o f ideas as  opposed to the underlying ideas or facts. See Feist, supra, at p. 353. 16 I conclude that the correct position falls between these extremes. For a work to be "original" within the meaning of the Copyright Act, it must be more than a mere copy o f another work. A t the same time, it need not be creative, i n the sense of being novel or unique. What is required to attract copyright protection i n the expression o f an idea is an exercise o f skill and judgment. B y skill, I mean the use o f one's knowledge, developed aptitude or practised ability i n producing the work. B y judgment, I mean the use o f one's capacity for discernment or ability to form an opinion or evaluation by comparing different possible options i n producing the work. This exercise o f skill and judgment w i l l necessarily involve intellectual effort. The exercise o f skill and judgment required to produce the work must not be so trivial that it could be characterized as a purely mechanical exercise. For example, any skill and judgment that might be involved i n simply changing the font o f a work to produce "another" work would be too trivial to merit copyright protection as an "original" work. 9  This attempt to locate the correct position between the two extremes represents the striving for a balance between creator and user rights i n CCH. It might be suggested that this is a reaction against changes i n the copyright law regime that have continued to tip the balance toward creator rights since 1988.  1.2.5  Broadening of Definition of Expression to include Neighbouring Rights In 1988 the  Canadian Copyright Act was amended to include neighbouring rights  within it. Prior to 1997 much litigation disputed whether or not expression for the purposes of the  9  Canadian Copyright Act included the work of performers, record  McLachlin C.J. CCH at paras 15 and 16.  12  producers, and broadcasters. W i t h the passage o f S.C. 1997, C 2 4 , s. 2.1 (formerly B i l l C-3 2), Part II—Copyright in Performer's Communication  Performances,  Sound Recordings  and  Signals was added to the Canadian Copyright Act granting a term o f  rights lasting fifty years after the end o f the calendar year o f its first fixation, performance or broadcast (Copyright Act s. 23(1)). M u c h o f the agitation for additions to the Canadian Copyright Act came from the performers, record producers and broadcasters lobbying through the Canadian Conference o f the Arts. A s Professor Vaver pointed out: Theoretically, none o f these persons is an author, none does anything "original," none produces a "work". Performers interpret or execute works, record producers record them, broadcasters transmit them, so none is entitled to a traditional copyright. 10  Here we have evidence o f the stretching o f the Canadian Copyright Act i n 1997 to include protection for a number o f activities never anticipated i n the original Act. I would argue that this stretching o f the original Act upset the balance between creator and user rights.  1.2.6  Retrospective Extension of Term of Copyright Protection Another more recent example o f tipping the balance in favour o f the creators at  the expense o f the users is lengthening the term o f copyright protection. This has not happened since 1924 i n Canada, but in the U . S . and in Great Britain the term o f copyright protection has been lengthened significantly. In the recent case o f Eldred v.  Ashcroft"  the constitutionality o f the extension o f the period o f copyright duration to life o f the author plus 70 years enabled by the Sonny Bono Amendment was recently upheld i n the U . S . This new duration o f copyright brought the U . S . copyright regime into line with  David Vaver, Intellectual Property Law Copyright Patents Trade-Marks, (Irwin Law: Toronto, 1997), p. 23. Eldred v. Ashcroft, 537 U.S. 186 (2003). 10  11  13  European U n i o n standards. The extension o f the period o f protection, while perhaps not advisable, is certainly precedented i n the history o f copyright law. However, given the U.S. constitutional requirement that copyright law "promote progress in the useful arts and sciences", the question o f whether or not retroactive extension o f the period o f duration for works done by authors who are deceased was considered unsettled i n the U.S. A real argument can be made that prospectively increasing the incentive to create (i.e. the duration o f the period within which one enjoys the fruits o f exclusive economic exploitation o f the work) can be interpreted as "sweetening the pot" for living and future authors. However, to retrospectively increase the incentive to create w i l l have no effect upon the creation o f more works by the deceased authors. In fact, the recapture o f works from the Public Domain by this new regime w i l l actually come at a societal cost i n terms of restricted access to existing works. Although the U . S . Supreme Court found in favour of the constitutionality o f the amendment, the two dissenting judges express some o f the misgivings o f copyright scholars concerning retrospective term extensions. 1.3  Widened Definition of "Contributing to Infringement" Another method o f tipping the balance o f copyright law towards the interests o f  creators at the expense o f users has been to widen the definition o f an infringer o f copyright. A difficulty for most copyright holders is that they are often forced to pursue their potential customers for individual acts o f copyright infringement. Since the damages for these individual acts o f copyright infringement may not amount to what it costs to litigate, authors and publishers have found their rights frustrated. In the U . S . this has led to the development o f a "contributing to infringement" doctrine that includes those who would provide the means for others to infringe. The aggregate damages for  14  which these contributors could be held liable are sufficiently large to warrant long expensive litigation. It is analogous to being an accessory to a crime or abetting a criminal. It is on the basis o f this "contributing to infringement" that recent successful actions have been brought forward i n the U . S . against Napster and Grokster and other file sharing companies. However, there are limits to this widened definition limiting liability for manufacturers who provide the technology that enables infringement. Perhaps the most important U . S . case is the Sony v. Betamax case o f 1984  12  where the legitimate time  shifting uses o f the V C R enabled Sony to avoid liability for "contributing to infringement". This case called for a balancing o f rights between the right o f access to technology for legitimate uses against the right o f the copyright holder to protection against the misuse o f that technology. It is important to note that despite the recent finding against Grokster, the Sony case still remains good law i n the U . S . In both Napster  13  and the Grokster,  14  evidence o f imprudent advice to customers to download  resulted i n "unclean hands" for the defendants.  1.3.1  "Authorizing Infringement" in Canadian Cases Compared In Canada, recent copyright infringement cases concerning the downloading o f  music without the payment o f royalties such as SOCANv [2005]  12 13  16  CAIP [2004] , and BMG 15  have reached both the Federal Court o f Appeal and the Supreme Court. These  Sony Corp. v. Universal City Studios, Inc., (1984) 464 U.S. 417 [hereinafter Sony]. Napster Inc. v. A & MRecords Inc. 239 F.3d 1004, 1029 (9th Cir. 2001).  Metro-Goldwyn-Mayer Studios Inc. v. Grokster. Ltd, Case No. 04-480. (U.S. Supreme Court June 27, 2005) Metro-Goldwyn-Mayer Studios Inc. v. Grokster Ltd. 545 U.S. Supreme Court (2005). [hereinafter 14  Grokster]. 15  Society of Composers, Authors and Music Publishers of Canada v. Canadian Assn. ofInternet Providers,  [2004] 2 S.C.R. 427, 2004 SCC 45 (CanLII); (2004), 240 D.L.R. (4th) 193; (2004), 32 C.P.R. (4th) 1  [hereinafterSOCANv. CAIP]. 16  BMG Canada Inc. v. Doe 2005 FCA 193 [hereinafter BMG].  15  cases have followed on the heels o f important downloading cases in the U . S . such as Napster and Grokster where rights holders have been successful i n obtaining a remedy against third parties for providing the technical means b y which infringement can take place by steadily eroding the exemption from "contributing to infringement" liability that had been established i n the Sony case o f 1984. In Canada there is no "contributing to infringement" provisions within the Copyright Act; however, it is illegal to "authorize" infringement. The distinction between "contributing to" and "authorization o f has led to a lesser erosion o f the Sony type exemption for third parties for ISPs i n Canada than i n the U . S . Canadian jurisprudence on downloading has endeavoured to maintain the proper balance struck by Parliament between creator and user rights.  1.3.2  SOCANvCAIP A l s o in 2004 in SOCANv  CAIP, Binnie J. indicated an appreciation i n the Court  for the difficulties faced by copyright holders i n the music business. He noted:  Achieving a Balance Fair to Copyright  Owners  129 There is no doubt that the exponential growth o f the Internet has created serious obstacles to the collection o f copyright royalties. A s Pietsch, supra, writes, at p. 278: The Internet makes it possible for large numbers o f people to rapidly copy protected materials worldwide. W i t h software like Gnutella, they can do so without any centralized clearinghouse that intellectual property owners could target i n an effort to enforce copyright protection, such as Napster. Such developments have led some to hypothesize that copyright law is dead because technology is so far ahead o f the law that enforcement is impossible, and should not even be attempted. See, e.g., A & MRecords, Inc. v. Napster, Inc., 114 F.Supp.2d 896 ( N . D . Cai. 2000), aff d i n part, 239 F.3d 1004 (9th Cir. 2001). 130 It has been estimated that i n 2002 sales o f recorded music fell by almost 10 percent due to Internet-based file sharing (see Anonymous, "The music industry:  16  In a spin", The Economist (March 2003), at p. 58), but this "estimate" is a matter of ongoing controversy. Some say Napster was a boon to the music recording industry. 17  Considering whether ISPs should be liable for authorizing infringement, he held: 120 Authorizing a communication by telecommunication is a discrete infringement o f s. 3(1); see Compo, supra, at pp. 373 and 376. 121 The respondent argues that even i f the appellants did not themselves infringe the copyright, they were guilty o f "authorizing" content providers to do so because Internet intermediaries know that material (including copyright material) placed on their facilities by content providers w i l l be accessed by end users. Indeed as Evans J . A . pointed out, at para. 120: "Knowledge o f the content available on the Internet, including Tree' music, and o f end users' interest in accessing it, are powerful inducements for end users to sign up with access providers, and content providers with operators o f host servers." 122 O f course there is a good deal o f material on the Internet that is not subject to copyright, just as there was a good deal o f law-related material in the Great Library at Osgoode H a l l that was not copyrighted in the recent CCH appeal. In that case, as here, the copyright owners asserted that making available a photocopier and photocopying service by the L a w Society o f Upper Canada implicitly "authorized" copyright infringement. This Court, however, held that authorizing infringement under the Copyright Act is not so easily demonstrated, at para. 38, per M c L a c h l i n C.J.: . . . a person does not authorize infringement by authorizing the mere use o f equipment that could be used to infringe copyright. Courts should presume that a person who authorizes an activity does so only so far as it is i n accordance with the law. . . . This presumption may be rebutted i f it is shown that a certain relationship or degree o f control existed between the alleged authorizer and the persons who committed the copyright infringement. . . . [Emphasis added.] See also Vigneux v. Canadian Performing Right Society, Ltd., [1945] A . C . 108 (P.C.); Muzak Corp. v. Composers, Authors and Publishers Association of Canada, Ltd., [1953] 2 S.C.R. 182. S O C A N contends that the host server i n essence acts as a commercial partner with the content provider when material is made available on the Internet, but there was no such finding o f fact by the Board, and I do not think the rights and obligations o f partnership can be so casually imposed. 123 The operation o f the Internet is obviously a good deal more complicated than the operation o f a photocopier, but it is true here, as it was i n the CCH case, that when massive amounts o f non-copyrighted material are accessible to the end user, it is not possible to impute to the Internet Service Provider, based solely on  17  Binnie J, SOCAN v. CAIP, paras 129-130.  17  the provision o f Internet facilities, an authority to download copyrighted material as opposed to non-copyrighted material. 127 The knowledge that someone might be using neutral technology to violate copyright (as with the photocopier i n the CCH case) is not necessarily sufficient to constitute authorization, which requires a demonstration that the defendant did "(g)ive approval to; sanction, permit; favour, encourage" (CCH, at para. 38) the infringing conduct. I agree that notice o f infringing content, and a failure to respond by "taking it down" may i n some circumstances lead to a finding o f "authorization". However, that is not the issue before us. M u c h would depend on the specific circumstances. A n overly quick inference o f "authorization" would put the Internet Service Provider i n the difficult position o f judging whether the copyright objection is well founded, and to choose between contesting a copyright action or potentially breaching its contract with the content provider. A more effective remedy to address this potential issue would be the enactment by Parliament o f a statutory "notice and take down" procedure as has been done in the European Community and the United States. 128 In sum, I agree with the Court o f Appeal that "authorization" could be inferred i n a proper case but all would depend on the facts. 18  Binnie J. indicates that the Canadian definition o f "authorization o f infringement" would still be conditioned by the defence o f legitimate use for the technology found in the American Sony case. It would also indicate that to be vicariously liable for infringement o f copyright b y "authorization o f infringement", the authorizer must take a more active role i n encouraging or urging infringement than the U . S . contributor to infringement.. 1.4  N e w Developments i n Patent L a w Patents are another o f the traditional forms o f I P R protection. Perhaps nowhere  else is the social contract and incentive justification for the limited term statutory monopoly so clearly demonstrated. The U . S . Patent Office is the busiest i n the world granting more and more patents to inventors as the value o f past patents has become apparent. Patent law grants the shortest period o f exclusive legal ownership rights (20  Binnie J, SOC AN v. CAIP [2004] SCC 45, paras 120-128.  18  years) and demands execution Of the most specific formalities. A patent application must fully disclose a new and non-obvious useful invention for the first t i m e  19  and make  claims for all o f its functions before getting approval from the Patent Office for inclusion in the Patent Register. If we look to patent disputes in court we find questions about patentability, challenges to the claims made in the applications, allegations o f flaws i n the disclosure or process o f patents granted and motions for the striking o f the patent, allegations o f patent misuse (i.e. withholding o f patented medicines), and new use or functions for compounds patented for other purposes. A valid patent provides the owner with strict liability protection against infringers, and in the case o f pharmaceuticals the rewards for such patents can be considerable. Litigation costs tend to pale i n comparison to the profits that can be won or lost by the upholding or striking o f an individual patent. A s a consequence patent litigation can be extensive. Patent law has not remained static i n the new order, as recently as 1989 Canada moved from a "first to invent" to a "first to register" system. Where older patent disputes depended upon proving when an invention was first made and by whom, now the registry establishes who shall own the patent. Thus, registration formalities are o f critical importance in patents (unlike copyright law). 1.4.1  Patent Formalities One aspect o f patent law is the strict formalities that inventors must satisfy in  order to obtain their patent protection. For instance i n Dutch Industries v Commissioner of Patents , a patentee who was a "small entity" assigned the patent to an assignee who 20  was not a "small entity" who continued to pay the annual fees at the wrong level. When  Or within a specified period of time from the first application in another jurisdiction partaking in the International Patent Treaty for the receipt of a patent in more than one jurisdiction at the same time. Dutch Industries Ltd. v. Canada (Commissioner of Patents), (2001) 14 CPR 4 499, 2001 FCT 879, [2002] 1 C325 (FCTD) [Hereinafter cited as Dutch Industries v. Commissioner ofPatents]. 19  20  th  19  the error was brought to the attention o f both the patentee and the Commissioner o f Patents, the Patent Office allowed a correction o f the fees paid. This was challenged i n court by the alleged patent infringer who argued that the patent was no longer valid because o f the payment o f the small entity fee and that the Commissioner did not have the authority to accept corrections after a certain length o f time. The Federal Court o f Appeal i n Barton No Till  21  found that there was no authority for the Commissioner o f  Patents to correct the Registry at such a late date and struck out one o f the patents owned by the large entity from the register. However, the Court also found that the patent granted to the small entity and assigned to the large entity remained valid, as the status o f the patentee as a large or small entity was determined at the time o f the granting o f the original patent. This finding saved the striking o f one o f the patents from the register through an unnoticed error i n the calculation o f the nominal annual fee, but points out that the presumption that once a patent is granted and entered into the register it is presumed valid may not be true in every case. The Federal Court o f Appeal decision was 22  appealed to the Supreme Court but the appeal was dismissed with costs . 1.4.2 Broadening of Definition of "Invention": Business Methods, Living Organisms (Higher and Lower Life Forms), and the Doctrine of Equivalents Once again patent law can be used to tip the balance in favour o f the inventor over the user o f an invention by widening the definition o f what is patentable. In Canada one o f the most important recent S.C.C. cases concerning patents had to do with the  Barton No-Till Disk Inc. v. Dutch Industries Ltd (2003 FCA 121) [hereinafter cited as Barton No Till]. Dutch Industries Ltd. v. Barton No-Till Disk Inc., Flexi-Coil Ltd. and The Commissioner of Patents (F.C.) (29738) (The motion to adduce fresh evidence is granted and the application for leave to appeal is dismissed with costs to the respondents Barton No-Till Disk Inc. and Flexi-Coil Ltd.) OTTAWA, 11/12/03. 21  22  20  patentability o f higher life forms. The so-called Harvard Mouse case  resulted i n a split  court where the majority found that the higher life form o f an oncology mouse was not an invention under the Canadian Patent Act and upheld the Patent Office's refusal to grant a patent. This decision was taken despite the nearly ubiquitous international acceptance o f the patentability o f the oncomouse. The Harvard Mouse case is at the end o f a line o f jurisprudence beginning i n the U . S , with Diamond v. Chakrabarty where the question 24  was whether or not a human-made genetically engineered bacterium capable o f breaking down crude o i l was a patentable invention under the U.S. Patent Act. The U . S . Supreme Court held that, " A live, human-made micro-organism is patentable subject matter under 101. Respondent's micro-organism constitutes a "manufacture" or "composition o f matter" within that statute." Since 1980 the question o f how to draw the line between "lower life forms" such as bacteria and "higher life forms" such as mammals has confronted courts around the world.  1.4.3  Harvard Mouse Case in Canada (a Different Approach) Most countries have allowed that the genetically engineered oncomouse is a  patentable composition o f matter. In Canada following Chakrabarty the Canadian Patent Office in Re Abitibi Co. listed human made items it deemed patentable. The Patent Office ruled that  ... all micro-organisms, yeasts, moulds, fungi, bacteria, actinomycetes, unicellular algae, cell lines, viruses or protozoa; i n fact.. .all new life forms which are produced en masse as chemical compounds are prepared, and are formed i n such  Harvard College v. Canada (Commissioner of Patents) [2002] 4 S.C.R. 45; 2002 SCC 76 [hereinafter cited as Harvard Mouse]. 2 3  24  Diamond v. Chakrabarty 447 U.S. 303 (1980) (U.S. Supreme Court)[hereinafter Chakrabarty}.  21  large numbers that any measurable quantity w i l l possess uniform properties and characteristics. Having ruled that life forms could be patented, it was therefore a surprise when i n the Harvard Mouse case it was ruled i n a split decision 5-4 that higher life forms could not be. L'Heureux-Dube, Gonthier, Iacobucci, Bastarache and L e B e l JJ formed the majority. Bastarache J writing for the majority held that, " A higher life form is not patentable because it is not a "manufacture" or "composition o f matter" within the Oft meaning o f "invention" i n s. 2 o f the Canadian Patent Act.'"  M c L a c h l i n C.J. and Major,  Binnie and Arbour JJ. dissented and Binnie J wrote the eloquent dissent from the majority decision: 1 B I N N I E J. (dissenting) — The biotechnology revolution i n the 50 years since discovery o f the structure o f D N A has been fuelled b y extraordinary human ingenuity and financed in significant part by private investment. L i k e most revolutions, it has wide ramifications, and presents potential and serious dangers as well as past and future benefits. In this appeal, however, we are only dealing with a small corner o f the biotechnology controversy. W e are asked to determine whether the oncomouse, a genetically modified rodent with heightened genetic susceptibility to cancer, is an invention. The legal issue is a narrow one and does not provide a proper platform on which to engage i n a debate over animal rights, or religion, or the arrogance o f the human race. 2 The oncomouse has been held patentable, and is now patented in jurisdictions that cover Austria, Belgium, Denmark, Finland, France, Germany, Greece, Ireland, Italy, Luxembourg, The Netherlands, Portugal, Spain, Sweden, the United K i n g d o m and the United States. A similar patent has been issued i n Japan. N e w Zealand has issued a patent for a transgenic mouse that has been genetically modified to be susceptible to H I V infection. Indeed, we were not told o f any country with a patent system comparable to Canada's (or otherwise) i n which a patent on the oncomouse had been applied for and been refused. 3 If Canada is to stand apart from jurisdictions with which we usually invite comparison on an issue so fundamental to intellectual property law as what constitutes an "invention", the respondent, successful everywhere but in Canada,  25  ReAbitibi Co. (1982), 62 C.P.R. (2d) 81at 89 (patent Appeal Bd. & Commissioner of Patents) [Abitibi];  Re Application for Patent of Connaught Laboratories (1982), 82 C.P.R. (2d) 32 (Patent Appeal Bd. & Commissioner of Patents). As cited in David Vaver, Intellectual Property, n. 49 p. 124. Bastarache J Harvard Mouse paras 119-120.  2 6  22  might expect to see something unique i n our legislation. However, one looks i n vain for a difference i n definition to fuel the Commissioner's contention that, as a matter of statutory interpretation, the oncomouse is not an invention. The truth is that our legislation is not unique. The Canadian definition o f what constitutes an invention, initially adopted in pre-Confederation statutes, was essentially taken from the United States Patent Act o f 1793, a definition generally attributed to Thomas Jefferson. The United States patent on the oncomouse was issued 14 years ago. M y colleague, Bastarache J., acknowledges that the fertilized, genetically altered oncomouse egg is an invention under our Patent Act, R . S . C . 1985, c. P-4 (para. 162). Thereafter, we part company, because m y colleague goes on to conclude that the resulting oncomouse, that grows from the patented egg, is not itself patentable because it is not an invention. Subject matter patentability, on this view, is lost between two successive stages o f a transgenic mouse's genetically pre-programmed growth. In m y opinion, with respect, such a "disappearing subject-matter" exception finds no support in the statutory language. 4 A patent, o f course, does not give its holder a licence to practise the invention free o f regulatory control (any more than an unpatented invention enjoys such immunity). O n the contrary, the grant o f a patent simply reflects the public interest i n promoting the disclosure o f advancements i n learning by rewarding human ingenuity. Innovation is said to be the lifeblood o f a modern economy. W e neglect rewarding it at our peril. Having disclosed to the public the secrets o f how to make or use the invention, the inventor can prevent unauthorized people for a limited time from taking a "free ride" in exploiting the information thus disclosed. A t the same time, persons skilled i n the art o f the patent are helped to further advance the frontiers o f knowledge by standing on the shoulders o f those who have gone before. 27  Justice Binnie demonstrated a concern with international standards o f patentability i n his dissent: 12 Intellectual property has global mobility, and states have worked diligently to harmonize their patent, copyright and trademark regimes. In this context, the Commissioner's approach to this case sounds a highly discordant note. Intellectual property was the subject matter o f such influential agreements as the International Convention for the Protection of Industrial Property {Paris Convention) as early as 1883. International rules governing patents were strengthened by the European Patent Convention i n 1973, and, more recently, the W o r l d Trade Organization Agreement on Trade-Related Aspects of Intellectual Property Rights (TRIPS) i n 1994 (1869 U . N . T . S . 299). Copyright was the subject o f the Berne Convention for the Protection of Literary and Artistic Works i n 1886, revised by the Berlin Convention o f 1908 and the Rome Convention o f 1928. The Universal Copyright Convention was concluded i n 1952. Legislation varies o f course, from state to  Harvard Mouse, paras 1-4.  23  state, but broadly speaking Canada has sought to harmonize its concepts o f intellectual property with other like-minded jurisdictions. 28  Confronting other concerns o f the majority Binnie J seemingly chafes against the strict definition o f "invention" in the Canadian Patent Act when he notes: 95 Such an argument relates to remedies rather than patentability. A view that the Patent Act rewards a patent owner too richly is not a sound basis on which to deny a patent. The inventor o f the frisbee (patented i n 1967) would also, no doubt, be thought b y some critics to have been excessively rewarded. 96. The scientific accomplishment manifested i n the oncomouse is profound and far-reaching, and a numerical count o f the genes modified and the genes not modified misses the point. Every cell i n the animal's body has been altered i n a way that is profoundly important to scientific research. If researchers were to discover that cancers were entirely attributable to one gene and then modified individuals so that they were cancer-free, no one would deny that such a modification would be o f enormous importance regardless o f the fact that only one gene was changed. 97 Researchers who wish to use a w i l d mouse can catch one i n the parking lot. H a r v a r d would have no complaint. It is only i f they wish to take advantage o f the advances i n learning disclosed i n the oncomouse patent that they would require authorization from the inventor who made the disclosure they now seek to exploit. 98 If the patent were refused on the oncomouse itself, it would be easy for "free riders" to circumvent the protection sought to be given to the inventor b y the Patent Act simply by acquiring an oncomouse and breeding it to as many w i l d mice as desired and selling the offspring (probably half o f which w i l l be oncomice) to the public. The weakness o f this protection would undermine the incentives intended by the Patent Act. I agree with W i l l i a m Hayhurst when he writes: Some patents for processes may be o f little practical value. T o discover that a competitor is carrying out the process may be difficult. If a process produces a living organism that reproduces itself, the process may have to be carried out only once: competitors who are able to get their hands on the organism need not repeat the process o f producing it. What is needed is a patent for the organism (W. L . Hayhurst, "Exclusive Rights i n Relation to L i v i n g Things" (1991) 6 I.P.J. 171, at p. 177) 29  It is Justice Binnie's concern about "free riding" that marks the dissent i n this important case. In this instance the minority would see the denial o f patentability for the Harvard Mouse, para 12. Harvard Mouse, paras 95-98.  24  oncomouse as tipping the balance too far away from creator rights. However, the majority felt that the prohibition against the patentability o f higher life forms must stand. 1.4.4  E r o s i o n of C o m p u l s o r y L i c e n s i n g Provisions i n C a n a d a Part o f the reason w h y the Supreme Court may have this disagreement over the  appropriate balance between creator and user rights i n patent law may be because o f the long history o f litigation between research-based pharmaceutical companies and the generic drug companies. Canada has a long history o f compulsory licensing provisions beginning i n 1923 but not really being used until the period following 1969 when a s. 41(4) amendment to the Canadian Patent Act allowed for the importation o f the active ingredient o f generic drugs. This led to the establishment o f a large generic pharmaceutical drug industry in Canada and considerable cost savings for such pharmaceuticals. W e are told that within one year by 1970 some 52 generic drug companies were established i n Canada. This would lead to the establishment i n Canada 30  o f the world's largest generic drug companies such as Apotex. W h i l e these generic drug companies ensured rather cheaper drugs for Canadians,  for years they were a sore spot  with the research-based pharmaceutical companies. Following negotiations and Harry Eastman's Commission o f Enquiry in 1985, a 1987 amendment to the Canadian Patent Act was passed that lengthened the period o f exclusive legal right to exploit new patents from four years to ten years, i n return for an undertaking on the part o f the research-based  Aslam H. Anis, Pharmaceutical Policies in Canada: Another example offederal-provincial discord CMAJ, 162 (4) February 22, 2000 . 3 0  Mr. John Solomon in Hansard 1994 Thursday. April 28. 1994 - PRIVATE MEMBERS' BUSINESS (059) says,"The Eastman committee which studied drug patents and costs in 1983 claimed that across Canada at that time the public saved $211 million per year in drug costs from generics. In 1986 the Canadian Drug Manufacturers Association, which is the organization of companies that manufacture generic drugs in Canada, estimated that compulsory licensing saved us about $500 million a year." 31  25  (innovation based) pharmaceutical companies to invest between 5% and 10% o f Canadian sales into Canadian research and production o f pharmaceuticals. B i l l C-22 o f 1987 also established the Patented Medicines Price Review Board to ensure that only moderate increases in the price o f pharmaceutical drugs would be experienced i n Canada.  32  However, Canada's weak protection o f the intellectual property rights o f the research-based pharmaceutical companies continued to be a point o f contention internationally and between Canada and the U.S., despite the lengthened period o f exclusivity and the compliance o f the research-based pharmaceuticals with their pledged investment into Canadian pharmaceutical research and development. GATT concerns, the Canada-U.S. Free-trade agreement o f 1989 and NAFTA negotiations eventually led to a compromise between the Mulroney Government and the Bush government. Canada agreed to the strengthening o f patent protection for the research-based pharmaceutical patent holders b y ending compulsory licensing with B i l l C-91  3 3  and extending the period  of exclusive protection to the full twenty year duration o f the patent. This amendment led to immediate cost increases for Canadian health care and was controversial i n the provinces that bear the costs o f such increases especially Saskatchewan, which spent an estimated $10 million more i n the first year following passage o f C - 9 1 .  34  A s drugs were  delisted from medical services and as health care costs have spiraled, there have been calls for the repeal o f the amendment since before M r . Solomon's Private Member's Business remarks o f 1994. More recently, as Canada considered allowing the exporting  Much of this history is related by Dennis J. Mills, Parliamentary Secretary to the Minister of Industry in response to Mr. Solomon, as recorded in Hansard April 28, 1994 Thursday, April 28, 1994 - PRIVATE MEMBERS' BUSINESS (059) . Patent Amendment Act, C-2, S.C. 1993. 32  33  26  of A I D S / H I V generic drugs to developing nations, the Amendment has come under fire again but the Federal Government has been loathe to try to "unscramble the omelet" (to paraphrase M r . D o n Boudria at the time) created by the passage o f the amendment. It is thought that Canada would suffer significant consequences i n the international community were it to weaken its protection o f patent holder rights. However, more recently, the humanitarian justification o f the export o f generic pharmaceuticals to the developing world has encouraged the generic pharmaceuticals to urge Canada to reevaluate the benefits o f compulsory licensing and the promotion o f the generic drug company industry. The end o f compulsory licensing has not come without cost i n Canada, despite the increased investment o f innovation-based companies and the benefits o f free trade with the U . S . and M e x i c o . A n examination o f the Federal Court Trial docket reveals a number of lengthy actions between the generics and the research-based pharmaceuticals including multiple motions (sometimes scores o f such motions) and appeals o f rulings on motions in these actions. Despite the costs i n court time, expensive litigation representation and potential adverse rulings, the economic stakes are so high that the costs o f litigation are just a small part o f the cost o f doing business i n the pharmaceutical drug business. Similarly the cost pressures on the public health care system in Canada have been exacerbated. This is far from a dead issue and underscores the tension between rights holders and the public i n patent law. Strengthened patent law at the expense o f the public good is a counter-balance to the trend toward stronger and more pervasive IPR protection. Perhaps because so much intellectual property litigation concerns these issues  See especially the comments of Mr. John Solomon in Hansard 1994 Thursday, April 28, 1994 PRIVATE MEMBERS' BUSINESS (059). 3 4  27  the judiciary i n Canada is more concerned with finding the appropriate balance between creator and user rights. 1.5  N e w Developments i n T r a d e - m a r k L a w L i k e patent law, trade-mark law is still very closely tied to the execution o f  formalities by the rights holder to gain protection. It can be argued that this is because trademark protection represents the one form o f intellectual property protection that is not finitely limited i n time. Instead, to encourage manufacturers and providers o f goods and services to use these marks for the benefit o f consumer protection, there are substantial formalities o f registration and "use" o f a mark in channels o f trade. Marks must be defended against "dilution" whereby the mark is "genericized" to the point where it no longer functions as an indicator o f place o f origin or standard o f quality. Licensees must defend their exclusive right to use o f the mark or risk losing the protection o f the mark and trade-mark owners must be able to demonstrate continued control over the mark when licensed elsewhere. Fees must be paid at regular intervals (annually) to demonstrate continued use i n order for the trade-mark owner to avail itself o f protection against unauthorized use o f the mark or infringement. Registered marks must be renewed every fifteen years or risk expungement from the register after the passage o f six months after the fifteenth anniversary o f the last registration. Owners o f marks can be required to prove their "use" within the past three years or face being struck from the register. A s i n patent law proposed trade-marks must go through a registration process where opposition to the registration o f the mark can be initiated. A s a patent can be challenged by the patent officer or in court for obviousness, insufficient disclosure, or lack o f inventiveness, so a trademark can be challenged by the Trade-mark Office before  28  registration, after publication and even after registration for a lack o f distinctiveness, the use o f prohibited marks or priority o f "use" i n a jurisdiction. The process o f "disclaiming" those parts o f the trademark that are not eligible for registration is an important protection against the staking out o f language or expression common and necessary to all. The prohibition against the lack o f distinctiveness or the use o f a living person's name can be appealed provided the applicant can show that distinctiveness has been achieved through use. Trade-mark law remains a hybrid between common law remedies for passing off, defamation and deceit and statutory provisions. C i v i l code countries have long experience with the registration o f proposed marks; common law countries have had experience with the establishment o f trademark rights by use. Trade-mark law has traditionally been concerned with using private actors to ensure the continued legitimate use o f trademarks for consumer protection. However, as trademarks have become established they have become recognized as a valuable asset associated with the businesses that use them. The value attached to the use o f a trademark or trade guise is most often referred to as the "goodwill" built up by the common experience o f consumers with the mark. A s these marks are alienable, the marks with greater goodwill value attached are more valuable and trademark law has become increasingly concerned with allowing the owner o f such marks to defend that value against diminishment through either dilution or tarnishment. Nowhere has this acknowledgment o f the value o f goodwill become clearer than in the use o f the trademark as a domain name in cyberspace. Cybersquatters have rushed to register domain names before the value o f such registrations have become appreciated by traditional firms.  29  Famous cases such as the Panavision  dispute have led to calls to control this usurpation  of the goodwill established for known trademarks and trade guises. This i n turn has led to the call for protection for famous marks i n the form o f legislated remedies. 1.5.1  U . S . Famous M a r k s Legislation (Protection from Cybersquatting) In the U . S . there has been a tradition o f intervention on behalf o f the rights holder  to forestall "free riding" going back to the invention o f a new cause o f action in tort law for an "unfair taking" i n the famous, i f controversial, INS case . Following INS Frank Schecter wrote an influential article on dilution theory i n 1927.  This theory proposes  that the owner o f a trademark suffers injury worthy o f remedy when their mark is weakened by dilution through blurring or tarnishment. Consequently, trademark owners underscored the conflict between Trademark Rights and Freedom o f Speech Rights have agitated to be allowed to prohibit such expressions by the public as would constitute dilution. In some thirty states they were successful, but there were legal scholars such as Robert C . Denicola who pointed out there were consequences o f this expansion o f trademark law to protect the investment in the "goodwill" attached to the marks. However, with the advent o f the Internet and the prevalence o f cybersquatting, American sympathies for the victims o f "unfair taking" or "coattail riders" led to a renewed interest i n the protection o f trademark holder rights over the freedom o f speech rights o f the general public. This emphasis on the statutory trademarks rights holder's interests in the U . S . has been demonstrated most recently i n the passing into law o f the  35  Panavision International, L.P. v. Toeppen, 141 F.3d 1316 (9th Cir. 1998).  International News Service v. Associated Press (1918) 248 U.S. 215; 63 Law. Ed. 211 [hereinafter cited as INS]. The case has been controversial since it was decided over an eloquent dissent by Brandeis J and expressly rejected in other common law jurisdictions. Frank I. Schechter The Rational Basis of Trademark Protection, 1927, 40 Harvard Law Review 813. 36  3 7  30  1996 Federal Anti-Dilution  Act  expansion o f trademark rights.  that has been called b y Kenneth L . Port an "unnatural 40  The Act has been criticized as too vague and overly  broad and has been challenged constitutionally . 41  D a v i d v. Radack discusses how dilution can take place i n two ways, blurring and tarnishment, and describes the Act as follows: The existence of this act has given holders of famous trademarks another weapon in policing noncompetitive uses of their marks; although there were more than 30 states that had statutes concerning the dilution of trademarks previous to 1996, until the new federal act there was no federal statute providing owners of famous trademarks the ability to bring a lawsuit in a federal court under federal law. The act has also been used extensively in internet domain name disputes.... Trademark dilution under the new federal law can occur even when a famous trademark is used by another on noncompeting goods or can occur when there is no likelihood of confusion between the two uses of the mark. For example, if a company that makes motorcycles started using the mark Kodak to identify its motorcycles, consumers would probably not be confused into believing that the Kodak film people are now in the motorcycle business. Thus, trademark dilution under the new law is a powerful weapon where there is noncompeting goods or services or no likelihood of confusion between the uses of the marks. 42  It is this ability to use the Act to block the use o f the mark or descriptor i n new unrelated channels o f trade for non-competing goods or services not covered b y the registered mark, without the need to prove confusion among consumers, that represents a substantial expansion o f the protections afforded b y traditional trade-mark law.  Robert C. Denicola, Trademarks as Speech: Constitutional Implications of the Emerging Rationales for the Protection of Trade Symbols, 1982 Wis. L. Rev. 158, 160 (1982).  15 U.S.C. TITLE 15 > CHAPTER 22 > SUBCHAPTER III > § 1125. False designations of origin, false descriptions, and dilution forbidden, see especially (c). 3 9  Kenneth L. Port, The "Unnatural" Expansion of Trademark Rights: Is a Federal Dilution Statute Necessary?, 18 Seton Hall Legis. J. 433, 448-49 (1994). 41 4 0  Maria J. Kaplan, "Antidilution Statutes and the First Amendment," 21 Southwestern University Law Review 1139 (1992) (arguing that antidilution statutes violate the First Amendment because they prohibit commercial speech that does not mislead or deceive and because there is no substantial government interest to support them; also arguing that antidilution laws are not designed to protect the public, as was trademark law's historical purpose. As cited in ACLU Testimony of Marvin J. Johnson, Legislative Counsel, at a Hearing on the Committee Print to Amend the Federal Trademark Dilution Act Before the Subcommittee on Courts, the Internet, and Intellectual Property of the House Committee on the Judiciary April 21, 2004 n. 2.)  31  1.5.2  Canadian Responses In Canada where INS was rejected, the courts have thus far adopted a more  cautious and tightly defined definition o f trade-mark law still rooted i n notions o f channels o f trade and the need to prove the likelihood o f consumer confusion to obtain remedy. This caution was the result o f the successful constitutional challenge i n MacDonald  v. Vapor  43  to the rather broad prohibition against unfair trade practices  contained i n s. 7(e) o f the Canadian Trade-marks Act. It would be well to remember that the successful challenge was because the provision was deemed too vague and broad to be practicable. The extension o f protection beyond the existing channels o f trade to noncompeting products has been called "brand extension" theory by Daniele TremblayLamer J. recently in Veuve Clicquot Ponsardin v. Les Boutiques Cliquot  Ltee.  44  Resisting the too broad protection against dilution without proof o f consumer confusion in cases involving owners o f famous trade-marks disputing the use o f a similar or identical name i n different channels o f trade, she rejected this extension without proof o f damage i n this case. The case had to do with the use o f the Cliquot name on goods by a Montreal women's clothing manufacturer rather than the famous champagne manufacturer. It was appealed to the Federal Court o f Appeal  4 5  where she was upheld.  This case and another case disputing the use o f the word "Barbie" i n a trade-mark i n Montreal, were further appealed to the Supreme Court o f Canada.  David V. Radack, "Federal Trademark Anti-Dilution Law—A Powerful New Tool for Owners of Famous Trademarks" JOM, 51 (4) (1999), p. 48. MacDonald v. Vapor Canada Ltd. (1976), [1977] 2 S.C.R. 134, 66 D.L.R. (3d) 1, 25 C.P.R. (2d) 1, 7 N.R. 477. Veuve Clicquot Ponsardin v. Les Boutiques Cliquot Ltee. 2003 FCT 103 para 10. Veuve Clicquot Ponsardin v. Les Boutiques Cliquot Ltee. 2004 FCA 164. 4 2  43  44  45  32  O n June 2, 2006 two unanimous decisions written by Binnie J. upholding the lower court rulings i n Veuve Clicquot and Barbie have clarified the requirements for protection under the Canadian Trade-Marks Act against trade-mark infringement i n noncompeting products or services in instances where there is a famous trade-mark.  46  The  Court has said that where the goods or services are not i n the same channel o f trade, there must be proof o f damages to the famous or senior mark holder's goodwill or proof o f a likelihood o f consumer confusion i n order to receive protection against dilution under the Canadian Trade-Marks Act. This is a blow to the concept o f a "family o f marks" belonging to large diversified international companies seeking protection for their "famous trade-marks". It is a ruling that stands i n stark contrast with the law o f trademarks concerning marks owned by a "public authority" such as the Canadian Olympic Association. For a "public authority" injunctive protection against dilution can be obtained without proof o f the likelihood o f confusion in separate channels o f trade so long as the public has received notice o f the restriction on the use o f the mark or derivative marks. Clicquot and Barbie distinguish the marks o f "public authorities" from "famous marks" for the purposes o f trade-mark protection. They establish a standard o f proof need to attract protection under the Act although they leave open the right o f the senior mark holder to oppose the registration o f the junior mark. The decision is a thoughtful one, balancing the owner rights with those o f the public. H a d Mattel prevailed we could anticipate that the use o f the term "barbie" could have become the exclusive property o f the Mattel T o y Manufacturing Company. Whether that means that Paul Hogan and the Australian Tourism Authority would have  Veuve Clicquot Ponsardin v. Les Boutiques Cliquot Ltee. 2006 SCC 23, which followed Mattel Inc. v. 3894207 Canada Inc., 2006 SCC 22 [hereinafter referred to as Barbie]. Both decisions were released on  46  33  been precluded from using the phrase "Toss another shrimp on the barbie" as an invitation to visit Australia without Mattel's permission is not clear. However, the decision is a victory for the common property o f the English language that includes the term "Barbie." Similarly i n the case o f Clicquot, the use o f "Cliquot" on the women's apparel needed proof o f the likelihood o f consumer confusion or proof o f the likelihood o f some form o f tarnishment to qualify for protection under the Act.  To allow a s. 22  prohibition against depreciation o f the goodwill attached to a mark without proof o f the likelihood o f depreciation through dilution is to encourage the abuse o f the Trade-Marks Act for purposes o f censorship. To date, i n Canada trade-mark owners have not had very much success with claims for dilution or tarnishment unless the goods bearing the marks were o f the same class and capable o f giving rise to consumer confusion.  47  Where such confusion is not  proven the Canadian Trademarks Act has left the famous mark holder without injunctive remedy.  48  There is current agitation to amend the Canadian Trademarks Act to provide  remedies for owners o f famous marks to bring Canadian law more into line with that o f other jurisdictions such as the U . S . , the E . U . and Great Britain. 1.5.3  Preserving the Value of Goodwill through "Dilution" Prevention W h i l e i n Canada, trademark owners may not have so much protection against  infringement i n non-competing products or service marks or dilution as in the U . S . , Canadian trademark owners must still be careful to assert their rights or risk having their mark become genericized through dilution. Once a mark is found generic it cannot be  June 2, 2006. See the Leaf confectioners case atLeaf Confections Ltd. v. Maple Leaf Gardens Ltd., (1986), 12 C.P.R. (3d) 511. See Pink Panther Beauty Corp. v. United Artists Corp., 1998 CanLII 9052 (F.C.A.i. [1998] 3 F.C. 534. 4 7  48  34  registered and must be struck from the registry. Examples o f trademarked terms that were found generic under U . S . law include: " A s p i r i n " , "Cellophane" , "thermos" 49  50  5 1  ,  "Murphy b e d " , and "Shredded Wheat" . Justice Brandeis' discussion o f "genericide" 52  53  in Kellogg v. Nabisco is instructive. He said: The plaintiff has no exclusive right to the use o f the term "Shredded Wheat" as a trade name. For that is the generic term o f the article, which describes it with a fair degree o f accuracy; and is the term by which the biscuit i n pillow-shaped form is generally known to the public. Since the term is generic, the original maker o f the product acquired no exclusive right to use it. A s K e l l o g g Company had the right to make the article, it had, also, the right to use the term by which the public knows it.... Moreover, the name "Shredded Wheat," as well as the product, the process and the machinery employed in making it, has been dedicated to the public. The basic patent for the product and the process o f making it, and many other patents for special machinery to be used i n making the article, issued to Perky. In those patents the term "shredded" is repeatedly used as descriptive o f the product. The basic patent expired October 15, 1912 the others soon after. Since during the life o f the patents "Shredded Wheat" was the general designation o f the patented product, there passed to the public upon the expiration o f the patent, not only the right to make the article as it was made during the patent period, but also the right to apply thereto the name by which it had become known. A s was said i n Singer Mfg. Co. v. June Mfg. Co., 163 U . S . 169, 185 : It equally follows from the cessation o f the monopoly and the falling o f the patented device into the domain o f things public, that along with the public ownership o f the device there must also necessarily pass to the public the generic designation o f the thing which has arisen during the monopoly.. .To say otherwise would be to hold that, although the public had acquired the device covered by the patent, yet the owner o f the patent or the manufacturer o f the patented thing had retained the designated name which was essentially necessary to vest the public with the full enjoyment o f that which had become theirs b y the disappearance o f the m o n o p o l y . 54  Bayer Co. v. United Drug Co., 272 F. 505, 509 (S.D.N.Y. 1921). Dupont Cellophane Co. v. Waxed Products Co., 85 F.2d 75, 81 (2d Cir), cert, denied 299 U.S. 601, 57 S.Ct. 194, 81 L. Ed. 433 (1936). King-Seeley Thermos Co. v. Aladdin Indus., Inc.32\ F.2d 577, 579 (2d Cir. 1963) Although the U.S. Courts allowed that international competitors of Thermos in the U.S. could not use Thermos with a capital "T", add their own brand name or use the worlds like "original" or "genuine" with their use of the mark, the term "thermos", while not generic enough to warrant expungement, also was not distinctive enough to warrant full exclusive use. Cf. with Aladdin Industries Inc. v. Canadian Product Ltd., [1969] 2 Ex.C.R. 80. • The Murphy Door Bed Co., Inc. v. Interior Sleep Systems, Inc. United States Court of Appeals, Second Circuit, 874 F.2d 95 (2d Cir, 1989). "Kellogg Co. v. National Biscuit Co., 305 U.S. I l l , (1938) [hereinafter Kellogg v. Nabisco]. Kellogg v. Nabisco, at 116-118. 4y  50  51  52  54  35  Justice Brandeis went on to discuss the plaintiffs claim that the words had acquired "secondary meaning" but he ruled that, .. .to establish a trade name i n the term "shredded wheat" the plaintiff must show more than a subordinate meaning which applies to it. It must show that the primary significance o f the term i n the minds o f the consuming public is not the product but the producer. This it has not done. 55  In Intellectual Property in the New Technological Age there is a discussion o f the 1896 Singer Mfg. Co. v. June Mfg. Co. case cited by Brandeis for the proposition that once a patent on a device expires, the name by which the device has been sold also enters the public domain. It declares that "Surely that is not always the case."  56  Pointing out  that many formerly patented devices are still sold bearing the name after the expiration o f the patent and that there are different purposes behind the patent and trademark acts, it is only when the name itself is generic that trademark does not survive the expiration o f the patent. Thus the determination o f when a mark has become generic is o f utmost importance to the rights holders. Further reference inMerges  is made.to the Lanham A c t §14 (15 U . S . C . §1064)  which provides that "[t]he primary significance o f a registered mark to the relevant public rather than purchaser motivation shall be the test for determining whether the registered mark has become generic." This provision was put i n place i n the Trademark 57  Clarification  Act o f 1984 to reverse the holding i n Anti-Monopoly,  Inc. v. General  Mills  Fun, 684 F.2d 1316 ( 9 ir. 1982), cert, denied, 459 U . S . 127 (1983). In this case the 9 th  th  Circuit had ruled that the term " M o n o p o l y " was generic and that "Anti-Monopoly" could  Kellogg v. Nabisco, at 118. Merges, Robert P. Peter S. Menell, Mark A. Lemley, Thomas M. Jorde. Intellectual Property in the New Technological Age, New York: Aspen Law & Business, 1997, p. 706 [hereinafter Merges]. Merges, p. 706.  55  5 6  57  36  be sold. Surely there are costs associated with the defence o f a mark against becoming generic. Merges  58  reproduced a Xerox trademark advertisement. GroupXerox actively  fought the genericide o f the term Xerox to mean photocopy with a vigorous defence ' against its use as a synonym for photocopying. Dupont also vigorously defended "Teflon" against becoming generic by use o f an education and policing p l a n . The leading Canadian case on genericism would seem to be Aladdin Inc. v. Canadian Product Ltd.,  60  59  Industries  where it was found " . . .that distinctiveness for a  significant minority o f consumers was enough to stave o f expungement".  61  Still the  requirement for distinctiveness is not one trademark holders can afford to take lightly.  1.5.4  Erosion of Distinction between Trade Dress and Function The potential use o f trade dress to extend the duration o f exclusive protection for  inventions whose patents have expired had recently led to uncertainty i n trade-mark law in Canada. The Lego decision from the Supreme Court o f Canada i n Kirkbi AG v. Ritvik Holdings  62  settling this issue was released November 17, 2005. In this case the  manufacturer o f Lego blocks sought to gain protection for its eight knobbed blocks b y resorting to trademark law after its patent expired. The courts below have found that the trade dress shape o f the blocks is determined by their function, and under the doctrine o f functionality, the only part o f the Lego knobs that could be considered trade dress is that part bearing the company name Lego on them. This reasoning has led to a split in the Federal Court o f Appeal decision and a subsequent appeal to the Supreme Court o f  Merges. Fig. 5-2, p. 704 See E.I. Du Pont de Nemours & Co.v. Yoshida Intl.Jnc. 393 F.Supp.502, 523-24 (E.D.N.Y. 1975) Aladdin Industries Inc. v. Canadian Product Ltd., [1969] 2 Ex.C.R. 80. Vaver, Intellectual Property Law,p. 190. Kirkbi AG v. Ritvik Holdings 2003 FCA 297, SCC appeal [2005] 3 S.C.R. 302, SCC 2005 65 (heard 2005-03-16). Kirkbi AG, etal. v. Ritvik Holdings Inc./Gestions Ritvik Inc. (now operating as Mega Bloks Inc.) (FC) (Civil) (By Leave) (29956) [hereinafter cited as Lego}. 58  5 9  60  61  62  37  Canada that was heard i n March o f 2005  . The S . C . C . upheld the lower court decisions  and the doctrine o f functionality, denying the mark holder remedy for trade-mark infringement.  1.6  "Sui Generis" Evergreen Provisions and the Diminishing Public Domain A n important concept i n the granting o f statutory rights to creators and assignees  is the necessity o f a chronologically "limited" term for IPR protection, so as to ensure the acquisition o f new knowledge within the public domain. Examining the development o f the E. U. Database Directive and its potential to keep all intangible property found i n databases out o f public domain, it is hoped that the folly o f new forms o f I P R protection introduced without sufficient forethought is an obvious danger that can be associated with the drafting o f new legislation without sufficient care as to its effect. While, as we shall see i n Chapter 3, there are problems with the use o f old laws to deal with the new situations i n cyberspace, the development o f entirely new laws ("sui generis") raises a number o f important difficulties. First among these difficulties is that o f jurisdiction. Again, as we shall see i n Chapter 4, the TRIPS  64  agreement o f 1994 represents a high  water mark in terms o f international multi-lateral agreement that may be impossible to replicate beyond the acceptance o f existing traditional IPR protection legal regimes. Furthermore, disagreement over the appropriate balance o f creator and user rights and the role o f the public domain may make any sui generis legal developments hard for some countries to recognize. W e shall return to this problem i n Chapter 5. Until then we must look at the evidence that IPR protection law needs reform or change. It can be argued  63  Lego, the case is discussed with respect to the Doctrine of Functionality in Chapter 2 below.  64  WTO Agreement on Trade-Related Aspects ofIntellectual Property Rights (TRIPS), negotiated in the 1986-94 Uruguay Round.  38  that current I P R law seems to be trending towards stronger creator rights at the expense o f other stakeholders. Let us review the problem. 1.7  Evidence of Strengthened "Creator Rights" Among Traditional IPRs  1.7.1  Increased Duration of Copyright Outside of Canada Duration o f copyright has been extended retroactively to 70 past the death o f the 65  creator i n the U . S . , despite a constitutional challenge. In Europe and many civil code countries the term o f copyright duration is 70 years or more past the year o f death o f the creator. Nevertheless, currently under TRIPS the minimum is a duration o f 50 years past the year o f death o f the creator. W h i l e it is currently only 50 years in Canada, this seems bound to come under pressure to lengthen to European and U . S . standards. O f course this term o f duration is one related to the life o f the author or creator, for other works created in situations where the life o f the author is not known or copyright ownership is not associated with the life o f the creator, the term is different. Usually for unpublished works the term is unlimited until publication and then runs for 50 years i n Canada. Similarly for fdm and photographs the term o f protection runs for 50 years from the date o f manufacture.  66  For anonymous works the term can run for 50 years from the date o f  first publication. For "neighbouring rights" the term is 50 years from first public performance, sound recording or broadcast. 1.7.2  Posthumous IP Rights and Bequeathing Related to the increased length o f copyright has been the ability o f such rights to  become part o f the creator's estate. Whether or not the anticipation o f these post-mortem rights is a necessary part o f the incentive for progress i n the useful arts and sciences  65  6 6  See Eldred v. Ashcroft, 537 U.S. 186 (2003) U.S. Supreme Court. Vaver, Intellectual Property, pp. 63-4.  39  seems to be taken for granted. Copyright can be bequeathed for between 50 and 75 years after the death o f the creator depending on the jurisdiction. Subsection 14(1) o f the Canadian Copyright Act provides for a limitation and reversion o f assigned interests to the author's estate 25 years after his/her death. Patents, while they can be bequeathed, still only extend for 20 years. Concerning the Succession o f M o r a l Rights i n Canada M o r a l Rights provisions Copyright Act, ss. 14.1 (2) which allows no assignment o f moral rights and 14.2(2), (3), which allows for the moral rights to pass to whomever they have been bequeathed, to the inheritor o f the copyright or to the inheritor o f the author's estate.  1.7.3  Extensions of Copyright to include Adaptations or "Derivative Works" Eroding the distinction between "expression" (copyrightable) and "idea"  (noncopyrightable), the extension o f copyright to include "derivative works" can be argued to allow the copyright holder to protect too wide an area within the granted statutory monopoly. Depending upon the breadth o f interpretation o f "derivative work" the public domain can be seriously diminished. In the Mirage Editions v. Albuquerque A.R.T.,  67  Mirage was able to sue A . R . T . for copyright infringement when A . R . T .  physically cut photographic reproductions o f artist Patrick Nagel's works out o f numerous purchased copies o f coffee-table books published b y Mirage, glued them to ceramic tiles and offered them for sale. The court held that A . R . T . was not protected b y the "first sale" doctrine (exhaustion doctrine i n Europe) and had created unauthorized "derivative works".  Mirage Editions v. Albuquerque A.R.T. 856 F.2d 1341 (9' Cir. 1988)[hereinafter referred to as Mirage].  40  Derivative works i n this 9 Circuit Court o f Appeals case and the 7  Circuit  Court o f Appeals Lee v. A.R.T. Co. American case that rejected Mirage, were discussed by Binnie J i n Theberge as follows: re derivative work and Mirage and Lee art U S cases 72 The poster art industry i n the United States has been actively litigating the broad statutory "derivative works" provision against owners o f the material objects that embody the copyrighted work. In Mirage Editions, supra, for example, the copyrighted image was applied to a ceramic tile. The 9th Circuit Court o f Appeals ruled that the ceramic was an infringing "new" derivative work, a conclusion expressly rejected by the 7th Circuit Court o f Appeals i n Lee v. A.R.T. Co., 125 F.3d 580 (1997), which concluded that the fixation did not infringe the copyright. Easterbrook J., for the 7th Circuit, reasoned that "[a]n alteration that includes (or consumes) a complete copy o f the original lacks economic significance" (p. 581). H e further found that there was no distinction between framing works o f art, an acceptable practice under copyright law, and more permanent methods o f display, such as re-fixing the art work on tile. The 9th Circuit has taken a different view: see Mirage Editions, supra. These cases and their progeny typically turn on conflicting interpretations o f the words "recast, transformed, or adapted" in the U . S . statutory definition, but even under that more expansive U . S . definition o f "derivative works" the 7th Circuit concluded that permanently mounting the artwork on tile did not "recast, transform, or adapt" the work. If these words appeared in our Act, there would presumably be a similar battle o f statutory construction here, with the respondent saying the work was "recast, transformed, or adapted", and the appellants denying that characterization, but the conflict between the scope o f the copyright holders' economic rights to control the end uses o f his work and the purchasers' rights as owners o f the material object is the same. In the absence o f the "recast, transformed, or adapted" language (or equivalent) in our Act, however, the respondent is unable to rely on it as an additional basis o f copyright liability. A s Estey J. noted in Compo, supra, at p. 367: . . . United States court decisions, even where the factual situations are similar, must be scrutinized very carefully because o f some fundamental differences i n copyright concepts which have been adopted in the legislation o f that country. 73 I should note that while there is no explicit and independent concept o f "derivative work" i n our Act, the words "produce or reproduce the work . . . in any material form whatever" i n s. 3(1) confers on artists and authors the exclusive right to control the preparation o f derivative works such as the union leaflet incorporating and multiplying the M i c h e l i n man in the Michelin case, supra. See generally, M c K e o w n , supra, at p. 64. In King Features Syndicate, Inc. v. O. and M. Kleeman, Ltd., [1941] A . C . 417 (H.L.), under a provision in the English A c t similar to s. 3(1) o f our Act, the plaintiffs copyright i n the cartoon character  41  "Popeye the Sailor" was held to be infringed b y an unauthorized doll, i.e., the two dimensional character was reproduced without authorization i n a new threedimensional form. See also W . J. Braithwaite, "Derivative Works i n Canadian Copyright L a w " (1982), 20 Osgoode Hall L.J. 191, at p. 203. To the extent, however, that the respondent seeks to enlarge the protection o f s. 3(1) by reading in the general words "recast, transformed, or adapted" as a free-standing source o f entitlement, his remedy lies i n Parliament, not the courts. Vl.Conclusion with Respect to the Substantive Issue 74 M y conclusion is that i n this case the respondent is asserting a moral right i n the guise o f an economic right, and the attempt should be rejected. 75 If the respondent's argument were correct in principle, o f course, the absence o f authority would not prevent his success. It is i n the nature o f the subject that intellectual property concepts have to evolve to deal with new and unexpected developments in human creativity. The problem here is that the respondent's submission ignores the balance o f rights and interests that lie at the basis o f copyright l a w . 68  1.7.4  A d o p t i o n of N e i g h b o u r i n g Rights A s mentioned above, the stretching o f the Canadian Copyright Act beyond the  printed word through notions o f fixation (Canadian Admiral ) 69  to include performer's  rights, sound recordings and broadcasts i n 1989 means that copyright law now refers to much more than merely the control over the ownership, number and exploitation rights o f copies o f an artistic work. The advent o f many new media and digitalized versions o f older creative works mean that there w i l l be pressure on Canada's Copyright Act to include protection for works fixed i n new ways and new media. If this protection is retrospective we may find much taken back from the public domain and placed again under the control o f the statutory monopoly known as copyright protection. Canada's adoption o f neighbouring rights under copyright has enabled Canadians to use copyright law to accomplish what tort laws i n the U . S . concerning the misappropriation o f the right  Binnie J, Theberge v.Galerie d'Art du Petit Champlain Inc., [2002] 2 S.C.R. 336, 2002 SCC 34 (CanLII) (2002), 210 D.L.R. (4th) 385; (2002), 17 C.P.R. (4th) 161; (2002), 23 B.L.R. (3d) 1 paras. 72 -75.  6 8  69  Canadian Admiral Corp. v. Rediffusion Inc., [1954] Ex.C.R. 382, 20 C.P.R. 75, 14 Fox. Pat. C. 114.  42  of publicity have done. Evidence o f this can be seen in the cases dealing with inalienable moral rights o f creators such as Snow v. Eaton's  1.7.5  Centre . 70  Inalienable Moral Rights of Creators In order for IPRs to provide economic incentive for innovation the current  regimes have made the rights alienable. This has allowed the I P R holder to be a different person or entity than the creator, most commonly entrepreneurs, corporations, publishing companies, institutions and so on. In civil code countries, and within Canada since 1931, artists and creators are accorded certain inalienable moral rights including the right o f authorship and the right to the physical integrity o f the work bearing their name. These rights have been asserted in civil rights countries basing copyright protection on personality rights, but opposed in many common law countries who base their copyright on economic incentive justifications. Once again the leading Canadian case on moral rights is Snow. M o r a l rights are personal rights and normally not alienable from the author or creator. This makes them a different set o f rights awarded i n the copyright law bundle to the creator or author. In Canada moral rights are not assignable although they may be waived. They currently have the same duration as copyright.  1.7.6  Droits de suite Droits de suite are rights associated with a creator's right to some portion o f the  fair market value gain realized upon the resale o f their work. These rights are recognized on a state level i n California and in several civil code jurisdictions. Probably the strongest droits de suite are to be found i n France and then Germany. Droits de suite  71  include an ongoing set o f inalienable author rights i n France. In Germany they have the  70  Snow v. the Eaton Centre Ltd. (1982) 70 C.P.R. (2d) 105 (Ont. H.C.)[hereinafter Snow].  43  same term as copyright. They include rights after the sale o f a work with IPRs attached. The right to a percentage o f the capital gain made b y the purchaser o f a work o f art on a resale is considered to be one o f the rights associated with the author's rights i n these countries. It has been looked upon with suspicion by the U . S . i n terms o f copyright 77  laws  despite similar provisions i n State laws (e.g. California). In France, Italy, Chile and California artists have been allowed to recapture a  percentage o f the resale value o f their works, as droits de suite.  These resale rights do  not currently exist i n Federal Copyright law in the U . S . and Vaver pointed out that i n Canada as o f yet there are no droits de suite,  despite Canada's M o r a l Rights provisions,  but their existence i n author's rights jurisdictions lead one to believe they could well become part o f the WIPO regime i n future. A s Binnie J. makes clear i n Theberge there are no droits de destination either: 1.7.7  Re Droits de Destination 28 In m y view, with respect, this expansive reading o f the s. 3(1) economic rights tilts the balance too far in favour o f the copyright holder and insufficiently recognizes the proprietary rights o f the appellants i n the physical posters'which they purchased. Adoption o f this expanded interpretation would introduce the civiliste conception of"droit de destination" into our law without any basis i n the Copyright Act itself, and blur the distinction between economic and moral rights imposed by Parliament. 74  Concerning droits de destination i n Canadian law he goes on to explain more fully in the judgment:  Canada's Moral Rights provisions Canadian Copyright Act, s. 14. R. Howell, "Canada: Report on Private International Law Aspects", in Copyright in Cyberspace, Marcel Dellebeke, ed. ALAI Study Days, Amsterdam: Otto Cramwinckel, n. 68, p. 286 tells us that "Moral rights are recognized federally in the United States in the Visual Artists Rights Act 1990, PL No. 101-650, 102 Stat. 5128, 17 USC 101 (1990)," but he judges that the U.S. approach "presents a traditional approach of a common law jurisdiction to the question of moral rights." ibid. Vaver, Intellectual Property, p. 67. Binnie J, Theberge v, Galerie d'Art du Petit Champlain inc., [2002] 2 S.C.R. 336, 2002 SCC 34 (CanLII) (2002), 210 D.L.R. (4th) 385; (2002), 17 C.P.R. (4th) 161; (2002), 23 B.L.R. (3d) 1 para. 28. 71  7 2  7 3  7 4  44  63 Under the civiliste tradition, and particularly i n France, the right o f reproduction was interpreted to include not only the right to make new copies o f the work (reproduction stricto sensu) but also what is called b y French jurists the "right o f destination" (droit de destination). The right o f destination gives the author or artist the right to control to a considerable extent the use that is made o f authorized copies o f his or her work: see generally A . Lucas and H.-J. Lucas, Traite de la propriete litteraire & artistique (1994), at p. 235; F. Pollaud-Dulian, Le droit de destination: le sort des exemplaires en droit d'auteur (1989). See also Crim., January 28, 1888, Bull, crim., N o . 46, p. 68; Crim., December 2, 1964, Bull, crim., N o . 320, p. 672; Crim., October 20, 1977, Bull, crim., N o . 315, p. 801; C i v . 1st, M a y 5, 1976, Bull, civ., No. 161, p. 128; Paris, March 18, 1987, D . 1988.Somm.209, note Colombet; C i v . 1st, A p r i l 19, 1988, Bull, civ., N o . 112, p. 76; Paris, A p r i l 27, 1945, Gaz. Pal. 1945.1.192. 64 The "droit de destination" applies i n other civiliste jurisdictions. Thus i n Hovener/Poortvliet, H R January 19, 1979, N J 412, brought to our attention by counsel for the respondent, the Netherlands Supreme Court found a violation o f the droit d'auteur where a purchaser o f an authorized art calendar cut out the pictures, stuck them to coasters, and resold them. This was regarded b y the court as an altogether new and different "publication". In Frost v. Olive Series Publishing Co. (1908), 24 T . L . R . 649 (Ch. Div.), b y contrast, the English court did not regard as an infringement the cutting out o f pictures from books, pasting them on cards, and reselling. "[The recirculation of] objects already i n existence is not reproduction i n a material form": Laddie et al., supra, at p. 614. 65 It seems to me that the respondent is pursuing a form o f "droit de destination" i n this case. But, under our Copyright Act, the "right o f destination" as such does not exist. Generally, the copyright holder does not b y virtue o f his or her economic rights retain any control over the subsequent uses made o f authorized copies o f his work b y third party purchasers. Where i n specified situations the A c t gives the copyright holder some power to control or benefit from subsequent uses o f authorized copies o f his work, the relevant provisions are narrowly framed to apply only to very specific forms o f reproduction, as i n the case o f sound recordings (s. 15(1)) or computer programs (s. 3(l)(h)). I f a general right to control subsequent usage existed, it would not have been necessary to make specific provision i n these cases. Justice Binnie expressly rejects the right o f destination and the civiliste interpretation o f copyright law. H e frames it as asserting a moral right in the guise o f an economic right. H e says,  Binnie J, Theberge paras. 63-65.  45  V l . C o n c l u s i o n with Respect to the Substantive Issue 74 M y conclusion is that i n this case the respondent is asserting a moral right i n the guise o f an economic right, and the attempt should be rejected. 75 If the respondent's argument were correct i n principle, o f course, the absence o f authority would not prevent his success. It is i n the nature o f the subject that intellectual property concepts have to evolve to deal with new and unexpected developments in human creativity. The problem here is that the respondent's submission ignores the balance o f rights and interests that lie at the 76  basis o f copyright law. Although Justice Binnie found against the rights holder i n this case, Gonthier, L e B e l and L'Heureux-Dube JJ. formed a substantial dissent to the Court's majority ruling. 1.8  Strengthened "Creator Rights" in Traditional IPR Protection To assess whether user rights need strengthening i n a world where creators and  other IPR holders have recently enjoyed growing governmental and inter-governmental support for their exclusory rights we need to consider several important issues and concerns, which include: 1.8.1  The Function and Purpose of Intellectual Property Rights I have defined the functioning o f IPRs as the granting o f an exclusory right or  limited monopoly to encourage innovation or progress i n the Arts and Sciences b y providing incentives for innovators. Common IPRs are those statutory rights associated with copyright, patents, trade-marks and trade secrets. Recently the development o f new "sui generis" rights for computer software has been advocated