Intellectual Property

Part i: Copyright

Part II: Patents

Part III: Passing off and Trademarks

Copyright

Theberge reflected a move away from an earlier, author-centric view which focused on the exclusive right of authors and copyright owners to control how their works were used in the marketplace – BELL

Section 5 – The provision on which the whole act hinges, by declaring the copyright subsists at it in an original literary, dramatic, musical and artistic work if [it then goes on to identify the connecting factors to any treaty country]

Copyright

1. SUBSISTENCE OF COPYRIGHT a. Authorship [see “Term” under Ownership & Assignment]

Authorship is the basis for determining the first ownership of copyright (13 (1)) and term of the CR (recall that it subsists 50 years after the author's death, or 50 years after the publication of a cinematographic work without a dramatic character

engravings, photographs and portraits where the Commissioner is the first owner (13 (2)). Works created in the course of employment, the employer is the first owner (13 (3))

Rule: Issuing a work in a particular form is a neighboring rights, not an authorship right"Collective Works ": any work written in distinct parts by diff authors, or in which works or parts of works of diff authors are incorporated

*each author gets copyright over their distinctive contribution"Compilation" – any work resulting from the selection or arrangement of literary, dramatic, musical works or parts of data"Works of joint authorship": any work produced by collaboration of two or more authors were contributions are not distinct

*No distinct rights – the authors enjoy joint rights

Nuedorf – guy works on Sarah McLachlan album wants to be declared joint author. Judge says he made original contributions but there was no mutual intent of joint authorship [requirement of intent criticized by FC in Neugbauer]

Fisher v Brooker – Co-authorship upheld where band at member contributed original organ solo after two other band members had already written the song and lyrics

b. Originality – S. 5 - Copyright subsists in any original…[England] – University of London Press – Low bar for originality – Basically anything that isn't copied

Mathematics examinations "literary works", but are they "original". Yes – "what's worth copying is worth protecting"[USA] – Feist – work must be the result of "creativity"[Canada] – CCH –Higher than England but not as far as Feist – must have exercised "skill and judgment" Tele-Direct – "Authorship conveys a sense of creativity and ingenuity [closer to Feist]

Law reports = a compilation worthy of protection of the whole. Deciding what to include and how to arrange it = "exercise of skill and judgment", but author doesn't get protection over the individually included components

c. FixationS. 2 – "every original literary, dramatic, musical and artistic work" includes every original production in the literary, scientific or artistic domain, whatever may be the mode or form of expression…

– Canadian Admiral Rule.: In order for copyright to subsist it must be expressed in some material form capable of identification and having more or less permanent endurance so no CR in a live broadcast of Montréal Alouette's game [overruled by 3 (1.1)]

3(1.1) – a work that is communicated to the public by telecom is fixed even if it's fixed at the time of its communication

d. Works –s. 2 – The extent of protectionNichols – Protection of non-literary aspects of one's workFacts: Plaintiff author of "Abby's Irish Rose". Defendant produces a movie called "The Cohens and the Kelly's" w/ Rule: "Protection can't accrue only to the literary text, else a plagiarist would escape by immaterial variations"Issue: What happens when a plagiarist doesn't take out a piece in situ, but an abstraction of the whole? – Idea vs. ExpressionHeld: If there were any appropriation it was of the "idea" (i.e. format of the play), not the expression. The characters weren't distinctive enough to show that they had been copied – they contain only general characteristics France Animation v Robinson – Found the characters of a proposed children's TV series were appropriated by the makers of a cartoon

series in Québec. There, it was the accumulation of elements that was determinative, but no one element on its own

Exxon v Exxon Insurance Consultants [Have to think about how this engages TM]Issue: Whether "original literary work" extends to a single invented word of which considerable time and effort was expended uponRule: It clearly "original", "literary", and a "work" in terms of everyday parlance, but construed purposefully the act has an implicit requirement that the "work" be intended to afford either information/instruction/pleasure in the form of literary enjoyment".

Preston ("Space Pets irt EWOK case") "Generally there cannot be copyright in a mere name, but where the name identifies a well-known character copyright in the name and associated character may be recognized"

Hollinrake v Truswell – Cardboard sleeve case for dressmakingRatio: It's not intended for the purpose of giving information or pleasure, but for practical use in the art of dressmaking. "It is a mechanical contrivance, appliance or tool, for the purpose of better enabling a dress maker to maker measurements…

Bulman – concerned protection of accounting forms as "literary works" vs. device simply used to receive information. Direct copying and "originality" was admitted. The issue was whether the forms were "literary".Held: Literary aspect of the forms outweighed the use of the forms as bookkeeping device"literary is used in the statute in the sense of written or printed matter, and not in some dictionary sense of imparting ideas, information or knowledge. But, nevertheless, a mere printing or writing is not sufficient. For copyright to subsist, there must be, in a compilation of the commercial type here, a literary sense of functionally assisting, guiding or pointing the way to some and. [These forms accomplish that]".

*government said they would amend the copyright act to exclude forms primarily intended to receive information

Ladbroke – Essentially have the same holding in relation to "football betting coupons". Both illustrate how one can receive indirect protection of a business method that cannot otherwise be patented.

e. CompilationsTele-Direct – Concerned copyright irt Yellow Pages directoriesLaw: It's not the several components that are the subject of copyright, but the overall arrangement of them which the plaintiff through his industry ["thought, selection and work"] produced… Authorship conveys a sense of creativity and ingenuity [Closer to Feist]Rule for compilations: Considerable labor + and negligible degree of skill and judgment = insufficient to receive protectionHeld: it All ABI took from tele-direct with the data listed in the individual columns which could not receive protection, but in any event there was no copyright protection for the Yellow Pages, because it exercise only a minimal degree of skill, judgment or labor in its overall arrangement insufficient to support a claim originality

f. Collective WorksRobertson – Concerns the extent to which the owner of copyright in a collective work or compilation of other people's works can reproduce and telecommute the collective work in the digital medium the changes the way people access the individual works within the compilation.Facts: Globe had no copyright in the freelance articles themselves, though it had copyright in the newspaper as a "compilation".Rule: In the absence of a license or transfer, it an author retains the sole right to reproduce.Test: "The key question is who's "originality" is being reproduced: the freelance authors or the publishers of the collective work"Majority: The electronic databases are a fundamentally different "collective work" than the newspapers where articles originally published CD-ROM version not an infringement, however. It displays other articles from the daily issue on the right (see page 67)

"Media Neutrality" – S. 2 Copyright subsists… Whatever may be the mode or form of its expression… But here, Publisher wasn't simply "archiving" electronic copies of the newspapers. They were fundamentally altering the way

the articles were accessed and created a different product in the process The articles were accessed on an individual basis, not as part of a collective The input was a newspaper, the output was not References in the individual articles to the issue & page # didn't preserve the necessary connection to the newspaper

Dissent: Said the majority paid too much attention to form, not enough to content. Online the articles have to be displayed in a certain way, which doesn't change the fact that ultimately the old newspaper is better for the user access in one way or another

g. Computer Programs – classified by statute and common law as "literary works"“computer program” means a set of instructions or statements, expressed, fixed, embodied or stored in any manner, that is to be used directly or indirectly in a computer in order to bring about a specific result;

Rule: This definition extends to non-literary aspects of a program, for a screen display produced as the result of a program is a reproduction of the object code "in a different material form" – Delrina

Don't fit nicely into any of the IP categories.A set instructions or mathematical steps can't be in invention and, though software consists of a literary work, it's difficult to prove it was copied due to the nature of programming. If you copy the source code it's easy, you're infringing. Apple & Delrina address the common law's difficulty regarding what to do when one copies the non-literal aspects of a computer program. Delrina shows part of the difficulty is figuring out what was "original" in the work alleged to be copied because software is usually just the accumulation of earlier programming knowledge and you have to figure out what each individual programmer contributed. You also have to exclude the elements that were dictated solely by functional considerations.

"abstraction-filtration-comparison" test from Delrina is really just a fancy way to filter out the non-original features of the earlier work. In other words, copyright protects non-literal aspects that were "original" to the author and not dictated solely by functional considerations. [Not easy to show]

Apple v MacFacts: Mac was making "AppleII" clones that could run the same programs as Apple II computers. They argued that since they had only copied the chip [by burning] and not the source code of the program itself, they had not infringed Apple's copyrightIssue: Whether a originally copyrightable work [a source code] subsists when the information is replicated in a chipHeld: Copyright subsists in the chip – it is the embodiment of a literal work

SCC says the program is a form of expression, the chip is the embodiment of that expression chip should not be regarded as a merger of "idea and expression".

SCC rejects Australian approach that a chip is just "a series of electrical impulses" that cannot receive copyright

Delrina – [shows how difficult these cases are to prove]Facts: Employee developed "diagnostic and performance monitoring tool" ["Sysview"] for HP 3000 while employed by Delrina. Later left and developed another system ["Assess"] to do the same thing. The judge held that he did not "copy" Sysview" in creating "Assess", although he inevitably made use of his memory.Issue: The further question was raised with respect to whether Sysview could receive copyright at allHeld: Sure, copyright can extend to non-literal aspects of the source code [see rule above]. Here, however, the judge wasn't even satisfied that the non-literal aspects could receive protection because they were attributable solely to the nature of the product and the limited ways in which these kinds of ideas could be expressed. It should have been expected that there would be some similarities between the programs because of the limitations on functional displays, without one being a copy of the other.

Nintendo v Comerica Is the only Canadian case it gets close to addressing whether there is a right to prevent copying of the actual screen display. The issue in Canada is unsettled [though based on Delrina the answer would seem to be yes, as long as the screen display wasn't dictated solely at by functional features (meaning something about it was truly unique)]. Here, Nintendo claimed copyright for the super Mario Brothers display and that the author's moral rights were infringed by changing the parameters of the game. It was heard on an application for an injunction and it was said that these were serious issues to be tried, though they ultimately weren't.

h. Dramatic & Cinematographic Works – s. 2“dramatic work” includes

(a) any piece for recitation, choreographic work, the scenic arrangement or acting form of which is fixed in writing or otherwise,(b) any cinematographic work [see below], and(c) any compilation of dramatic works;

“cinematographic work” includes any work expressed by any process analogous to cinematography [whether/not containing original characters]

– Term of subsistence: If original dramatic character 50yrs from death of author; If not 50yrs from publication – Determining authorship of cinematographic work difficult because of production companies (usually addressed via agreement]

“sound recording” means a recording, fixed in any material form, consisting of sounds, whether or not of a performance of a work, but excludes any soundtrack of a cinematographic work where it accompanies the cinematographic work;

Re Sound – Including a composer or makers recording as part of the soundtrack requires consent, but once that consent is given, further public performance or telecommunication of the soundtrack does not infringe any rights of the composer/maker under section 19 because that part of the soundtrack is not a "sound recording" because of the definition of sound recording in S. 2 [above].

In other words, once a maker/composer of music gives consent for its use in a soundtrack, they do not at it is for the further performance/playing of the soundtrack in public. You consent to it being used in a soundtrack owners of that soundtrack can do whatever they want subject to infringing moral rights of the original author

i. Musical Works-[see page 229, where copyrighted musical works is discussed]

j. Artistic WorksS. 5 – Copyright shall subsist… In every original literary, dramatic, musical and artistic work… “every original literary, dramatic, musical and artistic work” includes every original production in the literary, scientific or artistic domain, whatever may be the mode or form of its expression… [2(v) of the Berne Convention] “artistic work” includes paintings, drawings, maps, charts, plans, photographs, engravings, sculptures, works of artistic craftsmanship, architectural works, and compilations of artistic works at

Cusenaire Rules:1. 2(v) of the Berne Convention did not confer additional categories of copyright it's an extended meaning of the 4 categories in s 5. 2. Intent to create something with aesthetic appeal necessary to fall within the definition of an "artistic work" The aesthetic appeal

cannot just be incidental to what was really the creation of a tool with an intended use3. Presumption of subsistence only kicks in if one can prima facie bring themselves within one of the 4 categories in s. 5Cuisinaire – 241 colorful rods for learning math case

– Australian case said there was nothing "artistic" in his creation/work – Their act required "artistic craftsmanship"– Australian case further held that the list in the definition of "artistic work" is exhaustive, notwithstanding the word "includes"

Facts: He says he's entitled to a presumption of subsistence in copyright via s. 5 [then 20 (3)]. Further, he says, that 2(v) of the Berne Convention confers additional subject matter to copyright in addition to the enumerated categories in s.5. If not he says it's an "artistic work"Held: All claims rejected – no copyright in the rods. There was originality in their design and the idea of their application to teach children math, but they were not artistic and didn't fit within any of the other categories

2. SOME OF THE RIGHT COMPRISING COPYRIGHT IN A WORK– ss. 3(1) & 30.7 3(1) …“copyright”, in relation to a work, means the sole right to produce or reproduce the work or any substantial part thereof in any material form whatever, to perform the work or any substantial part thereof in public or, if the work is unpublished, to publish the work or any substantial part thereof, and includes the sole right

(a) to produce, reproduce, perform or publish any translation of the work,(b) in the case of a dramatic work, to convert it into a novel or other non-dramatic work,(c) in the case of a novel or other non-dramatic work, or of an artistic work, to convert it into a dramatic work, by way of performance in public or otherwise,(d) in the case of a literary, dramatic or musical work, to make any sound recording, cinematograph film or other contrivance by means of which the work may be mechanically reproduced or performed,(e) in the case of any literary, dramatic, musical or artistic work, to reproduce, adapt and publicly present the work as a cinematographic work,(f) in the case of any literary, dramatic, musical or artistic work, to communicate the work to the public by telecommunication,(g) to present at a public exhibition, for a purpose other than sale or hire, an artistic work created after June 7, 1988, other than a map, chart or plan,(h) in the case of a computer program that can be reproduced in the ordinary course of its use, other than by a reproduction during its execution in conjunction with a machine, device or computer, to rent out the computer program,(i) in the case of a musical work, to rent out a sound recording in which the work is embodied, and(j) in the case of a work that is in the form of a tangible object, to sell or otherwise transfer ownership of the tangible object, as long as that ownership has never previously been transferred in or outside Canada with the authorization of the copyright owner,and to authorize any such acts

30.7 It is not an infringement of copyright to incidentally and not deliberately to include a work or "other subject matter" (meaning a performer's performance, sound recording or communication signal) in another work or other subject matter. (Overturning Toronto Star)

a. The Right To Reproduce The Work Ladbroke Football v William Hill Football – Betting Coupons – copying of "substantial part" can include non-literal elementsFacts: Ladbroke admitted to copying almost the entire format of William Hill's betting coupons other than changing headings and not copying the odds and betting lists (bc they couldn't), but said then that the coupon had to be dissected into component parts which was simply a business decision, arguing be contrary to freedom of trade to give copyright to the coupons (Bulman)Held: Ladbroke infringed copyright because a substantial part of the coupon was copied – it was original – a vast amount of skill, judgment and experience went into its creation – and must be considered as a whole/compilation.

Giving the coupons copyright doesn't restrict freedom of trade, because it was clear there were other ways of creating them based on evidence of other business coupons

Toronto Star – Photo of a photo = infringement [overturned by 30.7]Including a photo of Sheila Copps from the cover of "Saturday Night Magazine" in an article about her in the Toronto Star NP = infringement. TS said "reproducing" the cover wasn't "reproducing" the photograph. Judge said I'm not engaging in "hairsplitting" – that's infringement.

b. The Right To Perform The Work In Public – ss. 3(1), 2.3(a) What does it mean to "communicate" the work to the public?

s.2 – "performance" includes a representation made by means of any mechanical instrument, radio or TV [meaning showing a film/playing a recording, not just live performances]

(b) Who is "the public"Test: What is the character of the audience? – Canadian AdmiralHeld: Performance in a private home that can only be seen by members of the household ≠ Performance in public

Canadian Admiral said "causing the Montréal Alouette's game to be seen" = performance, but on household TVs ≠ Public

c. The Right To Communicate The Work To The Public By Telecommunication – ss. 2, 3(1)(f), 2.42.3 – a person who communicates a work or other subject matter to the public by telecommunication does not by that act alone perform it in public, nor by that act alone is deemed to authorize its performance in public

2.4 (1) (a) [a communication intended to be received solely by occupants of Apartments hotel rooms or dwelling units within the same building as a communication to the public]

(b) [solely providing the means of telecommunication is not a telecommunication to the public] - SOCAN

2.4(1.1) communication of a work or other subject-matter to the public by telecommunication includes making it available to the public by telecommunication in a way that allows a member of the public to have access to it from a place and at a time individually chosen by that member of the public. [smart phones etc]

SOCAN v Cdn Assn of Internet Providers – 2.4(1)(b)Facts: SOCAN collects royalties for communication of musical works to Internet subscribers, and argues that anyone in the chain of supply should be liable to pay royalty, including ISPs and host servers.Held: ISPs not liable via the exception in 2.4(1)(b) and not authorizing infringement solely bc they are aware of their system may be used for such purposes (though they may be if given notice of copyright material that refuse to take it down)Held: ISPs not liable for "caching" it's more than "solely providing the means" but Parliament's intent in 2.4(1)(b) was to ensure "not to chill the expansion and development of technology". This entrepreneurial push is to continue despite any incidental effects on copyright ownersJurisdiction Point: Canadian copyright law may extend to Internet communications that have a real and substantial connection with Canada, defined by: an origin in Canada, a reception in Canada, a server in Canada, or some combination of the above.

Telecom from a foreign state to Canada, or a telecommunication from Canada to a foreign state, is "both here and there"

ESA – Downloading not a communication to the public, but Streaming is [I agree with the dissent]Issue: Whether online videogame sales via "downloading" was a "communication to the public"?Facts: owners of CR music in the video games wanted royalties for online sales [that they don't get for in-store sales] it The Held: No. Invokes "technological neutrality" and the fact that the Act has historically construed the "communication right" as a subset of the "performance rights" conferred by the Act. There's no performance in downloading [in contrast to streaming].

Dissent: The act says what it says – downloading is a "communication" to the public. "Technological neutrality" cannot override express legislative intent. [Similar argument to Robertson online NP database case – what's being sold here is fundamentally different than what the original author/musical composer originally agreed to, so compensate them fairly for that]

Rogers – Streaming via P2P to individual customers is a communication to the public – codified in 2.4 (1.1)Held: Language in the Act amended from "radio-communication" to "telecommunication", implying other modes of supply should be caughtESA said "streaming" was a "communication to the public". Rogers addressed whether streaming P2P transmissions to an individual customer was a communication "the public". St was bc it should be construed as the same as broadcasting.

3. MORAL RIGHTS IN A WORK – s. 14.1 (subject to 28.2 exception) 14.1(1) The author [not the owner] of a work has, subject to section 28.2, the right to the integrity of the work and, in connection with an act mentioned in section 3, the right, where reasonable in the circumstances, to be associated with the work as its author by name or under a pseudonym and the right to remain anonymous. (2) The author of a work cannot assign his moral rights, but he can wave them in whole or in part. (3) Assignment of copyright ≠ Waiver of any moral rights.

28.1 Any act or omission that is contrary to any of the moral rights of the author of a work or of the performer of a performer’s performance is, in the absence of the author’s or performer’s consent, an infringement of those rights.

28.2 (1) [Authors moral right to the integrity of the work infringed] only if the work or the performance is, to the prejudice of its author’s or performer’s honour or reputation,

(a) distorted, mutilated or otherwise modified; or(b) used in association with a product, service, cause or institution.

(2) For a painting, sculpture or engraving prejudice deemed to have occurred as a result of any distortion, mutilation or other modification it(3) No distortion/mutilation merely for (a) change of location of a work, the physical means by which is displayed, or the physical structure containing work or (b) steps taken in good faith to restore/preserve the work

Note, a literary, artistic, musical or dramatic work can be distorted, mutilated or modified in any of number of ways when it's reproduced, but there's no claim unless the change is prejudicial to the authors honor or reputation *Blom says the deemed prejudice in 28.2 (2) only applies to mutilations of originals, whereas 28.1(1) applies to originals and reproductions

Tidy v Trustees – Repro of P’s dinosaur drawings in museum catalog not adverse to his reputation amongst those who bought the catalogSnow – Christmas bows on geese's necks found to be reasonably prejudicial to the author's honor or reputation [captured by 28.2(2) today] Theberge – Concerned the extent to which an artist can control the eventual use or display of an authorized reproduction of his work in the hands of a third party purchaser – "lifting" ink. from posters and putting them on canvas through a chemical process.

Majority: There's no "reproduction" and what's being done –he’s really asserting “moral rights" in the guise of "economic rights"His economic rights were assigned the manufacturers, who offered the product for sale without restrictionSays Gonthier's expansive reading of 3(1) tilts the balance too far in favor of the copyright holder w/o regard to the proprietary interest of the authorAlso relies on 28.2(3) – no deemed prejiduce for changing “physical structure containing the work

Minority: "Lifting" made a "reproduction" – Could've been a linguistic issue – Repro means something slightly different in French– Majority thought this wasn't a "reproduction" not taking ownership rights too far to allow this

Ratio: "Theberge reflected a move away from an earlier, author-centric view which focused on the exclusive right of authors and copyright owners to control how their works were used in the marketplace". – Bell (music preview case)

4. NEIGHBORING RIGHTS Definition: These rights stem not from the author's creation of a work, but from someone other than the author having put the work into a particular form, either material form or a live performance. They are neighboring rights bc they relate to the manifestation of a work rather than the work itself

– Repro of a sound recording implicates rights of (i) the author/lyricist 3(1)(b)(d); (ii) the performer 15(1) and (iii) the maker of the recording 18(1)

a. Copyright In A Performer's Performance – S. 15"performer’s performance” means

(a) a performance of an artistic, dramatic or musical work, whether or not the work was previously fixed in any material form…(b) a recitation or reading of a literary work…(c) an improvisation of a dramatic work, musical work or literary work [whether or not it's based on an existing work]

If the performance is not fixed the "performer" the sole right to communicated to the public by telecommunication, to perform it in public, and to fix it in any material form. If the performance is fixed, the performers rights very under the Rome convention and WPPT.

b. Copyright In Sound Recordings – S. 18Gives the "maker" of a sound recording the sole right to publish, reproduce, license, sell or communicate the sound recording to the publicFixation of a performance requires the performers consent

c. Performer And Maker's Right To Equitable Remuneration For Performance In Public Of A Sound Recording – S. 19Anyone who performs a published sound recording of a musical work in public or communicate to the public by telecommunication must pay royalties to the collective society that represents the owners of the rights to the recording [to be divided 50-50 btwn maker/performer]

– Same goes for communication to the public of a recording of a literary or dramatic work

5. OWNERSHIP (deriving from "Authorship") AND ASSIGNMENT – 13(7), 13(4), 14.1(2) Rule: The grant of an exclusive license must be in writing [Robertson] and registration is necessary to ensure that a subsequent valid registration does not invalidate an otherwise bona fide unregistered assignment

Rule: Partial assignment of the rights conferred by 3(1), there may be different owners of different parts of a copyright

Rule: it Moral rights cannot be assigned but may be waived in whole or in part (14.1(2))

a. Assignment make sure you get them registered!University of London Press Facts: There's copyright in the mathematics papers prepared by teachers, but who owns it? Teachers, University, or the Publisher?

Teachers not "employed" by the University, so they're the first owners.. They did not execute an assignment in writing in favor of the University. However, there was an obligation under their contract of employment to assign such rights to the University, so there was an "equitable assignment" to the University who had assigned its rights to Press. So the latter is now equitably entitled to the copyright in the examination papers

Held: Press is owner of the copyright in equity, so can sue University of Toronto Press for infringement [but there were confounding issues]

Robertson – Globe's argument that it had "an implied license" from the freelance journalists to convert their articles as part of its online database was rejected because an exclusive license needs to be in writing.

b. RegistrationYou don't have to register your copyright [but it’s integral to an assignment to ensure someones subsequent registration doesn’t invalisate yours], but if you do there are certain advantages. Registration of copyright means that the information on the register is evidence of what it says [53(1)]. Further, there are presumptions in the subsistence of copyright and that the author owns it, that the author named on the work is in fact the author, or if no name appears, that the publisher is the author [34.1].

c. Term – s. 6 1. Works of joint authorship – 50 years from the death of the last joint author2. Works published post-humously – 50 years from the end of the first year of publication3. Cinematographic works without a dramatic character – 50 years from the end of the year of first publication4. Any work subject to Crown copyright – 50 years from the end of the year of first publication5. Performers performances – 50 years from the end of your performance, unless fixed in a sound recording in which case 50 years from

the end of your fixation6. Sound recordings 50 years from fixation, but if published in that timeframe, extended to 50 years from the end of year of publication

6. INFRINGEMENT – ss. 27(1)-(2), 28.1, 28.2 27(1) "Infringement" = doing anything that only the owner of the copyright has the right to do – 27 (1)

27 (2) "Secondary Infringement" = Exploiting a work [that one has not copied or reproduced themselves] commercially by sale, hire, distribution, public exhibition, or importation for sale, if he or she knows or should have known that the work itself infringes copyright, or would infringe copyright if it had been made in Canada – 27 (2) – Roy Expert

a. Literary WorksPreston – You gotta copy a substantial part, or a subset that was so readily identifiable it could be deemed a substantial part (distinct chara)Facts: Claim that “space pets" script was ripped off as "return of the Jedi", in addition to the character EWOKSHeld: No substantial part of "space pets" was reproduced in "ROTJ". Lucas had no direct access to the film standard practs was to return for this very reason, but access might be inferred from similarities "many of the detailed similarities can be traced to the common store of folklore about primitive species with human characteristics upon

which Lucas was free to draw as work Preston and Hurry This seems of vines, forest habitat and housesHeld: Even if the EWOKS were copied there was no copyright in the characters Generally there cannot be copyright in a mere name, but where the name identifies a well-known character copyright in the name and

associated character may be recognized [have regard to the definition in Exxon about copyright in a simple name] Court said look, prior to Lucas nobody knew what an Ewok was so Preston and Hurry can say he copied a well-known character Test: The less developed the characters, the less they can be copyrighted; that's the penalty to pay for making them indistinctly Both had ridiculous explanations for how they came up with the characters (Preston - song "he walks alone I walk alone"; Lucas – derived

from wookie)

Nichols – Protection of non-literary aspects of one's workFacts: Plaintiff author of "Abby's Irish Rose". Defendant produces a movie called "The Cohens and the Kelly's" w/ Rule: "Protection can't accrue only to the literary text, else a plagiarist would escape by immaterial variations"Issue: What happens when a plagiarist doesn't take out a piece in situ, but an abstraction of the whole? – Idea vs. ExpressionHeld: If there were any appropriation it was of the "idea" (i.e. format of the play), not the expression. The characters weren't distinctive enough to show that they had been copied – they contain only general characteristics France Animation v Robinson – Found the characters of a proposed children's TV series were appropriated by the makers of a cartoon

series in Québec. There, it was the accumulation of elements that was determinative, but no one element on its own

b. Dramatic WorksRoy Export-Defendant liable in secondary infringement for renting out old 16mm films, including the plaintiff's "Payday" and "the Gold Rush" Charlie Chaplin movies (recall the copyright subsists for 50 years after death). He wouldn't have been had he complied with the plaintiff's solicitors cease and desist letter, but once he was made aware he was dealing in infringing copies he ceased to be renting in good faith. An injunction was granted, he had to deliver up all copies of the work, he had to account for profits. ($200) and pay costs

c. Musical WorksCopyright in a musical work can be infringed by, among other things, performing it in public, reproducing and, recording it, and communicating it to the public by telecommunication [3 (1)].Rule: Reproduction needs to be proved by showing a "substantial similarity of musical elements (melody, rhythm, harmony etc.) and by showing the similarity results from copying and not from independent composition

d. Artistic Works (moral rights especially important)"maps", "charts", and "plans" included as "artistic works" [formerly "literary works"]- An artist retains the sole right to present their work at a public exhibition for a purpose other than sale or hire- Not an infringement to make/publish picture of a sculpture/work of artistic craftsmanship if permanently situated in a public place- Not an infringement to take/public pictures of an architectural work [32.2 (1) (b)]- If the work is a painting, sculpture or engraving, the authors right is violated by any distortion, mutilation, modification [deemed

prejudice via 28.2 (2)]

Kaffka v Mountainside Developments – copying of architectural plans Facts: Father owns land in horseshoe Bay he wants to develop. Made numerous attempts to get city approval of plans to no avail. His son, an architect, steps in, draws up some plans, and gets approval. Plans never carried forward. Father gets offer son won't match and sells land to developer. Developer can get approval, so ends up using the sun's drawings. Son sees the buildings being erected and goes WTF?1. Whether the plans display the artistic character/design [aka "originality"] essential to "an architectural work of art"

Held: Yes. 3 designers attacked the problem, only his were accepted. If anyone could do this, why’d the developer copy them?2. Did develop or acquire a license to use them? I

Held: No. The father was not in a position to convey a license. Even if he was, he made it clear they were to negotiate with the son3. Was there "substantial copying of the designs"?

Held: There are a number of differences, but they are essentially matters of detail (#of bedrooms, window placement, roof design)4. Note: he could've also argued breach of moral right to be associated with the work [but couldn't get double recovery]5. Damages: No profit building hadn't been sold yet, BUT the plans were used with a view to substantial profit! Breach of copyright –

$6500; Conversion $100; Deliver up plans

e. Secondary Infringement[see Roy Expert above]Euro-Excellence – In order to constant to secondary infringeme, the copyrighted work being dealt with must be more than merely incidental to the matter being dealt with as a whole – Selling Tolberones in Canada bought legally elsewhere, but not entitled to be marketed here.

f. Authorizing Infringement – s. 3Simply providing the means/mechanism by which copyright infringement may occur his noninfringement in and of itself (unless fixed with knowledge that it's actually going on) – CCH; SOCAN Case

Exceptions:g. Fair Dealing

""Theberge reflected a move away from an earlier, author-centric view which focused on the exclusive right of authors and copyright owners to control how their works were used in the marketplace" - Bell

"Fair dealing is a users right, in contrast to the rest of the Act which deals with owners rights" – Access Copyright

– Research, Private Study, Education, Parody or Satire [29] – No req of attribution for parody or satire– Criticism or Review [29.1] – Requirement that you state the authors name– News Reporting [29.2] – Requirement that you include the source

Rules of construction:– "research must be given a large and liberal interpretation in order to ensure the users rights are not unduly constrained" -CCH– The concept of "research" should not be limited to research for the purpose of making a creative work – Explicit rejection of the

American requirement of a "transformative process" -Bell – The word "private" in "private study" shouldn't be understood as requiring users to view copyrighted works in splendid isolation" –

Access Copyright re classroom studiesTest

(1) Was the dealing for the purpose of either research or private study and (2) Was it fair having regard to:1. The purpose of the dealing [look to the allowable purposes, is it one of them?]

– The predominant perspective is that of the ultimate consumer – what was their purpose in using the work – Bell– If the copier/user are separate persons, must determine whether they have a symbiotic or separate purpose – Access

2. The character of the dealing [multiple copies, widely distributed, destroyed or not, single use]– it may be relevant to consider the custom or practice in a particular trade or industry to determine what's fair

3. The amount of the dealing [in proportion to the work – not the aggregate amount of copies- CCH affd in Bell]4. – Aggregate amount considered the "character of the dealing"5. Alternatives [was there a non-copyrighted equivalent that could've been used]6. The nature of the work being dealt with

– [is it published or unpublished? Is it widely known or relatively obscure? Is a confidential] Reproduction w/ acknowledgment of an unpublished work could lead to wider dissemination – good thing

7. *Critical - Effect of dealing on the work – the question is always going to be asked whether they can show lost sales– is the reproduced work going to compete with the original in the marketplace?– No evidence decreased textbook sales were result of teachers photocopying in Access Copyright

CCH – Providing Law Reports = Fair DealingReaction was strong to this case because people originally assumed private study related to a single person or two sitting at a deskPurpose: Argued to be commercial bc it's for lawyers to profit. Court said no, the library had strict controls on the copying and partly in the public's interest to have lawyers have access to cases etc.Character: Lots of controls – only one copy at a timeAmount: Library and would review requests for more than 5% of the secondary source, which may be refused.Alternatives: No alternatives to the custom photocopy service employed by the great library. Lawyers couldn't be expected to come down there every time they need something – many live or practice far away . Plus, there were restrictions on borrowing due to heavy demand so photocopying was necessaryNature of the work: Judicial decisions essential to legal research, + Access policy put reasonable limits in placeEffect: Law publishers couldn't make a causal link that the great library was causing them lost salesOther Grounds that failed: Faxing copies to individual lawyers ≠ A communication to the public via telecommunication [3 (1) (f)] Selling copies to lawyers ≠ Secondary infringement bc the copies dealt with weren't infringing copies

BELLRatio: Commercial Internet site allowing free "music previews" is fair dealing for the purpose of research Facts: Users entitled to "stream" music previews as many times as they want, whether or not they make a purchase. SOCAN wants royalties for this. The court says no, you get royalties for downloading but not the free previews.

– Planning the purchase of a download involves "search and investigation" [consistent with liberal interpretatio from CCH]– Rejects Americans req "transformative process"– "that's one purpose, but so too is the dissemination of works– Amount: 30 seconds is a modest dealing when compared to purchasing the work– Character: 10:1 streams vs purchases, but no permanent copy left on users computer– Alternatives: Advertising, Album artwork, User Reviews etc. but this would req cumbersome/unrealistic return policy– Nature: Unless a consumer can locate the right work, there would be no purchase. Wider dissemination served here– Effect: Previews increase sales, not diminish them + they are relatively short, so can't compete with the full work

Access Copyright – Decided before 2012 amendment for fair dealing to include "education" [case may be moot]Facts: Teachers making copies of material licensed from Access Copyright for wide dissemination to studentsHeld: SCC overturned the Board's decision that the copies are for "research or private study", but not fair dealing Issue: In contrast to CCH, where lawyers requested copies, teachers here were making copies on their own initiative. In other words, the purpose cant be "research or private study" because the person making the copies isn't doing either.Rule: Where there is no such separate purpose between the copier and the user, their purpose is symbiotic.Rule: "Private study" doesn't require study in splendid isolation – classroom studies are private studiesMajority: they're only taking single articles from books. Minority: Yes, but theyd return to take others = eventually whole thing

h. Statutory exceptions – [see page 284 for full list]1. Shepherd Fairy Hypothetical – Obama poster from pre-existing photograph29.21 – It is not an infringement for an individual to use an existing work [or copy of one], which has been published or otherwise made available to the public, in the creation of a new work in which copyright subsists for that individual, IF

(a) it is used solely for noncommercial purposes(b) the sources stated where it is reasonable to do so(c) there was reasonable grounds to believe that the existing work was non-infringing copy(d) the use/authorization/dissemination of the new work does not have a substantial adverse effect on the old work

*Poster maker would be okay if not used for commercial purposes, but would have to show no adverse effect on original owners photograph

2. Whole bunch of them for educational institutions

3. Copying onto an audio recording medium for private use [levies now in place for blank CDs, but not digital devices – 79, 81]

7. REMEDIES & LIMITATION PERIODS – Infringement of copyright or moral rights = civilly liable. Remedies may include common law or statutory damages– "Damages for copyright are at large, and may be dealt with broadly as a matter of common sense the professing to be minutely acurate – Kaffka – "in most cases damages should not exceed what an owner would've charged for the license of his copyright" – Kaffka1. Restitution for profits the infringer made [35 (1)] – Roy Export2. Any loss + profits of the owner could have made [35] - Kaffka

a. an owner may elect a statutory award instead of common-law damages[38 i. If for commercial purposes – $500-$20,000ii. Is for noncommercial purposes – $100-$5000

3. Infringing copies may be recovered as if they were the owner of the copyright property [38]4. Only an injunction is available for "innocent infringement" where the infringer had no reasonable ground for suspecting the copyright

subsisted in the material [39]5. Possible criminal sanctions and fines [see below]

Limitation Period = 3yrs from the date the owner knew or could have reasonably been aware of the infringement

8. DIGITAL RIGHTS MANAGEMENT The issue is how far owners ought to be able to go in deploying technological devices that deny users the ability to use a work in a manner that copyright law would otherwise allow them to do. The 2012 amendments responded fairly strictly

– Full range of civil and statutory remedies for anyone who circumvents a technological protection measure (or provides such services)– Criminal liability for circumventing a technological protection measure [42 (3.1)]– Exceptions include breaking it for the purpose of encryption research etc. [page 27]

9. CRIMINAL LIABILITY The criminal sanctions are mainly aimed at capturing organized trafficking and infringing copies

– Criminal liability for circumventing a technological protection measure [42 (3.1)]– A variety of commercially motivated infringements are defined as hybrid offenses

Summary Conviction – $25,000 fine or 6mnthsIndictable Conviction – $1 million fine, 5yrs, or both

– Making them for sale or rental; telling them, renting them out or offering them for sale; distributing them for the purpose of trade to such an extent as to prejudicially affect the copyright owner; it is public or create; importation for sale or rental [section 42]10 INTERNATIONAL

SOCAN case rejected the copyright board’s ruling that servers had to be in Canada. They said the Act captures any int’l communication that has a R&SC w/ Canada

PatentsThe underlying rationale for the entire Patent Act and the monopoly extended to "inventors" is that if such persons aren't extended the monopoly afforded by the act, what incentive would there be for the creation of new things? The monopoly

kicks in where there has been an "invention" as opposed to simply the development of a new idea (i.e. mere scientific principle or abstract theorem). The "bargain theory" dictates that in exchange for this monopoly, the quid pro quo is that

the invention be disclosed to the public after 18 months. Teva illustrates the problem of an Applicant failing to disclose clearly which of the "inventions" is actually useful and what it is useful in relation to, notwithstanding that a person skilled in the art could subsequently figure it out with a bit of research. As was seen, inadequate disclosure invalidates the patent.

Patents

The underlying rationale for the entire Patent Act and the monopoly extended to "inventors" is that if such persons aren't extended the monopoly afforded by the act, what incentive would there be for the creation of new things? The monopoly kicks and where there has been an "invention" as opposed to simply the development of a new idea (i.e. mere scientific principle or abstract theorem). The "bargain theory" dictates that in exchange for this monopoly, the quid pro quo is that the invention be disclosed to the public after 18 months. Teva illustrates the problem of an Applicant failing to disclose clearly which of the "inventions" is actually useful and what it is useful in relation to, notwithstanding that a person skilled in the art could subsequently figure it out with a bit of research. As was seen, inadequate disclosure invalidates the patent.

1. PatentabilitySection 2

"Patent" means an "invention"“Invention” means any new and useful art, process, machine, manufacture or composition of matter, or any new and useful "improvement" in any art, process, machine, manufacture or composition of matter; [Blom – Invention = The incarnation of an idea]

Section 32: "Improvements"32. Any person who has invented any improvement on any patented invention may obtain a patent for the improvement, but he does not thereby obtain the right of making, vending or using the original invention, nor does the patent for the original invention confer the right of making, vending or using the patented improvement.

Eligible inventions: Note that it includes "things" but also the "process" used to create the "thing".Test: It's got to be a "new" AND "useful"

(a) Art(b) Process(c) Machine(d) Manufacture(e) Composition of matter(f) Improvement (section 32)(g) New use for an existing thing (Shell Oil – Use of existing compounds for plan food)

a) Novelty – 28.2General rule: Novelty is not concerned with who discovered/invented the patentable object first. Rather, it's about who made the invention available to the public first. A patent is not novel if the application to register the patent is brought more than one year beyond it having become available to the

public A prior invention will not be recognized to set aside a subsequent invention if the former was not publicly known until after the latter

applied for its patent."The public" is given a fairly liberal test. Basically, if you can prove the invention was for sale somewhere a letter one will not be novel

Anticipation – "Sound Prediction"Application – Allows the applicant claim several inventions as alternatives for being useful in relation to X,Y,ZDefinition – A patent for an invention and not yet known for sure to be useful is still valid if the factual basis relating to its utility (a basis that must be disclosed) enables a person skilled in the art to make the "sound prediction" that it will work.

Obviously, it's easier to substantiate a prediction as "sound" if it turns out (after the claim date of the patent, which is the critical date because if you know for sure what it's useful in relation to before filing the patent you cannot disclose alternatives) to be correct.

If it turns out that the "sound" prediction was in fact wrong, nobody's going to argue about it because that means the patent will lack utility

Apotex v. Sanofi-Synthelabo – What happens when a predecessor patent has expired, and a newer, more specific patent is sought? Is the latter "novel"?Facts: The Applicant attempted to patent a specific compound found to work much better than any other compound in its original patent, something that wasn't known when the original patent was granted. There was opposition on the grounds that the invention was covered by the first patent, whose term had now expired.Rule: You can always register a novel use of the same patent subject matter is not previously claimed (as in Teva via sildenafil for ED, whereas previously only used right retention).Issue: However, when there is no new "use", but something is just found to work much better than previously known, there is the potential for "Evergreening cascading patents that continue in perpetuity from continually increasing specificityHeld: The selection patent was valid because the particular therapeutic properties of the specific patent were not disclosed or no one by the earlier genus patent.

Before holding the selection patent invalid, the court had to consider "obviousness" via the earlier patent. [In other words, whether the invention, but not previously disclosed, was nevertheless a straightforward "non-inventive" variation of what was already known. The court held that to be "obvious" a person skilled in the art, who is not inventive, would have had to do some, but not too much, trial and error in order to confirm how to arrive at the variant.

Here, it took Apotex is a fairly significant amount of time to figure exactly which particular compound was better. They did lots of testing on different isomers that spend lots of money. That's not obviousness via routine trial and error, that's an actual invention.

b) Non-obviousness – 28.3The subject-matter defined by a claim in an application for a patent… must be subject matter that would not have been obvious on the claim date to a person skilled in the art or science to which it pertains [having regard to information disclosed at least a year earlier, generally]

c) Usefulness/UtilityTest for Utility: Does the invention do what’s promised?Exception: 27(8) A mere scientific principle or abstract theorem cannot be the subject matter of the patent, primarily because disclosure in the patent application requires stating that the "invention" is "useful" in relation to something [ie. what it will be used for] and you can't really say what these "ideas" [that's what they really are] are useful for.

Mayo Collaborative Services v Prometheus – USSC [app note: Not based on the Canadian Act]The US Supreme Court rejected an application to patent a method of gauging the correct dosage of the drug – the process amounting to nothing more than using the laws of nature (though it was certainly a novel discovery) to achieve certain results using well-known techniques

Teva – Pfizer on the patent on Viagra. In its application it claimed patents over several compounds, but the issue was whether Pfizer clearly disclosed which of the compounds was the useful compound in Viagra. Subsequent to the application everybody knew that sildenafil was the active compound in Viagra, but on the date the application was filed it was not clear whether the active compound was the one specified in claim 6 or claim 7. As such, the patent was invalidated [there being the remaining issue regarding whether it was within the power of the Supreme Court of Canada to invalidate the patent when all that was sought was a notice of compliance].

d) Claim Date/Priority – 28.1Rule: The patent treaty allows an owner from a treaty state to get priority in our country over a subsequent same invention from the date of filing its first application in the foreign state [*as long as the actual application date is within one year of making the invention pubicly known]28.4 If 2 or more foreign applications made, Priority in Canada that is judged according to the earliest filing date of the foreign patents

2. Construction of patents27(3) - Continuing validity of a patent requires that the disclosure must enable skilled person to produce it using only the instructions in the disclosure

3. Subject Matter of the Inventiona) General Criteria – Shell Oil

The new use of a "known" invention is nevertheless an invention in and of itself even if the only discovery is how to use the particular pre-existing invention for a new purpose [Here, the use of existing compounds for plant growth regulators] – Contrast to Lawson, below

b) Professional Skills or Methods; Schemes or Plans – LawsonArchitect/Engineer was denied an application to have his "novel" method of subdividing land registered as a patent. The court decided that it wasn't "a new use of something", but rather simply a new pattern by which land could be subdivided [the application of a professional skill/method]

c) Medical Treatment – Tennessee Eastman79 (2) An invention pertains to a medicine if the invention is intended or capable of being used for medicine or for the preparation or production of medicine.

Tennessee held the methods of medical treatment could not be patented, but partly because it would enable patents to be obtained indirectly for medical drugs [which at the time, though not now, was disallowed]. Facts: Tennessee Eastman sought a "process" patent for a surgical method of bonding/gluing patients together. Includes themselves were not new; the alleged discovery was her application for stitching wounds together.

Take away: Whether the ban on patenting medical treatment is still the boys opened a question, but a lot of medical treatment would be non-patentable anyway on the Lawson principle that is concerns professional skill and not an "invention", per se

d) Information TechnologySchlumberger and IBM struggled with the line between abstract ideas and inventions in relation to computer programs. Computer programs, no matter how complex, were treated as nonpatentable per se because they consist essentially of a series of instructions designed to get computers to take certain steps, and instructions as such are not an invention. On the other hand, if the instructions interact with the computer (or any other equipment) to produce a computer that functions in a new way (as distinct from functioning as usual to perform a new task according to the program's instructions), IBM took the position that it qualifies as an invention.

e) Business MethodsAmazonThis case upheld the patentability of "business methods", in principle, but left a bit of uncertainty because the court declared Amazon's patent valid notwithstanding that it didn't seem to meet the test that the court ultimately set out.Test:(1) The method had to be something with physical existence or something that manifests itself in the form of a discernible effect or change(2) It is not enough that the invention perform a practical task, because an abstract idea is no less abstract for being put to practical use(3) Merely using a computer does not qualify a method as in inventionLingering question: Does an invention require a change in the physical world? It's not so clear

f) Living Matter (Patent an entire organism, no; A genetically modified organism, no; A single cell, yes; Genetically modified gene, maybe, GMO Plants, yes – that's permitted by the Plan Breeders Right Act.Harvard Mouse Whether or not patent protection advances research and development was part of the issue in Harvard regarding whether one should be able to patent a living organism (more complex than unicellular organisms, which the patent office accepted for years)Majority – the practical and theoretical difficulties arising from "living inventions" were such that Parliament should be taken not to have had them in mind when drafting the Patent Act.

The majority struggled with the concept of the most being patented, saying it's clearly not a machine, manufacture or art. It can only be a composition of matter but the patent application didn't provide a sufficient description of the "invention" in relation to human matter because the object wasn't primarily put together with human agency. Genetic modification was only a small part of the mouse – the rest was left to nature.

What really seem to trouble them was the moral issue that this may lead to patenting human lifeMinority – claimed the majority was reading in a limitation to the Act that wasn't actually there

Nothing in the act prevents living things from being patented How could the court possibly distinguish between some forms of living matters and others (i.e. it's arbitrary to allow single cell

organisms but others Minority said there won't be any patenting of human life, but contrary to public policy and we would never allow that

The key seemed to be that Harvard was looking for a patent on the mouse itself, not the fertilized egg

MonsantoFacts: The plaintiff developed GMO canola seeds that were resistant to certain pesticides and license of them to his fellow farmers on the condition that they not resell them or save them for replanting. The defendant never bought the seat, but tests showed 95% of his crops were resistant. Turns out the seeds would blow on the defendant's field and he would save and process them. The plaintiff's patent was for the modified gene in the insertion process, not for the plant itself. As such, the defendant argued that he hadn't really made "use" of the invention because the patent wasn't for the whole plan/seed – only the modified gene. Moreover, he hadn't take advantage of the "invention" because he hadn't sprayed the pesticides that the plan was resistant to.Issue: If you have a patent on a gene, does that patent extend to the organism with which stitching is incorporated. Yes!

The court granted Monsanto a patent over a genetically modified gene, but went further to extend that protection over the cell to the entire organism with which it was incorporated. [This gave Monsanto a patent relatively close to what Harvard was asking for in patenting its mouse]. The Monsanto case also held its hat on a very broad definition of "use" because without extending protection to the entire organism there was really no way that Monsanto could've protected its patent on the gene. In other words, it wouldn't be a "useful" invention if the monopoly were only to extend the lab.

Parallels were drawn to Machines, whereby if one uses a machine that has a smaller patented part within it, that patent has been infringed (so long as the part within is a "significant" part of the whole.

The court wasn't too concerned with the fact he never used "Roundup" to spray his crops. He could have, and use for a commercial purpose is presumed to be an infringement.

A number of problems that trouble the majority in Harvard (an invention that replicates itself, the potential impact on agriculture, the borderline between plant or animal and human matter) arise just the same under the principle in Monsanto.

Takeaway: It basically overturned Harvard Mouse. Today, as a GMO inventor there is very little protection you can get. You still can't patent the living thing itself, but you can patent a seller gene within the living thing. Then, anyone that makes or uses an organism containing that cell/gene is infringing your patent.

4. Infringement53 (1) – a patent is valid if disclosure is withheld for the purpose of misleading54 – right of action for infringement55.1 – burden of proof for constant process for obtaining new product55.2 – exceptions to infringement75 – offenses

a) "Making, Constructing and Using the Invention"

5. Term20 years from the date of filing

TRADEMARKS

"The economic value of intellectual property rights arouses the imagination and litigiousness of rights holders in their search for continuing protection of what they view as their rightful property" – Kirkbi v Rivtik ("Lego Case")

The Trademark Act is almost predicated on the "first in time, first in right" principle, whereby the rightful owner of a trademark (whether registered or not) that has been "used" or "made known" in Canada may challenge any subsequent actual use of that precise mark - or another mark that is confusing with the one first used or made known. The foundation of the ownership rights in a trademark stem from section 19 which confers upon the owner the right to exclusive use of the mark. Section 12(1)(d) of the Act might be purposefully construed as the embodiment of the section 19 right to exclusive use, by stating that a trademark is registerable if it is not confusing with a registered trademark. The right of an owner to protect his exclusive use of an unregistered mark is given by section 16, which provides that a person is not entitled to register and otherwise registrable mark if this confusing with a trademark that had been previously used or made known in Canada. Note that the requirement in section 16 is simply that the mark have been "previously used" [as opposed to "registered" as required by section 12(1)(d)]. The circumstances in which an unregistered mark may become "known" in Canada are set out in section 5, which deems a trademark to be known in Canada if it is used in a country of the Union in associan with the wares/services distributed or advertised in print or radio in Canada and the mark has become well known.

Passing Off

*Statutory passing off is narrower, and may not cover a case like advocaat. Otherwise there’s not much diff, except that if you’re in the FC you must proceed on the statute. If in a PC, either apply.

Definition: Holding out/soliciting goods/services in a way likely to lead consumers to believe the goods or services are associated with that of another.

Primary Purpose: Protection of an owner's proprietary property interest; Suppressing unfair competition; Certainty

Rationale/Policy: "The look, the appearance, and the get-up of a product play a crucial role in the purchase process since they are the chief means at the manufacturer's disposal to attract customers… The customer expects to receive a given product when he asks for and should not be deceived… [Some products may be interchangeable], but the customer may count on having a specific product [with valid reasons for such a choice]: habit, satisfaction, recommendation, desire for change etc. – Ciba Geigy, per Gonthier

Common-Law3-Part Test ( Advocaat; Ciba-Geigy ) w/ exception for public policy (i.e. courts careful not to hamper competition) 1. The existence of goodwill in the distinctiveness of the thing/business/name – Goodwill must relate to the distinctiveness of the product, not the process/techniques by which it was created – Kirkbi – Goodwill can reside in Canada even if the product/business does not –Orkin2. Deception of the public due to a misrepresentation – Deception does not require intention – Walt Disney Productions; LSBC – Possible to presume confusion from Goodwill + Misrepresentation – Walt Disney – The test for confusion: That of an ordinary public average consumer, and one of first impression (i.e. a person having at best, a general recollection of the product/business of the plaintiff) – Walt Disney – Who is the public: Must include the ultimate consumer of products – Ciba-Geigy – The standard is not that of a person familiar with the business/services of either –Must establish that a substantial/appreciable #of people would be likely to be confused3. Actual or potential damage to the plaintiff –Can be economic, confusion, or loss of control over one's trade name and the ability to exploit one's goodwill in unventured geographical areas – Walt Disney – Can presume proof of damage from misrepresentation + confusion bc it's theoretically possible that a defendant could pass off something better *Consumer/Customer have no standing to bring an action – only the party injuredErven Warnink (“Advocaat Case”) 3

Facts: P Warnink makes and sells Advocaat in England. D Keeling makes "egg flip", but wants to avoid liquor tax on this drink and take advantage of goodwill in Advocaat, so start calling it "Keeling's Old English Advocaat".Ratio: Extended protection of passing off to descriptive terms based on the "Champagne Case", deciding that the descriptive terms receiving protection needn't relate only to geography

Ciba-Geigy 14 Facts: Generic pills for hypertension being marketed with same getup is the namebrand version.

Issue: The public must be "confused": does this mean only doctors/physicians or ultimate consumers? Held: Ultimate consumer of the product must be taken into account – Pharm industry no different from any other.

Notwithstanding doctors wouldn't be confused, the less control a consumer has over what he receives it becomes all the more necessary for him to be able to exercise some kind of control over what he is being given [i.e. the right to refuse it or request substitution for name-brand]

"there's no question that confusion – the essence of passing off – must be avoided in the minds of all customers whether direct (i.e. retailers) or indirect (consumers). It is necessary to avoid confusing anyone who has an actual or potential, immediate or remote, connection with the product.

Walt Disney Productions ("Fantasyland Case") 37 – Test for confusionFacts: W Edm Mall construction amusement park + hotel called Fantasyland. - Disneyland had established goodwill in Canada in the name fantasyland via secondary meaning - Fantasyland was not merely descriptive – it was distinctive [in relation to AP, but not it will all H]- Using the name Fantasyland = misrepresentation (signifies two were somehow associated). - 5-10% of ppl surveyed were confused – sufficient to satisfy substantial/appreciable number of ppl- Admissibility of survey evidence and weight placed upon it within the purview of TJHeld: (AP = Injunction; H = All good)

LSBC v Domain Name Exchange Corp. 58Facts: Law society wanted an injunction against defendant from using losses the domain names for pornIssue: Goodwill "Law Society of BC" but perhaps not just "Law Society"; Other arguments = no confusion & no damage

- Court says LS’s goodwill not diminished by the fact there are other law societies- Misrepresentation exists = it name indicates the two parties are associated [remember, need not be deliberate]- Damage = No proof of actual damage, but loss of reputation sufficient

TMA, s. 7Kirkbi v Rivtik 68 – Passing off and TM may not vehicles to perpetuate monopoly of rights under now-expired patentsFacts: Lego patent expires. Registration of the "Lego Indicia" as TM fails. Applicant now alleges infringement of "Unregistered TM” in the Lego Indicia and common-law passing off.

- Action successful even though it's a regulatory authority – not a business- Doctrine of functionality applies to all trademarks, registered or unregistered

Trade-Marks1st in time, 1st in right system

Generic terms becoming distinctive: Camel Hair Belting; "Off!"Rule: Must Be Used to Distinguish Wares or ServicesRule: Distinguish between actual vs proposed use registrationsRule: Can amend registration to make TM in association with new products later

7. No person shall (a) make a false or misleading statement tending to discredit the business, wares or services of a competitor; (b) direct public attention to his wares, services or business in such a way as to cause or be likely to cause confusion in Canada, at the time he commenced so to direct attention to them, between his wares, services or business and the wares, services or business of another; (c) pass off other wares or services as and for those ordered or requested; (d) make use, in association with wares or services, of any description that is false in a material respect and likely to mislead the public as to (i) the character, quality, quantity or composition, (ii) the geographical origin, or (iii) the mode of the manufacture, production or performance of the wares or services; or (e) do any other act or adopt any other business practice contrary to honest industrial or commercial usage in Canada.

"Trademark" means (a) a mark that is used by a person for the purpose of distinguishing or so as to distinguish wares or services manufactured, sold, leased, hired or performed by him from those [of] others, (b) a certification mark, (c) a distinguishing guise, or (d) a proposed trade-mark; (If proposed, must state in relation to what and file a declaration of use within three years)

1. The meaning of "use" s19 confers on a Registrant the right to "exclusive use" s2 – "use" means use as defined in s. 4 [which sets out circumstances were TM will be deemed to be used]

- Use or display in the performance of advertising- Transfer of property, if at the time of transfer, the trademark was displayed on wares or packages or displayed in any other manner

that communicates notice of Association in the mind of the person receiving the goods- Marks stamped on packaging in Canada deemed to be used in Canada if exported elsewhere

Clairol – Revlon distributing packages and color comparison charts using Clairol name as comparator. Letter attacks under 7(d) & (e)Held: Yep, they're "using" Clairol name but not in any way contemplated by TMA s7. Moreover, the s19 right to exclusive use means the right to exclusive use in distinguishing wares or services as their own. Here, Revlon wasn't saying look these are Clairol products – it was the exact opposite. They were explicitly saying this is not a Clairol product.

2. The meaning of "to distinguish wares or services" Shredded Wheat V Kellogg's – now covered by 12 (1)(b): Can't TM word that's clearly descriptive unless it's acquired secondary meaning to become distinctive [even then, only in that particular area where used]Facts: Kellogg's puts out "Shredded Wheat" product. Shredded wheat wants injunction; Kellogg's challenged regHeld: If you want a monopoly on the use of the name, you have to prove its distinctive of your wares or services. Here, any company could market "shredded wheat" and they wouldn't be lying, nor would it be confusing.

– "Shredded Wheat" is a generic term, not distinctive in and of itself. They failed to prove it had acquired secondary meaning (like Camel Hair Belting had).

Nintendo Case – Defendant put out products to change parameters of video games, and said "to be used with Nintendo". Just like Clairol case, wasn't misrepresenting their product as Nintendo, just said you can use it with or instead of. That it worked "with" Nintendo was just a description of the character of the product. Didn't diminish goodwill because it actually increased sales.

3. The meaning of "for the purpose"Tommy Hilfiger – For the purpose≠ Intent. Issue: Did International Clothiers use the Tommy Hilfiger mark "for the purpose" of distinguishing the wares as their own? Yes.Rule: If the TM even unintentionally distinguishes wares as those of the Appellant when in fact they are not, infringement is made out. – Either one or both of the user's intention or public recognition can satisfy "for the purposes of distinguishing" irt actual use of the mark– But, only the public's perception matters if we are talking about the use of a different mark that is alleged to be confusing (Mattel)Facts: D bought wholesale lot of shirts containing Hilfiger crest. Attached "Garage" tags and sold as its own.

Registration of Trade Marks - [Once registered, TM's carry a presumption of validity – BoP shifts to on Challenger]

1. Procedure for Registration-See Page 132Generally, state when use first began (Critical bc 1st in time, 1st in right). Registrar decides on principle whether you can register (s36(1)). Then it gets advertised, people have opportunity to oppose. Registrar takes advice of opposition board. Challenger can only raise its own prior use or making known, not a 3rd party's (17(1)), or that the TM is not distinctive. Onus on the applicant to satisfy absence of confusion, or that the TM is distinctive or otherwise valid.

2. Conditions for Registration-S. 18a. Registration is invalid if at the date of application the TM was not (a) registrable [see 3 & 4], (b) distinctive,[see 6] (c) had been

abandoned, or the person bringing the application was not the person entitled to do so [see 5]Rule: Distinctiveness judged solely by referenced to the market of this country – Consorzio

b. Active use vs. Proposed use – Must state in association with X, Y, Z

3. Non-Registrable Trademarks a. Primarily merely a name or surname- 12(1)(a)

Rule: Public perception is the touchstone on this groundRule: Names non-registrable generally, but registrable if they've gone on to acquire secondary meaning in relation to certain wares/services (i.e. Barbie irt dolls)Standard Oil v Registrar of TM – Set out the test

Test: The test is not whether there is an individual somewhere in the world with the Mark FIOR as a surname, but what a person of ordinary intelligence with think it was. Facts: Registrar denied FIOR ("Fluid iron ore reduction") asserting it was "primarily merely a surname"Held: Registration permitted – FIOR is unusual, PPL just as likely to think it's a made-up word as a surname.

Gerard Horn Investments – This section of the act is subject to the de minimus ruleHeld: TJ overturned registrar's denial of Marco Pecci as TM re women's apparel. [see p. 140 for great quote]

McDonald's v Coffee Hut StoresHeld: 12(1)(a) covers the plural and possessive forms of the surname – But "McBeans" just as likely to be perceived by the average Canadian consumer as a coined word as opposed to a surname

i. Exception : One can use one's own name as a trade name [not TM] so long as it does not have the effect of depreciating the value of the goodwill attaching to another's TM (20(a))

b. Clearly Descriptive OR Deceptively Misdescriptive – 12(1)(b)Rule: Public perception is the touchstone on this groundOntario Teachers Pension Plan Board V Canada

Facts: Teachers Board tried to register TEACHERS" re administration of pension planHeld: The word "teachers" is an apt trade term for describing the intrinsic character of the administration, management and investment of applying the fund for teachers and as such, should be left for others to use

Consorzio di ParmaFacts: Italians sought to have "PARMA" struck from register for being "deceptively misdescriptive" at the date of registration; in the alternative, that it wasn't "distinctive" at time of registrationHeld: No evidence "ordinary consumer" would assume prosciutto bearing "PARMA" originates in Italy - Applicant only uses "Parma" irt prosciutto. Respondent uses it in relation to lots of other meats - Applicant challenge same Mark yrs earlier on basis of not being used – didn't argue invalidity at that time

c. Names of wares or services – 12(1)(c)TM not registrable if it is the name [in any language] of the wares or services in connection with which it is used or proposed to be used (i.e. wares: pot, hammer – services, auto repair, haircuts)

d. Prohibited marks – s. 7 & s. 12(1)(e) 9, 10 Section 9 – Prohibited Marks

Rule: Adoption of official marks by proper authority exercised by the authority giving notice to the Registrar of TM'sRule: Adoption by govt authority/University of an official Mark acts prospectively only [previous usekeep it using]Rule: Notwithstanding following prohibitions in 9(1), owner of the TM can consent to adoption of others (9(2)) atRoyal Arms crest; crest of the royal family; Arm, crest, or flag of Canada or any province; the emblem of the Red CrossRed lion and Sun (Iran) it client any territorial or civil flag of any national territorial or civic arms crest for emblem(j) any scandalous, obscene or immoral word or device(k) any matter that may falsely suggest a connection with any living individual(l) the portrait or signature of any individual who is living or has died within the last 30 years(n) any badge, crest, emblem or mark (i) Adopted by any of her Majesty's forces (ii) Of any University (iii) Adopted and used by any public authority, in Canada as an official Mark for wares or services [Ontario Assn]

Ontario Assn of Architects v Assn of Architectural Technologists of Ontario – Test for 9(1)(n)Facts: Latter adopts "architectural technician"/"architectural technologist" as official Marks, preventing former from using Issue: Whether the latter, a self-regulatory professional body, is a "public authority"Test: There must be (1) a duty to the public/public benefit and (2) a sufficient degree of governmental controlApp: Clear public benefit, but the mere fact that Gov could modify the enabling legislation was an insufficient degree of governmental control. In contrast, the Ministry could review the activities of the OAA & request certain activities etc.

*Note that the Italian Consorzio ultimately failed in trying to get an official Mark for its ducal crown bc they weren't controlled by the Canadian government and so weren't a "public authority"

Section 10 – This section prohibits trying to turn a generic indicator into a distinctive trademark."Where any Mark has by ordinary and bona fide commercial usage become recognized in Canada [meaning it's now a generic indicator] as designating the kind, quality, quantity, destination, value, place of origin or date of production of any

wares or services… No person shall adopt it as a trademark in association with wares or services of the same general class in a way that would be likely to mislead"

Section 12(1)(g) and (h) – Prohibits registration of protected geographical indications wrt wine/spirits

A person must not register (g) a protected geographical indication re a wine not originating in the indicated area (h) a protected geographical indication re a spirit not originating in the indicated areaBUT 11.18(2) says that if the PGI has now become the common name in Canada for the wine or spirit, you're good to go

e. Exception: Disclaimer of right to exclusive use over the non-registrable portion of the TM – s. 34 Lake Ontario Cement – "Premier" centered in a parallelogram ok if disclaimed

General Rule: An applicant may adopt an otherwise un-registrable mark [i.e. primarily merely a name/descriptive/simple name of wares (pot)] where Incorporated as part of a larger design/Mark if accompanied by a disclaimer over the right to exclusive use of the prohibited portion.Condition: The main question is whether the market is just, and for that purpose want to disregard the disclaimed words, for if it Tuesday that give rise to the distinctiveness, the other elements of the Mark are merely incidental to the whole.Exception #1: Disclaimer cannot, however, be used to overcome confusion with the previous mark Exception #2: A disclaimer ought not to be used in relation to a deceptively misdescriptive mark where the misdescriptive feature is the predominant mark of the entire composition

4. Confusion with a Registered Mark– 12(1)(d) the embodiment of s. 19 right to "exclusive use" Registration of a TM gives the registrant the benefit of opposing other TM's based on 12(1)(d) The owner of a non-registered TM can oppose registration of a confusing TM under 16 (1), if the non-registered owner had used is the TM

first or "made it known"12(1)(d) – a TM is not registrable if it is confusing with a registered TM

6(1) defines "confusing" as existing in the circumstances set out in that section

6(2) Hypothetical "anticipatory" confusion – "confusion" exists if both TM's in the same [geographical] area would be likely to lead to the inference that the wares or services [had the same principle source], whether or not they are of the same general class [though it's relevant]

6(5) sets out the circumstances to be considered:(a) The inherent distinctiveness of the Mark and the extent to which it has become known(b) the length of time and use(c) the nature of the wares/services/business(d) the nature of the trade(e) the degree of resemblance in appearance, sound (pronunciation), or the ideas suggested by them

Test: The test for confusion is the "the casual consumer somewhat in a hurry" having an imperfect recollection of the opponents mark

"famous marks" don't get any special treatment other than the fact they may transcend/leap from being associated with a particular type of ware/service (i.e. Dolls Backpacks). –Rule: Whether they have transcended their specific relationship to a ware is a question of factExample: Virgin so famous that to use it in relation with anything would be confusing; same w/ Apple in relation to any electronic productRule re Intention: Even if one intends to rip off/take advantage of the goodwill of another and they do so in a manner that is not confusing, there has been no infringement (as was the case in Mattel)

Mattel – Mattel opposing registration of "BARBIE’S" as a restaurant; Held: No confusion hereRule: A difference in wares or services does not deliver a knockout blow: each situation must be judged in its full factual matrix

"Barbie" is an everyday expression was strong secondary meaning; but the restaurant had also become somewhat known in the areas where they were both used

The dull business and the restaurant business appeal to different tastes and a largely different clientele No evidence that adult consumers would consider it all manufacture to be a good source of food The specificity of "Barbie dolls" in the minds of consumers probably constrain its capacity for growth The potential for confusion arising out of intermingling in a single channel of trade is not a serious problem here Evidence of actual confusion, though not necessary, would have been helpful

*Note: Had the restaurant being a strip club/garbage business, Mattel might have argued s.22 diminishing goodwill

McDonald's v Coffee Hut Stores – McBeans no infringementFacts: McDonald's opposed registration of it “MsBeans" for use in association with wares "coffee and tea" and the services of "the operation of the business dealing with the sale of such items"Arguments: Primarily merely a surname; Not distinctive of the applicant; The applicant was not the person entitled to register via confusion with McDonald's "family" of registered TM'sHeld: No infringement. McDonald's only registered TM's for use in assn w/ hot coffee are McDonald's and "McDonald's & Design". McBeans is a store whereas McDonald's is a fast food restaurant A "family of marks" can expand protection beyond what would have otherwise been given, but here the prefix Mc or Mac was

shown to be used in numerous other circumstances with food products McDonald's TM not “famous wrt coffee – despite Registrar’s findings re extensive sales, coffee = only 4% of total sales Rule: Substantial period of coexistence w/o any evidence of actual confusion = entitlement to draw adverse inference

5. Persons entitled to registration of trademarks– s. 16S. 16 – A person is not entitled to register and otherwise registrable mark if it is confusing with a TM that had been previously used (or made known) in Canada S. 6 – Confusion test – Would use in the same geographical area be likely lead to the inference that the wares of one were associated with another? 6 (5) sets of the factors to be considered [see above]

Masterpiece Issue: Whether registered TM "Masterpiece Living" should be struck via confusion re "Masterpiece Inc's" prior use ofunregistered TM Rule: The confusion test in section 6 is a hypothetical one, looking not actually it at how a registered mark is used, but how it might be Rule: The hypothetical test assumes that the marks in question are used in the same geographical location.

As such, Alavida didn't have to prove that it was going to expand into eastern Canada we assume the marks are used in the same geographical location

Rule: The test for confusion is one of first impression ("casual consumer someone in a hurry" doesn't matter that ppl putting their parents and seniors homes figure out which was which with a little diligence, or that they

would be likely to do so because of the cost involved in senior housingRule: Where the registration being challenged relates to several TM's, each must be considered individually. But even one confusing Mark will invalidate the registration

here, the court picked "masterpiece living" because it was obviously the closest to the challengers unregistered TM

6. Distinctiveness – s. 2Rule: Essential to initial and continuing validity of the registration of a TMPhilip Morris v ITLFacts: PM owns American Marlboro TM ITL owns Canadian Marlboro TM. PM wants to get into the Canadian market, so it argues ITL’s Cnd TM has lost distinctiveness bc PM’s US TM has become so "famous"Rule: "For the purposes of whether a mark is distinctive, it's to the market of this country alone that one has to have regard"Held: No loss of distinctiveness ITL's Cdn TM completely valid

Problem is that Canadian consumers rarely see the US brand, other than in duty-free stores when leaving the country There was "spillover" from US advertising, but no confusion because you couldn't get the US brand in Canada Regard given to the fact that ITL assiduously defended its brand for 55 years

Note: PM could've used passing off if it used its US Mark in Canada first, then ITL came along using it Canadian Mark in Canada.

Shredded Wheat Rule: For a word(s) to be distinctive of a person's goods, they must generally speaking be incapable of application to the goods of anyone elseHeld: "shredded wheat" undoubtedly had an initial secondary meaning indicating the product was that of the plaintiff, but when a secondary player using the same words came into the market it lost all distinctiveness

7. Distinguishing Guise – ss 2 & 13Definition: S. 2 – Distinguishing guise means:

(a) a shaping of wares or their containers, or(b) a mode of wrapping or packaging wares

the appearance of which is used by a person for the purpose of distinguishing [his wares from others]

Registrability: S. 13 – A distinguishing guise is registrable if [it has become distinctive of the actual use] at the date of filing and it does not unreasonably limit the development of any art or industry

- 13(2) – No registration of a distinguishing guise shall interfere with its utilitarian features (as in Kirkbi)

Dominion Lock – Opposition to registration of DG re outline of a key with particular geometrical form to the bow successful because: The guise wasn't distinctive of the applicants wares – it was used in the replacement key industry Granting exclusive use to the applicant of the guys would unduly limit the art or industry of key making

Kirkbi v Rivtik ("Lego Case") – Can the mark be the product itself? The distinguishing guise consisted solely of the technical or functional characteristics of the Lego

8. Certification Marks – ss. 2 & 23Definition: Subcategory of TM's, used in relation to wares or services of a defined standard with respect to: the character/quality of the wares/services; the working conditions under which they have been produced or performed; the class of persons by whom they have been produced or performed; or the area in which they had been produced or performedRule: They may only be registered by a person not engaged in the direct production/sale of wares or performance of services in association with which the mark is used (23(1)).Application: Usually registered by a trade or standards Association, who then licenses others to use the Mark in association with wares or services that meet the defined standard (23(2)).

Licensing and Transfers1. Licensing – S. 50 & 51

s. 50 – Licensing a TM doesn't cause an owner to lose distinctiveness bc there are now 2 sources, so long as the owner retains direct or indirect control over the character/quality of the wares/servicesRule: Registration of the license no longer necessary to take advantage of s. 50

Eli Lilly v Novopharm – Application of s. 50 in a passing off actionFacts: Novopharm marketing generic drug. Eli Lilly (Can) says your passing off our namebrand drug. Novopharm says no, Eli Lilly (Can) didn't get a license to use the name brand from its parent Eli Lilly (USA), so it has no goodwill.

In other words, they say (1) no license (2) even if there was, it was not for the get up of the pillsHeld: Passing off established

License to use labeling and packaging construed as extending to the get up of the pills US parent gave specific direction about the "trade dress" and retained significant control over the wares

2. TransfersEntitlement to transfer registered/unregistered TM's – 48 (1)Transfer of a registered TM must be registered with the Registrar – 48(3)Transfer of a TM can include/exclude a transfer of the goodwill of the business – 48 (1)Partial transfers: 2 or more persons exercising rights over a TM doesn't cause it to lose distinctiveness – 48 (2)

Infringement [actual] [similar mark] Primary: Infringement occurs if you “use” the mark in Canada (s19) OR use a confusing mark irt sale, distribution, adverting wares (s20) Exceptions:

– bona fide use of his personal name as a trade name– bona fide use, other than as a trademark, of the geographical name of his place of business– any accurate description of the character or quality of this wares or services

Note: None of the exceptions apply to depreciating the value of goodwill [below] Deemed Usage [s4]

- Use or display in the performance of advertising- Transfer of property, if at the time of transfer, the trademark was displayed on wares or packages or displayed in any

other manner that communicates notice of Association in the mind of the person receiving the goods- Marks stamped on packaging in Canada deemed to be used in Canada if exported elsewhere

Alternative: No person shall use a TM in a manner that is likely to have the effect of depreciating the value of goodwill attaching to a TM (s22)

Philip Morris v Marlboro Canada (ITL)Facts: Recall previously that PM (USA) couldn't get into Canada. So, it started marketing no-name "Rooftop" cigarettes. It had a "design Mark" for the entire package and registered TM's over the individual elements.Held: This infringes on ITL's Canadian Marlboro TM, not because the design illustrates the word, but because it evokes a psychological association with the word in the mind of consumers. (Panda design Mark vs someone using the word "panda" = same thing)

Key factor Canada's "dark market". "Rooftop" cigs had no name, ppl naturally called them MarlboroRatio: PM's individual marks distinctive and valid, but put together the compilation becomes confusing

Vueve CliquotHeld: Dress store's use of their registered TM was not confusing with VC's famous champagne Mark, nor did it appreciate the value of goodwill in the latter. Because of the lack of association between the two (the names were off by one letter), the dressmaker was not using the latters mark at all.

Mattel – Couldn’t quite argue use of “BARBIE” irt a restaurant would depreciate goodwill (but maybe if strip club or garbage disposal)

Clairol – Said including color comparison charts using Revlon as comparator diminished the ladders goodwill in their brand. *Blom says no, it just diminished their market share, but not goodwill.

Remedies permanent injunction interlocutory injunction ((i) serious iss to be tried (ii) irreparable harm/damage not suff remedy (iii) balance of convenience favors injunction damages impoundment of imported goods

Internationals. 14 – If you have a registered TM in another country of "the Union" advantage that Mark is also registered in Canadas. 16 & 5 – Benefit for TM's that are "made known" but not "used" in Canada entitlement to oppose registration of a confusing TM"made known" test:

TM deemed to be "made known in Canada" by a person if used in a country of the Union in association with wares/services(a) distributed in Canada or(b) advertised for in Canada in any print publication or radio it and the Mark has become well known in Canada via distribution or advertising

Types of trademarks:

1. Registered Trade Mark2. Unregistered Trade Mark3. Compilation w/ Disclaimer – Premier4. Design Mark – Rooftop5. Official Mark – Association of architects and engineers6. Word Mark – FIOR7. Distinguishing Guise

12. (1) Subject to section 13, a trade-mark is registrable if it is not

(a) a word that is primarily merely the name or the surname of an individual who is living or has died within the preceding thirty years;(b) whether depicted, written or sounded, either clearly descriptive or deceptively misdescriptive in the English or

French language of the character or quality of the wares or services in association with which it is used or proposed to be used or of the conditions of or the persons employed in their production or of their place of origin;

(c) the name in any language of any of the wares or services in connection with which it is used or proposed to be used;(d) confusing with a registered trade-mark;(e) a mark of which the adoption is prohibited by section 9 or 10;(f) a denomination the adoption of which is prohibited by section 10.1;(g) in whole or in part a protected geographical indication, where the trade-mark is to be registered in association with a wine not originating in a territory indicated by the geographical indication;(h) in whole or in part a protected geographical indication, where the trade-mark is to be registered in association with a spirit not originating in a territory indicated by the geographical indication; and

When deemed to be made known

5. A trade-mark is deemed to be made known in Canada by a person only if it is used by that person in a country of the Union, other than Canada, in association with wares or services, and

(a) the wares are distributed in association with it in Canada, or(b) the wares or services are advertised in association with it in

(i) any printed publication circulated in Canada in the ordinary course of commerce among potential dealers in or users of the wares or services, or(ii) radio broadcasts ordinarily received in Canada by potential dealers in or users of the wares or services,

and it has become well known in Canada by reason of the distribution or advertising.

“distinctive”, in relation to a trade-mark, means a trade-mark that actually distinguishes the wares or services in association with which it is used by its owner from the wares or services of others or is adapted so to distinguish them;