Industrial and Intellectual Property, Winter 2010, Prof. Wendy AdamsStephanie McKinnon
Introduction
Technological Developments and Owning Information
International News Service v. Associated Press (1918), 248 U.S. 215, 39 S.Ct. 68
Victoria Park Racing and Recreation Grounds Co Ltd v. Taylor And Others (1937), 1a IPR 308
NBA v. Motorolla (1997), 105 F.3d 841
Wendy Adams, “Personal property law and information assets”
What Subject Matter is Protected?......
David Vaver, “Intellectual Property: The State of the Art”......
Legislative Provisions
Copyright......
Nichols v. Universal Pictures Corporation (1930), 45 F.2d 119
Rosen, “Reconsidering the idea-expression dichotomy”
Trademark......
Playboy Enterprises Inc. v. Germain (1987), 13 F.T.R. 178
Schecter, “The Rational Basis of Trademark Protection”
Patent......
Diamond v. Chakrabarty(1980), 447 U.S. 303, 100 S.Ct. 2204
AT&T v. Excel(1999), 172 F.3d 1352
Shell Oil Co. v. Canada [1982] S.C.R. 536
Calgon Carbon Corp. v. North Bay, 2005 FCA 410
What Are the Criteria for Protection?
Legislative Provisions
Copyright......
Feist Publications v. Rural Telephone Services (1991), 499 U.S. 340, 111 S.Ct. 1282
CCH Canadian Ltd. v. Law Society of Upper Canada, 2004 SCC 13
Trademark......
Professional Publishing Associates Ltd. v. Toronto Parent Magazine (1986), 9 C.P.R. (3d) 207, 8 F.T.R. 207
Jordan v. Bright,[1984] 1 F.C. 964
Reddaway v. Banham, [1896] A.C. 199
Reckitt v. Borden,[1990] 1 W.L.R. 491
Patent......
Apotex Inc. v. Wellcome Foundation Ltd., 2002 SCC 77
Sanofi-Synthelabo Canada Inc v. Apotex Inc., 2008 SCC 61
What is the Scope of the Right Granted (What is Infringement)?......
Legislative Provisions
Copyright......
Rogers v. Koons(1992), 960 F.2d 301
Galerie d'art du Petit Champlain inc. c. Théberge, 2002 SCC 34
Hawkes and Son (London) v. Paramount Films Service(1933), 1 Ch. D. 593
Secondary Infringement......
Sony Corporation v. Universal City Studios (1984), 464 U.S. 417, 104 S.Ct. 774
MGM Studios v. Grokster Ltd (2005), 545 U.S. 913, 125 S.Ct. 2764
CCH Canadian Ltd. v. Law Society of Upper Canada, 2004 SCC 13
Moral Rights......
Snow v. Eaton Centre Ltd(1982), 70 C.P.R. (2d) 105
Prise de Parole Inc. v. Guerin(1995), 104 F.T.R. 104, 66 C.P.R. (3d) 257
Trademark......
Pink Panther Beauty Corporation v. United Artists Corporation,[1998] 3 F.C. 534
Mattel, Inc. v. 3894207 Canada Inc,2006 SCC 22
Veuve Clicquot Ponsardin v. Boutiques Cliquot Ltée,2006 SCC 23
Patent......
Whirlpool Corp. v. Camco, 2000 SCC 67
Free World Trust v. Electro-Sante,2000 SCC 66
Monsanto Canada Inc. v. Schmeiser,2004 SCC 34
Adams, “Confronting the Patentability Line in Biotechnical Innovation: Monsanto Canada Inc v. Schmeiser”
What Are the Exceptions to the Rights?......
Legislative Provisions
Copyright......
Harper and Row v. Nation Enterprises(1985), 471 U.S. 539, 105 S.Ct. 2218
Blanch v. Koons (2006) 467 F.3d 244
CCH Canadian Ltd. v. Law Society of Upper Canada, 2004 SCC 13
Society of Composers, Authors & Music Publishers of Canada v. Canadian Assn. of Internet Providers, 2004 SCC 45
BMG Canada Inc. v. John Doe, 2004 FC 488
Michelin v. Canadian Autoworkers Union,[1997] 2 F.C. 306
Lion Labratories v. Evans,[1985] 1 Q.B. 526
Trademark......
Source Perrier S.A. v. Fira-less Marketing, [1983] 2 F.C. 18
Michelin v. Canadian Autoworkers Union,[1997] 2 F.C. 306
Keren Levy: Trademark Parody: A Conflict Between Constitutional and Intellectual Property Interests, George Washington Law Review March 2001
Patent......
Micro Chemicals v. Smith Kleine,[1972] S.C.R. 506
Torpharm Inc. v. Merck & Co. (2000), 9 C.P.R. (4th) 520
Institutional Competence
Expertise......
Gottschalk v. Benson (1972), 409 U.S. 63, 93 S.Ct. 253
Parker v. Flook(1978), 437 U.S. 584, 98 S.Ct. 2522
Diamond v. Diehr(1980), 450 U.S. 175, 101 S.Ct. 1048
Public Order and Morality......
Harvard College v. Canada (Commissioner of Patents), 2002 SCC 76
Juicy Whip v. Orange Bang(1999), 185 F.3d 1364
Harvard College (EPO)(2004)
Overlapping Rights......
Linoleum Manufacturing v. Nairn, [1878] Ch. D. 834
Kirkbi AG v. Ritvik Holdings, 2005 SCC 65
Kraft Canada v. Euro Excellence, 2007 SCC 37
Introduction
•IP issues arise every time a new asset is created by technological evolution (ie, the printing press, the telegraph (INS News Service), broadcasting (Victoria Park), internet and pagers (Motorola)). The law has evolved to cover intangible information.
•Intellectual Property is problematic because it is:
- Non-exclusive: it has no physical container, therefore not susceptible to exclusion
- Non-rival: you don’t lessen the good by using it. For example, a song on a CD v. a Sandwich.
•The default position with information is that it is available to everyone. It needs exclusivity to be profitable.
•This course will attempt to answer the four essential questions of IP
1)What is the subject matter you want to protect?
2)What are the criteria for protection?
3)What is the scope of protection?
4)What are the exceptions?
Technological Developments and Owning Information
•Same problems now as 1918. Technology disrupts IP regimes.
IP Justifications:
1)Labour Theory: You laboured therefore you get IP right (reap what you sow). IP rights are therefore individual.
2)Utilitarianism: To get more good things (like science and art), you use IP rights as incentives. IP rights are therefore in the public interest.
International News Service v. Associated Press (1918), 248 U.S. 215, 39 S.Ct. 68Jurisdiction / SCOTUS
Facts / WWI. INS not able to get the news of the war from Europe. So INS exploited the new technology of the telephone and telegraph to transmit AP news reports issued in New York and republish them in news papers on the west coast.
Issues / Can the defendant (INS) be prevented from appropriating news bulletins issued by the defendant and selling them for profit?
Holding / Yes, injunction granted.
Reasoning / Majority:
Not a property right, but a quasi-property right. Not property wrt everyone, only property wrt competitors.
Unfair competition (no copyright in the news). Property would have been 1 person with a right in the information (strong right, and requires a strong justification to limit), whereas unfair competition is 2 arguments for each side (more of a balance)
Holmes (dissent):
Misrepresentation case. It’s okay if INS gives proper credit to AP.
Brandeis (dissent):
“But the fact that a product of the mind has cost its producer money and labor, and has a value for which others are willing to pay, is not sufficient to ensure to it this legal attribute of property. The general rule of law is, that the noblest of human productions-knowledge, truths ascertained, conceptions, and ideas-become, after voluntary communication to others, free as the air to common use.”
Comments / This eventually gets called “misappropriation”
Victoria Park Racing and Recreation Grounds Co Ltd v. Taylor And Others (1937), 1a IPR 308
Jurisdiction / High Court of Australia
Facts / Taylor lives next to Victora Park’s racetrack. Taylor stands on an elevated platform he erected on his land and reports the outcome of the races for offsite betting.
Taylor generated his own information from this, he made commentary, predictions, and useful descriptions.
Issues / Injunction?
Holding / No, injunction denied
Reasoning / You have no right to profit from your land. Interference with the profit is competition (not nuisance).
This was not unfair competition
Comments / Framed as nuisance, not misappropriation, but essentially the same arguments as INS.
WA: Taylor needs Victoria Park to continue making profit, so he can’t be so exploitative to put them out of business. This was a failed negotiation.
NBA v. Motorolla (1997), 105 F.3d 841
Jurisdiction / US Court of Appeal (2nd Circuit)
Facts / Motorolla markets a special pager that displays real-time statistical updates from NBA basket ball games.
Issues / Based on an analogy to INS, is an injunction against Motorola forcing them to stop justified?
Holding / No, injunction denied
Reasoning / [845] “We hold that the surviving “hot-news”INS-like claim is limited to cases where: (i) a plaintiff generates or gathers information at a cost; (ii) the information is time-sensitive; (iii) a defendant's use of the information constitutes free riding on the plaintiff's efforts; (iv) the defendant is in direct competition with a product or service offered by the plaintiffs; and (v) the ability of other parties to free-ride on the efforts of the plaintiff or others would so reduce the incentive to produce the product or service that its existence or quality would be substantially threatened. We conclude that SportsTrax does not meet that test.”
Comments / This is all disincentive (no labour/individual focus). Extraction (okay) / Repackaging (not okay) Debate. This was value-added extraction, not just the same asset repackaged.
Wendy Adams, “Personal property law and information assets”
Information Extraction (as in Victoria Racing)
Where “new dissemination technology provides an opportunity for additional value to be exploited from information embedded in an underlying asset already subject to a possessory interest.”
Extraction is justified because 1) resources are devoted to the extraction process and 2) the new product is, presumably, not an exact substitute for the original.
Adams: extraction sets up a rebuttable presumption against proprietary protection (of the appropriated good).
Information Repackaging (as in INS)
Where “ new technology presents a commercially viable opportunity to create a new information asset by repackaging information otherwise freely available”
Requires far less resources
Repackaging is NOT justified because the notion of competitive injury suggests that the scope of protection for the original should defend against unfair competition (although not so far as to restrict public access)
What Subject Matter is Protected?
David Vaver, “Intellectual Property: The State of the Art”
In this article Vaver discusses the most current (2000) issues and problems facing Intellectual Property scholars today.
•Vaver describes the continual crises that has faced IP from the beginning: that of new technologies, in this case digital reproduction, greatly facilitating copying. Every time new technology arrives, IP law is forced to justify, intellectually, its continued existence.
•All aspects of IP law have expanded exponentially since their introduction.
•Vaver points out that the use of the term “Property” we have been compelled to treat it as such. For example, the narrow interpretation of exceptions is traditional in true property law, there may not be a compelling reason to act similarly in IP. In addition, efforts to reign in IP rights are thus framed as “appropriations” or “confiscation”.
Three points (alternatives) Vaver proposes:
•View IP not as a system of property rights, but as a system of subsidies: “A willingness by society at large to provide economic benefits to one sector in return for the prospect of larger benefits to all”
•IP must not be considered as an absolute value: some things are more important then others and this changes over time. So should the protection they are offered.
•He argues that IP regimes must command public respect to survive. This requires that it be cohesive enough to be understood by the lay person and that efforts are made to educate the person
Legislative Provisions
COPYRIGHT (Copyright Act)
Expressive work
5. (1) Subject to this Act, copyright shall subsist in Canada, for the term hereinafter mentioned, in every original literary, dramatic, musical and artistic work…
Literary Work
2. In this Act …“literary work” includes tables, computer programs, and compilations of literary works…
Dramatic work
2. In this Act… “dramatic work” includes
(a) any piece for recitation, choreographic work or mime, the scenic arrangement or acting form of which is fixed in writing or otherwise,
(b) any cinematographic work, and
(c) any compilation of dramatic works…
Musical Work
2. In this Act… “musical work” means any work of music or musical composition, with or without words, and includes any compilation thereof…
Artistic Work
2. In this Act “artistic work” includes paintings, drawings, maps, charts, plans, photographs, engravings, sculptures, works of artistic craftsmanship, architectural works, and compilations of artistic works…
TRADEMARK (Trade-Marks Act)
Trademark
2. In this Act…“trade-mark” means
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 manufactured, sold, leased, hired or performed by others
(indicates source or origin)
PATENT (Patent Act)
Invention
2. In this Act “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…
•Copyright protects the expression of the idea but not the idea itself
•Trademark is about the market and competition. It prevents confusion about the origin of goods and services.
•Patent protects the application of knowledge but not the knowledge itself.
Copyright
Nichols v. Universal Pictures Corporation (1930), 45 F.2d 119Jurisdiction / US Court of Appeal (2nd Circuit)
Facts / Pf authored play. Dft produced movie that pf alleges was taken from play.
Both the play and the movie are about the relationship btwn a Jewish and an Irish family [primarily the fathers and their children].
Issues / Copyright infringement?
Holding / No
Reasoning / Expression is not limited to word for word copying.
There are layers of abtraction and the line is drawn somewhere on the spectrum between expression and the idea. “there is a point in this series of abstractions where they are no longer protected, since otherwise the playwright could prevent the use of his ‘ideas’, to which, apart from their expression, his property is never extended”
“Nobody has ever been able to fix that boundary, and nobody ever can.”
“…her copyright did not cover everything that might be drawn from her play; its content went to some extent into the public domain. We have to decide how much, and while we are as aware as any one that the line, whereever it is drawn, will seem arbitrary, that is no excuse for not drawing it; it is a question such as courts must answer in nearly all cases.”
Comments / Note that the court here STRONGLY DISAPPROVES of expert evidence.
Rosen, “Reconsidering the idea-expression dichotomy”
Rosen identifies the “General v. Specific spectrium” as the best way of understanding and establishing the line between (unprotected) ideas and (protected) expressions.
- Draw the “line” where it is most convenient and in such a way as to promote purposes of copyright law which are:
2)ensure sufficient incentives for continued creativity.
- These aims can be accomplished by distinguishing between “ideas” and their “expression” on the basis of whether an idea is:
2)Already highly developed: more likely it is nearing the point at which creative potential is exhausted. Therefore won’t be of much good in the public domain. This will also provide incentives for further creativity b/c authors know that they will be rewarded with IP right where they expend much effort to develop and refine an idea.
Rosen also comments briefly on the merger doctrine (if there is only one or a handful of ways to express an idea, the idea and expression merge and there will be no CR). Merger doctrine ignores the fact that there are many ideas (on continuum of generality) underlying a work. Merger doctrine supports whichever conclusion a judge wishes to endorse, b/c he can choose the “idea” which is most specific, thus limiting the possible ways of expressing the idea.
Trademark
•Originally, marks were meant to indicate the actual known source.
•A more highly developed idea is that marks indicate not a company or a source, but our impression of the good or service (something that has selling power).
•What you believe a trademakr is will influence how you protect trademark
•Predominantly, TM is to prevent consumer confusion.
•Remember that TM does not protect the product itself, only the mark (no trademarking characteristics of a product). Kawasaki’s TMing of its distinctive green colour is an example of companies starting to try to extend TM to aspects of the product itself.
Playboy Enterprises Inc. v. Germain (1987), 13 F.T.R. 178Jurisdiction / FCTD
Facts / Playboy inc. is attempting to expunge the trademark “Playboy” held by the respondent in Canada on hair pieces. The pieces are not actually marked “Playboy”, but are described as such by salespersons.
Issues / What constitutes a mark?
Holding / Must be represented visually
Reasoning / s. 44(3) of the Trade Mark Act 1970provided that failure to use your TM for 3 years was grounds for the mark being expunged. Because Germain did not mark his hair pieces with the work “Playboy” and only described them verbally to his customers as such, his claim of use fails.
Para. 10: “I am of the opinion that use of a verbal description is not use of a trade mark within the meaning of the Trade Marks Act. A "mark" must be something that can be represented visually.”
Comments / The boundaries of this have been pushed to anything that can be perceived by the senses.
Schecter, “The Rational Basis of Trademark Protection”
In this article Schecter argues that modern TM’s have value (selling power) in and of themselves and therefore should be afforded greater protection.
- Traditionally, the function of TM was to identify origin or ownership of goods to which it is affixed. Owing to modern trade and product distribution, this is longer accurate because the actual source is seldom known to consumer.
- Today, TM indicates that the goods emanate from the same source as certain other goods that have already satisfied the consumer and which bear that same mark.
- True functions of the TM are to identify a product as satisfactory and thereby to stimulate further purchases by the consuming public; i.e. to create and retain custom
- TM’s are a very effective agent for the creation of goodwill. The mark imprints guarantee of satisfaction upon public mind, thus creating a desire for further satisfaction. The mark actually sells the goods.
- Further, the more distinctive and unique the mark, the more effective is its selling power (thus if we are protecting selling power, must give broader scope of protection to unique marks).
- Schecter points out that traditionally, courts have not found infringement where mark is used in association with non-related goods. He argues that this is not consistent with the function of TM. Value of a TM depends on its uniqueness and distinctiveness, and the more it is used, the less unique, and therefore valuable it becomes. Its ability to attract and retain custom is thereby diluted. The more unique the mark, the more it is tied to the actual identity of the goods with which it originated. Thus, any use of it will result in loss of identity of goods and company which made them.
- Schecter advocates differential treatment of fanciful/coined marks and common/semi-descriptive marks. The former should be more strongly protected than the latter b/c they have come to be associated in the public’s mind with the excellence of one particular product.
- Schecter concludes by outlining the following principles:
- The value of the modern TM lies in its selling power;
- This selling power depends for its psychological hold upon the public, not merely upon the merit of the goods upon which it is used, but equally upon its own uniqueness and singularity
- Such uniqueness and singularity is impaired by its use upon either related or non-related goods
- The degree of its protection depends in turn upon the extent to which, through the efforts or ingenuity of its owner, it is actually unique and different from other marks.
- In sum, the preservation of uniqueness of a TM should constitute the only rational basis for its protection.
Patent
•Distinction between a mere discovery (in nature) and an invention (that you created). Destinction between abstract ideas and the use of those ideas to make something new.