Intellectual PropertySummary – April 2004
PART I: CONCEPTUALIZING AND JUSTIFYING IP SPACE
Introduction: Thinking about Private Space
Intellectual Property: Intellectual? Property?
MacDonald, The Swiss Army Knife of Governance
Interface of IP with Property, Tort and Contract
Property
Moore v. Regents of the University of California
Gould Estate v. Stoddart Publishing Co.
Entitlements and enforcement of entitlement
Calabresi & Melamed, “Property Rules, Liability Rules, and Inalienability…”
Contract
ProCD Inc. v. Zeidenberg
Network Associates
Nimmer, “Breaking Barriers: The Relation between Contract and Intellectual Property”
Reichman & Franklin, “Privately Legislated Intellectual Property Rights”
Justifications for ordering of IP space
Labour/desert
Hughes, “The Philosophy of IP (labour)”
Economic/efficiency/utilitarian
Boyd White, “The Language and Culture of Economics”
Merges, “Intellectual Property Rights and the New Institutional Economics”
Personhood
Hughes, “The Philosophy of IP (Personhood)”
Distributive justice/fairness
Litman, “The Public Domain”
Boyle, “The Second Enclosure Movement and the Construction of the Public Domain”
Polk-Wagner, “Information wants to be free…”
Case Study – Theberge
PART II: ORDERING IP SPACE – CR, TM & PATENT
Copyright
Origins of Copyright
Donaldson v. Beckett
Snow v. Eaton Centre Ltd.
Prise de Parole Inc. v. Guerin
Gilliam v. American Broadcasting Companies
Apple Computer v. Mackintosh Computers
Computer Associates Int’l v. Altai
Copyright in Canada – Overview
Copyright in Canada – Initial Hurdles and Scope
Nichols v. Universal Pictures
Drassinower, “A Rights-Based View of the Idea/Expression Dichotomy…”
Rosen, “Reconsidering the Idea/Expression Dichotomy”
Feist Publications v. Rural Telephone Services
Tele-Direct v. American Business Information
CCH v. Law Society of Upper Canada (S.C.C.)
CCH Canadian v. Law Society of Upper Canada (Fed. C.A.)
Theberge v. Galerie d’Art du Petit Champlain
Rogers v. Koons
M. Spence, “Intellectual Property and the Problem of Parody”
Trademark and Passing Off
Origins of Trademarks
Sherman & Bentley
Reddaway v. Banham
Champagne case
Eli Lilly v. Novopharm Ltd.
Trademarks in Canada – Overview
Trademarks – Initial Hurdles and Scope
Reckitt & Colman Products v. Borden
LEGO Case
Pink Panther Beauty Corporation (A) v. United Artists Corporation (R)
Litman, “Breakfast with Batman”
Beebe, “Search and Persuasion in TM Law”
Michelin v. CAW
BCAA v. Office and Prof Employees’ Union
Breck’s Sporting Goods Co. v. Magder
Heinz Canada v. Edan
Patents
Origins of Patents
Coke, “Against Monopolies…”
Sherman & Bentley
Schlumberger Canada Ltd. v. Canada
Tennessee Eastman Co. v. Canada (Commissioner of Patents)
Patent in Canada – Overview
Patent in Canada – Initial Hurdles and Scope
Beloit Canada Ltd. v. Valmet Oy
Kewanee Oil v. Bicron
Cadbury Schweppes v. FBI Foods
Free World Trust v. Electro-Sante
Parker v. Flook
PART III: ALTERNATIVES TO IP REGULATION; NATIONAL AND TRANSNATIONAL ASPECTS OF GOVERNANCE
Alternatives to IP regimes
Formal Regulation
Trebilock, “The Law and Economics of Cdn Competition Policy”
Volkswagen Canada v. Access International
Sallen v. Corinthians
Informal Regulation
Patent Pools: A Solution to the Problem of Access in Biotechnology Patents?
Transnational aspects of IP governance
Jurisdictional problems
Yahoo! Inc. v. Ligue contre le racisme et l’antisemitisme
Pro-C Ltd. v. Computer City
Braintech v. Kostiuk
Goldsmith, “Regulation of the Internet: Three Persistent Fallacies”
Wendy Adams, “IP Infringement in Global Networks: The Implications of Protection Ahead of the Curve”
Regulatory institutions
Implications of changes
PART I: CONCEPTUALIZING AND JUSTIFYING IP SPACE
Introduction: Thinking about Private Space
Intellectual Property: Intellectual? Property?
Intellectual?
-Do all intellectual property rights protect “intellectual” activity?
-Lametti believes that there is more intellectual activity embodied in scientific and aesthetic creation (copyright and patent) than there is in marks, slogans, etc. which are protected by TM. The latter embody a sort of “cleverness” or instrumental intelligence which is not intellectual in the purist sense.
Property?
-What is property? relationships among individuals through objects of property. Relationship is not enough otherwise everything would be “property”. An object must mediate this relationship.
-Property as relationship – evident in IP. E.g. copyright = exclusive right to copy and reproduce. Patent = right to exclude others from use. TM = can prevent others from using your mark to sell their wares or services; can license TM.
-Property as object –
- The object is not necessarily a physical object – I own the book but someone else owns the IP in that book.
- Objective (separable) value? YES. Definitely value in a good book or a cure for cancer
- Scarcity? No scarcity in ideas; IP rights effectively impose scarcity (why? Relate to justifications)
We have a valuable resource worth regulating/protecting HOW DO WE REGULATE?
MacDonald, The Swiss Army Knife of Governance
Roderick A. Macdonald, The Swiss Army Knife of Governance (2002) CB I, page 7-Swiss Army knife allegory – the knife is an instantiation of the logic of plural modes and multiple sites of governance. DL: multiple sites of normativity
-Central question of institutional design is understanding the relationship of means to ends. The initial means-end question is “Why the State?” [e.g. in IP – why not leave it to private parties (contract, trade secrets, etc.)]
- The political state is only one instrument, one institution among many, that people choose to let manage their lives. Lametti: various less formal institutions may have more normative weight than state regulation. Multiplicity metaphor = state is not primary. [DL: may be more appropriate in IP to leave regulation to private parties, i.e. to regulate by K]
- The Swiss Army knife is not just a tool. Allegory of Swiss army knife frames the initial governance consideration in two hypotheses:
2)I have a Swiss Army Knife. What can I do with it? (ends not known). E.g. novel uses of existing tools using TM where patent runs out (evergreening – LEGO)
The Swiss Army Knife of Governance:
1)Too Many Tools:
-There is no best response for a given problem, particularly as the precise limitations of a given response cannot be known until implemented.
-People’s preferences/deep ruts in thinking may cause them to choose the obvious or well-trodden responses and blind them to a more effective choice they didn’t think of
2)Over-inclusiveness
-Important to conceptualize the problem at the outset if there is defined and specific end in mind, impt to craft response to deal with that end. Danger? Conceptualization may = narrowing [i.e. closing off useful directions by designing a specific response for a currently important/relevant end]
3)Wrong Tool
-Some problems are beyond the capability of the solution proposed. In such cases, an effective solution will probably involve deploying a larger variety of tools as well as bringing in a different actor (perhaps outside of gov’t).
4)Intended Use, Unforeseen Problems
-Even when employed w/in their design specifications, some regulatory solutions can have unforeseen negative consequences.
-There is interaction btwn the solution and the situation – all means ultimately change ends [effective means will have long-term implications on how we conceptualize our social ends.
-E.g. domain name regulation extends TM protection (geographically and substantively – extends to generics)
5)Creative Use, Unforeseen Problems
-Regulatory solutions are not infinitely flexible, and efficiency and other problems can arise if a solution is asked to do too much. E.g. copyright being asked to do too much (software, databases, etc.); use of contract to regulate access to IP = extension of CR; use of TM to protect a “get-up” = extension of patent (evergreening)
6)Design Redundancies
-Law reform tends to be incremental, therefore new initiatives are constrained by the vestiges of existing regimes.
-Radical changes/innovation seen as threat to stability but leaving vestiges in place may = duplication
7)Specific-use Tools
-Microregulation denies the creative role that citizens can have in solving their own problems Right and wrong becomes coterminous with statute book rather than with people’s moral intuition or common sense
-Excessive detail tends to make unwieldy and unworkable regulation.
8)Design Tradeoffs
-There are inevitable tradeoffs in tool design
-The criterion used to evaluate a regulatory solution is impt, and the criterion is closely related to the ends sought.
9)Cultural Limits
-Cultural predispositions limit at the outset the possible range or character of regulatory solutions available (SH: tie this to societal ethos more individualistic or more communitarian/welfare state?)
10)Preconceptions of use
-Preconceived notions of tool use, whether arising from labeling or prior experience, can limit flexibility in deployment
-Regulation tends to follow well-worn paths. Sometimes a creative solution requires shifting categories.
11)Primary vs. secondary characteristics
-There will always be numerous criteria with which to judge a solution – efficiency, effectiveness, raw cost, political popularity, availability of trained personnel to implement it, etc. Determining which criteria are essential and which secondary depends on the end sought.
12)Relations between uses
-A particular regulatory strategy might be effective and efficient, but unpalatable to certain groups for other reasons. E.g. sex education may reduce pregnancies but religious groups opposed to it
13)Political Ideology
14)Administrative cost-benefit analysis
-A particular governing instrument may require a regulatory infrastructure that is simply not justified given the purposes of the policy being advanced. E.g. private tort litigation – very expensive to bring lawsuit to advance policy of shifting a large number of small losses against wrongdoers.
15)Deployment difficulty
-A particular governing instrument may be appropriate in the hands of certain users, or when deployed against a certain regulatory clientele, but inappropriate in other circumstances.
16)The possible becomes the necessary
-E.g. the existence of the knife and all its tools invites people to use it for simple tasks (e.g. use knife to untie a knot rather than using fingers)
17)If it is too complex it will be used for something else (e.g. a paperweight)
-Highly sophisticated regulatory analysis leads governments to create highly sophisticated regulatory instruments. Most often, in everyday social intercourse, people do not think of orienting their conduct by reference to such a vast range of implements with highly specialized uses.
18)Multiple regulatory sites
-At some point, the reality of choice becomes submerged in the paralysis of decision.
19)The ghost in the machine
-e.g. using a Swiss Army knife to slash tires
-Always a risk that the regulatory form will undermine collateral regulatory objectives. Enhancing regulatory choices typically enhances collateral policy risks. [SH: domain name governance and effects on TM?]
Application to IP (DL: class notes)
-Want to protect/encourage some sort of inventive activity (e.g. domain names; computer software; etc.) Can choose a tool from the Swiss Army Knife of Governance. Can choose not to regulate (i.e. to leave it to private parties) – but perhaps choosing not to regulate is choosing a type of regulation – K or trade secrets for example (I think MacDonald suggests this when he introduces the reality of “multiple sites of normativity”. Government is not the only regulatory mechanism). May be that none of the tools is appropriate and that new one must be invented (e.g. domain name governance). New tools can be invented. New tools can be used in new ways. There will often, however, be unforeseen consequences.
-*There are no stock responses that will apply in all situations. Wrt IP, we have a complex set of resources. The regulatory rules we use to govern this set of resources ought to be complex, perhaps more complex than they are at present.
Interface of IP with Property, Tort and Contract
Introduction
-This section appears to work in conjunction with the section on alternatives to IP Regulation
-Property, tort and contract may serve as:
- Co-existing regimes (e.g. CR and right of publicity in the pictures of Glenn Gould)
- Pure alternatives – e.g. pyramid of K-ual licensing agreements which effectively create a right that is good against the world, where one might not otherwise exist (e.g. an alphabetical database cannot be CRed but can it effectively be CRed via licensing arrangements?)
- **There are tools that sit beside IP space or overlap with it
-The relevant Q seems to be: What interests are we trying to protect and encourage and what governance tools might effectively accomplish desired ends w/o creating undesirable consequences? (e.g. protection of patients rights via fiduciary duty rather than propertization. The latter is dangerous and not necessary)
Property
Interface with Patent: Moore
Moore v. Regents of the University of California
Moore v. Regents of the University of California, [1990] Cal. S.C., CB I p. 24Facts:
-Moore had leukemia and had cells removed as part of the treatment. Moore had a unique T-cell structure.
-These cells were taken by doctors who, without his permission, established a cell line from them and patented and sold it in a lucrative medical research scheme.
-The plaintiff’s alleging (1) the breach of a physician’s disclosure obligations – his fiduciary duty (duty to act in best interest of another) and (2) conversion – the wrongful possession of another’s property as if it were his own as well (i.e. Moore claims he continued to own cells after removal) [tort of conversion requires a property right]
Issue: Breach of fiduciary duty? Property right in cells?
Held: Yes and no
Reasoning (class notes):
-Panelli, J.: No property right. Rationale: chilling effect on scientific research. With every biological sample a researcher used, he would be purchasing a ticket in the litigation lottery. Fiduciary duty claim takes care of Moore’s rights as a patient.
-Arabian, J., concurring: No property right. Morality argument. Commodification of the human body. If human body is going to be dealt with on the market, that is up to the legislature to decide. Plea for judicial restraint.
-Broussard: why not property?
-Monk: Property right. But for Moore’s t-cells, there would be no patent. He added an essential ingredient and thus should be allowed to share in the benefits. Propertization of cells will not be the “death-knell” of research. If the property rights are clear, those who want to do research will just have to pay for the cells, just as they currently pay for other raw materials**
**DL notes that there are plenty of IP academics who share this view (e.g. Siebrasse): if IP rights are defined precisely, people will be empowered to bargain. IP rights don’t hinder “progress”; they just force users of IP to get licenses, pay for the materials, etc.
Comments (DL):
-BEWARE OF WHAT THE RESOURCE IS! – The cells? The patent?
-Transformation of the resource via human intervention: There are two resources here – the cells (outside of commerce – not property) and the patent (property). Is the human intervention (i.e. intellectual additions to the cells) enough to create a property resource where there was none before? If we agree that the cells cannot be property, why will we allow the researchers to have intellectual property in the modified cells? Is addition of value enough? (i.e. Moore’s cells chilling in his body are of no value to anyone but him!)
-Are there other tools that could be used to accomplish the same policy goals?
- Protect patients’ rights fiduciary duty (found to be enough here)
- Encourage research patent OR funding primary research in universities; fame, glory, nobel prizes. If pure science isn’t the subject matter of patent, why are there still “pure scientists”?
SH (an aside): implications of property rights can sell/license, good against the world, can pass down to heirs, can follow into the hands of one who misappropriates (e.g. Moore could share in profits from the patent)
Gould Estate v. Stoddart Publishing Co.
Gould Estate v. Stoddart Publishing Co. (1996) Gen. Div, page 657Facts:
-In 1956, Carroll, a reporter, interviewed Gould for an article in Weekend Magazine. He took about 400 pictures of him and copious accounts of their conversations
-Gould died in 1982 and Carroll, who had acquired the copyright in the pictures, published a book about Gould which incorporated the photos and conversations.
-Gould’s estate sued, claiming that use of the photos amounted to the tort of appropriation of personality.
Issue: (1) Did Gould have any proprietary rights in his image, likeness or personality which have been appropriated by the publication of the photos? (2) Does Gould estate have copyright in the oral conversations recorded by Carroll?
Held: (1) No (2) No
Ratio:
-Court reviews Cdn case law and concludes that the tort of appropriation of personality is restricted to endorsement-type situations.
-More broadly, in articulating this tort the court must be mindful of the public interest. What is this public interest? The court adopts the perspective of American courts which have held that the purpose of the portrayal should be examined to determine if it predominantly serves a social function valued by the protection of free speech. Freedom of expression considerationsshould animate Cdn courts in identifying the public interest and placing limits on the tort of appropriation of personality.
-Court concludes that other courts have drawn a “Sales vs. Subject” distinction: Sales constitute commercial exploitation and invoke the tort of appropriation of personality (e.g. endorsement situations, posters and board games) – the essence of these activities is NOT the celebrity. Situations in which the celebrity is the actual subject of the work or enterprise would not be within the ambit of the tort (e.g. biographies, other books, plays and satirical skits). The subject of the activity is the celebrity and the work is an attempt to provide some insights about that celebrity.
-In this case, the book provides insight to anyone interested in Gould. There is a public interest in knowing more about one of Canada’s musical geniuses. B/c of this public interest, the book therefore falls into the protected category.
-Right of publicity survives the death of the individual: must be distinguished from the right of privacy [a personal right] – right of publicity is a form of intangible property, akin to copyright or patent. If there is any durational limit on this right, it has not yet expired [only 14 years have passed].
-There is no copyright in the conversations btwn Gould and Carroll: Ptfs submit that CR subsists in spoken words pursuant to S. 5(1) CR Act. [S. 2 lectures address, speech and sermon]. Oral statements in a speech interview or conversation are not recognized as literary creations and do not attract CR protection. Too general and abstract to constitute a “work”. Would run counter to freedom of speech and press. Informal, casual, spontaneous interview is not the kind of discourse which the CR Act intended to protect.
Rule: Sales vs. Subject – Situations in which the celebrity is the subject of the work or enterprise (e.g. book) are not within ambit of the tort. Situations in which the celebrity’s identity is being used for another purpose (e.g. commercial gains – endorsements in particular) are w/in its ambit. About the person vs. using the person. [Underlying this distinction is court’s concern that the tort of misappropriation of personality be limited by the PUBLIC INTEREST, more specifically by freedom of expression and the public’s right to information and knowledge about notorious figures]
Gould Estate v. Stoddart Publishing, (1998) C.A.
[Finlayson]:
-Can decide this case based on conventional principles relating to CR
-Once it is established that Carroll owned the unrestricted CR n the photos and the written material, there is nothing else to decide.
-CR can subsist in photo as an artistic work [S. 5(1) CA]. Owner of negatives is the owner of the CR in the photos and author of written material in book is the owner of CR in that written material. The subject matter of the photos and the written materials has no proprietary interest unless he or she had obtained an interest by express contract or implied agreement with the author [e.g. photos taken on commission for consideration]. The concept of approp of personality has no application here. Once Gould consented, w/o restriction, to be the subject-matter of a journalistic piece, he cannot assert any proprietary interest in the final product nor complain about any further reproduction of the photographs nor limit the author of the journalistic piece from writing further about him.
Comments (DL):