Archive for the ‘Intellectual Property’ Category

Heydary Hamilton PC Obtains Declaration of Non-Infringement of US Trademark

Friday, April 12th, 2013

On April 12, 2013, Robert Kalanda, member of Heydary Hamilton PC (as well as a member of the affiliated intellectual property boutique firm Heydary Hayes PC), successfully obtained default judgment from the Ontario Superior Court of Justice which, in addition to a substantial damages award, as well as a permanent injunction, provided for a declaration stating that the plaintiff has not infringed on any of the defendants’ alleged trade-mark rights in Canada or the United States.

This decision marks one of the first cases where a declaration of non-infringement of trademark has been successfully granted by a Canadian court. Though a similar declaration was initially granted in relation to a Canadian trade-mark in the reported case of Philip Morris Products S.A. v. Malboro Canada Limited, that finding was ultimately reversed on appeal. Similarly, though the Ontario courts held in the reported case Research in Motion Limited v. Atari, Inc. that an Ontario court possesses the jurisdiction to make a declaration of non-infringement of United States copyright law, there are no reported decisions of any actual declarations in relation to any United States trade-mark rights having been previously granted by any Canadian court.

In addition to a successful result for the plaintiff, this decision also represents a step forward in consolidating a party’s ability to enforce trade-mark rights. Though the enforceability and determination of trade-mark rights are typically restricted to a single jurisdiction, this decision provides a cornerstone for potential trade-mark infringement defendants to preempt numerous foreign proceedings and have worldwide trade-mark disputes determined with a single piece of litigation.

 

Robert Kalanda, B.A., J.D.,

 

Brief informational summaries about commercial and other litigation matters in the courts of Ontario and other developments are periodically published on this website. They are intended to be a general comment or general discussion, not legal advice and should not be relied upon as legal advice. Should you require legal advice, please contact info@heydary.com or 416 972 9001.

 

Supreme Court of Canada Voids Viagra’s Patent

Tuesday, November 13th, 2012

In a surprising decision released on November 8, 2012, the Supreme Court of Canada has held that Pfizer’s patent over its flagship product, Viagra, has been voided, meaning generic equivalents will likely hit the market as quickly as manufacturers can produce them.

The appellant in this case, Teva Canada Limited, was seeking to commence production of a generic equivalent to Viagra, and sought to challenge Pfizer’s patent, primarily on the grounds of insufficient disclosure. Though the Federal Court and the Federal Court of Appeal rejected Teva’s arguments, the Supreme Court allowed the appeal, finding that Pfizer’s patent application failed to sufficiently disclose the patent so that a person skilled in the art could put the invention into practice.

The Court focused on what is known as the “patent bargain” – the quid pro quo compromise that an inventor must make to enjoy the benefits of patent protection. In essence, in exchange for a 20-year monopoly on the manufacture and sale of an invention, full and complete disclosure of the invention must be made to the public, through the patent application. This way, at the end of that monopoly period, the public at large will be able to benefit and improve upon the disclosed invention, striking a balance between inventor incentive and the continuation of the scientific process.

Because Pfizer’s patent application described a number of chemical compounds, and did not sufficiently describe which compound was effective at correcting erectile dysfunction (sildenafil), Pfizer did not uphold its end of the “patent bargain”, and the Court held that the only appropriate penalty was that the patent be immediately voided.

The patent was automatically set to expire in 2014, so the loss in Canada may not be as dramatic as it could have been. However, it remains to be seen whether this decision will have any effect on the registrability of the patent in other countries, particularly those under the Patent Cooperation Treaty, including the United States, where the court held that a subsequent patent from Pfizer effectively extended the patent over Viagra through 2019.

For more information, the decision can be found at: Teva Canada Ltd. v. Pfizer Canada Inc., 2012 SCC 60

 

Robert Kalanda, B.A., J.D.,

 

Brief informational summaries about commercial and other litigation matters in the courts of Ontario and other developments are periodically published on this website. They are intended to be a general comment or general discussion, not legal advice and should not be relied upon as legal advice. Should you require legal advice, please contact info@heydary.com or 416 972 9001.

 

Supreme Court of Canada Confirms No Royalties for Audiovisual Uses of Sound Recordings

Thursday, July 12th, 2012

In a unanimous judgment released today, the Supreme Court of Canada confirmed that Re:Sound (the copyright collective representing record labels and performers) cannot collect royalties from television, Internet and other audiovisual uses of sound recording. The Copyright Board and the Federal Court of Appeal had previously held that such royalties were not permitted.

The case centred on the definition of “sound recording” in the Copyright Act. That definition provides that a “sound recording” is a collection of recorded sounds, “but excludes any soundtrack of a cinematographic work where it accompanies [a] cinematographic work.” Since the introduction of the “neighbouring rights” accorded to record labels and performers in 1997, it had been generally understood that this exclusion prevented the collection of royalties for the communication of films and television programs, and Re:Sound had instead collected significant royalties for audio only communications such as radio broadcasts. However, in 2008 Re:Sound filed proposed tariffs claiming royalties for the performance and communication of audiovisual works from broadcasters, motion picture theatres and others.

In agreeing with the Copyright Board and the Federal Court of Appeal that there was no legal basis for Re:Sound’s proposed tariff, the Supreme Court affirmed that a Canadian statute such as the Copyright Act must be interpreted to find the intention of the legislature by examining the language approved by Parliament and considering the legislative history and not, as Re:Sound had argued, by looking at an international treaty which Re:Sound had argued the 1997 Copyright Act revisions were based. As a result, Canadian broadcasters and motion picture theatres avoided the imposition of an additional copyright royalty potentially totalling tens of millions of dollars annually.

Heydary Hayes Managing Director Mark Hayes represented the successful respondent Canadian Association of Broadcasters on this appeal.

 

Mark Hayes

Brief informational summaries about commercial and other litigation matters in the courts of Ontario and other developments are periodically published on this website. They are intended to be a general comment or general discussion, not legal advice and should not be relied upon as legal advice. Should you require legal advice, please contact info@heydary.com or 416 972 9001.

Supreme Court Finds Internet Downloads Not “Communications”

Thursday, July 12th, 2012

In a ground-breaking 5-4 decision, the Supreme Court of Canada has ruled in Entertainment Software Association v. SOCAN that downloading a file which contains a musical work does not mean that the work is “communicated” to the user, but is simply “reproduced”. The Society of Composers, Authors and Music Publishers of Canada (SOCAN) argued that transmission of an electronic copy of the game via digital download also constituted a “communication”, as the work was “transmitted” to the end user, and was therefore subject to additional copyright protection.

The majority of the Court held that there is no practical difference between buying a durable copy of the work in a store, receiving a copy in the mail, or downloading an identical copy using the Internet, and that the Copyright Act must be read in a technologically neutral manner. As a result, SOCAN should not be entitled to additional royalties simply based on the medium the work is delivered through.

The dissenting four justices held that the Copyright Act must be read in a manner that protects all the copyrights equally and recognizes that each right is independent of the others. The fact that one right is already compensated should not detract from any other right from applying, provided the Copyright Act grants such a right. As the term “communication” must be read in its ordinary meaning of “transmit”, the download of such a work is a transmission, and therefore is a “communication”. The fact that the communication results in a reproduction being made is irrelevant, and both rights apply to such a download.

This decision must be contrasted against another Supreme Court decision released at the same time, Rogers Communications Inc. v. Society of Composers, Authors and Music Publishers of Canada, which held that streaming a musical work was a communication to the public. Even though each instance of streaming was only to a single private individual, the aggregate public availability and sale of the work constitutes a communication “to the public” and therefore liable to pay the communication rights royalties.

In essence, the Supreme Court has found that Internet transmissions in the nature of reproduction are entitled only to reproduction rights, and transmissions in the nature of communication without reproduction, such as streaming or “performance”, are entitled only to communication rights, even if such processes and media are similar. In either case, the Supreme Court has reversed the long-held understanding that such Internet communications can be liable for both reproduction and communication rights. Rather, the particular right to be invoked is dependent on the manner of providing the copyrighted work to the public.

This decision will bring about massive changes to the Internet licensing industry, and flies in the face of the way media industries and the Copyright Board have been carrying on business for over a decade. It will have a significant impact on licensing practices, tariff royalties and other Internet uses of content.

For more information, please see the decisions at:

http://scc.lexum.org/en/2012/2012scc34/2012scc34.html
http://scc.lexum.org/en/2012/2012scc35/2012scc35.html

 

Mark Hayes

Brief informational summaries about commercial and other litigation matters in the courts of Ontario and other developments are periodically published on this website. They are intended to be a general comment or general discussion, not legal advice and should not be relied upon as legal advice. Should you require legal advice, please contact info@heydary.com or 416 972 9001.

Supreme Court Clarifies Analysis of Fair Dealing for Purposes of Research and Private Study

Thursday, July 12th, 2012

The Supreme Court of Canada released its decision in Alberta (Education) v. Canadian Copyright Licensing Agency (Access Copyright) 2012 SCC 37 today, finding that the copying of material for the purpose of instruction in primary and secondary schools was “fair dealing” for the purposes of the Copyright Act. This landmark case greatly clarifies the interpretation of test for fair dealing as it pertains to research and private study.

The Court split 5-4 and allowed the appeal by various provincial ministries of education, applying the 2-part test in the seminal case of CCH v. Law Society of Upper Canada; which looks at (1) whether the dealing is for the allowable purpose of “research or private study,” “criticism or review,” or “news reporting,”; and (2) if the dealing is fair.

While the determination in his case hinged mainly on the second branch of the CCH test, the majority’s decision on the first branch was instructive, stating that the relevant perspective at this stage is the user, in this case the students using the materials for private study, as opposed to the copier, in this case the teacher copying the materials in the course of instruction.

As for the second branch, the majority concentrated on three of the CCH factors:

  1. Amount of Use: This assessment is not based on the aggregate use, but the proportion of used material to the entire work. In this case the excerpt, while many in number, were typically small relative the whole work.
  2. Alternatives to the Use: The Court found that it was simply unrealistic to expect schools to purchase books for every student in circumstances where only short excerpts were being used, and an unviable alternative to the use.
  3. Effect of the dealing on the work: The Court found no link between the copying of short excerpts and a decline in the sales of textbooks.

While the ultimate decision on the fairness of these uses has been remitted back to the Copyright Board for reconsideration, the analysis by the Supreme Court greatly stacks the odds in favour of the ministries of education in this case. Moreover, with the expansion of fair dealing in the context of education by virtue of Bill C-11, which will come into force this fall, school boards across Canada can rest assured that the current practice of photocopying reasonable book excerpts in the course of instruction will remain in the ambit of fair dealing for years to come.

 

Jonathan Odumeru, Hons.BSc, J.D., LL.M

 

Brief informational summaries about commercial and other litigation matters in the courts of Ontario and other developments are periodically published on this website. They are intended to be a general comment or general discussion, not legal advice and should not be relied upon as legal advice. Should you require legal advice, please contact info@heydary.com or 416 972 9001.

 

Supreme Court Shakes Up Canadian Copyright

Thursday, July 12th, 2012

In December 2011, the Supreme Court of Canada heard an unprecedented 5 copyright cases simultaneously. All of these appeals dealt with issues that had first arisen with the Copyright Board of Canada, and involved online downloading, educational uses of copyright material, previews of music and the use of sound recordings.

The Supreme Court released decisions in all 5 cases today, and the results will be nothing less than seismic. Heydary Hayes will be posting detailed descriptions of the 5 cases today, but here are the highlights:

  • when music is downloaded over the Internet, only the “reproduction” rightsholder has to be paid, not the “communications” rightsholder. When music is “streamed”, only the “communications” rightsholder has to be paid. Previous decisions had held that download services had to pay both sets of rightsholders.
  • previews of music by services such as iTunes constitutes “fair dealing” for which no compensation must be paid.
  • primary and secondary school teachers are entitled to rely on the “fair dealing” right when they copy reasonable amounts of books, magazines and other publications, and therefore royalties are not due to collectives for the vast majority of this copying.
  • broadcasters do not need to pay royalties for the use of sound recordings in audiovisual communications such as television and Internet.

The Supreme Court has significantly reduced the ability of copyright owners and collectives to claim multiple payments for the same use and has confirmed the robust nature of the fair dealing right in multiple circumstances. These decisions will be welcome relief to the many Canadian businesses and organizations that have seen a steady increase in the claims by copyright owners over the past few years.

 

Mark Hayes

Brief informational summaries about commercial and other litigation matters in the courts of Ontario and other developments are periodically published on this website. They are intended to be a general comment or general discussion, not legal advice and should not be relied upon as legal advice. Should you require legal advice, please contact info@heydary.com or 416 972 9001.

Federal Court Mandates Canadian Sound Marks

Thursday, March 29th, 2012

Further to our recent article on the subject, the Federal Court released an order yesterday mandating that the Canadian Intellectual Property Office immediately start accepting sound mark applications.

The landmark order, obtained by Metro-Goldwyn-Mayer Studios after twenty years of argument before the Trade-marks Opposition Board, and ultimately the Federal Court, will mean that MGM’s famous “lion roar” will be one of the first Canadian sound mark applications.

Until CIPO updates its electronic filing system, applicants for a Canadian sound mark will need to submit a paper application, which will still require a visual representation of the sound mark, such as a waveform, to be acceptable.

For more information on this development, please visit the Canadian Intellectual Property Office’s website.

 

Robert Kalanda, B.A., J.D., Student-at-law

 

Brief informational summaries about commercial and other litigation matters in the courts of Ontario and other developments are periodically published on this website. They are intended to be a general comment or general discussion, not legal advice and should not be relied upon as legal advice. Should you require legal advice, please contact info@heydary.com or 416 972 9001.

 

Canada Considers Joining US in Protecting Sound Trade-Marks

Tuesday, March 27th, 2012

Industry Canada is currently considering amending Canada’s trade-marks regulations to allow for a number of new non-traditional marks, including sound marks.

This change would be a large step towards resembling the United States trademark regime, which has been accepting sound marks for a significant period of time. Sound Marks are also considered valid trade-marks under the World Trade Organization’s TRIPS Agreement, to which both Canada and the United States are members.

Under the current proposed amendments, sound mark applications in Canada would be required to:

  1. state that the application is for the registration of a sound mark;
  2. contain a drawing that graphically represents the sound;
  3. contain a description of the sound; and
  4. contain an electronic recording of the sound.

Memorable jingles and sounds, such as MGM’s lion roar or NBC’s chimes, can provide instant brand recognition, and can become an important component of any company’s intellectual property portfolio. The inclusion of these marks will bring Canada closer in line with the United States and the World Trade Organization, and provide an important additional method for businesses to protect and market their brand to Canadians. .

For more information on the proposed amendments, please visit the Canadian Intellectual Property Office’s website.

 

Robert Kalanda, B.A., J.D., Student-at-law

 

Brief informational summaries about commercial and other litigation matters in the courts of Ontario and other developments are periodically published on this website. They are intended to be a general comment or general discussion, not legal advice and should not be relied upon as legal advice. Should you require legal advice, please contact info@heydary.com or 416 972 9001.

 

Canada strives to strengthen its ties with China

Monday, January 23rd, 2012

On January 12, 2012, Canadian Prime Minister, Steven Harper, said during his meeting with Chinese Ambassador Zhang Junsai that the Canadian government is “committed to moving Canada’s relationship with China forward by focusing on deepening economic ties, including opening new markets, and setting the foundation for long-term growth.”

China is Canada’s second-largest trading partner, next only to the US, and a key customer for Canadian natural resources and agricultural products.  Statistics show that bilateral merchandise trade reached 57.7 billion Canadian dollars (USD 52 billion) in 2010, while overall trade between the two countries more than tripled between 2001 and 2010.

This author asks: in what ways can Canada strengthen its ties with China?  A review of what Canada can offer or do to improve on our relationship with China would be appropriate.

A report produced by the Canadian Council of Chief Executives (“CCCE”), an organization in Canada comprised of chief executive officers of roughly 150 major Canadian corporations, proposes several strategic recommendations to strengthen Canada’s ties with the world’s most populous country.   The following is a summary of the report and a list of the recommendations contained therein:

  1. Develop the Canada Brand
    Canada should develop itself as a brand both at home and in China.  Ottawa should engage provincial premiers in developing an integrated approach to China.  Business groups and trade associations could publicly showcase companies with successful business strategies in the region and work to encourage visits to Canada by Chinese tourists. 
    Another suggestion was for Canadian Universities to build on the country’s growing reputation as a place to pursue post-secondary education. This include developing channels though which young Canadians can create businesses in Asia or find employment in enterprises located there.
    In short, Canadians should begin to think of Canada as an Asian location, linking world-class expertise in research and business development across borders. To achieve this, Canada can set ambitious targets such as aiming to double the value of its export to China by 2015.
  2. Liberalize Trade and Investment
    Canada should focus on trade deals as the centerpiece of any long-term strategy with respect to China. These include implementing foreign investment promotion and protection agreements with China.  At the very least, Canada should send a strong signal of our renewed commitment to China and allow Canada to accomplish market access objectives with China.  This means liberalizing the movement of people, capital, goods and services in a comprehensive manner, including, but not limited to, areas such as regulatory cooperation, logistics, intellectual property, investment, rules and standards, competition, recourse, science and technology, the mobility of academics and professions.
  3. Create a China Roadmap
    China’s interests include education, people flows, access to energy and natural resources, and food security, all of which it is pursuing through enhanced trade and investment.  Canada seeks access to Chinese markets or goods and services.  Small and medium-sized Canadian businesses would benefit from access to Chinese global supply chains, and Canada needs Chinese capital to develop its infrastructure and natural resources.  
    Both countries would benefit from a greater transparency and signal to China, Canada’s openness as an investment destination even in the sensitive resource and energy sectors.  
    Given the relative size of the two countries’ economy, both countries will have to work more closely with other countries to achieve progress or reciprocity in areas like intellectual property protection.  Canadian business leaders and other stakeholders should be part of high level delegations to China, and they should focus on penetrating sectors in China that are expected to grow in the years ahead such as consumer products, health, education, financial services and logistics industries.
  4. Enhance the Canadian Business Presence
    Small and medium-sized firms contributed to half of Canada’s GDP. These small and medium sized firms play an important role in strengthening Canada’s ties with China.  Therefore, Canada needs to find innovative ways to improve these firms’ accessibility to China.  Canadian governments and trade associations should cooperate on an action plan and engage in regular consultations around supporting the greater penetration of Chinese markets by small and medium-sized firms.  One example would be to develop mentorship programs involving business people with real experience working in China.
  5. Anticipate the Future
    A long-term strategy towards deepening Canada’s economic relationship with China will require bold leadership and the participation of Canadian partnerships at all levels.  It should be multi-faceted, with regional, bilateral (Canada-US) and security dimensions.  It should include a new commitment to China’s significant development.  Such a strategy cannot be built overnight, but Canada must begin: the potential returns to Canada are high, and so are the cost of an inadequate Canadian response to China’s growing opportunities.

 

Scott Au, LLB, MBA, CMA

 

Brief informational summaries about commercial and other litigation matters in the courts of Ontario and other developments are periodically published on this website. They are intended to be a general comment or general discussion, not legal advice and should not be relied upon as legal advice. Should you require legal advice, please contact info@heydary.com or 416 972 9001.

 

SCC confirms that a hyperlink, by itself, should never be seen as “publication” of the Content.

Thursday, October 20th, 2011

In Wayne Crookes and West Coast Title Serach Ltd. v. Jon Newton (2011 SCC 47), the Supreme Court of Canada has confirmed that a hyperlink, by itself, should never be seen as “publication” of the content to which it refers.  Rather, it is only “when the hyperlinker presents content from the hyperlinked material in a way that displays the defamatory content, should the content be considered ‘published’ by the hyperlinker.”

The defendant in this case (“N”) owns and operates a website in British Columbia. One of the articles he posted on the website contained hyperlinks to other sites which contained information about the plaintiff (“C”). As a result, C sued N on the basis that the hyperlinks he created connected to defamatory material, such that by using those hyperlinks, N was publishing the defamatory information.

The trial judge held that the mere creation of a hyperlink does not lead to a presumption that someone is using the hyperlink to access the impugned words. A majority of the British Columbia Court of Appeal upheld the decision and held that although some words in an article could suggest that a hyperlink is encouragement to view the website, in this particular instance it was not the case.

Justice Abella, writing for the majority held that to prove the publication element of defamation a plaintiff must “establish that the defendant has, by any act, conveyed defamatory meaning to a single third party who has received it”. Since hyperlinks are fundamentally different from all other acts of “publication”, they are inherently content neutral. Further, by inserting a hyperlink into a text, the author still has no control over the content in the secondary article to which he or she has linked. In this particular case, the issue was with respect to whether a hyperlink by itself should be seen as “publication” of the content to which it refers. Since the use of a hyperlink cannot, by itself amount to publication, even if a hyperlink is followed and connected to defamatory content, N has not published defamatory content.

Rosario G. Cartagena, BSc., MSc., J.D.

 

Brief informational summaries about commercial and other litigation matters in the courts of Ontario and other developments are periodically published on this website. They are intended to be a general comment or general discussion, not legal advice and should not be relied upon as legal advice. Should you require legal advice, please contact info@heydary.com or 416 972 9001.