EXCESS COPYRIGHT: Some Notes from Howard Knopf About Recent Developments at the Copyright Board of Canada – click on Learn More.
Macera & Jarzyna LLP Celebrates 40 Years in Business.
It was July 1978 when Andy Jarzyna and John Macera got together and opened shop in Canada’s capital city, Ottawa. Since then, Macera & Jarzyna LLP has become known internationally and at home for its excellence and specialization in Intellectual Property.
Andy Jarzyna – 1978 John Macera
Macera & Jarzyna, LLP is a firm of barristers and solicitors, specializing in Intellectual Property disputes and litigation. The firm works side by side with Moffat & Co., a firm of patent and trademark agents, specializing in the preparation, filing and prosecution of Patent, Trademark, Industrial Design, Copyright and Plant Breeders Rights applications in Canada and around the world. Macera & Jarzyna, LLP has developed a reputation as one of the country’s leading intellectual property boutiques. Congratulations Macera & Jarzyna LLP. Job well done.
Mediatube Corp. v. Bell Canada – Federal Court of Appeal – A company called Media Tube sued Bell Canada for patent infringement with respect to technology pertaining to Bell Fibe TV. Bereskin & Parr acted for Media Tube. Media Tube lost at trial (decision dated January 4, 2017) and appealed.
On its appeal, Media Tube (now represented by Aitken Klee) tried to amend its notice of appeal to add “ineffective assistance by trial counsel” as a ground of appeal. According to Media Tube, Bereskin was concurrently acting for Microsoft whose software was used in the allegedly infringing system used by Bell. This apparent conflict caused Bereskin to “pull its punches” in its representation of Media Tube in order to avoid harming the business interests of Microsoft and advance those of Bereskin (keeping Microsoft happy as a client). Or so Media Tube claims.
Media Tube also sought discovery of Bereskin & Parr in order to ascertain the full extent of the conflict.
The Court of Appeal (Justice Stratas), on June 26, 2018, dismissed Media Tube’s motion. Ineffective assistance of counsel is sometimes used in a criminal context – it is exceptionally rare to be found in civil cases. Media Tube needed to show:(1) the existence of an actual (not “apparent”) conflict and (2) and that the conflict adversely affected counsel’s performance at trial – it is not necessary to show that the outcome would have been different.
Here, Bereskin had filed trademark applications for Microsoft. Justice Stratas was not satisfied that trial counsel knew of this work or that it would have been enough to constitute an actual conflict.
In answer to Media Tube’s complaint that it needed to discover Bereskin in order to get all of the details, the judge observed (not surprisingly) that there is no provision for discovery before an appellate court. He went on to say that Media Tube still had the option of suing Bereskin “for negligence, breach of fiduciary duty, or both in the provincial superior court” where full discovery would be available. If Media Tube succeeded, it could recover from Bereskin (or its insurers) any amounts awarded against Media Tube in the Federal Court action and/or seek to have the Federal Court judgment set aside.
It can be inferred, from the judge’s reasons, that Media Tube was floating what I would call “a tinfoil hat conspiracy”, but there is still an embarrassment factor/PR problem for Bereskin in all of this, not to mention the risk that MediaTube will also sue them in the Ontario courts.
The judgment is here:
Review prepared by – Susan Beaubien
From May 28 to June 1, 2018, Howard Knopf attended the 36th World Intellectual Property Organization (WIPO) Standing Committee on Copyright and Related Rights held in Geneva, Switzerland on behalf of the Civil Society Coalition. Howard made the following submissions – one – two.
On June 19, 2018, Howard Knopf and Joe Ulvr attended Canada in International Law: At the Inflection Point, sponsored by The Centre for International Governance Innovation. The conference explored the challenges Canada faces in contributing to shaping global rule of law. The conference coincided with the launch of CIGI’s latest publication Reflections on Canada’s Past, Present and Future in International Law in which Howard Knopf contributed a chapter.
On June 28, 2018, Susan Beaubien was elected to the Board of Directors of the Canadian chapter of the International Commission of Jurists (ICJ). ICJ is an international NGO headquartered in Geneva whose mission is promotion of the rule of law, human rights and the independence of the legal profession. The Canadian chapter of the ICJ operates from the University of Ottawa and draws its members and volunteers from the legal profession across Canada. ICJ Canada provides legal expertise at both the international and national levels to ensure that developments in international law adhere to human rights principles and that international standards are implemented at the national level.
On May 5, 2018, Howard Knopf gave a talk titled “Copyright: Upcoming Changes and What You Need to Know”, at the Artists’ Legal Services Ottawa (ALSO) Arts Law Conference held at Arts Court. Howard focused on the Government’s review of the Copyright Act and the Copyright Board – What’s at Stake. Howard’s blog post is here. The slides for his talk can be found here.
Howard Knopf’s recent paper titled “Canada’s Role in the Relationship of Trade and Intellectual Property” has been published as Paper #17 in the series “Canada in International Law at 150 and Beyond” by the Centre for International Governance Innovation (“CIGIO”). You can view the paper here.
Diagnostic methods cause controversy at CIPO – Read Jerome Bastien’s blog post on the recently published policy of the Canadian Intellectual Property Office (CIPO) on patent applications for medical diagnostic methods, which has been the subject of criticism. The English translation is available at this LINK.
Legally Speaking with Jerome Bastien – On March 1, 2018, Jerome Bastien appeared on the podcast “Legally Speaking with Lawyer Kristen O’Keef”. Jerome discusses the importance of securing patents and trademarks to protect valuable intellectual property rights. The podcast can be accessed at this LINK.
Susan Beaubien has been appointed by the Government of Canada to the roster of qualified individuals to determine disputes arising under Chapter 19 of the North America Free Trade Act (NAFTA) . Members of the roster may be appointed to serve on dispute settlement panels established under Chapter 19 of NAFTA. The appointment is effected by way of Regulations to the Special Import Measures Act. Congratulations, Susan!”
Riches, McKenzie & Herbert LLP v. Cosmetic Warriors Limited, 2018 FC 63 (Justice Manson)
Cosmetic Warriors Limited (“Cosmetic”) owes a trademark registration (TMA649810) for the word LUSH, for use in association with “Clothing, namely, t-shirts”. On September 10, 2014, at the request of Riches, McKenzie & Herbert LLP, the Registrar of Trade-marks issued a Notice pursuant to section 45 of the Trade-marks Act, requesting that Cosmetic show that the trademark was in use in Canada in the three-year period before issuance of the Notice.
In Canada, Cosmetic licenses the LUSH trademark to Lush Handmade Cosmetics, Ltd. (“Lush Canada”). Lush Canada operates 46 stores in Canada, but is not in the business of selling t-shirts. Rather, it is a retailer of cosmetic products and related services such as hair dressing and beauty salon services.
According to the evidence filed by Cosmetic, employees of Lush Canada wear t-shirts bearing the trademark as part of their uniform. The t-shirts are also available to employees for purchase, both for themselves and as gifts for family and friends. The evidence showed sales of the t-shirts to Lush Canada employees in excess of $1200 CDN during the relevant period. The t-shirts were also exported to the United States and sold to Cosmetic employees in the U.S. Sales in the U.S. exceeded $2900 USD. T-shirts bearing the trade-mark were also sold in support of environmentalist campaigns.
The Registrar found that the t-shirts were not merely uniforms and that the evidence suggested that employees had purchased t-shirts to give to third parties. Even though the t-shirts were not sold for profit and were purchased from the supplier along with other “assorted swag” (as indicated on the invoice), the Registrar found that the Respondent had established use of the trademark within the Relevant Period within the meaning of section 4(1) of the Act. With respect to the t-shirts exported and sold to Cosmetic’s U.S. employees, the Registrar found that such sales constituted use under section 4(3) of the Act.
On appeal to the Federal Court, Justice Manson, considered whether the “normal course of trade” requirement in the definition of use in section 4(1) required transfer of the marked goods for profit. Justice Manson noted that it was clear in the law that promotional goods distributed free of charge per se do not meet the requirements of section 4(1) of the Act. However, if such distribution is part of an overall course of action for a business, carried out for the purpose of deriving profits and developing goodwill for the goods, it may constitute use in the normal course of that business, particularly if the goods freely distributed are the goods in which the business normally deals. However, in this case, Justice Manson noted that the t-shirts were sold at cost for promotional purposes to employees only, to generate goodwill in the owner’s cosmetics business. Such sales cannot be said to be in the normal course of trade to satisfy use under section 4(1) of the Act. Given the absence of profit, the promotional and de minimis nature of the sales to employees, and the fact that Cosmetic is not in the business of selling clothing, Justice Manson found the Registrar’s decision to be unreasonable.
Justice Manson also noted that the Registrar’s refusal to draw a negative inference from Cosmetic’s own evidence showing that the t-shirts were purchased from the manufacture along with other “assorted swag” was an error. Such evidence ought to have been considered.
Finally, Justice Manson considered whether the requirements for use in sections 4(1) and 4(3) are the same. The latter provision was enacted to protect entities whose trading activities were bona fide commercial, but who could not meet the use requirements in section 4(1) as their activities were exclusively outside Canada. In this case, Justice Manson found that since the Respondent’s activities in Canada do not establish use of a trademark, those same activities in the United States do not rise to the level of use simply because an export has taken place. A party cannot be allowed to make an end run around the normal requirements of the Act by merely shipping a product across the border.
The appeal was allowed and the mark will be expunged from the Register.
The decision is available at the following link:
Summary prepared by Barry Hutsel.
Teva Canada Limited v Pfizer Canada Inc., 2017 FC 957 (Zinn J).
Teva and Pfizer have been in litigation regarding Pfizer’s 1998 patent on its Viagra (sildenafil citrate) pharmaceutical since 2007. In 2012, the Supreme Court of Canada held that the patent was invalid for inadequate disclosure. Now, Teva seeks compensation for damages it suffered as a consequence of not being able to market its own sildenafil citrate tablets.
Subsequent to Teva’s Reply to Pfizer’s Statement of Defence and Counterclaim and subsequent Examinations for Discovery, Pfizer wished to amend its Statement of Defence and Counterclaim.
Pfizer wrote to Teva requesting consent to amend its pleadings and providing Teva with copies of both the old and new Motion Records. Teva responded by granting the request. Teva further noted that the new Motion Record included confidential transcripts which ought not to have been included. However, since it granted the request for consent, Teva felt that the content of the Motion Record was a moot issue.
Notwithstanding the consent, “Pfizer, for reasons that appear to be in the nature of some tactical advantage, filed its motion.” Teva responded and brought a cross-motion to amend the Motion Record to remove the allegedly confidential information. The whole process ultimately cost the parties and the Court great expense, including an urgent case management conference and three hours for the hearing of the motions, all of which the Court notes occupied the time of four counsel, a Court Registrar, and the Judge.
When Justice Zinn asked Pfizer’s counsel why it had brought a motion for leave despite having consent, Pfizer provided no satisfactory response. The Court found that this was an “abuse of this Court’s processes and procedures, and unnecessary.”
The Court also found that Teva’s withdrawal of its previous “unequivocal and unconditional consent” was a waste of the Court’s time.
Justice Zinn stated that his impression of this ordeal is best captured in the line “A plague o’ both your houses” from Romeo and Juliet. He further noted that his “only regret is that I am unable to order both parties to pay costs to the Court for its losses.”
The Court ordered that Pfizer’s amended Statement of Defence be accepted for filing and that all documents filed by either of the parties relating to both motions be returned to the parties and that the Judge’s copy be destroyed.
Read the case here – http://decisions.fct-cf.gc.ca/fc-cf/decisions/en/item/300801/index.do
Prepared by Scott Tremblay.
In a light hearted, but forceful attempt to strengthen its brand and avoid the “generic” label, the Belgium company that owns the VELCRO trademark, Velcro BVBA, has produced a video that seeks to educate the public on how to use – and not to use – the trademarks of well-known products, including its own. The video reminds consumers that when they use such well-known trademarks as CLOROX, or BANDAIDE, or ROLLERBLADE … or VELCRO, to refer to a products that do not originate from the trademark owner, they are doing damage to the brands, and urges consumers to stop the practice. There is also a subtle message in the video, that if you use the trademarks to pass-off on the reputation of the brand owners, you might find yourself in trouble with their trademark attorneys.
The video can be viewed at the following link – https://www.youtube.com/watch?v=rRi8LptvFZY
Entry prepared by Barry Hutsel.
The Good News and the Bad News
The only good news for the Canadian educational community about the recent Federal Court decision in Access Copyright v. York University is that the judgment is, with respect, so clearly and consistently wrong that there is a strong likelihood of a successful appeal – assuming that York decides to appeal. An application for a stay of the judgment is presumably being considered. Otherwise, it is very bad news. It could prove to be very disruptive very quickly not only to York University but to the entire educational community in Canada. Moreover, unless the decision is overturned and preferably stayed in the meantime, there will be greatly increased costs, chill on innovation and education, and potential chaos.
York University announced on July 31, 2017, that it would appeal the decision.
In a summary trial, Dairy Queen Canada, Inc. (“DQ”) sought relief including damages for passing off, an injunction restraining M.Y. Sundae Inc. and two individual defendants (“Sundae”) from further operation of its franchise and use of the Dairy Queen name and marks, and a declaration that the Franchise Agreement (“FA”) was terminated. Sundae brought a Counterclaim for breach of contract and unfair dealing.
Sundae operated a DQ Grill & Chill, purchased from a prior franchise operator. Sundae agreed to abide by all covenants and obligations of the prior existing FA.
After multiple instances of non-compliance with the FA, DQ notified Sundae in July 2013 that the FA was terminated. After further discussion, the parties signed a Mutual Cancellation and Release (“MCR”) in August 2013, suspending termination of the FA until February 2014, to give Sundae an opportunity to sell the business. Sundae did not cease operation until April 2014.
Sundae argued that DQ coerced it through economic duress into signing an invalid, unenforceable and unconscionable MCR, while DQ claimed the MCR was a complete answer to the Counterclaim, as it contained terms releasing the Plaintiff from all claims, damages and actions against them, and a statement that it was “freely and voluntarily executed” and that the parties “had an opportunity to review the same [terms] with consent”.
The Court agreed with DQ and noted that the MCR was more generous on its face than the FA, allowing the franchisee more time to recoup its investment through sale of the business. The Court found the MCR validly executed and binding, thus barring Sundae from advancing its Counterclaim.
On the issue of passing off, Sundae acknowledged the existence of goodwill in DQ’s trademarks and admitted to continuing operations until April 2014. The Court was satisfied all elements of the tort were met, since Sundae presented itself as a Dairy Queen franchise after the FA was terminated. The Court noted that the damage element of the tort can be supported by the unauthorized use of goodwill alone, and can also be inferred from a loss of control over goodwill. The Court held that Sundae’s conduct interfered with DQ’s goodwill and awarded damages, however the assessment was based on a reduced time frame from that sought by DQ.
The Supreme Court of Canada has ruled on the degree of utility required of patented inventions. The decision does away with the controversial “promise doctrine” that had evolved in Canadian jurisprudence, and brings Canadian patent law back in line with other jurisdictions on the issue of utility.
Canada’s Patent Act, along with the patent law of most other countries, requires that a patentable invention be useful for some purpose. This utility requirement has historically set a very low bar; any invention having a “mere scintilla” of usefulness will pass. The “promise doctrine” modified the utility requirement in certain circumstances. Under the doctrine, any statement in a patent that could be construed as a promise of a particular result was deemed to set a standard for the utility of the invention, which had to be met. In other words, if the patent promised a particular result, the invention had to deliver. Furthermore, the inventor had to know that the invention would deliver (or be able to predict that it would deliver) when the patent application was filed. If, on the filing date of the patent application the inventor did not know that the invention would so deliver, and could not soundly predict that it would deliver, the patent was deemed invalid.
The “promise doctrine” was unique to Canadian law and proved to be problematic for many patentees, particularly in the pharmaceutical industry, whose patent applications (which are typically filed worldwide) were not drafted with the peculiarities of Canadian law in mind. The validity of many patents was challenged under the doctrine, and some patents for otherwise useful inventions were struck down. The “promise doctrine” even resulted in a $500 million NAFTA arbitration claim against the Canadian government by pharmaceutical giant Eli Lilly, some of whose patents had been invalidated under the doctrine (thankfully for the Canadian taxpayer, Eli Lilly was not successful).
In AstraZeneca Canada Inc. v. Apotex Inc., (https://scc-csc.lexum.com/scc-csc/scc-csc/en/item/16713/index.do), Apotex alleged that AstraZeneca’s patent covering the drug NEXIUM was invalid, for the purpose of obtaining regulatory approval to market a generic version of the drug. Lower courts held that (i) AstraZeneca’s patent promised that the claimed compounds would provide a particular result, and that as of the filing date of the application, AstraZeneca had neither demonstrated nor soundly predicted that the compounds would so perform. In the words of the trial judge, the “yardstick” against which the utility of AstraZeneca’s patent was to be measured was the promises deemed to be made in its patent. Since AstraZeneca did not know whether such promises would be fulfilled at the time it filed its application, and could not soundly predict that they would be fulfilled, its patent was found to be invalid.
On appeal, the Supreme Court reversed the lower courts, finding that the “promise doctrine” is not good law. The Court found no support in the Patent Act for the idea that particular results allegedly promised in a patent set a unique standard of utility that must be met by the patented invention (especially since, in the absence of any such promise, a “mere scintilla” of utility is sufficient). The Court made it clear that promises found in patent are not the yardstick against which utility is to be measured. Rather, the utility requirement is met if the subject matter of the invention is capable of any practical purpose related to the nature of the subject matter.
The Supreme Court’s decision marks the end of a legal doctrine that generated considerable uncertainty in Canada’s patent system. The utility requirement of Canadian patent law is once again more or less in line with that of other jurisdictions. The decision is a major victory for patentees, particularly in the field of pharmaceuticals, where the majority of patent validity challenges under the “promise doctrine” were directed.
Summary prepared by Jaimie M. Bordman.
Diageo, a subsidiary of Diageo plc, one of the world’s largest producers of spirits, brought an action against Heaven Hill, alleging infringement of Diageo’s trademarks associated with its CAPTAIN MORGAN rum products, and passing off of Heaven Hill’s ADMIRAL NELSON’S rum products as those of Diageo. Heaven Hill, a company located in Bardstown, Kentucky, counterclaimed against Diageo, seeking declaratory and other relief including damages.
Diageo owned ten registered trademarks in Canada, each including a fanciful depiction of Sir Henry Morgan, a 17th century privateer. The competing bottles are shown below:
The Court found that Diageo had established significant good will associated with the CAPTAIN MORGAN brand, that Haven Hill deceived the public by directing public attention to its ADMIRAL NELSON’S rum products in Canada in such a way as to cause or be likely to cause confusion between its rum products and Diageo’s trademarks, and Diageo suffered damage or potentially could suffer damage. Accordingly, the Court concluded that Heaven Hill passed off its ADMIRAL NELSON’S rum products as those of Diageo’s CAPTAIN MORGAN rum products.
The Court also found that Heaven Hill’s use of its character or label trademarks in association with ADMIRAL NELSON’S rum products infringed Diageo’s exclusive right to use its registered trademarks and that the current depiction of the ADMIRAL NELSON’S character is a confusing trademark when compared with Diageo’s trademarks, individually or compositely over time.
The Court also concluded that while Heaven Hill had not actually used any of Diageo’s CAPTAIN MORGAN trademarks, use of its ADMIRAL NELSON’S composite trademarks in the market for rum products in three Canadian provinces is likely to have the effect of depreciating the value of the goodwill attaching to Diageo’s trademarks.
The Court denied any relief requested by Heaven Hill in its counterclaim, including a declaration that Diageo’s trademarks were invalid and that they be expunged, and an injunction restraining Diageo from making and inducing others to make false and misleading statements about the products and business of Heaven Hill. The Court also dismissed claims by Heaven Hill that Diageo’s action was an abuse of process, that its claim was estopped by acquiescence, laches and delay, and that it was statute barred.
The trademark applicant, Domaines Pinnacle Inc., was a producer of apple-based alcoholic and non-alcoholic beverages and foods. The trademark opponent was a subsidiary of Constellation Brands Inc, which produced and distributed wines. The applicant applied for DOMMAINES PINNACLE & Design (depicted below).
The opponent opposed the mark based on confusion with its word mark, PINNACLES. The Federal Court of Appeal, allowed the appeal, set aside the decision of the Federal Court (2015 FC 1083), and found that the decision of the Trade Mark Opposition Board (TMOB) was reasonable. The TMOB had decided that the applied for mark was sufficiently distinctive. The apple-based design distinguished the mark from the grape-based wines of the opponent and the overall mark communicated a distinctive idea of ice and winter. Furthermore, the opponent’s trademark rights would not permit it to use the same design as the applicant since that would infringe the applicant’s copyright. The court found that when a mark employs a common word as the central element, design and context must play a greater role in distinguishing the mark from the numerous other marks which employ the same common words.
The British Columbia Court of Appeal has recently affirmed a lower court finding that bidding on Google Adwords consisting of the names or trademarks of others does not, by itself, constitute passing off. However, incorporating such names or marks into a domain name can result in liability, even if the website located at the domain is not confusing.
The appellant Vancouver Community College is a public post-secondary educational institution that has used its present name and the acronym VCC since 1974. The respondent Vancouver Career College is a privately operated educational institution that has operated under its name since 1997. In 2009 the respondent adopted the trademark VCCollege and the domain name VCCollege.ca. The respondent also bid on several Google Adwords, including VCC and the appellant’s name, “Vancouver Community College”. The appellant alleged the respondent’s trademark and domain name encompass its well-known acronym in its entirety, and that its activities constitute passing off, in violation of the Trade-marks Act.
At the trial of this action the appellant was unsuccessful, but the Court of Appeal rejected the trial court’s approach to the case for the most part. In particular, the Court rejected the idea, adopted by the trial court, that any consumer confusion resulting from the seeing the domain name VCCollege.ca would be resolved once the consumer viewed the respondent’s website located at the domain name, which did not resemble the appellant’s site. The Court found that the relevant time for assessing confusion is when the domain name is first viewed on a list of search results, and that consumers would likely VCCollege.ca for the domain of the appellants. The Court agreed, however, with the trial court’s finding that bidding on Google Adwords, by itself, did not constitute passing off.
Summary prepared by Patrick Laycock. The case is available HERE.
In the context of a patent impeachment action, the Defendants, Shire LLC and Shire Pharma Canada ULC (“Shire”), brought a motion to strike portions of the Reply of the Plaintiff, Apotex Inc.
Shire first sought to strike an allegation that was found by the Court to be solely a statement of legal conclusions to be drawn from the facts already pleaded in the Statement of Claim. While Parties are not required to raise points of law in their pleadings, if they do, such pleadings do not bind either the Court or the Parties. Hence, the Court concluded that striking a legal conclusion is a waste of its time, and this portion of the motion was dismissed.
Shire next took issue with portions of the Reply purporting to raise Section 53 of the Patent Act as a new ground of invalidity. Allegations of fraud under s. 53 require full particulars, however, Apotex failed to plead sufficient material facts to disclose a reasonable cause of action. Instead, Apotex made only vague allegations about “assertions” as to the utility of the invention made by Shire to the Patent Office. The Court struck these portions of the Reply, noting that implicit allegations of fraud are not proper pleadings. Apotex was instructed that if it wished to raise a new ground of invalidity pursuant to s.53, it would have to move to amend its Statement of Claim, not add them to its Reply.
Although Shire was only partially successful on the motion, they were granted elevated costs, as the Court disapproved of the casual and thoughtless allegations of fraud made by Apotex under s.53. The Court issued a stern warning against “procedural gamesmanship” and stated that it will not hesitate to sanction such behavior through cost awards.