by senhaonline | May 19, 2023 | Sem categoria
By Jaimie Bordman
The length of the term of copyright protection in Canada is going up.
Canada’s budget implementation bill contains amendments to the Copyright Act that will extend the term of copyright. The new term length will be the life of the author, plus 70 years. This is up from the current term which extends for the life of the author plus 50 years.
Under a term of the United States-Mexico-Canada trade agreement (the “USMCA”), each party must provide under its laws copyright having a term of 70 years from the death of the author. The amendments to Canada’s Copyright Act will bring Canada into compliance with this term of the USMCA.
This change will have potentially significant implications for both copyright owners and users of content. If you have questions or concerns over how you or your business may be impacted, Moffat & Co. would like to help. Please contact us to more information.
Jaimie Bordman is an associate and litigation specialist with Moffat & Co.
by senhaonline | May 19, 2023 | Sem categoria
By Ashley Chu
The Canadian Intellectual Property Office (CIPO) recently published its first determinations regarding due care.
Since the amendments to the Patent Act and Patent Rules came into force on October 30, 2019, applicants and patentees have been required to show due care when:
• requesting reinstatement of an abandoned application due to failure to pay a maintenance fee and the late fee;
• requesting reinstatement of an abandoned application due to failure to request examination within 6 months of the deadline to request and failure to pay the late fee; and
• requesting reversal of the deemed expiry of a patent due to failure to pay a maintenance fee and the late fee.
In determining whether the failure occurred in spite of the due care required by the circumstances having been taken, the Commissioner of Patents (the “Commissioner”) considers whether the applicant/patentee took all measures that a reasonably prudent applicant/patentee would have taken in the circumstances to avoid the failure.
CIPO had previously provided some general circumstances in which the due care standard may be met (e.g., force majeure, unexpected illness, facsimile or software submission failure, docketing system error or isolated human error by assistant). But until now, applicants and patentees did not have any concrete examples of situations where the Commissioner had found that due care had been taken.
Three determinations have been published, all of which relate to a failure to pay maintenance fees due to an isolated human error. In one case, the missed maintenance fee payment was a result of the client’s instructions being misclassified in a docketing system. In the other two cases, a mistake in identifying the correct patent number was inadvertently made.
While each case was decided on its particular set of facts, it appears that at minimum, what is needed to establish due care in cases of human error is a clear and detailed explanation of the circumstances, including:
• how the applicant, patentee or agent chooses, trains, instructs and monitors the work of a reliable, experienced, well trained and supervised employee;
• the number of years the employee has been entrusted with the particular task and whether the employee has performed all his/her duties diligently in the past;
• if an annuity service is used, how the annuity service possesses the technical skills required for the payment of maintenance fees and how the annuity service chooses, instructs and supervises the work of an experienced, well trained and supervised employee; and
• if a docketing system is involved, the measures taken to ensure client instructions are properly classified and how foreseeable limitations of the system are generally monitored and addressed.
Any additional reasons provided by the applicant/patentee should be clearly linked to the failure to pay the maintenance fees. It is also helpful to provide evidence in the form of affidavits by relevant persons, such as the employee and/or the employee’s supervisor.
These cases make it clear that CIPO requires a great level of detail in the reasons and evidence submitted by the applicant/patentee in order to meet the due care standard. However, the process of preparing such documentation is undoubtedly time-consuming and stressful, particularly since there is no guarantee that the Commissioner will make a finding of due care.
This underscores the importance of paying maintenance fees and requesting examination on time, to ensure that the rights of the applicant or patentee are preserved.
For more information on Canadian patent practice, please contact the professionals at Moffat & Co.
Ashley Chu – is an associate with Moffat & Co. Ashley is a lawyer and a registered patent agent.
by senhaonline | May 19, 2023 | Sem categoria
By Jaimie Bordman
Canada’s Supreme Court has recently affirmed that tariffs for dealing with copyright-protected works levied by copyright collective societies and certified by the Copyright Board, are optional. Users of copyright-protected material are free to opt out of said tariffs and obtain appropriate licenses by other means, if desired.
The underlying dispute involved York University; whose professors make huge volumes of copies from copyright protected works pursuant to instructing students. The University had obtained a license for such copying via Access Copyright, a collective society representing the owners of copyright in most (if not all) of the written works that York professors were reproducing in the course of teaching their students.
The parties were negotiating to renew York’s license for reproducing the written works. When negotiations broke down, Access Copyright sought certification of an interim tariff from the Copyright Board of Canada, which would have the effect of unilaterally setting the royalty rate for the license at the current rate until negotiations could be concluded. The Copyright Board granted the request for an interim tariff, but after some time York University declined to take license rights from Access Copyright altogether and stopped paying the tariff.
York’s refusal to take a license from Access Copyright and pay the interim tariff gave rise to the central question in this matter: when a tariff is certified by the Copyright Board, setting royalty rates for a license to use copyright works, is it mandatory that anyone using the works in the manner covered by the tariff pay the tariff rates to obtain a license? Access Copyright maintained that the tariff was indeed mandatory and sought to enforce the tariff in Federal Court. The Federal Court sided with Access Copyright, but the Federal Court of Appeal disagreed, finding that Copyright Board approved tariffs are voluntary for those using the copyright material covered by the tariff.
The Supreme Court held that the interim tariff from the Copyright Board was optional and was not enforceable against York University. The Copyright Act does not contain any language that clearly, distinctly establishes a duty to pay a copyright collective society for a license under copyright pursuant to a tariff certified by the Copyright Board. Accordingly, any user of copyright-protected material is free to obtain a license in whatever manner it desires. Users are also free to determine whether they believe a license is required at all, or whether their activities fall under the “fair dealing” exception to copyright infringement (subject to the risk of a copyright infringement suit from the copyright owner, of course).
The Supreme Court’s decision is York University v. Canadian Copyright Licensing Agency (Access Copyright), 2021 SCC 32, and can be found at this link: https://decisions.scc-csc.ca/scc-csc/scc-csc/en/item/18972/index.do#
by senhaonline | May 19, 2023 | Sem categoria
By Jaimie BORDMAN
It has been said that imitation is the sincerest form of flattery. This provides little comfort to the owners of famous brands, however, since “imitation” can cause serious problems such as confused customers and erosion of the brand owner’s valuable reputation.
One such brand owner recently put a stop to the “imitation” of its brand by a cannabis retailer in Vancouver. SUBWAY, the world-famous chain of sandwich shops, obtained an injunction and damages against the retailer, which used the trademark BUDWAY, shown below, in an obvious attempt to imitate, or at least parody, the famous sandwich retailer.
In a decision of Canada’s Federal Court, it was determined that consumers were likely to be confused and infer that BUDWAY’s goods and services were connected with SUBWAY. It was also determined that BUDWAY’s unauthorized use of this mark depreciated the value of the extensive goodwill associated with SUBWAY’s registered trademarks in Canada. The Court ordered the cannabis retailer to stop all use of the BUDWAY trademark, and pay a modest damages and court costs (CDN$40,000 in total).
Interestingly, the decision was taken by the same judge of the Federal Court (Justice Nicolas McHaffie) that decided another case of a cannabis trader “paying homage” to the famous children’s retailer Toys ‘R Us, by using the trademark Herbs ‘R Us.
In the Herbs ‘R Us matter, the Court found that the goodwill in the Toys ‘R Us trademarks had been depreciated, but the trademark rights were not directly infringed because there was no reasonable likelihood of confusion. In Herbs ‘R Us, the goods and services of the parties were so unrelated, and indeed antithetical to one another – one side being intended for children, and the other clearly not so intended – that consumers would not likely infer that Toys ‘R Us was now in the cannabis business.
The Court found that this case was different, however, in that there was some relationship between some of the parties’ goods and services. BUDWAY sold edible products including cookies and other baked goods, which SUBWAY also sells. In this context, the Court found it reasonably likely that consumers could mistakenly infer that SUBWAY was the ultimate source of the BUDWAY goods and services.
Links to the Court’s decision, and the decision in Herbs ‘R Us, can be found below:
https://decisions.fct-cf.gc.ca/fc-cf/decisions/en/item/498525/index.do
https://decisions.fct-cf.gc.ca/fc-cf/decisions/en/item/481023/index.do
by senhaonline | May 19, 2023 | Sem categoria
Federal Court of Appeal Upholds Site-Blocking Order
by Ashley Chu
The Federal Court of Appeal (FCA) has upheld an unprecedented site-blocking order issued by the Federal Court.
In 2019, the Federal Court issued an order requiring a number of Canadian Internet service providers (ISPs) to block access to certain websites that were alleged to infringe the plaintiffs’ copyright. In addition to being the first of its kind in Canada, this order was notable because the ISPs were not defendants in the underlying copyright action. Teksavvy Solutions Inc. (Teksavvy), one of the ISPs, appealed the order.
In dismissing the appeal, the FCA held that the Federal Court did indeed have the power to grant the site-blocking order, finding that it is one of the possible remedies contemplated in the Canadian Copyright Act. The FCA disagreed with Teksavvy’s contention that the Telecommunications Act displaces the Federal Court’s equitable powers of injunction, which includes the ability to impose a site-blocking order.
The FCA also declined to consider whether freedom of expression, as set out in the Canadian Charter of Rights and Freedoms, was engaged by the order. It noted that it was not necessary for the judge to engage in a detailed Charter rights analysis separate and distinct from the balance of convenience analysis that is already considered when determining whether an interlocutory injunction should be issued. With respect to the judge’s analysis of the legal test for interlocutory injunctions, the FCA found no error in his analysis.
Therefore, Teksavvy’s appeal was dismissed.
This decision is significant for copyright owners, who will now have available to them site-blocking orders as a remedy for copyright infringement.
The Federal Court of Appeal’s decision is published as Teksavvy Solutions Inc. v Bell Media Inc. et al., 2021 FCA 100 and can be accessed at this link: Teksavvy Solutions Inc. v. Bell Media Inc. et al.
For more information about copyright protection in Canada, please contact the professionals at Moffat & Co.
by senhaonline | May 19, 2023 | Sem categoria
Federal Court Provides Guidance on Fair Dealing in Copyright Law
by Jaimie Bordman
The Federal Court has recently provided guidance on the issue of fair dealing with copyright works, dismissing a claim of copyright infringement brought by Canada’s national broadcaster against one of Canada’s major political parties.
During the federal election campaign of 2019, the Conservative Party of Canada (the “Conservative Party”) produced an “attack” ad criticizing the performance of the incumbent Prime Minister, whom the Conservative Party was trying to unseat. In its ad, the Conservative Party used relatively brief clips (a few seconds in length each) from the Canadian Broadcasting Corporation’s (the “CBC”) news broadcasts. The CBC claims copyright in its news broadcasts.
In dismissing the CBC’s copyright claim, the Federal Court found that the CBC did own copyright in the news broadcasts and that the clips that were used by the Conservative Party were sufficient in quality and quantity to qualify as a “substantial part” of those broadcasts. However, the Court found that the Party’s use of the clips constituted “fair dealing”, and was not an infringement of CBC’s copyright. The doctrine of fair dealing provides users of copyright protected material with a right to use the protected material in certain circumstances. Copying protected works in a manner that constitutes fair dealing does not infringe the owner’s copyright.
In order to constitute fair dealing, the copying of a protected work must be for one of several purposes identified in the Copyright Act, such as “research”, “private study”, and “criticism”. As well, the nature of the copying and use of the work must be “fair”, which is determined on a case by case basis, with reference to several criteria.
In this case, the Court found that the ad was made, and the news clips were used, for the purpose of “criticism”. The Court found that the fair dealing purposes listed in the Copyright Act should be interpreted broadly. Using the copyright protected clips to criticize a third party (the Prime Minister) was acceptable, even though the criticism did not relate to the works themselves, or the CBC.
With regard to whether the use of the clips was “fair”, the CBC argued that the Conservative Party’s use would create the appearance that the CBC was biased in favour of the Conservative Party, which would damage the CBC’s reputation as a politically neutral provider of news. The Court agreed that this concern could be valid, and could favour a finding that the use was not fair. However, the Court found that there was no evidence showing that the ad actually had this effect in this case.
The Federal Court’s decision illustrates that the doctrine of fair dealing, often referred to as a “user’s right”, is to be given a relatively large, liberal interpretation to permit the use of copyright works by all, for the enumerated purposes, and in a manner that is fair. The decision also serves as a reminder that the question of fairness is factual in nature. Factors to be considered in the analysis must be grounded in fact, and supported by evidence.
The Federal Court’s decision is published as Canadian Broadcasting Corporation v. Conservative Party of Canada, 2021 FC 425, and can be viewed at this link: Canadian Broadcasting Corporation v. Conservative Party of Canada – Federal Court (fct-cf.gc.ca)
Contact the professionals at Moffat & Co. for more information regarding copyright protection in Canada, and the doctrine of fair dealing.
