By Jaimie Bordman
As copyright pirates continue to develop ever more complex ways to evade copyright enforcement, content owners must continually devise new ways of stopping them. In a recent decision, Canada’s Federal Court has provided content owners a significant new tool to use in their efforts to stop piracy.
Known as a Dynamic Site Blocking Order, the Order compels third party internet service providers (ISPs) to block access to internet sites as identified by the content owners from time to time, sometimes on very short notice. This type of Order differs from Static Site Blocking Orders, where the sites to be blocked are specifically identified in the Order, and the addition of new sites to be blocked requires Court intervention to amend the Order.
While Static Site Blocking Orders have been issued by Canadian courts before, this is the first time that a Canadian court has issued a Dynamic Site Blocking Order.
The site blocking order was issued to the owners of the National Hockey League’s Stanley Cup Playoffs, to prevent unauthorized redistribution of the coverage by unidentified pirates. The unprecedented dynamic nature of the order was necessary because of the pirates’ advanced means of evading detection, which included frequently relocating the illegal feed to new internet sites, sometimes several times per game. Due to the nature of the copyright works as a live broadcast, the owners required the ability to quickly add new sites to the site blocking order; without this ability, they would effectively have no means of preventing unauthorized access to their content.
The Order was opposed by several of the ISPs that will be required to block the sites under the Order. Several concerns were raised, including the possibility of inadvertently blocking access to legal content, and the cost of compliance with the order. For some ISPs, core network equipment would have to be upgraded in order to block sites as required, which would substantially add to the cost of compliance.
The Court was sympathetic to many of these concerns, and issued the Dynamic Site Blocking Order subject to several conditions, including the following:
- The content owner is required to retain a third party expert to monitor the owner’s use of the Order, and ensure that blocked sites are properly identified;
- No ISP will be required to upgrade equipment to comply with the Order;
- ISPs will be entitled to full reimbursement of their costs incurred to implement the Order. Reimbursement is capped at a maximum amount, but reasonable costs to implement the Order are not expected to exceed that cap.
Despite these strict conditions, the Court’s Dynamic Site Blocking Order establishes precedent in Canada for a powerful new tool for copyright owners to enforce their legal rights against pirates who go to great lengths to infringe.
The Court’s lengthy reasons for issuing the Order can be seen in Rogers Media Inc. et al. v. Doe 1 et al., 20220 FC 775.
By Jaimie Bordman
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 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.
Ashley CHU – Qualifies as Registered Canadian Patent Agent – The Partners, Associates and Staff at Moffat & Co. wish to announce and congratulate Ashley CHU on her recent success in passing all four of the Patent Agent examinations thereby qualifying as a Registered Canadian Patent Agent. Notably, this was Ashley’s first attempt at the exams. Well done, Ashley. This is a rare accomplishment indeed.
Ashley joined the firm as a patent and trademark agent trainee in 2018. She received an Honours Bachelor of Health Sciences degree from McMaster University in 2015 and a J.D. from the University of Western Ontario in 2018. During her undergraduate degree, Ashley spent her summers working as a clinical research assistant in the medical biophysics department at the Princess Margaret Cancer Centre. Ashley is a barrister and solicitor, having been called to the Bar in June of 2019.
She is currently a member of IPIC’s Public Awareness Committee, the Federation of Asian Canadian Lawyers (Ontario) and the International Association of Young Lawyers.
Ashley practices in the areas of Patents and Trademarks
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 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: