Chapter 13: Intellectual Property

- Intellectual Property: intangible personal property relating to ideas, information or

creative works
- Copyright
- Federal jurisdiction
- Balancing protection of a product of person’s mental effort and free flow
of new and innovative ideas
- Defend rights of indiviudal’s ideas, info or creative works and how
they are used
- Only original work is entitled to copyright protection
- Copyright act: only actual expression of idea itself is protected, not the
idea itself or thought behind it
- Important distinction
- What is covered by copyright
- All forms of artistic work (sculpture, paintings, maps, drawings,
photographs, videos)
- Written work, literary work, dramatic work
- Musical compositions
- Dance choreography
- Sound recordings etc
- Computer software → protected by a 1988 amendment to the Copyright
Act
- Communication signals (radio, TV)
- Creation of work generates copyright automatically
- Still important to register as it establishes credibility
- To obtain copyright protection in Canada, must be Canadian
citizen, or a citizen, subject, or resident of one of the countries that
adhere to the Berne Copyright Convention
- Who holds copyright?
- Person who created the work or employer where the work is
created
- Assigning copyright?
- Creator can assign or license work
- Creator will continue to have moral right (attribution, integrity, and
association)
- allow the artist, author, or performer to demand that (1)
their name (or a pseudonym) continue to be associated
with the work as its author; (2) the work not be distorted,
mutilated, or otherwise changed in such a way as to
degrade it and bring harm to the reputation of the author;
and (3) the work not be associated with any products,
causes, services, or institutions in a way that is prejudicial
to the author’s reputation
- Creator can waive these rights
 - Rights exist for the same length as copyright
- Copyright vs moral rights (Important Distinction!)
- Copyright: Protection extends for life of the author plus 70 years, then
becomes part of public domain (the category of works that are no longer
copyrighted and may be used by anyone)
- Reduced to 50 years if corporation is involved, author is not
known, or it involves other people (movies, photographs, etc)
- Gives monopoly over work
- File Sharing:
- Copyright prevents illegal copying of intellectual work → super easy to
do nowadays
- Massive legal steps are taken
- In Canada, downloading a song for private use is ok but for the
purpose of sale, rental , distribution, etc is not allowed
- 2012 Amendments to the Copyright Act
- Digital locks (attempts to secure online content such as academic
passwords) are protected
- Software and content distribution companies can protect what
they sell and create
- Ex. must buy academic papers before reading
- Non-commercial users can use copyright content for remixes,
mashup or home movies (youtube exception)
- Broadened fair dealing exception
- Fair dealing: use of copyright material (as permitted under
Canadian Law) for the purposes of research or private
study, criticism or review, or news reporting
- Added education, satire, and parody
- Infringing copyright:
- Person tries to obtain a benefit from the sale, reproduction,
distribution, performance, broadcast, or other commercial use of
work
- Plagiarism
- Moral rights

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- Exceptions to copyright laws
- Laws and decision by courts and tribunals are public domain
- Brief quotations attributed to author are ok
- Non-profit educational institutions
- Libraries, archives, museums
- Persons with perceptual disabilities
- Ex. blind people can convert work to braille
- Making private copies of commercially recorded music for your
own private use
- Fair Dealing Exception
- Use of copyright material for the purpose of:
- Research or private study
- Criticism or review
- News reporting (but author must give source)
- Copyright Modernization Act., 2012: s. 29 of that Act added three
new fair dealing exceptions: education, parody and satire.
- Copyright in Music
- “It must be remembered that while there are an enormous number
of possible permutations of the musical notes of the scale, only a
few are pleasing; and much fewer still suit the infantile demands of
the popular ear. Recurrence is not therefore an inevitable badge
of plagiarism.” Judge Learned Hand
- Ex. katy perry/flame lawsuit (doesn’t make sense)
- Rise in copyright trolling as well
- Can you copyright lyrics & unique performances?
- Ex. 3LW and Shake it off (players gonna play, play,play,play,play)
- "In short, combining two truisms about playas and haters,
both well-worn notions as of 2001, is simply not enough.”
US District Judge Fitzgerald
- Copyright Remedies
- Injunction
- Interlocutory injunction: establish prima facie case
- A court order issued before a trial to stop an
ongoing injury
- (1) that there has been an infringement of
copyright;
- (2) that if the injunction is not granted, irreparable
harm will be suffered that could not properly be
compensated for by an award of damages at the
trial;
- (3) that the balance of convenience is also in the
plaintiff’s favour
 - Balance of convenience: determination of
who will suffer the greatest injury if the
damage were allowed to continue
- Permanent injunction: prohibits offending conduct
- Delivery Up order: directing the defendant to deliver all copies of
the infringing items in their possession or control to the copyright
owner
- Done at the same time as injunction
- Antor piller order
- A court making an order, even before trial, that the
offending material is seized
- Made without notice → only happens when there is compelling
evidence
- Damages & Accounting
- Compensate victim for losses occurred (damages)
- Profits made from sale or rental paid to victim (accounting)
- Punish the offender (punitive damages)
- Limitation period: three years
- Can be extended if not know of infringement
- Rights holders can sue any service provider
- Ex. Viacom and Paramount Pictures against
YouTube and Google
- Under Copyright Act:
- Statutory damages: a new remedy enabling a court to
award damages that it “considers just” under the
circumstances, without requiring proof of damage or lost
profits
- Alleviate difficulties proving exact losses or net gain
- Enhanced injunction: an injunction ordered by the courts
that goes beyond ceasing or ratifying current behavior
(what a typical injunction does) by preventing a party from
engaging in certain behavior in the future as well
- saves time and expense of future litigation
- Summary procedures: an arrangement allowing a court to
make a decision based on affidavit evidence
- More expedient and less expensive
- Penalties up to $1 million in fines and five years in jail
- Under Copyright Act:
- Statutory damages
- Enhanced junction
- Summary procedures
- The Copyright Board
- Handles disputes for copyrights
 - Arbitrates tariffs if there is a disagreement between licensing body
and another party
- Tariffs: set fees users must pay
- Sets levies on blank audio recording devices
- Reviews and approves fees for public performance of
telecommunication
- The Monkey Selfie Case
- Wildlife Photographer David Slater
- Wikipedia posted picture, refused to take down, asserting that a
non-human creator cannot hold a copyright.
- Slater published a book. PETA sued Slater for copyright
infringement on behalf of the monkey.
- Settled out of court in 2017 (after leaving Slater financially
devastated)
- Stuff posted online
- Tiktok and snapchat
- Creators retain UGC made content but tiktok and snapchat
gets a royalty-free license to use what content you made to
whatever they want
- Patents
- Patent: “government granted monopoly”
- Must be new and not disclosed to the public
- Unique and distinguishable
- Improvement to others
- Some utility or perform some useful, commercial, or industrial
function
- Possible to construct and use it on the basis of the information
supplied to the patent office
- 3-d printing now poses a problem to patenting
- Must be original work of inventor
- Protects idea than expression
- Cannot produce a simple variation
- Cannot patent higher life forms
- Computer programs?
- Cannot be patented
- BMPs (Patent business methods)
- Patents must be registered before rights are conferred
- Employers are entitled to patent the inventions of employees
- Can transfer holder of patents
- Joint patents
- Steps to obtaining patents
- 1. Must see if it doesn’t exist
- 2. Application with supporting docs (petition, specifications,
claims statements, an abstract, and drawings)
 - 3. Office then examines app
- 4. If app goes through → patent number is assigned
- First person to register is granted patent
- Once a Canadian patent application has been filed, application
can be made for patents in other jurisdictions, but priority in those
countries will be based on when the application was first made in
Canada. The reverse is also true, and the Canadian patent office
will grant a patent to a foreign applicant who applies in their own
country before the Canadian applicant applies here
- Gives holder 20 years of monopoly → inventor must disclose how it is
made
- Patent will protect variations of products
- (1) it must be new and original;
- (2) it must be inventive, displaying ingenuity on the
inventor’s part and not simply an obvious improvement;
- (3) it must be useful, functional, and operational
- 1987 amendment to patent act gave drug manufacturer more control over
product
- Trademarks
- Any term, symbol, design or combination of these that identifies a
business service or product and distinguished from a competitors
- Ex. scotiabank or lululemon
- Traditional rules of trademark and copyright law apply
- Cannot use trademark to enhance website or print it for
commercial use
- Goodwill value
- reputation, ongoing relations with customers, and product
identification,
- Associated with trademarks → protects goodwill
- Must be registered
- Ownership for 10 years → renewable indefinitely
- Fee paid every time
- Trademark act
- Cannot be scandalous or obscene
- Can register sounds
- Colour may be part
- Cannot resemble symbols of royalty, government of government
agencies, individuals, service organizations
- Cannot resemble another well-known trademark
- Anyone can register a mark as it is not required to state the
intention of using the trademark
- Knock-offs
- Up to imitated party to take legal action
- Cannot be a word that does not distinguish product
 - Ex. no food or cleaner
- Domain names
- Cybersquatters (users who buy up certain names)
- Cannot be a functional aspect of the design of the product
- Ex. megablock and LEGO
- Can lose status through common use
- Ex. Aspirin, trampoline, kleenex, and linoleum
- Passing-off
- Prevents a person from misleading the public into thinking it is
dealing some other business or person when it is not
- Must establish that it was likely to be misled
- Ex. independent hamburger stand with golden
arches in front of mcdonalds would count
- Compensation can be paid or offending conduct stop
- Memes?
- Under the Copyright Modernization Act, copyrighted works can be
incorporated into user generated content as long as it is not for
commercial gain and does not “have a substantial adverse effect”
on original material.
- Industrial Design
- Protects through statute design of things that may not otherwise be
protected. The Industrial Design Act protects designs of products,
everything from the shape of a car to the look of a barstool. Integrated
Circuit Topography Act specifically protects the design of integrated
circuits found in the many electronic products
- Ex. coca-cola bottle
- Items must be labeled with capital letter “D” enclosed in a circle
followed by the proprietor’s name or an abbreviation thereof
- Damages for infringement available if design is marketed
- Protects up to 10 years (maintenance fee required at 5 years)
- Protect attractive and distinctive patterns instead of useful ones
- Indigenous perspective on intellectual property
- Traditional knowledge and traditional cultural expressions are to be
shared
- Confidential Information
- Information is intended to remain confidential and not be disclosed
- NDA
- Fiduciary and other trust relationship —> common law to not to disclose
such information
- Trade secrets: confidential information that gives a business competitive
advantage
- Ex. customer lists, formulas, processes, source code, specific
technical knowledge
- Must be valuable to business and not any other user
 - Conveying of private info is wrongful
- Cannot disclose specific trade secrets but can develop general
knowledge
- Restrictive covenant: non competition clause
- Remedies
- Injunction
- Courts reluctant to give if it interferes with living
- Damages
- Accounting
- Punitive damages
- Regulating Information technology
- Information on the linked site may be connected, in the viewer’s mind, to
the host site
- Ex. Imax Corp v. Showmax case
- Must apply to domain name registry to buy domain name
- PIPEDA → protects the rights of domain name registrants
- personal information of individual (as opposed to corporate)
domain name registrants, including registrant name, home
address, phone number, and email address, is now protected
- Protecting Private Information
- Privacy Act
- Protects information by gov institutions, limits collection
- PIPEDA
- Protects health-related information and customer related
information
- Companies must protect employees and use preservative
techniques to protect databases
- Ex. Banking info, passwords, electronic signatures, and
records that disclose identity can be subject to theft
- Additional Challenges
- Expansion of internet makes it hard to regulate abuse
- Addition of Bill C-56, the Combating Counterfeit Products
Act
- Hard to determine jurisdiction as can be impossible to
determine who committed the act
- Dispute Resolution
- Alternative dispute resolution mechanisms to monitor
problems with internet
- Ex. National Arbitration Forum in handling domain name
disputes
- Regulatory Trends
- Netiquette: a code of conduct for online activities
- Web users impose sanctions on each other
- Criminal Activity and Other Abuses
 - Computer viruses, hackers, piracy, other common internet
and computer offences include pornography, theft,
gambling, criminal defamation and harassment, pedophilia,
hate literature, and other human rights violations
- General Criminal Code provisions have been used to deal
with these problems
- Prohibits interception of private communication
- Prohibits revenge porn
- Super hard to track online illegal activities though
- Encryption coding: technological innovations to protect
privacy and security on the internet
- All Legislated, all federal