Photographer Edmond Chung’s fashion photos of Brandy Melville Canada Ltd. (“Brandy Melville”) employee Catherine Moisan were destined to be viewed on Instagram and Facebook. However, Brandy Melville’s unauthorized use of one of his photographs led Edmond Chung on a years-long effort to seek redress from the retailer for breach of his copyright. Edmond Chung finally succeeded in his efforts this April 2016 when the Court of Quebec’s Small Claims Division condemned Brandy Melville to pay Edmond Chung $5,000.00 for copyright infringement.  This decision is good news for creators seeking to share their work with a larger audience as it … Continue Reading
In May 2016, the Allied Security Trust, a non-profit industry group, announced the launch of the Industry Patent Purchase Program, otherwise known as IP3. This new initiative brings together technology industry leaders including Facebook, IBM, Microsoft, and Adobe, to establish a patent marketplace in an effort to create an opportunity for patent owners to both protect their intellectual property, and acquire valuable patents.
The IP3 follows the footsteps of previous initiatives by tech industry leaders, including an initiative spearheaded by Google last year, the Patent Purchase Promotion Program, that invited companies and start-ups to sell their patents to Google.… Continue Reading
On June 1, 2016, the Federal Court granted an interlocutory injunction against retailers of television set-top boxes with pre-loaded applications that permit the unauthorized streaming and downloading of copyrighted content. Recognizing the “emerging phenomenon” of “pre-loaded set-top boxes” in Canada, this injunction comes at a time of rapid growth in the popularity of such devices. Finding for the plaintiff broadcasting companies, the Court’s Order in Bell Canada et al. v 1326030 Ontario Inc. et al., 2016 FC 612 also permitted the plaintiffs to identify and add other retailers of pre-loaded set-top boxes as additional defendants to bring them under … Continue Reading
On May 10, 2016, the Federal Court of Canada rendered its decision in Maltz v. Witterick, denying the Applicants, Judy Maltz, Barbara Bird and Richie Sherman, producers of a documentary called No. 4 Street of our Lady (the “Documentary”), an award in damages for breach of copyright and infringement of moral rights allegedly caused by Jennifer L. Witterick, author of the book My Mother’s Secret (the “Book”).
In re-examining the question of whether a particular set of facts can be subject to copyright protection, this case sheds light on the “substantial taking” test as … Continue Reading
On June 14, I gave my annual presentation to the Toronto computer Lawyers’ Group on “The year in review in Computer, Internet and E-Commerce Law”. It covered the period from June 2015 to June 2016. The developments included cases from Canada, the U.S. the U.K., and other Commonwealth countries.
The developments were organized into the broad topics of: Technology Contracting, Online Agreements, Privacy, Online/Intermediary Liability/Responsibility, Copyright, and Trade-marks and Domain names.
The cases referred to are listed below. My slides can be viewed after the case listing. These and many other cases will be added to my 7 volume book … Continue Reading
Last year we wrote about a trilogy of Federal Court decisions relating to Eli Lilly’s erectile dysfunction (ED) drug CIALIS® (tadalafil). While Lilly was successful in obtaining a prohibition order in the first proceeding, its latter two applications were dismissed. Mylan appealed the first order, and the Federal Court of Appeal (FCA) recently released its decision in Mylan Pharmaceuticals ULC v. Eli Lilly Canada Inc., 2016 FCA 119 dismissing Mylan’s appeal.
The FCA’s decision affirms the view that obviousness and obviousness-type double patenting validity challenges require distinct analyses, and that a patent’s disclosure cannot be referenced to vary the … Continue Reading
A recent decision of the Federal Court in Allergan Inc. v. Apotex Inc. et al. (2016 FC 344), relating to the drug Gatifloxacin, appears to have regressed the issue of expert “blinding” in patent cases. Expert “blinding” is a relatively recent trend in patent litigation where a litigant intentionally “blinds” its expert witness to certain issues and materials in an effort to afford their opinions a higher degree of credibility. In the Gatifloxacin decision, the Court appears to have endorsed expert “blinding” in patent cases as not only de rigueur but, perhaps necessary; while other recent decisions of … Continue Reading
The purchase of a competitor’s trade-mark as an online advertising keyword is not an infringement, according to a recent Federal Court of Australia decision. In making its finding, the Court in Veda Advantage Limited v Malouf Group Enterprises Pty Limited,  FCA 255 relied on evidence that the keywords were not visible to consumers and were selected and provided to Google by the defendant, rather than being used to identify a trade source. However, use of the trademark in a “sponsored link” in relation to the same services as those of the registered mark was held to be an infringement … Continue Reading
On April 14, 2016, the Supreme Court of Canada denied Apotex’s final attempt at obtaining leave to appeal in the storied patent battle between Merck and Apotex over Merck’s lovastatin patent.
The case began in 1997 when Apotex launched its generic lovastatin product. At the liability trial in 2010, Justice Judith Snider of the Federal Court found Merck’s lovastatin patent to be valid and infringed (2010 FC 1265). The judgment included reference to DNA evidence establishing that Apotex had infringed through its operations in Winnipeg. The Judge also found that Apotex’s joint venture partner fabricated batch records and … Continue Reading
In Sadhu Singh Hamdard Trust v. Navsun Holdings Ltd. (2016 FCA 69), the Court of Appeal set aside the Federal Court’s (2014 FC 1139) decision dismissing Hamdard Trust’s claim of copyright infringement and passing off against Navsun Holdings and remitted the matter to the Federal Court for redetermination, with some guidance.
This case involves a dispute over an unregistered trademark used by a Punjabi subscription daily newspaper, Ajit Daily, published in India, and by a free weekly newspaper, Ajit Weekly, published in Canada. Hamdard Trust, which operates Ajit Daily, sued Navsun Holdings, which operates Ajit Weekly, … Continue Reading
On March 31, 2016, the Competition Bureau (Bureau) released revised Intellectual Property Enforcement Guidelines (IPEGs). These IPEGs reflect incremental changes to the draft version released for consultation last year. Most notably the new IPEGs provide further guidance on (i) pharmaceutical patent litigation settlements, (ii) product switching (also known as “product hopping”), (iii) collaborative standard setting and standard essential patents, and (iv) patent assertion entities.… Continue Reading
In reasons dated March 21, 2016, the Federal Court of Canada upheld a decision that allowed a patent infringement action involving tenofovir (an anti-HIV drug) to continue on the basis of allegations of a likely future (quia timet) infringement. The Court was satisfied that there was a “strong possibility of infringement” in circumstances where regulatory approval, and future market presence, of the generic copycat was “sufficiently likely” even though not inevitable that the generic would receive marketing authorization.… Continue Reading
NPEs, otherwise known as non-practicing entities, or pejoratively referred to by some as “patent trolls”, have seen a significant negative impact on their business model south of the border. NPEs are analogous to private equity businesses–their business model is to acquire undervalued patent assets and turn around and sell or license them to others, which often leads to expensive patent litigation. If their assets are depreciating in value, the model becomes significantly less attractive. This is exactly what is happening in the US.
Recent US Supreme Court decisions including Alice, which restricted the scope of patent-eligible subject matter, and … Continue Reading
In June 2015, the previous Conservative government tabled legislation to implement the Marrakesh Treaty to Facilitate Access to Published Works for Persons Who Are Blind, Visually Impaired, or Otherwise Print Disabled. However the bill was introduced shortly before the summer break and, as it turned out, Parliament was dissolved before the legislature returned.
On March 24, 2016, the new Liberal government tabled a substantially identical bill, now known as C-11.
As was the case for its predecessor, the bill broadens the existing exception in section 32, including by removing the exclusion of large print books and by expressly … Continue Reading
The online sale of a software licence constitutes a “use” in relation to a good for the purposes of Canadian trademarks. This was the recent holding of the Federal Court of Canada in Specialty Software v Bewatec, 2016 FC 223. This decision strengthens trademark protection for software in Canada and demonstrates that courts will adapt legal concepts to modern technology. Here, the traditional model of purchasing software on tangible media, such as a CD-ROM, is simply outdated. Software as a service (SaaS) offerings have greatly increased in recent years with the explosion of cloud computing, which essentially provides … Continue Reading
On May 4, 2016, the Federal Court of Appeal upheld a summary motion ruling that Gilead’s ‘619 Patent is ineligible for listing against the combo-product, TRUVADA(R) (decision published as Gilead Science, Inc. v. Apotex Inc., 2016 FCA 140).
Canada’s PM(NOC) Regulations allow innovative drug manufacturers to list patents on the public Patent Register pertaining to their drug products. This provides a public notice function to potential copycat generic manufacturers of all listed patents that must be addressed or, else the patent expired, before obtaining marketing authorization from the Canadian Minster of Health to market and sell a generic … Continue Reading
On March 9, McCarthy Tétrault and IP Osgoode jointly hosted a symposium titled Effective IP Strategy to Drive Innovation in the Financial Services Sector. This event brought together academics, business people, and lawyers for a discussion of how technological change is transforming the financial service sector and pushing incumbents and disruptors alike to think carefully about their IP strategies.
Canadian patents have utility requirements. A claimed invention must have some level of utility. A ‘mere scintilla’ of utility is all that the Patent Act requires. However, where a patent contains an explicit promise of a specific result, the case-law has developed a requirement that this so-called ‘promised utility’ be demonstrated or soundly predicted as of the Canadian filing date of the patent application.
There has been much controversy over this ‘promise doctrine’ as well as the ‘heightened disclosure requirement’ that has been applied in the case of a sound prediction. The controversy includes a NAFTA challenge by Eli Lilly … Continue Reading
The question of whether a “fair expectation of success” is the correct legal standard applicable to an obvious to try analysis was finally laid to rest in the Federal Court of Appeal’s recent important decision of Eli Lilly v Mylan (2015 FCA 286). A unanimous panel held that a “fair expectation of success” was not the correct standard. Instead, the higher “more or less self-evident” test articulated by the Supreme Court of Canada in Sanofi-Synthelabo (2008 SCC 61) was reaffirmed as the correct legal standard. The higher standard for obviousness makes it more difficult to invalidate … Continue Reading
As part of the technological arms race in the financial services sector, banks and other financial institutions are increasingly embracing hackathons as a way to innovate consumer products and banking tools. These types of events can help spur innovation, engage potential employees, and produce valuable digital assets for the hosting firm. However, at the same time, companies should be cautious about the intellectual property issues at stake.
A “hackathon” is a software coding competition that happens over a short period – usually a day or two – where participants compete to come up with innovative new programs or applications. Sometimes … Continue Reading
The transformational potential behind the popular cryptocurrency bitcoin continues to draw the interest of traditional financial institutions looking to ready their core businesses for a wave of new financial technology. The aspect of bitcoin that appears to be of the greatest interest to financial services organizations is not the currency itself, but the underlying blockchain technology. This technology is what enables the integrity of trading systems without a central authority.
On October 30, 2014, Goldman Sachs filed a patent application titled “Cryptographic Currency for Securities Settlement”, which claimed priority to an earlier provisional patent application filed in May 15, 2014. … Continue Reading
The Supreme Court released a landmark judgment yesterday in the closely watched case, Canadian Broadcasting Corp. v. SODRAC 2003 Inc., 2015 SCC 57. The 7-2 judgment of the Court was delivered by Rothstein J (with whom McLachlin C.J., Cromwell, Moldaver, Wagner, Gascon and Côté JJ agreed).
The judgment established the following principles.… Continue Reading
Behind every successful innovation strategy is a sophisticated intellectual property strategy. Intellectual property is the currency of innovation: it is a tradable that can be used to lend credibility to innovation programs, allow freedom to operate, provide access to third-party technology and ward off infringement actions.
Innovation is accelerating in almost every sector of the economy – banking, telecommunications, retail, and services. Customers, especially Millennials, are hungry for the next new technology that will make their lives easier and the customer experience more enjoyable. At the same time, customers are less loyal than ever, since digitization gives them a tremendous … Continue Reading
On October 5, 2015, Canada and the following 11 Pacific Rim countries: Australia, Brunei Darussalam, Chile, Japan, Malaysia, Mexico, New Zealand, Peru, Singapore, United States and Vietnam, have reached a deal on the content of new free-trade agreement covering the Pacific region, the Trans-Pacific Partnership Agreement (the “TPP”). Although the final treaty text has yet to be settled and released, some information about the agreement has been released by many of the participating governments, including Canada. The content of the TPP covers a wide variety of economic activities and sectors, including, among others, telecommunications, e-commerce and intellectual property. … Continue Reading