snIP/ITs Insights on Canadian Technology and Intellectual Property Law

Tag Archives: infringement

Information location tool and fair dealing copyright defenses rejected: Trader v CarGurus

Posted in Copyright, Intellectual Property

If you’ve ever shopped for a used car, you likely know the two popular services, autotrader.ca and CarGurus. In a decision released earlier this week in Trader v CarGurus, 2017 ONSC 1841, Trader (the owner and operator of autotrader.ca) was awarded statutory damages of $305,604 against CarCurus for infringements of its copyrights in photographs of vehicles. The decision written by Justice Conway of the Ontario Superior Court contains some important interpretations of the Copyright Act including in relation to the scope of the new making available right, the copyright defenses for information location tools and fair dealing, and the calculation … Continue Reading

TPMs Are Alive and Well: Canada’s Federal Court Awards Nintendo $12.7-million in Damages

Posted in Copyright, Intellectual Property, Litigation

Five years ago, Canada enacted legal protection for technological protection measures (TPMs) as part of the Copyright Modernization Act. The Federal Court has now  rendered the first decision  interpreting  these important rights. In short, the court  made it clear that legal protection for TPMs were meant to foster innovation in the creative industries and that businesses blatantly engaging in industrial scale TPM circumvention activities will be dealt with harshly by the courts.

In Nintendo of America Inc. v. King & Go Cyber Shopping (2005) Ltd., 2017 FC 246 (docket here; decision available soon on the Federal Court website and … Continue Reading

Copyright Infringement Class Action Over University Course Packs Certified in Quebec: Copibec c. Université Laval

Posted in Copyright, Intellectual Property, Litigation

On February 8, 2017, the Quebec Court of Appeal certified a class action by Copibec against Université Laval, for copyright infringement.

This decision overturns a Superior Court ruling from 2016, which would have dismissed the claim on the basis that Copibec did not satisfy the eligibility requirements under the province’s Code of Civil Procedure for an association to bring a class action on behalf of its members.

Copibec is a collective management organization representing book publishers, visual artists, and newspaper and periodical authors and publishers in Quebec.

Copibec alleges that, in 2014, Université Laval declined to renew its license agreement … Continue Reading

Unusable Copies and Copyright Infringement

Posted in Copyright, Intellectual Property

Copyright law offers up a panoply of interesting questions, which often verge on the philosophical. One such question is: if one tries to make a copy of something, but the copy is defective and useless, has one made a copy at all? According to a recent decision of Master Hanebury, of the Court of Queen’s Bench of Alberta, the answer could be yes.… Continue Reading

Third Party’s Right to Use Official Mark in a Domain Name Upheld: BC Court of Appeal Rejects ICBC’s Claim of Trade-mark Infringement

Posted in Intellectual Property, Trade-marks

Third Party’s Right to Use Official Mark in a Domain Name Upheld: BC Court of Appeal Rejects ICBC’s Claim of Trade-mark Infringement  

On July 22, 2014, the B.C. Court of Appeal dismissed the claim of B.C.’s provincial auto insurer, the Insurance Corporation of British Columbia (ICBC), that a personal injury lawyer’s registration and use of domain names incorporating its official mark “ICBC” violated the Canadian Trade-Marks Act. 

In Insurance Corporation of British Columbia v. Stainton Ventures Ltd., 2014 BCCA 296 the Court held that the domain names <icbcadvice.ca> and <icbcadvice.com> did not infringe ICBC’s rights as internet users will … Continue Reading

PM(NOC) Proceedings: Apotex defeats Bayer’s Canadian patent on oral contraceptive YAZ

Posted in Intellectual Property, Patents

On June 4, 2014 Justice Roger Hughes of the Federal Court released his public reasons for dismissing Bayer’s prohibition application against Apotex in respect of its generic YAZ tablets on the basis that Apotex’s non-infringement allegation was justified. His confidential judgment was issued on May 7, 2014 and Apotex received its NOC the very next day. The term of Bayer’s patent was not set to expire until August 31, 2020. For the full written decision see: Bayer Inc. et al. v. Apotex Inc. et al. 2014 FC 436.

Although not determinative, this decision addresses the somewhat contentious issue of … Continue Reading

Your Patent Has Been Infringed: Enforcement of Oil and Gas Patents in Canada

Posted in Intellectual Property, Patents

Introduction

Patent disputes are on the rise.  101 patent infringement actions were filed in in the Federal Court in 2013 as compared with 48 patent infringement cases in 2012.  As we explained previously, part of that increase is due to an increase in oil and gas patent litigation.  This raises the question; what do you do when you discover that your patent has been infringed?

Prosecuting Infringers

On April 23, we met with in-house counsel and other industry leaders at our new Calgary office to discuss the eleven steps that a patent holder in the oil and gas sector … Continue Reading

Originality and Cartoon Characters – Supreme Court to Hear Cinar/Robinson Copyright Cases

Posted in Copyright

The Supreme Court recently granted leave to appeal in four copyright cases arising from the decision of the Quebec Court of Appeal in the France Animation v. Robinson, 2011 QCCA 1361 case. Robinson alleged that Cinar’s cartoon Robinson Sucroë was a copy of his own work Robinson Curiosité. The trial judge found infringement and the Court of Appeal upheld the judgment, in part, but reduced the damages award.

The cases canvass many copyright issues including:

  • the application of the standard of originality to partially completed work
  • the test for infringement when there has been substantial alterations and improvements
Continue Reading

Responding to Canadian Patent Office Objections: Breadth of Claims

Posted in Intellectual Property, Patents

This is part of a series of posts reviewing common Canadian Patent Office objections to patent applications and claimed inventions and providing some insight into how these objections may be addressed.

The Objection

In a standard objection, the patent examiner asserts that the claims do not comply with section 84 of the Patent Rules because they are broader in scope than the teachings of the description. Frequently, the examiner will request that the claims be amended to incorporate an “essential element” identified from the disclosure.

The Regulatory Provision

The Patent Rules are subordinate legislation enacted pursuant to section 12 of … Continue Reading