Giuseppina D’Agostino is the Founder and Director of IP Osgoode, the Founder and Director of the IP Intensive Program, and an Associate Professor at Osgoode Hall Law School.
2012 was an action-packed year in the world of intellectual property law. There were flurries of reports, decisions, and new legislation that confronted many core principles of IP law, priming 2013 as a year where the law will continue to move into new, uncharted territory.
2012 was an exciting year for IP Osgoode, where we celebrated our fourth birthday We welcomed Michelle Li as the IP Osgoode Coordinator and a vibrant mix of students to work on our many projects. It was another successful year for our IPilogue and growing our various clinical opportunities. As part of our IP Osgoode Speaker Series we featured Robert Levine and Dr. Brett Danaher. The year appropriately ended with two distinguished lectures, “Reflections on the Supreme Court of Canada 2012 Copyright Decisions,” by Justice Marshall Rothstein (video here), and “Advocacy Skills and IP: Observations from the Bench” by Justice Roger Hughes.
We look forward to 2013, a year for strengthening our existing partnerships and forging new ones, cultivating our current projects and fostering new initiatives, and most importantly, evolving and growing to better serve our membership.
Patents
In patent law, 2012 was a year of Viagra, cell phone wars, and a continuation of the American debate on the patent-eligibility of isolated human genes.
In Canada, the SCC’s ruling in the case of Teva v Pfizer affirmed the quid pro quo basis of Canadian patent law, while in the United States, Apple and Samsung closed a lengthy chapter in their battle for American market share. In August, a jury in the District of Northern California found Samsung had infringed many of Apple’s patents and awarded the American company $1.05B in damages. Two weeks before Christmas, both parties disputed the verdict at a post-trial hearing wherein presiding judge Justice Lucy Koh urged both parties to settle. One week later, Koh J issued two rulings that (1) denied Apple’s request for an injunction on the sale of Samsung’s infringing devices and (2) denied Samsung’s request for a new trial on the basis of jury misconduct. Koh J is expected to issue additional rulings on the post-trial hearing in early 2013.
2012 also saw the continuation of the debate over the patent eligibility of isolated genes in America. In AMP v Myriad Genetics the US Court of Appeals for the Federal Circuit held that isolated genes are eligible for patent protection even in light of the USSC’s ruling in Mayo v Prometheus. In November, the USSC granted AMP’s request for appeal but has indicated that it will confine its discussion on the question of the patent-eligibility of human genes. The USSC is expected to rule on this matter in the summer of 2013.
Across the pond, the European Council reached an agreement that has been described as the final step of establishing a Unitary EU Patent and a Unified European Patent Court and the High Court of Justice of England & Wales saw its own version of the Apple v Samsung infringement saga that ultimately ruled in favour of Samsung.
Trade-marks
2012 saw many important legal developments in the field of trade-marks.
In an important decision for foreign entities with registered but unused marks in Canada, the arbitrator in the Twenga decision found that “once a trade-mark is registered, its owner has rights in the mark from the date of the [trade-mark] application”.
2012 also saw CIPO beginning to accept applications for sound trade-marks. This crucial CIPO decision paves the way for the modernization of the Canadian trade-mark regime while facilitating the adoption of international standards and trade opportunities.
2012 was a year of landmark decisions for the fashion and entertainment industry as well. Chanel was condemned for counterfeiting, and Christian Louboutin had his red soles trade-mark rights affirmed, while YSL managed to keep his own entirely red shoe in the market. Also related to the fashion industry, the EU Court of Justice struck down Fruit of the Loom’s attempt to use the mark “fruit”: the mark “fruit” is not merely a variation of the mark “fruit of the loom,” but a distinctive mark on its own. Global brands will find this decision relevant in their fights against similarly sounding competitors.
In the tobacco industry, packaging alone was found to create confusion, while in the world of chocolate, a single colour was found to make a difference. Meanwhile, in Florida, a business name was invalidated as a trade-mark for moral reasons.
Lastly, 2012 was an important year for internet too. In June, ICANN revealed the applications for new generic Top-Level Domain names (gTLD) and in October, the organization held its third annual meeting in Toronto.
Copyright
In many ways, 2012 was the year of copyright in Canada. The Supreme Court of Canada’s (SCC) copyright “pentalogy,” and Bill C-11, the Copyright Modernization Act were the main protagonists Debates in related areas of privacy law were also present.
Bill C-11 was a constant source of discussion, and had been a long-time coming for the Copyright Act, which some viewed to be out of touch with challenges posed by the digital age. In May, we saw the reporting stage of C-11 in Parliament. In June, C-11 was passed, bringing legislative changes to distribution rights, the doctrine of fair dealing, statutory damages, performer’s rights, and many other aspects of digital file sharing. Canada was not the only country dealing with modernizing copyright reform in 2012, as the UK grappled with similar considerations.
In July, one of the Canadian legal news events of the year occurred, with the SCC releasing five concurrent and groundbreaking copyright judgments, dubbed as the copyright “pentalogy.” IP Osgoode delivered extensive analysis of each of the five judgments and their influence on Canadian copyright law, with this link summarizing and linking to each article. The five cases, predating the implementation of the Copyright Modernization Act, attempted to clarify the definitions of “communicate the work to the public by telecommunication,” “sound recording,” and fair dealing for the purposes of “private study” and “research.” These cases sought to provide clarity regarding digital streaming and further evolved the concept of fair dealing.
Internationally, 2012 saw privacy law thrust to the forefront, with the stalling of the Stop Online Piracy Act (SOPA) and Protect Intellectual Property Act (PIPA), the American anti-digital piracy bills, the suspension of a highly punitive Cybercrime Prevention Act in the Philippines, and the defeat of the Anti-Counterfeiting Trade Agreement (ACTA), a similar European bill. In Canada, our privacy legislation, the Personal Information Protection and Electronic Documents Act (PIPEDA) was criticized as being out of touch with the Facebook age. Canadian privacy commissioner Vic Toews was also a frequent target of media criticism, as a social media campaign brought Toews’ personal life to the forefront as a form of protest against his perceived lack of appreciation for the privacy of Canadian citizens, which culminated with Bill C-30, a proposed online surveillance bill. Later in the year, Toews used the Luka Magnotta affair as support for increasing Internet surveillance in order to modernize the Criminal Code of Canada.
In addition to the digital privacy issues that arose in 2012, many developments occurred with respect to computer software internationally. Code theft laws were applied differently in Canada and the States, functionality was deemed uncopyrightable in Europe, Oracle and Google continued their legal battle over operating systems, workplace computer privacy was clarified in Ontario, and Internet service providers (ISPs) were held not liable for copyright infringement in an Australian case concerning BitTorrent file sharing.
Later developments included European adoption of public-use policy for orphan works, debates about freedom of expression and domain names, public hearings about proposed Re:Sound webcaster royalty rates, and music icons facing copyright infringement suits (here and here).
Top 10 most read IPilogue articles of 2012
1. The Pentalogy: The Supreme Court Clarifies Canada’s Copyright Law in Five Major Decision
2. Happy(?) Birthday, Bill C-11!
3. Aga Khan Federal Court of Appeal Decision Fails to Address Burden of Proof
4. Disclosure Front and Centre as Pfizer Prepares to Defend Viagra in Supreme Court of Canada
5. Bill C-11: Through the Lens of Social Norms
7. Short, Sweet and Stirring the Pot: Canada’s Copyright Board Holds Category 4 Copies are Fair Dealing
8. IP Osgoode Speaker Series: Robert Levine and Dr. Brett Danaher
9. Patents for the Public Good
10. Should Canada Strengthen IP Protection for Pharmaceutical Products? The European Union Thinks So…
With files from Beatrice Sze on patent law, Georgios Andriotis on trade-mark law, and Ryan Heighton on copyright.