On Monday November 20th, 2017 scholars, students, practitioners and IP enthusiasts alike gathered at Osgoode Hall Law School for a symposium in honour of Prof. David Vaver’s appointment to the Order of Canada. The symposium – “Intellectual Property: Fuel for the Fire of Genius or Shelf Life of a Banana” – highlighted four themes of Prof. Vaver’s IP scholarship, including: redundancy in the IP system, legislation and reform, users’ rights, and the importance of history. Proceeding a luncheon keynote speech by the Honourable Mr. Marshall Rothstein CC, QC, three panelists from diverse backgrounds came together to discuss the impact of Prof. Vaver’s scholarship on users’ rights. Prof. Wendy Gordon of the Boston University School of Law; Daniel Bereskin, QC, the founding partner of Bereskin & Parr; and Prof. Shamnad Basheer a visiting professor from the National Law School, Bangalore; alongside session chair and Osgoode professor Saptarishi Bandopadhyay shared their thoughts on the impact of Prof. Vaver’s work in the areas of patents, trademarks and copyrights. Each panelist echoed Prof. Vaver’s emphasis on balancing the rights of various stakeholders, while each also took a moment to highlight how users’ rights are engaged in different areas of IP law.
Prof. Gordon began by tracing the concept of users’ rights back to the American jurist Wesley Hohfeld’s notion of rights and privileges. For Hohfeld rights and duties were correlated concepts – that is the possession of a right by one party could impose a duty to honour that right on another party. Claim rights, as they are often called, are such rights – they impose duties to the rights holder onto others. Liberty rights on the other hand are rights that do not impose obligations, they simply entail freedom on the part of the rights holder. Prof. Gordon went on to explain that whether we define users’ rights as claim rights or liberty rights has important implications. If users’ rights are liberty rights – for example people are free to copy works in the public domain – there are no obligations on others to facilitate such rights. If, on the other hand, users’ rights impose obligations on others we could say that not only are people free to copy works in the public domain, but also that others are prohibited from locking up public domain works through the abuse of paywalls or digital rights management tools. If we conceptualize users’ rights as claim rights, as I believe Prof. Gordon was suggesting, we end up with a stronger conception of what user’s rights entail.
Daniel Bereskin, QC, speaking from an academic perspective, noted some of the ways diminished conceptions of users’ rights with respect to trademarks could lead to problematic situations. Mr. Bereskin noted that without balance between the rights of creators and users’ the objective of preventing depreciation of goodwill could be overtaken by the objective of protecting market share. Mr. Bereskin also shared some thoughts on proof of harm in trademark cases and how sometimes proof of harm is presumed, instead of proven, once likelihood of confusion is established. Mr. Bereskin highlighted the importance of assessing the impact of the harm done by an infringing use of a mark, particularly where injunctive relief is sought. Because injunctions are a form of equitable relief granted in extraordinary cases, a court considering whether or not to issue an injunction should look to the effect an injunction may have on values of competition and free speech.
In the field of patents, Prof. Shamnad Basheer made reference to the Indian IP doctrine of “working the patent” that allows for compulsory licensing of a patent that is not being “worked for the public good” by the patent-holder. Prof. Basheer explained that, starting three years from the date of grant, the patent holder must submit statements to the patent office of how it is “working the patent.” If, from these statements, the patent office is not satisfied that the patent holder is sufficiently “working” the patent it may grant a compulsory license in the patent to a third-party. The link between this doctrine and users’ rights is readily apparent. Recognition by the patent office of the public’s stake in scientific innovation suggests that users may have potential rights to innovations that benefit the public good. For more on the application of this doctrine see the Indian case of Natco Pharma Ltd. v Bayer Corporation, which was referenced by Prof. Basheer during his presentation, as well as on his IP blog, SpicyIP.
The author would like to thank all the speakers, volunteers, and co-ordinators who made “Intellectual Property: Fuel for the Fire of Genius or Shelf Life of a Banana” a reality, as well as Prof. Vaver for his ongoing contribution to the field of Intellectual Property law.
Stephen Cooley is an IPilogue Editor and a JD Candidate at Osgoode Hall Law School.