The federal government has launched a consultation on modernizing the Canadian copyright framework to better address Artificial Intelligence (AI) and the ‘Internet of Things’ (IoT). The consultation paper released by the government makes mention of several points which may have significant impact on the development, use and commercialization of AI by Canadians. Some of these include the use of copyrighted content as inputs for machine learning; the question of whether works produced by, or produced with the assistance of, AI will have copyright protection, and who will be considered the owner and author of those works; as well as specific liability for copyright infringement concerning AI generated works.
Gold tint of Lindt GOLD BUNNY found to be a trademark
The gold tone of the Lindt GOLD BUNNY has been found to have trademark protection by Germany’s federal court. Germany’s federal court put particular emphasis on the fact that market research indicated that 70% of respondents associated the gold tone with the Lindt GOLD BUNNY. Lindt & Spruengli previously unsuccessfully attempted to obtain trademark protection for the shape of such Lindt GOLD BUNNY.
Read more about it here.
Canadian Filmmaker sues for Copyright Infringement over Inside Out Movie
The Disney and Pixar movie Inside Out (released in 2015) details the life of a girl named Riley along with five characters that represent five different emotions that influence her behavior (fear, anger, joy, disgust, and sadness). Canadian filmmaker Damon Pourshian has sued Disney, Pixar and other related companies claiming that the idea is actually his. Mr. Pourshian asserts that, while he was a student at Sheridan College in Oakville Ontario in 2000 he wrote a screenplay based on an idea he had in high school, concerning the life of a boy whose behavior is controlled by five personified organs that control his character: a brain, stomach, colon, bladder, and heart. Mr. Pourshian then produced a short film from this screenplay as a 14-minute low-budget production, which was subsequently shown at Sheridan College. His film was also titled Inside Out.
Mr. Pourshian seeks: a declaration that he owns the copyright to the screenplay, production and short film Inside Out, a declaration that the defendants infringed his copyright thorough the production, reproduction, and distribution of their film Inside Out, a permanent injunction, as well as damages.
Mr. Pourshian sued the defendants at the Ontario Superior Court of Justice (ONSC). An initial issue was jurisdiction, and whether any of the defendants had a real and substantial connection to Ontario (therefore giving the ONSC jurisdiction over the dispute). A recent decision (Pourshian v. Walt Disney Company, 2021 ONSC 4840) released by the ONSC found that the majority of the defendants had a real and substantial connection to Ontario, therefore giving the green light for the case to proceed.
The case is a reminder of the importance of copyright protection, and the global protection that it provides (by virtue of the Berne Convention).
More information is available here.
CIPO releases its 2019-2020 Annual Report
The 2019-2020 Annual Report of the Canadian Intellectual Property Office (CIPO) is now available.
In 2019−2020, CIPO received more applications for trademarks and industrial designs, but fewer applications for patents and copyrights, compared to the previous year.
- Patents – 37,999 applications (down 3%);
- Trademarks – 68,385 applications (up 8%);
- Industrial designs – 7,408 applications (up 21%);
- Copyright – 8,753 registrations (down 5%).
On Canada’s first day as a member of the Madrid Protocol, Canada was designated in 96 international trademark applications, the highest single-day total for any member country. By March 31, 2020, Canada had been designated in over 15,527 international trademark applications filed through the Madrid System. As an Office of origin, CIPO received 453 applications for international registrations.
For more details on the Annual Report, read here.
Oyen Wiggs Welcomes Two New Associates
Oyen Wiggs welcomes Nina Rajic and Kevin Wang to the firm. Both Associates have joined the firm after the completion of their articles.
Nina Rajic assists clients with all aspects of identifying, protecting and benefiting from their intellectual property, with a particular emphasis on preparing and prosecuting patent applications in the computer, electrical, physics and mechanical-related fields.
Kevin obtained an Honours Bachelor of Science in Physics and Mathematics with Distinction from the University of Toronto. At law school, Kevin has served as the president of the IP Law Club and represented the Allard team at the 17th Oxford International Intellectual Property Moot. The Allard team entered the final 8 out of a total of 28 participating teams and placed second in the Powell Gilbert Best Written Submission Award.
EPO’S FIGHTING CORONAVIRUS PLATFORM UPDATED
The European Patent Office (EPO) has updated and expanded their “FIGHTING CORONAVIRUS” information platform. The platform is a free resource which is intended to assist with locating patent references related to the fight against the global COVID-19 pandemic. Technologies such as medicines for treating COVID-19, disinfectant technologies, masks, smartphone apps, etc. can be found on the platform. The platform can be found here.
Read more here.
Federal Court of Appeal Upholds First ever Website Blocking Order
The Federal Court of Appeal has upheld the first ever website blocking order. In 2019 the Federal Court issued an order for Canadian internet service providers (ISPs) to block websites operating under the name “GoldTV” which offered thousands of traditional TV channels for a nominal fee – infringing on those TV channel providers’ copyrights. This decision could be seen as a new tool for copyright holders to protect their rights or as a blow to net neutrality. The Canadian government is currently consulting on internet legislation and public reaction to this decision could certainly affect whether the new legislation will support stronger net neutrality or stronger copyright protections as the Federal Court of Appeal choose to.
More information on the initial decision can be found here and on the Court of Appeal decision here and here.
Subway successful against Budway
Subway has succeeded in a lawsuit against a cannabis dispensary using various trademarks with the word BUDWAY. The court found that BUDWAY was confusingly similar with various trademarks owned by Subway, and in addition to an injection, awarded both $15,000 in damages, and $25,000 in costs.
Read more about the judgement here and the judgment itself here.
Canadian Voice Actor Sues TikTok over Copyright Breach
Bev Standing, a Canadian voice actor, has sued TikTok for allegedly using recordings of her voice without her consent. TikTok is a social media platform that allows users to post short video clips that can be edited with various video and audio effects. Ms. Standing alleges that one of TikTok’s features, a text-to-speech audio effect, uses her voice. A lawsuit has been filed in the United States District Court for the Southern District of New York alleging breach of copyright on the part of TikTok for using Ms. Standing’s voice in the text-to-speech audio effect without her permission. In the time since the lawsuit was filed, TikTok has changed the voice used in the audio effect to a different voice. The lawsuit is a reminder of the broad protection that copyright provides to a wide variety of works (including the voice).
CIPO Tackles Pending Trademark Application Backlog with New Practice Notices
On 3 May 2021, the Canadian Intellectual Property Office (CIPO) published two new Practice Notices aiming to address its unexamined application backlog. There is currently a significant examination backlog consisting of over 161,000 applications having filing dates stretching back to April of 2018. CIPO is receiving new applications at the rate of about 6,000 applications per month, but is only issuing about 4,000 examination reports per month.[1] It is critical to address the backlog to avert a total collapse of the Canadian trademark system. CIPO’s new Practice Notices (1) Requests for expedited examination and (2) Measures to improve timeliness in examination are welcome, some might argue overdue, initiatives to promote timely grant of quality trademark rights.
Request for Expedited Examination
Effective immediately, CIPO will begin accepting requests for expedited examination of trademark application. This is in addition to the expedited examination available to trademark applications pertaining to COVID-19-related medical goods or services, which became effective on 14 December 2020.
Requests for expedited examination may be accepted if any one of the following four requirements is met:
- A court action is expected or underway in Canada with respect to the applicant’s trademark in association with the goods or services listed in the application;
- The applicant is in the process of combating counterfeit products at the Canadian border with respect to the applicant’s trademark in association with the goods or services listed in the application;
- The applicant requires registration of its trademark in order to protect its intellectual property rights from being severely disadvantaged on online marketplaces; or
- The applicant requires registration of its trademark in order to preserve its claim to priority within a defined deadline and following a request by a foreign intellectual property office.
Requirements 1, 2 and 4 seem relatively straightforward, although in certain fact-specific situations, it may be difficult to assess what specific circumstances and reasons would be sufficient to show that: (i) a court action is “expected” or (ii) the applicant is “in the process” of combating counterfeit products.
As to requirement 3, the expression “severely disadvantaged on online marketplaces” is novel, so it remains to be seen what circumstances CIPO will accept as sufficient to grant such requests. Possibly, an applicant’s inability to enroll in the Amazon Brand Registry without a Canadian trademark registration might be accepted as being “severely disadvantaged on online marketplaces”.
It might be helpful for the CIPO to provide further guidance and/or examples to illustrate how the CIPO would evaluate requests for expedited examination. The hope is that CIPO will set the bar fairly low, since expedited examination requests are made ex parte and since CIPO must significantly reduce the backlog if it is to get back to business as usual—the pandemic notwithstanding.
It should be noted that the request must be supported by evidence in the form of an affidavit or statutory declaration by a person having knowledge of the facts, setting out the specific circumstances and reasons for the request. There is no government fee associated with a request for expedited examination.
Measures to Improve Timeliness in Examination
Effective immediately, the CIPO will:
- not provide examples of acceptable goods or services in the examiner’s first report, unless the amendments to the statement of goods or services can be made by way of a telephone amendment;
- examine applications with statements of goods or services selected from the pre-approved list more quickly than those that did not use the pre-approved list option; and
- reduce the number of reports issued prior to refusal.
These measures will likely help to reduce CIPO’s unexamined application backlog. However, the measure to reduce the number of reports prior to refusal may be draconian. Refusals have been rare in Canadian trademark practice. The examination process can involve many back-and-forth exchanges between applicants and examiners until an acceptable compromise is reached. Now, examiners will only be required to address a particular submission or argument once. The practice notice recommends that “the applicant should make every effort to ensure that it provides a complete argument so that any submissions to the Registrar following an examiner’s first report are not provided in a piecemeal manner.” That is good advice because in the event of a refusal the applicant’s only recourse will be an appeal to the Federal Court of Canada—an expensive proposition. Applicants must therefore work with qualified trademark counsel to properly address any examiners’ objections.
The two new Practice Notices suggest that CIPO appreciates the dire state of its unexamined application backlog and aims to improve timeliness in issuing trademark rights. These Practice Notices are likely to be welcomed by brand owners and trademark counsel as the Practice Notices may make it faster for brand owners to obtain registered trademark protection, especially where such protection is needed for certain important commercial activities.
**This article was originally published by The Lawyer’s Daily a division of LexisNexis Canada Inc.
[1] The backlog problem may have been exacerbated by the accession of Canada to the Madrid Protocol in 2019. There are now two separate ways in which a trademark can be registered in Canada: (1) via a national filing mechanism; or (2) via an international filing mechanism, i.e. the Madrid Protocol System. The Madrid Protocol System imposes certain deadlines on CIPO, including that CIPO must issue a provisional refusal (a.k.a. an examiner’s report) before the end of 18 months after CIPO is notified of the designation. To meet the new deadlines, CIPO has had to prioritize the examination of Madrid Protocol applications over non-Madrid Protocol applications. For a data-driven analysis of the backlog see Blake Wiggs’ post CIPO’s examination backlog—the Madrid effect on his Canadian Trademark Intelligence blog.
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