The U.S. Supreme Court released a much-anticipated ruling in Google LLC v. Oracle America, Inc., 593 U.S. ____ (2021) on 5 April 2021, ending the decade-long copyright battle between Google and Oracle, two of Silicon Valley’s technology powerhouses. This ruling represents the first time that the Court tackled the fair use doctrine in the context of modern computer software. By a 6-2 vote, the Court sided with Google and held that Google’s copying of Oracle’s code was a permissible “fair use” under U.S. law.

Justice Breyer wrote the majority opinion, joined by Chief Justice Roberts and Justices Sotomayor, Kagan, Gorsuch and Kavanaugh. Justice Thomas wrote the dissenting opinion, joined by Justice Alito. Justice Barrett, who was not yet confirmed when the case was heard in October 2020, did not participate.

The Decade-Long Copyright Battle

This decade-long copyright battle is complicated to say the least. It mixes tough legal concepts with difficult technological details. Some of the relevant difficult details include:

• an application programming interface (API) – “a tool that allows programmers to use prewritten code to build certain functions into their own programs, rather than write their own code to perform those functions from scratch”;
• implementing code that “tells the computer how to execute the particular task [that] you have asked it to perform”;
• a method call – “a command that corresponds to the specific task [written in implementing code] and calls it up”; and
• declaring code  – a link between a method call and its corresponding implementing code – “without that declaring code, the method calls entered by the programmer would not call up the implementing code”.

In 2005, Google began negotiations with Sun Microsystems, i.e. Oracle’s predecessor, about the possibility of incorporating Sun Microsystems’ Java platform, including the APIs, into Google’s Android operating system. The negotiations were unsuccessful and Google decided to build its own platform. Google wrote millions of lines of new code but also copied roughly 11,500 lines of Sun Microsystems’ declaring code and arranged that code in exactly the same manner as Sun Microsystems had done. The copying was motivated by Google’s desire to have millions of programmers, familiar with Java, be able to easily work with Google’s platform. In 2010, Oracle bought Sun Microsystems and sued Google for copyright infringement. Google countered that the copied code relates to methods of operations and functions and could not be protected by copyright.

Two key questions arise:

• whether the declaring code and organization of Oracle’s API are copyrightable; and
• if so, whether Google’s copying of Oracle’s API was a permissible “fair use”.

Copyright Subject-matter – a Question for Another Day

Instead of deciding fundamentally about copyrightable subject-matter, the majority assumed, “but purely for argument’s sake, that the entire Sun Java API falls within the definition of that which can be copyrighted.” The majority said that “Given the rapidly changing technological, economic, and business-related circumstances, we believe we should not answer more than is necessary to resolve the parties’ dispute.”

The dissenting opinion criticized the majority for skipping over the question of copyrightable subject-matter. “The Court wrongly sidesteps the principal question that we were asked to answer: Is declaring code protected by copyright? I would hold that it is.” The dissenting opinion added at the end that “The majority purports to save for another day the question whether declaring code is copyrightable. The only apparent reason for doing so is because the majority cannot square its fundamentally flawed fair-use analysis with a finding that declaring code is copyrightable.”

This aspect of the ruling may come as a disappointment to copyright lawyers who were hoping for a more sweeping ruling on the extent to which software should be afforded copyright protection in the first place.

Fair Use – “the purpose and character of Google’s copying was transformative”

Similar to Canada’ fair dealing analysis, the U.S. fair use analysis involves the consideration of several factors. The four factors set forth in the fair use statute include: (i) the nature of the copyrighted work, (ii) the purpose and character of the use, (iii) the amount and substantiality of the portion used, and (iv) market effects.

When conducting the fair use analysis, the majority acknowledged that “The fact that computer programs are primarily functional makes it difficult to apply traditional copyright concepts in that technological world.” Applying the principles of the precedents and Congress’ codification of the fair use doctrine, the majority concluded that “where Google reimplemented a user interface, taking only what was needed to allow users to put their accrued talents to work in a new and transformative program, Google’s copying of [Oracle’s] Java API was a fair use of that material as a matter of law.”

The dissenting opinion suggested that “the majority wrongly conflates transformative use with derivative use” and “transforms the definition of ‘transformative’ [to mean] – at least for computer code – a use that will help others ‘create new products’”. The dissenting opinion cautioned that the new definition of “transformative” may “eviscerate Congress’ considered policy judgment.”

Potential Effect on Software Innovation

This ruling will likely have a significant effect on software innovation. Google views this ruling as a victory for the software industry as a whole. Its senior vice president for global affairs said in a  that “[the] Supreme Court decision in Google v. Oracle is a big win for innovation, interoperability & computing.” This is an exciting time for software innovation and we eagerly wait to see how this ruling may practically change how software innovation will be developed.

Implications in the Canadian Context

It is interesting to consider how this case might have been decided had it been brought in Canada instead of in the U.S. The fair dealing exception under the Canadian Copyright Act is applicable to a closed list of specific activities: research, private study, education, parody, satire, criticism or review, and news reporting. If an activity does not fall within this specific list, it cannot qualify as fair dealing. Here, Google’s activity in copying the declaring code was not for any of these specifically enumerated purposes but rather was for the purpose of making a competitive software product. As such, Google likely would not be able to rely on the fair dealing exception to avoid copyright infringement in Canada.

This means that in a Canadian context, the evaluation of whether or not the code copied by Google was copyrightable would likely be determinative of the outcome of the case.  In that regard, the Canadian courts would be likely to find the analysis of the dissenting opinion persuasive in analysing whether the copied code was copyrightable subject-matter. Similar to the U.S., the Canadian Copyright Act expressly includes “computer programs” within the scope of literary works protected by copyright. Additionally, the Canadian courts are careful to protect the skill and judgment of programmers in the development of the specific language used to develop their code, even though the code may carry out certain functional activities.  So this case might have reached an opposite outcome had the action been brought in Canada.

**This article was originally published by The Lawyer’s Daily (www.thelawyersdaily.ca) a division of LexisNexis Canada Inc.

Trademark distinctiveness is an examination criterion that was introduced to Canadian trademarks law on June 17, 2019, the day on which amendments to the Trademarks Act[1] came into force. Since June 17, 2019, the Registrar has the authority under paragraph 37(1)(d) of the Trademarks Act to refuse registration of a trademark if he is satisfied that “the trademark is not distinctive”.

Paragraph 32(1)(b) of the Trademarks Act allows the Registrar to raise an objection to an application on the basis that a trademark is not inherently distinctive, stating as follows:

An applicant shall furnish the Registrar with any evidence that the Registrar may require establishing that the trademark is distinctive at the filing date of the application for its registration if … the Registrar’s preliminary view is that the trademark is not inherently distinctive.

“Distinctive” is defined under section 2 of the Trademarks Act as “a trademark that actually distinguishes the goods or services in association with which it is used by its owner from the goods or services of others or that is adapted so to distinguish them”.

Section 4.9 of the Canadian Intellectual Property Office (“CIPO”)’s Trademarks Examination Manual provides some guidance as to when a CIPO examiner would object to a trademark as lacking inherent distinctiveness under paragraphs 32(1)(b) and 37(1)(d). According to the Examination Manual, in assessing whether a trademark is inherently distinctive, a CIPO examiner must answer two questions from the perspective of the average Canadian consumer:

1. Should other traders be able, in the ordinary course of business, to use the same mark with the same goods or services?
2. Is there use of the mark in Canada by others in the trade such that the public would not respond to the mark as identifying one source?

The Examination Manual provides examples of trademarks which the CIPO would generally consider to have no inherent distinctiveness, including[2]:

• Trademarks that serve only to provide general information about or on any goods or services.
• Trademarks which are clearly descriptive or deceptively misdescriptive of their associated goods and/or services in English or French under paragraph 12(1)(b) of the Trademarks Act.
• Trademarks which are primarily merely the name or surname of an individual who is living or who has died within the preceding thirty years under paragraph 12(1)(a) of the Trademarks Act.
• Trademarks which are primarily geographic locations.
• A trademark that consists of a design common to the trade, unless it is depicted in a special or fanciful manner.
• A trademark that is a word for a colour in relation to goods that would ordinarily or typically be that colour.
• Single letter or number trademarks.
• Trademarks consisting of laudatory words and phrases.
• A trademark that consists of a numerical phone number.

As per the CIPO examination guidelines, there is no need for an examiner to show that the same trademark is currently being used in the marketplace in order to raise a lack of inherent distinctiveness objection; the examiner only needs to have some basis to believe that other traders would likely use the same trademark in the marketplace. In view of the CIPO’s examination guidelines, CIPO examiners are certainly given broad latitude to raise a lack of inherent distinctiveness objection. Not surprisingly, many lack of inherent distinctiveness objections have been raised by CIPO examiners since June 17, 2019.

Under paragraph 32(1)(b), an applicant that is faced with a lack of inherent distinctiveness objection may try to overcome the objection by furnishing evidence, in the form of an affidavit or a statutory declaration, to establish that the trademark had acquired distinctiveness in Canada at the filing date of the application. However, many trademark applications are filed before or shortly after commencing use of the trademark in the Canadian marketplace. Clearly, such applicants could not take advantage of the paragraph 32(1)(b) saving provision. Further, when claiming that the trademark has acquired distinctiveness in Canada at the filing date, the applicant must show that the trademark has achieved secondary meaning across Canada. If the applicant’s evidence only shows that the mark has become distinctive in some, but not all, areas of Canada, the Registrar can restrict the registration to the goods or services in association with which, and to the defined territorial area in Canada in which, the trademark is shown to be distinctive[3].

If evidence to establish distinctiveness at the filing date of the application is not available, the applicant’s best option (rather than simply abandoning the application) would be to argue against the lack of inherent distinctiveness objection.

The Examination Manual specifies that “the phrase ‘not inherently distinctive’ in paragraph 32(1)(b) refers to a trademark having ’no inherent distinctiveness‘ (not registrable) as opposed to a trademark possessing a ‘low degree of inherent distinctiveness’ (registrable).”[4] In other words, a trademark needs only to possess some inherent distinctiveness, even a low degree, to be registrable.

In the context of determining confusion between two marks, the Trademarks Opposition Board has held that the following trademarks possess little inherent distinctiveness:

• INSTACRADLE for use in association with goods which include “instant, or readily installable, floor cradles”: InstaFibre Ltd. v Q.E.P. Co., Inc., 2019 TMOB 146 at paragraph 34.
• CAMPING WORLD for use in association with services which include “the sale and service of RVs and related accessories which are used for camping”: CWI, Inc. v G N R Travel Centre Ltd., 2020 TMOB 113 at paragraph 48.
• SMARTCLOUD for use in association with services which include “cloud computing services”: Smart Cloud Inc. v International Business Machines Corporation, 2019 TMOB 78 at paragraph 84.
• ELEVATED EATS for use in association with goods which include “fresh flowers, fresh vegetables and fresh fruits”: PROsnack Natural Foods Inc. v Frank Ferragine, 2020 TMOB 147 at paragraph 23.
• GLUCOWISE for use in association with goods which include “nutritional and dietary supplements for regulating blood glucose levels”: Jamieson Laboratories Ltd. v Omega Alpha Pharmaceuticals Inc., 2020 TMOB 30 at paragraph 51.

To emphasize, the Trademarks Opposition Board merely commented that each of the above trademarks possess little inherent distinctiveness (which is registrable), and is not without any inherent distinctiveness. Guided by these Opposition Board decisions, trademarks that are at least as distinctive as, or are more distinctive than, the above-mentioned highly suggestive trademarks should likewise be registrable. It remains to be seen if CIPO examiners will take into account these Opposition Board decisions in determining whether a trademark lacks inherent distinctiveness, since those were decided in the context of trademark confusion.

Conclusion

The CIPO’s lack of inherent distinctiveness examination criterion is troublesome for applicants who wish to register a trademark which is somewhat suggestive of the associated goods and services. We await further guidance from the Trademarks Opposition Board or the Court. Until then, applicants should be aware of this examination criterion, and commence using their trademarks throughout Canada as soon as possible, potentially before filing an application, to acquire distinctiveness if the mark is not clearly inherently distinctive.

[1] Trademarks Act, R.S.C., 1985, c. T-13.

[2] CIPO Trademarks Examination Manual, section 4.9.5 “Examples”.

[3] Trademarks Act, paragraph 32(2).

[4] CIPO Trademarks Examination Manual, section 4.9.3 “Inherently distinctive”.

Pending amendments to Canada’s Trademarks Act that restricts the current official mark scheme may provide another strategy for applicants who wish to register marks that may be confusing with an official mark.

Currently, in Canada the rights and protections of official marks are enumerated in section 9(1)(n)(iii) of the Trademarks Act as follows:

No person shall adopt in connection with a business, as a trademark or otherwise, any mark consisting of, or so nearly resembling as to be likely to be mistaken for, any badge, crest, emblem or mark adopted and used by any public authority, in Canada as an official mark for goods and services, in respect of which the Registrar has, at the request of Her Majesty or of the university or public authority, as the case may be, given public notice of its adoption and use.

In short, if the Registrar of Trademarks (the “Registrar”) gives public notice of adoption and use of an official mark by a public authority, no other person can use or adopt that mark or anything that nearly resembles that mark. This exclusion extends across all goods and services, unlike an ordinary trademark registration, which only applies to the goods and services specified in the registration. This broad protection is beneficial to owners of official marks, but may be detrimental not only to persons later applying to register a trademark that might be considered to resemble the official mark, but also to persons who own registrations covering similar trademarks prior to the granting of an official mark.

In the former case, it is evident that the presence of an official mark can make it difficult for any other party to register a similar mark in the future. In the latter case, the owner continues to hold the registration as granted but is likely unable to file further applications to broaden the goods and services covered by the registration. That is, even if a registration for a similar mark is granted prior to advertisement of an official mark (i.e. the registration precedes the official mark), the owner may be prevented from registering any expanded use of their mark.

The broad protection given to official marks therefore makes it difficult to register similar marks. This being said, there are a number of strategies available to an applicant if the Registrar cites an official mark against their application due to similarity between the marks, including:

1. requesting consent from the official mark owner to use and register the applied-for mark;
2. filing arguments to distinguish the applied-for mark from the cited official mark; and
3. commencing a Federal Court action, arguing that the official mark holder does not have the authority to hold an official mark.

Pending amendments to the Trademarks Act may provide applicants with another strategy when faced with the citation of a similar official mark. The pending amendments stem from section 215 of Bill C-86. Once Bill C-86 comes into force, it will add new sections 9(3) and 9(4) to the Trademarks Act. New section 9(3) would provide that the protection awarded to official marks under section 9(1)(n)(iii) of the Trademarks Act is not applicable if the entity that requested the publication of the official mark no longer exists. New section 9(4) would provide that if the conditions of new section 9(3) are satisfied (i.e. the entity requesting publication no longer exists) the Registrar may, on his own or upon request, give public notice that the protection under section 9(1)(n)(iii) no longer applies for the official mark.

Once the amendments are in force, applicants faced with a situation where the Registrar has cited an official mark due to similarity may wish to determine whether the entity that requested publication of the official mark currently exists. If the entity does not exist, the applicant may wish to invoke section 9(3) as a strategy to overcome the objection, arguing that protection pursuant to section 9(1)(n)(iii) no longer applies. The applicant may also wish to file a request pursuant to section 9(4) asking the Registrar to give public notice that protection under section 9(1)(iii) no longer applies for the cited official mark.

Unfortunately, while Bill C-86 has received royal assent, the amendments that introduce sections 9(3) and 9(4) remain pending. As such, these additional strategies are not yet available, making official marks substantial roadblocks for other traders wishing to use similar marks.