Ip master Guide

Employee is owner of patent but because invention came in course of employment, employer has non-exclusive license.

Employer may allow other parties to use it, effectively denies employee any form of monopoly. Employer is more likely to have resources to leverage the patent over the employee

Europe: (LEGISLATION): Employer must render mandatory employee compensation

This may even apply if contractual terms allow for full employer ownership. Perhaps there is a supposition that the employer has too much power in the employment contract…

• 
  defined by contract - Patent Act says nothing as it is governed by provincial labour/employer law
  
  • 
    Provincial Laws may also be silent on the matter
    

Note: If employment contract does not foresee possibility of inventorship, the Common law default is that the employee is entitled to the benefit.

Research conducted in same department, who has ownership?

Absent of anything in employment contract, inventor owns it.

But: if someone is hired only for research purposes or only to invent, the employer may own it. Will depend on facts, nature of employment, etc.

Contractors own invention unless there is an implicit or explicit agreement.

Employer’s defense: Insinuate that level of connection is such that contractor is an employee.
Government Ownership (s.20)

Governments and crown corporations own patents in the same way private individuals own patents

Federal government owns patents to inventions by federal employees conducted in connection with their employment or resulting from their employment.

Projects funded by government that employ federal government agents will be owned by them.

If not an employee but use government financial aid, the government will own the patent (governed by both statute and contract)

Scope of Rights: Claim in a Patent Petition

The scope of rights granted by a patent are determined by the rights filed for in the petition and how they relate to the petition utself

Claim: What rights you assert

The more concrete the rights asserted, the more likely someone will try to work around them

The more vague the rights asserted, the more likely people are to “infringe”, more litigation…

Normal Course of Procedure: Specify LESS, Claim, MORE

This attempts to allow newer patents to be challenged as infringing on the old one if the original patent “foresaw” the changes shown in the new patent.

Note: Is claim interpreted at time of filing or challenge?

The courts have attempted in the past to construe a claim beyond what the literal wording of the patent claim provide. It allows the courts more leeway in deciding on whether something has infringed or not.

Literal interpretation is sometimes seen as too narrow, hampers courts power. Courts are worried it may render an unfair result.
Whirlpool Corp: The courts differentiated between essential and non-essential elements of the invention by way of the nominal persons understanding. If a piece of the invention can be readily replaced by something that the nominally talented person may come up with, that piece may not be patentable.
Catnic: Used specific “skilled architect” in lieu of nominally skilled person (same function). Courts determined matter at the date of publication.

Courts: Using this specific angled method may prevent others from making significant improvements to layout of certain communities.

“Purposive method is preferred”  Helps to give benefit back to public as per the patent bargain.

Courts will go broadly no matter how big or small the claim.

Once a patent is issued, rights and ownership are not complete, not guaranteed. Patents can always be challenged for invalidity.

Amending the patent with additional claims or omissions leave it open to further litigation

Additional claims can help to further secure the monopoly or prevent litigation
Disclaimers may only be used to correct mistakes, cannot be used to protect fraudulent patents. Filing a disclaimer to try and make the patent less clear in order to either prevent further innovation or prevent people from replicating the patent matter may lead to invalidation of original patent.
Invalid Disclaimer: Willful intent to defraud or mislead the public – Will lead to invalidation of patent.
Treatment of Patents after Issue

S.48 – Patents may be lost as a result of rexamination

S.60 – Patents may be lost as a result of impeachment

S.47 – Patents may be modified within 4 years of grant in the case that there was an innocent omission or addition. Must be without fraud or deceitful intent

Patents may be dedicated to the public (Park-Davis Division v Canada)
Term of Protection
S.45 – Patent rights are granted for a 20 year term from the filing date of the patent.

• 
  If the claim date and filing date are different, the patent protection extends back to the claim date and applies retroactively during this time, allowing for litigation if infringement occurs during the gap.
  
  • 
    Priority may be based on international filing date.
    

S.42 – Making, constructing, using or selling the invention are granted upon receipt of a patent

Any infringement on these 4 rights violates the patent act

S.42 – Interpreted to allow the owner to enjoy the whole ownership and advantage of the rights

Interpreted to enable and support commercial exploitation including excluding people from use of invention. Profit is main driver but control is also important
Owner Bears the Onus of Proof of Infringement

Proof of conducting these activies must be proved as a matter of fact before the courts. The owner must be the one to bring the litigation forward and has the onus of proof to prove infringement before the courts.

Note: Even if no commercial or ownership right is wrested from the owner, there is no way to circumvent the patent act unless utilizing the experimentation provisions as contained in the act. No fair use as in Copyright.

Issue as per [Para 28]: Is use under the patent act understandable as use of the cell for which the patent was granted, or is it cultivation of crops which contain the cell in a different form.

When they filed for the patent, were they only interested in protecting the cell in its microscopic form or in protecting what it would eventually become (the plant).
Distinction

Schmeiser: Schmeiser’s interpretation of use would limit patent protection to the laboratory setting. Would be an extremely restrictive interpretation. The patent only applies to the form in which it was granted and beyond that, its incorporation or maturation is of no issue.

Use in the laboratory setting would essentially only apply to others attempting to manipulate it for their own gain.

The cell being an integral part of the entire plant means that substantive use of the cell is occuring when it is grown and harvested. Without the cell, the plants would not be “Round-Up” resistant.

The use of the cell doesn’t apply in just its isolated form. However, the use must be incorporated into the item which is using it.

“Use” must be read in context – must be broad enough to allow for exploitation in multiple forms. Any form that prevents them from full exploitation and control is infringement.

• 
  Policy Concern: Not allowing people to commercially exploit the cell would prevent them from doing research in the first place. Clear here that a “Round-Up” resistant crop has some value as multiple people are licensing it and utilizing it to presumably produce more crops/cash.
  

Courts de-emphasized holding in Harvard Mouse: The patent bargain is designed to produce economic opportunity. Almost every other jurisdiction allows patents on higher life forms. By denying it Canada might be losing a competitive edge.

Not allowed. You are still benefitting from someone else’s hard work. Still offends the “free ride” principle.

Note: Schmeiser’s crop was 98% comprised of Monsanto patented genes. Hardly innocent.
Policy Consideration: Do not want to allow someone to have access to the monopoly as a result of happenstance, that is not the kind of protection the government wants to be seen to be giving as they have essentially guaranteed a monopoly and must uphold that guarantee. People would be less likely to ask for patents if they thought that their monopoly might disappear overnight.
Innocent Bystander: Bare possession constitutes use. No defense of innocent infringing.

Courts want to avoid subjective test of proving intention of defendant.

Note: Better to adopt absolute principles with patents so that bargain is made clearer to all parties. Clarity necessitates removing distinction between higher and lower life forms which is arbitrary at best


Is the distinction between higher and lower life forms still a valid distinction?
Gatekeeping function may still be important in having some distinction between the two.

• 
  Direction by court of “life forms that when recreated are exactly uniform does help to create an efficiency, especially as more and more lifeforms are created entirely by man in controlled circumstances
  
• 
  Court still hasn’t made the distinction that the plant itself is patentable. Question of use will always be up to court to decide.
  

Humans are categorized as non-patentable, myriad human rights issues abound. However, AUS courts have determined that modified human DNA can be patented.

Issue of patenting based on differentiation between Isolated human DNA and synthetic human DNA / Complimentary DNA.

• 
  Is it patentable as a composition of matter? US CoM is much broader than Canada…
  

The right to sale includes control over manufacturing and licensing agreements. Rights exist over all levels of distribution

Manufacturer  distributer  wholesaler  retailer  consumer

Manufacturer keeps right of construction, all other subordinate entities gain their rights through agreements stemming from those agreed to by the owner of the patent rights.

Restrictions in contract may be upheld. You can come after unlicensed people. Without restrictions there is implicit allowance for use by others.

Europe: Can seek anticipatory remedy, but if item sold outside of Europe, cannot come after them

Canada: If sale is concluded outside of Canada, PA doesn’t not apply. Monopoly is in Canada


Infringement

No official definition of infringement exists within the Patent Act. Perhaps this is to make sure that people cannot make specious claims about not infringing, perhaps it is to make sure the onus stays on the owner to prove infringement.

As in the old territorial days, we are reliant on foreign jurisdictions to protect us. Additionally, you must be entitled to a remedy within that jurisdiction.

Being a treaty member helps put an impetus on treaty nations to help, but you must still apply appropriately, there is no immediate enforcement.

Patents can now be forwarded immediately to other treaty members by the CPA, but each jurisdiction will examine the patent based on their own practices and unique concerns --- being a treaty member doesn’t guarantee patent protection.

1) Did the defendants activities fall into one of the 4 steps?

2) Did they actually infringe the patent in question?
Direct Infringement

Defendant exercises the exclusive rights of the patentee under S.42  Making, constructing, using or selling

• 
  Right to repair: If you replace a part is it infringing? Are you reproducing the product?Hard to say
  
• 
  Exclusive Right to import
  

You bring it from X to Y, you are still infringing if it would infringe CPA

Manufactured in Singapore, imported into Canada, you infringe and import…

What if you didn’t sell the imported product?

Still infringing  Monsanto: Mere possession results in presumption of “use”

Unless you can prove experimentation or some other use

Sale completed in another country?

If Sale completed outside of Canada, no infringement for buyer, maybe seller. If you sell in Canada, maybe in trouble

Canadian patented product that is also patented in another country (Sony products etc)

Product is sold in another country by the local (IE: Canadian) patent rights holder

No infringement if both patent holders are compensated

Restriction on a condition of sale?

Yes, simply buying the same product would be an infringement of owners rights

Canadian patent on product X  South Korean patent on product X

Would importing those South Korean products be infringing? Can a Canadian company bring a claim against you for importing the product that it only had a right to sell in Canada?

Bringing the same goods from another country is infringing.

Companies often has restrictions on quantity of sale, there can actually be infringing if you bring too much.

Subsidiary of a Canadian company

Not the same company (branch), somewhat depends on nature of subsidiary relationship.

Sometimes they sell products at different rates in different countries, may be an issue…

1. Act of infringement completed by the direct infringer

• 
  Either a past, currently occuring or anticipated infringement.
  
  • 
    Possessing a lot of infringing materials and planning to sell them without authorization of inventor, infringement is anticipated.
    

• 
  Not simply causation, must be to the point that without influence, the infringement would not have occurred without it (higher causation standard)
  
  • 
    Giving instructions on how to make, construct, sell the invention. High degree of control over the infringer by the indirect party.
    
  • 
    Issuing instructions, inviting them into contracts where infringements occur
    

• 
  Inducer knows that influence will result in an act of infringement occurring.
  
• 
  Knowledge can be actual or implied, construed from contextual actions
  
  • 
    Apotex inc v Nycomed Canada inc 2011 FC 1441
    

To begin litigation, the rights holder brings a claim against the defendant for infringement. Alternatively, two patent holders might go against one another claiming the other patent infringes.

Is the product or process covered under an existing patent?

Attempting to override an existing patent with your own may constitute infringement

Defendant would bring the defense of “prior art” to claim they are being copied

2) Is the defendant’s act an improvement of the patented invention?

3) Did the alleged infringer appropriate the substance or spirit of the invention if not the letter.

Canada adopts a “purposive construction” that differentiates between essential and non-essential elements of the invention.

This is designed to avoid literal interpretations that may be too strict and inadvertently remove the owners rights and avoids everything being too broadly interpreted and extending monopoly beyond what is reasonably anticipated or so far that others might be commit unintentional breach.

• 
  Use of the essential element of the invention will result in a claim of infringement
  
• 
  Use of non-essential elements may or may not matter.
  
  • 
    Canadian approach is somewhat lax, open to interpretation.
    

• 
  American model looks at end result but still looks at entire construction of claim. Do not make same distinction between essential/non-essential. Every part of the patent is compared to every part of the text in the new claim.
  
  • 
    Theoretically, if some non-essential part was too similar, it could invalidate the claim.
    

Peripheral claiming is about literal scope and not underlying idea behind the invention. Would advocate for strict adherence to claim text (difference between micro controller and other effective means)

• 
  Purposive / flexible analysis is used for the invention itself, not the claim.
  

1. 
   Distinguish between essential and non-essential claims [41][71]
   
   1. 
      Identify the state of the art at date of publication. In light of knowledge of the art at the date, look into knowledge of common worker as well.[55]
      
      1. 
         Is it common knowledge to substitute one part for another? Would using a different variant make a difference in the way the invention works?
         
2. 
   II) Would Substitution of a Different Variant Make an obvious Difference
   
   1. 
      If it doesn’t make a difference, it doesn’t matter (non essential) [55]
      
3. 
   III) Expressed or Inferred Intent of the Inventor
   
   1. 
      Must be done by looking at claim at time of filing. Look at wording in specifications.
      
4. 
   IV) No Resort to Extrinsic Evidence
   
   1. 
      “File-wrapper estoppel”
      
      1. 
         Examiners would ask questions and you would reply. Examiners would give you a patent if you answer correctly. Those factors can be taken into account in the US, not in the Canada.
         
         1. 
            Doesn’t help the public to have some knowledge that wasn’t contained in the actual patent filing itself.
            
   2. 
      New patent is outside the claimed monopoly
      

5. 
   Criminal Liability:
   
   1. 
      s 75 & s 76
      
      1. 
         false representations
         
      2. 
         falsely marking your goods
         
      3. 
         patented medicines
         

Proof of infringement is not prima facie conviction or infringement

• 
  Proof of invalidity
  
  • 
    D’s act encompasses the prior art (Novelty, Newness)
    
  • 
    User is doing what is obvious at the claim date of the patent
    
• 
  ii) User’s rights: s.55.2. (Normally there is a full monopoly…)
  
  • 
    (1) Regulatory approval requires using the patented invention
    
    • 
      Notice of compliance allows people to start producing things in advance and making sure it complies with governing regulations
      
    • 
      Could apply to safety devices for car manufacturing, etc
      
  • 
    (6): Exception to the exclusive property or privilege granted by a patent that exists at common law
    
    • 
      (a) Making or Constructing solely for the purpose of experiments
      
      • 
        Checking for quality control, checking to see if it works, checking to see if other unknown properties come as a result.
        
    • 
      (b) acts done privately and on a non-commercial scale or for a non-commercial purpose
      
      • 
        At what point in time does home use turn into non-commercial use?
        

• 
  iii) Ss 21.01 to 21.2: exceptions to allow Canada to be involved in providing access to pharmaceuticals to developing countries
  
  • 
    TRIPS agreements in place intended to facilitate movement to third world countries of HIV/AIDS medicine, tropical disease treatments etc. Would be infringing but for the agreement
    
• 
  (IV) Repair of a patented article is a non-infringing use (MacLennan v Gilbert Tech Inc, 2008)
  
  • 
    Doctrine of patent exhaustion (US): Monsanto Co v Bowman, 2013
    
    • 
      Canada does not have this doctrine, but in the absence of a contract Canadians are fine to modify it.
      
  • 
    Subsequent generations of self-replicating technology
    
    • 
      Self-propogating seed. What prevents you from saving seed?
      
      • 
        Not clear in Canada… Monsanto creating self-terminating seeds.
        
      • 
        Governed by licensing agreements and contracts
        
• 
  If item is of “national significance”, government can enforce compulsory licensing which allows another company to use patent and pay royalties.
  

Stifle innovation, would have to set up licensing agreements for start ups to do certain work, would be economically inefficient.

Raw Ideas can be protected by patents. Those that cannot be protected by patent may be able to be protected by copyright

Not an affirmative right, simply defensive.

• 
  Registration optional s. 54ff, s. 57ff
  
  • 
    Exists from the moment a work is created as long as they fulfill other conditions of law.
    
  • 
    Registration was a requirement in earlier legislation
    
  • 
    Advantage to registration: Crystallizes date of assumed rights, creates a presumption of validity that would have to be challenged through litigation.
    
    • 
      Onus on person claiming infringement to prove it.
      
    • 
      Also bars “defence of innocence”: also alters quantum of damages
      
  • 
    License granting interests can be registered as well
    
• 
  Registration Mark ©: Shows intent to defend copyright, also relates to “innocence”
  

• 
  Copyright exists for expression of ideas, not for the ideas themselves:
  
  • 
    Applies to literary, dramatic, artistic, musical works. They do not protect opinions or ideas of creator.
    
  • 
    Patent protects innovative idea.
    

Certain jurisdictions have restrictions on works. Because it is a privilege they can have it revoked. The sovereign state can control the kinds of ideas that enjoy state protection.

Canada had this kind of restriction until recently.

Granting copyright protection might prevent rampant copying.

• 
  Cost of regulating moral works might end up costing state more than ignoring it.
  
• 
  Freedom of expression is important, but based on subjective notions of legality/morality. Attempting to restrict these books or works might cause people to gravitate towards them
  

• 
  Balancing of creators rights to public/owners interest of the work the creator made.
  
• 
  Economic interest in allowing creator to exercise control over their work is balanced against needs to foster a participatory and creative culture (Strengthen the public domain)
  
  • 
    Cultural rationale is not as focused on as much as economic interest. Copyright came into existence through desire of publishers to secure their revenue streams and preventing foreign copying that stopped them from making money
    

• 
  User’s rights are incorporated into integral parts of the copyright law. No need for defensive approach, rights are part of the bargain being made. Not an exception, intentional.
  
• 
  Copyright law is a negotiation between certain creativities and recognizing users rights over the creation in order to sponsor a collaborative society.
  
  • 
    The balance is recognized in the legislation/act itself in granting explicit rights to users.
    
    • 
      “Mash-up” allowance shows ability to manipulate the authors work
      

Rights of ownership  Rights over the article of commerce, rights can be transferred, have value.

The copyright holder can choose who has the right to buy or sell their work.
Moral Right: Moral right remains with creator, allows creator some say in how their creation is used.

• 
  Affiliation with work, preventing negative affiliation.
  

• 
  The copyright act contains a balancing act between the moral rights of the author as well as the rights of the owner of that authors work. Both moral rights and owners rights are well established within the act
  

Plagiarism is an infringement of copyright. It does however depend on the expectations of the institution or person who created the work.

Some fair dealing might allow you to avoid copyright infringement but it still may be plagiarism.

Plagiarism is more academic  Plagiarism may not necessarily infringe copyright.

Plagiarism and Copyright overlap but technically inhabit different contexts, differentiating between these contexts is important.
Statutory: No Common Law Copyright

Canada has adopted multiple different version of the copyright act, matches up with technological advancements as well as comply with international treaties and obligations.

Copyright is statutorily created  Limited in term, no rights outside of provisions.

Works
“Work”: s. 5: “every original literary, dramatic, musical and artistic work”

Nothing outside of these will be considered copyrightable material

Work not specifically defined, elements of work defined, each category defined.
S. 2: “Literary Work”

Pamphlets, books, compilations, computer programs, journals etc.

• 
  Not exhaustive, may still be expanded
  

• 
  Literary merit and quality are not factors (University of London Press, Limited v University Tutorial Press, Limited[1916])
  
• 
  Literary works are content neutral. As long as they meet the requirements their quality or morality is irrelevant
  
  • 
    Any work expressed in print or writing is a literary work.
    
  • 
    Spoken, print format, electronic format, doesn’t matter.
    

Are not protected as literary works unless they are so long, unique and complex that they could not be anything other than a literary work themselves. Additionally, if they were to be copied, it must constitute a substantial part of the work. (Francis Day and Hunter v Twentieth Century Fox Corporation)

Comprised of a popular place to gamble, a popular saying and a sex.

Theme of the work may be roughly similar but are not the same

• 
  Author might have trademark protection, but in copyright, there must be substantial copying (in this case incorporating lyrics from the song)
  
• 
  Title is part of infringement happening, can be part of the work that is being infringed.
  

Are considered too minimal to satisfy the requirements of an “original literary work”

• 
  However creative the word might be, it’s too minimal to be copyrightable
  
• 
  Policy Concerns: People would be infringing every time they said the word. Public cannot enjoy the word or expression.
  
• 
  Fair use is also completely eliminated from this configuration. No possible way that public would be able to enjoy some limited control over the “work”
  
  • 
    Words or Combination of words may be protected in trademark or by suing through common law passing off.
    
  • 
    “Crocodile Dundee” Might have copyright protection over artistic work in the orientation and design of the name on the poster, but it is still not enough to constitute a literary work.
    

• 
  Spontaneous Speech is not copyrightable
  
• 
  Lectures are copyrightable, not spontaneous. Guided by structure, form of expression is designed.
  
• 
  Emails, text messages, letters etc may or may not be copyrightable, depends on exercise of skill and judgement used when creating the communications
  

• 
  A set of instructions or statements, expressed, fixed, embodied or stored in any manner, that is to be used directly or indirectly in a computer in order to bring about a specific result.
  
  • 
    Coding as it stands can be considered under “literary work”
    
  • 
    They are expressions of ideas in a form that brings about a result
    
• 
  Intersection with Patents
  
  • 
    If no longer protected under patents, may be protected under copyright law
    
  • 
    Patented computer programs also protected by copyright law.
    
  • 
    Litigation consists of trying to establish copyright and patent protection of their work.
    
• 
  Layout designs, embedded in computer-semiconductor chips or circuit boards (Integrated Circuit Topography Act)
  
  • 
    Software program will be protected under the act if attached to a device. 10 year protection
    
    • 
      ICTA protection is not the same as copyright protection. Different values.
      
    • 
      Achieves a minimal legal protection that might not be accessible through copyright
      

Plays, dramas etc.

• 
  “work of action, with or without words or music, which is capable of being performed before an audience”
  

• 
  Choreography, mime and recitation piece with scenic arrangement or acting form fixed in writing or otherwise
  
• 
  Cinematographic work
  
• 
  Compilation of dramatic works
  

Common law: What qualifies as a dramatic work?

• 
  Must have a story, a thread of consecutively based events (pre-arranged events)
  
• 
  Degree of predictability is crucial, Will help to decide marginal cases.
  

Story may be different depending on how the game is played. Specific events that unfold are not predetermined.

May be protected under cinematographic work category. Sequence of pictures and each frame is protected. Wouldn’t fall into the (pre-arranged events) category.

Sports

Both sides plan their attacks, but it never plays out to script. No predictability. Antithesis of dramatic work. Gameplan or recording of game can be copyrightable (cinematographic work once recorded)

As game unfolds it is not predictable (FWS Joint Sports Claimants v Canada)

• 
  Wrestling: Pre-considered choreography
  
• 
  Reality TV: Big Brother, Millionaire
  
  • 
    Concepts and Formats can be considered dramatic works. If structure of show is clearly worked out (sufficiently detailed) it could gain copyright protection under dramatic work through the common law.
    

• 
  “Artistic work”
  
  • 
    Includes “paintings, drawings, maps, charts, plans, photographs, engravings, sculptures, works of artistic craftsmanship, architectural works, and compilations of artistic works”
    
  • 
    Not Exhaustive list. May be difficult to be considered artistic if it doesn’t fit.
    
  • 
    Expert opinion in the field, usage and legislative history of recognizing the work will help to determine if it is included as an artistic work.
    

Artistic merit, artist’s intention to create “art” and the actual aesthetic value of the work are not pertinent to the question of whether a work meets the classification of “artistic work”

• 
  Artistic merit is only indicative, not predicative.
  
• 
  An artistic work is a work which finds expression in a visual medium as opposed to works of literary, musical or dramatic expression” DRG Inc v Datafile Ltd (1987), 18 CPR (3d) 538 (FCTD)
  

• 
  Did the work find expression in a visual medium?
  
• 
  Did they create the work of art intentionally for its sake or was it an accident/happenstance
  

If you sufficiently digitally manipulate an original work you may be able to claim copyright for the new piece (not the constituent piece).

Any work of music or musical composition with or without words.

• 
  Slight variation in rhythm or harmony may achieve originality
  
• 
  Rearrangements of existing music
  
• 
  Selection of common, ordinary, well-known musical compositions
  
• 
  Reconstructions of a musical work whose copyright expired.
  
  • 
    Originality threshold is low, must be some slight changes/exercise of skill and judgement
    

Music is not defined in the copyright act. Societies construction and interpretation of what constitutes music is the main lens through which analysis is done.

There is no objective standard and music experts may be helpful but not determinative
Test: Music must be original, must have an author, must be an exercise of skill and judgement. Should not be so trivial as to be purely mechanical.


Compilations

Collection of works, each of which have fulfilled copyrightable materials

Mere collections of facts and data is not a compilation.
“Selection and arrangement of work”  Order of songs on a CD

“Selection of arrangement of data”  Yellow Pages

Selection of data must first constitute a work before it can be a compilation.

However the phone numbers might be arranged, they may become an original work that is subject to copyright but not a compilation

Individual works being placed into database for access, Roberston not happy as she says it is stripping her of her copyright.

Robertson’s piece  work

Newspaper containing the piece: “Compilation”

Group of Newspapers: “Collective Works”

CD-Rom = Essentially a PDF of the original newspaper = Compilation

Database  Individual articles which have been stripped out of their original format in the newspaper and are by themselves…

• 
  Publisher retains copyright control over both “Collective Works” and “Compilation”
  

The database is not a reproduction of the newspapers, but a reproduction of the works. Ergo, Roberston’s work is infringed.

• 
  May be considered separate from musical work but can be the same.
  
• 
  Original song writer may still hold copyright over rights to performance.
  
• 
  Once a performance has been executed, the perfomer owns rights over performance even if infringing
  

“Radio waves transmitted through space without any artificial guide, for reception by the public” (S.2)

As it currently stands, the broadcaster will gain copyright over the broadcast once it is completed, but also is given simultaneous/concurrent broadcasting rights during the broadcast.

If someone else attempts to broadcast, they are infringing on broadcasting right.

Recordings of broadcasts constitute “cinematographic work”


Criteria to Satisfy Copyright

“Work” must be fixed, original & appropriately connected to Canada

• 
  Author should be either a citizen, or subject of, or ordinarily resident in a treaty country s. 5
  

General requirement for the subsistence of copyright

No express requirement under CA: imposed by judicial interpretation

“For copyright to subsist in a “work” it must be expressed to some extent at least in some material form, capable of identification and having a more or less permanent endurance” (Canadian Admiral Corp. v Rediffusion inc 1954)

“Dramatic work”… form of which is fixed in writing or otherwise” (s.2)

“Computer program”… expressed, fixed, embodied or stored in any manner” (s.2)

• 
  Lectures, sermons, speeches have no fixation requirement. Distinguished from spontaneous speech
  

Are spoken words contemplated within the definition of “literary work” (Possibly)

“Conversation was intended to be casual, to catch the spontaneity of Gould when he was relaxing… Gould was not delivering a structured lecture or dictating to Carroll”

• 
  Carol fixated conversations and hence, holds copyright.
  

• 
  You must intend to want your copyright. Also, someone is doing the fixation. (Some credit) Freedom of the press would be curtailed if everything anyone ever said had copyright control.
  
• 
  Not everything everyone says or does is worth copyright protection, must be structured cutoffs that allow the courts to adjudicate effectively.
  

• 
  Act of lifting the ink that was used in printing a paper poster and transferring it onto a canvas
  
• 
  Refixation of a work doesn’t amount to reproduction
  

Facts and Ideas are not original. When arranged in certain ways they may be copyrightable but their constituent parts are not subject to copyright protection.

• 
  Independently created by the author (source)
  
• 
  Minimal degree of creativity (quality of work)
  

Basis for copyright claim on compilations which generally are of facts?

Work was independently created by the author

Possesses at lease some minimum degree of creativity (not just a copy)

“Choices as to selection and arrangement, so long as they are made independently by the compiler and entail a minimal degree of creativity…
Sweat of the Brow (UK/AUS – Formerly US): Focus on effort at precision of the result; underlying notion that copyright was a reward for the hard work that went into compiling facts.

Based on Lockian theory of reward for labour.

Could allow facts to be copyrighted simply by virtue of you using hard work to copy them without requiring selection or arrangement.
Standard of Originality in Canada - CCH Canadian ltd v Law Society of Upper Canada, 2004

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  Work must originate from the author; personal contribution of the author
  
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  Quality of the work itself: Work must be more than a mere copy
  
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    Skill: the use of one’s knowledge, developed aptitude or practiced ability in producing the work
    
  • 
    Judgement: The use of ones capacity for discernment or ability to form an opinion or evaluation by comparing different possible options in producing the work
    

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  Plain meaning of original
  
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  History of copyright
  
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  Recent jurisprudence
  
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  Purpose of the Copyright Act
  
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  That constitutes Workable, yet fair standard
  

“Sweat of the Brow” not adopted, nor is “creativity” adopted – exercise of skill and judgement gives some threshold but a low one at that.

CCH - Case summary organization is different as structures may not be the same, content needs to be organized thematically, have to decide which kind of information to rely on.

Case Summaries have traditionally been done in the same way, is the structure copyrightable?

Ownership Rights

Who (title as author, and ownership)

Who has title/ownership may be two separate things, can be separated.

Importance in recognizing author irrespective of commercial exploitability or transferred rights

30.1 – Author is always first owner, may be exceptional circumstances in which employer is first owner.
Author - Author puts work into copyright form, expressions of the work.

1) Producer of literary, artistic, musical or dramatic work – considered author through creation

2) Only natural persons can be “authors” - No computer programs, no animals

Authorship is granted by the law  non natural persons are not recognized

Corporations may be owners but not authors.

3) Authorship exists even in infringing “work”

As long as criteria is fulfilled, I am still the author/owner. May bring suits against those who infringe my work even if original author is suing me

4)Author puts ideas into their copyright form, not necessarily originate ideas

Copyright is not concerned with idea. Ideas are not protected. Only expression of the idea. Expressor is author.
Joint Authorship

Can exist in two ways

1. 
   By agreement:
   
   • 
     Author transfers a certain percentage of the ownership right
     
2. 
   Co-authorship of work:
   
   • 
     work of joint authorship: “…the contribution of one author is not distinct from the contribution of the other author or authors” (S. 2)
     

Joint Authorship may be found based on the contributions of both parties, not their intentions.

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  Joint authors” if the work resulted from collaboration of the two individuals whose contributions must not be distinct.
  
  • 
    Based specifically on the nature of the work, not what people thought about
    
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  In the US: intention for co-authorship must exist otherwise no finding of co-authorship
  
  • 
    Contribution of expression; how about contribution of ideas?
    

Minor spelling/error corrections.

Minor suggestions for revision.

Minor suggestions for topic.

Minor suggestions for content.

Nature of the right? Joint tenancy or tenancy in common?

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  Canada: co-owners must concur in licensing (Joint Tenancy Owners)
  
  • 
    Only one existence of copyright, must share accordingly
    
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  US: each can exploit a work by non-exclusive licensing , subject to accounting
  
  • 
    More like Tenancy in Common, but must account to partner for appropriate share of profits from exploitation of license.
    

No longer requires ownership of negative. Amended to take current tech into account.

Provision not replaced  default guide is common law.

Ancient Common law  whoever is responsible for photographs composition owns.

If you have established the scene and its arrangement, you are probably the owner.
Films – Usually director is author of finished product.

S. 11.1:… “arrangement or acting form or the combination of incidents represented give the work a dramatic character”

Author distinguished from maker (s. 2): “…person by whom the arrangements necessary for the making of the work are undertaken”

Usually in relation to cinematographic work.
Maker: finances and organizes the film’s production  May by agreement have ownership rights.

Unless they contribute to the dramatic character of the film, they have no authorship rights.

Employer is first owner if:

• 
  A) an employee is under a contract of service of apprenticeship
  
  • 
    Freelancer or contractor is different, employer not first owner.
    
  • 
    Is the person in business of her own, or is she carrying out the business of whosoever pays her
    
    • 
      Property used and the site the work is made
      
    • 
      Control or direction on how work should made
      
    • 
      Assumption of business risk
      
    • 
      integration of the author into employer’s business
      

B) in the course of employment

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  Irrespective of whether some or all of the materials are done during working hours.
  
  • 
    Facts determine ownership of copyright
    

• 
  Expectation for a work that attracts copyright to be produced?
  
  • 
    Would the worker have broken her contract if she didn’t produce the work in the form she did?
    
  • 
    Would ownership of copyright for this work be inconsistent with her duty of good faith and loyalty to her employer.
    

University will own the work as a result of the employment contract, otherwise the employee owns it.

• 
  In general, employees own copyrights over their work (except sometimes copyright over computer programs)
  
• 
  Collective agreements and University IP policy
  
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  Policy at TRU?
  

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  “all materials produced by TRU staff to attain the objectives of TRU, or produced with TRU resources, are the property of TRU and are marked”
  

Authors first owner – employer may own first copy

US: regarding works “for hire”, employer first owner
S. 12: ownership of work by gov’t employees

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  Works conducted under “direction or control” by municipal, provincial, and Federal government
  
  • 
    Use of government resources may indicate control (Painting case)
    
  • 
    May not need to be an employment contract, simple direction may suffice
    
• 
  Also, in case of Work commissioned from freelancers, the crown holds copyrights
  

Formality requirements: written and signed

• 
  Joint Authorship  Starts at death of last joint author
  

S.11.1 - “except for cinematographic works… [with] a dramatic character” – Recording is copyrighted, action in real time is not

S.15 – Neighbouring Rights: End of calendar year in which it was made plus 50 years.

Employers Copyright: Starts at creation, ends with death of author

Team of Employees: Same as Joint Authorship

Unpublished Work: Undying copyright
Characterization of Rights S.3(1)

• 
  S. 3(1): the sole right to … reproduce the work or any substantial part thereof in any material form whatever
  
  • 
    Literal copying: exact copying
    
  • 
    Non-literal copying: taking key aspects of the work without actual literal copying
    
    • 
      Key themes, plot elements, narrative – hard to prove
      
• 
  Entire work:
  
• 
  
  
  
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