Part I: conceptualizing and justifying ip space 3



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Intellectual Property Summary – April 2004

PART I: CONCEPTUALIZING AND JUSTIFYING IP SPACE 3

Introduction: Thinking about Private Space 3



Intellectual Property: Intellectual? Property? 3

MacDonald, The Swiss Army Knife of Governance 3

Interface of IP with Property, Tort and Contract 5

Property 5

Moore v. Regents of the University of California 5

Gould Estate v. Stoddart Publishing Co. 6

Entitlements and enforcement of entitlement 8

Calabresi & Melamed, “Property Rules, Liability Rules, and Inalienability…” 8



Contract 9

ProCD Inc. v. Zeidenberg 10

Network Associates 11

Nimmer, “Breaking Barriers: The Relation between Contract and Intellectual Property” 11

Reichman & Franklin, “Privately Legislated Intellectual Property Rights” 13

Justifications for ordering of IP space 14



Labour/desert 14

Hughes, “The Philosophy of IP (labour)” 16



Economic/efficiency/utilitarian 17

Boyd White, “The Language and Culture of Economics” 19

Merges, “Intellectual Property Rights and the New Institutional Economics” 20

Personhood 20

Hughes, “The Philosophy of IP (Personhood)” 21



Distributive justice/fairness 23

Litman, “The Public Domain” 24

Boyle, “The Second Enclosure Movement and the Construction of the Public Domain” 26

Polk-Wagner, “Information wants to be free…” 27



Case Study – Theberge 28

PART II: ORDERING IP SPACE – CR, TM & PATENT 28

Copyright 29



Origins of Copyright 29

Donaldson v. Beckett 30

Snow v. Eaton Centre Ltd. 31

Prise de Parole Inc. v. Guerin 32

Gilliam v. American Broadcasting Companies 33

Apple Computer v. Mackintosh Computers 34

Computer Associates Int’l v. Altai 35

Copyright in Canada – Overview 37

Copyright in Canada – Initial Hurdles and Scope 42

Nichols v. Universal Pictures 47

Drassinower, “A Rights-Based View of the Idea/Expression Dichotomy…” 48

Rosen, “Reconsidering the Idea/Expression Dichotomy” 48

Feist Publications v. Rural Telephone Services 49

Tele-Direct v. American Business Information 50

CCH v. Law Society of Upper Canada (S.C.C.) 51

CCH Canadian v. Law Society of Upper Canada (Fed. C.A.) 53

Theberge v. Galerie d’Art du Petit Champlain 56

Rogers v. Koons 57

M. Spence, “Intellectual Property and the Problem of Parody” 58

Trademark and Passing Off 60



Origins of Trademarks 60

Sherman & Bentley 60

Reddaway v. Banham 60

Champagne case 61

Eli Lilly v. Novopharm Ltd. 63

Trademarks in Canada – Overview 65

Trademarks – Initial Hurdles and Scope 66

Reckitt & Colman Products v. Borden 69

LEGO Case 70

Pink Panther Beauty Corporation (A) v. United Artists Corporation (R) 71

Litman, “Breakfast with Batman” 73

Beebe, “Search and Persuasion in TM Law” 74

Michelin v. CAW 75

BCAA v. Office and Prof Employees’ Union 76

Breck’s Sporting Goods Co. v. Magder 76

Heinz Canada v. Edan 77

Patents 78

Origins of Patents 78

Coke, “Against Monopolies…” 78

Sherman & Bentley 78

Schlumberger Canada Ltd. v. Canada 79

Tennessee Eastman Co. v. Canada (Commissioner of Patents) 80

Patent in Canada – Overview 81

Patent in Canada – Initial Hurdles and Scope 87

Beloit Canada Ltd. v. Valmet Oy 89

Kewanee Oil v. Bicron 90

Cadbury Schweppes v. FBI Foods 91

Free World Trust v. Electro-Sante 92

Parker v. Flook 93



PART III: ALTERNATIVES TO IP REGULATION; NATIONAL AND TRANSNATIONAL ASPECTS OF GOVERNANCE 96

Alternatives to IP regimes 96



Formal Regulation 96

Trebilock, “The Law and Economics of Cdn Competition Policy” 96

Volkswagen Canada v. Access International 99

Sallen v. Corinthians 101



Informal Regulation 102

Patent Pools: A Solution to the Problem of Access in Biotechnology Patents? 102

Transnational aspects of IP governance 103

Jurisdictional problems 104

Yahoo! Inc. v. Ligue contre le racisme et l’antisemitisme 104

Pro-C Ltd. v. Computer City 105

Braintech v. Kostiuk 106

Goldsmith, “Regulation of the Internet: Three Persistent Fallacies” 107

Wendy Adams, “IP Infringement in Global Networks: The Implications of Protection Ahead of the Curve” 108



Regulatory institutions 109

Implications of changes 110




PART I: CONCEPTUALIZING AND JUSTIFYING IP SPACE

Introduction: Thinking about Private Space




Intellectual Property: Intellectual? Property?



Intellectual?

  • Do all intellectual property rights protect “intellectual” activity?

  • Lametti believes that there is more intellectual activity embodied in scientific and aesthetic creation (copyright and patent) than there is in marks, slogans, etc. which are protected by TM. The latter embody a sort of “cleverness” or instrumental intelligence which is not intellectual in the purist sense.


Property?

  • What is property? relationships among individuals through objects of property. Relationship is not enough otherwise everything would be “property”. An object must mediate this relationship.

  • Property as relationship – evident in IP. E.g. copyright = exclusive right to copy and reproduce. Patent = right to exclude others from use. TM = can prevent others from using your mark to sell their wares or services; can license TM.

  • Property as object –

    • The object is not necessarily a physical object – I own the book but someone else owns the IP in that book.

    • Objective (separable) value? YES. Definitely value in a good book or a cure for cancer

    • Scarcity? No scarcity in ideas; IP rights effectively impose scarcity (why? Relate to justifications)


We have a valuable resource worth regulating/protecting  HOW DO WE REGULATE?

MacDonald, The Swiss Army Knife of Governance


Roderick A. Macdonald, The Swiss Army Knife of Governance (2002) CB I, page 7

  • Swiss Army knife allegory – the knife is an instantiation of the logic of plural modes and multiple sites of governance. DL: multiple sites of normativity

  • Central question of institutional design is understanding the relationship of means to ends. The initial means-end question is “Why the State?” [e.g. in IP – why not leave it to private parties (contract, trade secrets, etc.)]

    • The political state is only one instrument, one institution among many, that people choose to let manage their lives. Lametti: various less formal institutions may have more normative weight than state regulation. Multiplicity metaphor = state is not primary. [DL: may be more appropriate in IP to leave regulation to private parties, i.e. to regulate by K]

    • The Swiss Army knife is not just a tool. Allegory of Swiss army knife frames the initial governance consideration in two hypotheses:

  1. I have to do X. Which tool on my Swiss army knife should I use? (ends known)

  2. I have a Swiss Army Knife. What can I do with it? (ends not known). E.g. novel uses of existing tools  using TM where patent runs out (evergreening – LEGO)


The Swiss Army Knife of Governance:

  1. Too Many Tools:

  • There is no best response for a given problem, particularly as the precise limitations of a given response cannot be known until implemented.

  • People’s preferences/deep ruts in thinking may cause them to choose the obvious or well-trodden responses and blind them to a more effective choice they didn’t think of

  1. Over-inclusiveness

  • Important to conceptualize the problem at the outset  if there is defined and specific end in mind, impt to craft response to deal with that end. Danger? Conceptualization may = narrowing [i.e. closing off useful directions by designing a specific response for a currently important/relevant end]

  1. Wrong Tool

  • Some problems are beyond the capability of the solution proposed. In such cases, an effective solution will probably involve deploying a larger variety of tools as well as bringing in a different actor (perhaps outside of gov’t).

  1. Intended Use, Unforeseen Problems

  • Even when employed w/in their design specifications, some regulatory solutions can have unforeseen negative consequences.

  • There is interaction btwn the solution and the situation – all means ultimately change ends [effective means will have long-term implications on how we conceptualize our social ends.

  • E.g. domain name regulation extends TM protection (geographically and substantively – extends to generics)

  1. Creative Use, Unforeseen Problems

  • Regulatory solutions are not infinitely flexible, and efficiency and other problems can arise if a solution is asked to do too much. E.g. copyright being asked to do too much (software, databases, etc.); use of contract to regulate access to IP = extension of CR; use of TM to protect a “get-up” = extension of patent (evergreening)

  1. Design Redundancies

  • Law reform tends to be incremental, therefore new initiatives are constrained by the vestiges of existing regimes.

  • Radical changes/innovation seen as threat to stability  but leaving vestiges in place may = duplication

  1. Specific-use Tools

  • Microregulation denies the creative role that citizens can have in solving their own problems  Right and wrong becomes coterminous with statute book rather than with people’s moral intuition or common sense

  • Excessive detail tends to make unwieldy and unworkable regulation.

  1. Design Tradeoffs

  • There are inevitable tradeoffs in tool design

  • The criterion used to evaluate a regulatory solution is impt, and the criterion is closely related to the ends sought.

  1. Cultural Limits

  • Cultural predispositions limit at the outset the possible range or character of regulatory solutions available (SH: tie this to societal ethos  more individualistic or more communitarian/welfare state?)

  1. Preconceptions of use

  • Preconceived notions of tool use, whether arising from labeling or prior experience, can limit flexibility in deployment

  • Regulation tends to follow well-worn paths. Sometimes a creative solution requires shifting categories.

  1. Primary vs. secondary characteristics

  • There will always be numerous criteria with which to judge a solution – efficiency, effectiveness, raw cost, political popularity, availability of trained personnel to implement it, etc. Determining which criteria are essential and which secondary depends on the end sought.

  1. Relations between uses

  • A particular regulatory strategy might be effective and efficient, but unpalatable to certain groups for other reasons. E.g. sex education may reduce pregnancies but religious groups opposed to it

  1. Political Ideology

  2. Administrative cost-benefit analysis

  • A particular governing instrument may require a regulatory infrastructure that is simply not justified given the purposes of the policy being advanced. E.g. private tort litigation – very expensive to bring lawsuit to advance policy of shifting a large number of small losses against wrongdoers.

  1. Deployment difficulty

  • A particular governing instrument may be appropriate in the hands of certain users, or when deployed against a certain regulatory clientele, but inappropriate in other circumstances.

  1. The possible becomes the necessary

  • E.g. the existence of the knife and all its tools invites people to use it for simple tasks (e.g. use knife to untie a knot rather than using fingers)

  1. If it is too complex it will be used for something else (e.g. a paperweight)

  • Highly sophisticated regulatory analysis leads governments to create highly sophisticated regulatory instruments. Most often, in everyday social intercourse, people do not think of orienting their conduct by reference to such a vast range of implements with highly specialized uses.

  1. Multiple regulatory sites

  • At some point, the reality of choice becomes submerged in the paralysis of decision.

  1. The ghost in the machine

  • e.g. using a Swiss Army knife to slash tires

  • Always a risk that the regulatory form will undermine collateral regulatory objectives. Enhancing regulatory choices typically enhances collateral policy risks. [SH: domain name governance and effects on TM?]


Application to IP (DL: class notes)

  • Want to protect/encourage some sort of inventive activity (e.g. domain names; computer software; etc.)  Can choose a tool from the Swiss Army Knife of Governance. Can choose not to regulate (i.e. to leave it to private parties) – but perhaps choosing not to regulate is choosing a type of regulation – K or trade secrets for example (I think MacDonald suggests this when he introduces the reality of “multiple sites of normativity”. Government is not the only regulatory mechanism). May be that none of the tools is appropriate and that new one must be invented (e.g. domain name governance). New tools can be invented. New tools can be used in new ways. There will often, however, be unforeseen consequences.

  • *There are no stock responses that will apply in all situations. Wrt IP, we have a complex set of resources. The regulatory rules we use to govern this set of resources ought to be complex, perhaps more complex than they are at present.





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