International Aspects of Intellectual Property Summary

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International Aspects of Intellectual Property Summary
Prof. Craig – Winter 2006

1. INTRODUCTION
Evaluation:
 100% Exam – short questions and essay answers – not a fact pattern exam
 Alternative evaluation – 10 page discussion paper – 25% (no downside risk).

Course:
 Not application-based – try to engage with the international issues.

David Vaver’s Text on IP Law – good relatively brief overview – VAIP on Quick Law
(good for TM), also his specific CR text.


OVERVIEW:

Copyright:
 Protects authors of LDMA
 Other subject matters have managed to squeeze in – i.e. computer software
 This is significant since software has become one of the biggest international issues.
 Must be original expression – originates with author, not copied – involves a certain
  level of skill or judgement (more than mechanical).
 Movie piracy is a big international issue.
 General theory is that we don’t protect ideas or facts
 The protectability of facts and factual works has also become an international issue
  – largely because it failed at the domestic level
 Infringement to reproduce, publish or perform in public protected works.
 Secondary infringement (sell, distribute or import infringing copies) becomes more
  relevant at the international level.
 Assumption that protection of CR will encourage the creation of LDMA – assuming
  people are economic actors who are creating it because they will get an economic
  return
      o Does this justification remain the same at the int’l level?
 Often developed countries try to convince developing countries of this – one of the
  key dynamics that informs IIP law

Trademark
 Protection of brand names, design marks, logos, distinctive shapes or packaging
     o Marks used in connection with products or services in the marketplace
 The “getup” of a product – the way the consumer sees it in the marketplace.
 We protect it to the extent that the mark captures the goodwill towards the
   manufacture (this is the subject matter).
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        o This does not stop at the national border -
   Prevents people from using the mark in association with their own wares that would
    provide confusion – i.e. free-riding on the mark
   Also confusingly similar marks are prevented (even if different products) – all about
    protecting goodwill of the owner
   Sometimes we go further and protect anything that will diminish their goodwill or
    tarnish their reputation.
   Global brands are now a reality, so the question of discrepancies between domestic
    laws is a key issue – how much should protection be given to foreign brands?
   Tension between protecting consumers and traders in the marketplace.
   Rationale that trademarks promote efficiency (consumers can easily buy what they
    want without confusion)
   Protects traders (fair marketplace) – they know they can rely on the goodwill –
        o Idea that this protects everybody.

Key Issue: How Protections of IP is tailored to the Domestic Context:
 Until recently, each state determined its own protections – affected by bilateral and
   multi-lateral agreements which were largely unenforceable.
       o We look at some of these agreements.
 In core courses, we focused on what the domestic motivations were – now we must
   address why we now have a great concern with the international realm, how we can
   achieve these concerns, and how much we should.
 In the last 20 years, there has a been a dramatic move towards international
   motivations

International IP - Rationales:
 Globalization – international trade and economic interdependence are hallmarks.
 Development of New Technologies – digital technology has become a major factor in
   international economic competition.
 Growth of cultural industries (e.g. films, etc.) is
 Exports of products creates desire that IP will be protected
 Cultural flows (things that transcend national boundaries), economic
 IP and Information become increasingly important to domestic economies (i.e.
   more valuable) – our most valuable resources happens to be the most difficult to
   protect.
 Often claimed that Int’l IP is the cutting edge – this is not surprising since IP rights
   (IPR) comes down to how to protect an increasingly important part of national
   wealth.
 The political rhetoric has become more hysterical
 Exanple: Piracy = terrorism (WIPO Chief in the context of dangers of counterfeit
   shampoos).
       o Came down to TM – argument that people were not getting what they were
           buying. - But this is not really about TM protection
       o Implications are interesting – shows growing concern to convince people of
           dangers of piracy – i.e. requires a strong international response.
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International IP Issues:
 Is it about human rights, or just economic interests?
 How should we explain IP on the Int’l level and how we should compare this to the
   rationales on the domestic level?
 What are the implications for Canada?


Sources of International IP Regulation:

   IP areas have generally been rationalized in the domestic context – IP is
    fundamentally territorial (always been granted by government of a single nation).
   Principle of territoriality or state sovereignty has underlies the notion of IP –
    internationality has complicated this
   We will examine complexities that result from disparities from different nations.
   Problem if we are exporting goods to countries that do not have CR protections.
   For TM, inability to prevent people from using your brand name freely
   IP creates a false scarcity – creates rights over things that don’t really exist.
        o We are told that without this there will be a lack of creativity/innovation

*** Sunny Handa’s Example:
      Country X                      Country Y
 (1) No CR                          No CR
      o According to economic analysis, the price of cultural goods will approach
         zero (since the cost of reproduction in minimal) – argument that this will
         result in a lack of production of these goods altogether (public will suffer)
              Prof is sceptical of these rationalizations
 (2) CR                             CR
      o According to economic incentive model, here both countries support
         intellectual productivity – authors will be paid for domestic and foreign sales.
      o In the short term countries will have to pay more, but the idea that in the
         long term they will benefit.
 (3) No CR                          CR
      o Author’s in X will face widespread copying in X – cannot rely on domestic
         incentives, but can benefit from Y’s incentive structure and vice versa.
      o Y’s population will face high costs in getting access to works – paying for
         economic incentives to both X and Y – may result in Y’s producers to not
         export to X since they cannot rely on gains
 These scenarios are intended to show that disparity in protections will lead to
   advantages/disadvantages for different nations.
 Optimal situation appears to be #2 – it is sort of a prisoner’s dilemma (benefit
   depends on who you are).
      o As soon as you have cross-border trade of things that are valuable but
         intangible, these types of concerns arise.
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   Effects of harmonization or disparities can have an effect on social situation, access to
    cultural products  In real world, it is often more about the levels of protections
    afforded to specific areas.
   Even if you have IP systems that are identical on the books, they may not have
    the same effect: enforcement, judiciary, awareness or acceptance of IP rights
        o In EU, countries have found they just need to enact same laws as other
            countries to “harmonize”, but if they do not have a similar enforcement
            structure this is not really the case
   Understood to create cultural and economic advantages/disadvantages between
    trading partners – sense that some are losing out due to these disparities.

i. Role of Treaties and General Principles of International Law:
 Recognition of these differences gives a desire to attempt to construct an
    international system for IP Generally led countries to negotiate bilateral (and later
    multilateral) treaties. I.e. to achieve scenario #2 – which is most effective for both
 International law provides an overarching framework for IP
 Statute of ICJ – Article 38 – Sources of International Law:
        o 1. International Conventions (explicit rules binding consenting states).
        o 2. International Customs
        o 3. General Principles of Law
        o 4. Judicial decisions and teachings of scholars – subsidiary method of
            interpretation
 No sense of hierarchy of these sources or importance of rulings of international
    bodies - Nor of human rights, although these could be considered under #3
 For IP, this has not been too problematic, since we generally rely on international
    conventions as the source of norms for IP
 Some have suggested that norms arising around international attitudes towards the
    internet could be a source of custom -
 Treaties – 2 or more states that agree to be bound in relation to each other
        o Could also involve international organizations – e.g. WIPO, the EU (both on
            behalf of its members and independently).
        o Generally you will have a country that is bound by bilateral, multilateral,
            and regional treaties
        o Treaties can also establish international organizations – e.g. WTU – World
            Trade Union, WIPO, NAFTA
 Vienna Convention on Law of Treaties – most countries are signatories (notable
    exception is US).
        o Art. 26 – Pacta Sunt Servanda – agreements are meant to be observed –
            treaties in force are binding on parties to it and must be performed by them
        o Art. 31 – General rule of interpretation
                 (1) Four Key Elements:
                          1. Interpreted with respect to ordinary meaning of the terms
                          2. Also in light of context
                          3. Object and purpose of agreement
                          4. Requirement of good faith -
                 (2) Context for purpose includes its preamble, annexes
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                  (3) Subsequent agreements, practice between parties will be taken into
                   account – also relevant rules of international law.
        o This article is relevant in interpreting TRIPS
   TRIPS – Agreement on Trade-Related Aspects of Intellectual Property Rights
        o Rulings under dispute settlement provisions that have found that TRIPS must
           be interpreted according to customary rules of international law
                Art. 3.2 of Dispute Settlement Understanding affects TRIPS and
                   leads to Vienna Convention s. 31(1)  key elements of interpretation
   VC Art. 27 – Countries cannot rely on its domestic law a reason not to perform
    international obligations they have assumed.

Important question whether international treaty obligations take effect domestically
 This depends on a country’s constitution
       o In Canada, majority of treaties must be implemented by domestic legislation
          due to separation of powers – treaties are not self-executing in Canada
       o In the terminology of international law, this makes Canada a “Dualist” state
 Dualism: treaties have no effect on domestic legal order unless they expressly
   enacted domestically – still have a duty to enforce by pacta sunt servanda, but this is
   the limit until domestic legislation is enacted.
 Monism: international treaties are self-executing – no need for domestic legislation.
 Tensions arise when we sign international treaties that have some domestic resistance.

ii. Trade Agreements and Principles of International Law
 Although most of IPR (IP Rights) system is positive law arising from treaties, there
     are some discernible principles of IPR

*** National Treatment
 One of the oldest organizing principles in international trade agreements
 Definition: foreign nationals shall not be treated less favourably than domestic
   nationals (or their subject matter; goods, services or investments).
 Sometimes this is referred to as formal reciprocity
 Art. 3 of TRIPS: each member shall accord to other members treatment no less
   favourable to its own members – in regards to IP
 Art. 2(1) of Paris Convention: relates to industrial property (includes TM)
 Art. 5 of the Berne Convention: relates to CR
 Compounds the territoriality of the law (national law that is applied)
 Foreign national can rely on host state to grant the same rights – law applies equally
   regardless of citizenship (non-discrimination).
 Aims to create a level playing-field for fair competition to take place.
 Doesn’t necessarily result in equality – if there are differences, this principle will
   just solidify them.
Example:               State X (+ 70 years)          State Y (+50 years)
                       X grants Y’s Authors:         Y grants X’s Authors:
 NT:                  + 70 years                    + 50 years
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Material Reciprocity or Mutuality:
 If NT is foundational, there are others that supplement or replace this
 Material Reciprocity or Mutuality: a state will agree to provide foreign nationals
  only with the same rights that the foreign state affords to the first state’s nationals.
 Reciprocity:       + 50 years                     + 50 years
 X’s authors’ in X get 70 years, but authors of states that don’t grant 70 years get less
      o This illustrates differences between national treatment and reciprocity.
 Relevant since Berne Convention has reciprocity as the rule and TRIPS relies on
  Berne(?)

Most-Favoured Nation Principle (MFN):
 Sometimes referred as the second pillar
 In GATT; In Art. 4 of TRIPS – mainstay of WTO
 But not a principle of IP under old conventions (e.g. Berne, etc.).
 This is a principle of international trade – the more IP becomes a form of
  international trade, the more likely IP will use this.
 In the context of IP this was meant to depoliticize the development of
  international norms –concern about quid pro quo and regional agreements arising.
 MFN:               + 70 years (A-Z).
 Could give greater benefit to other country, but would have to give this to all others.

Bilateral/Multilateral Agreements:
 Bilateral agreements occur when two countries see something to be gained in theory
        o But often there is not an equal balance of power – often these agreements are
            not just about IP
 Some nations, particularly developing nations, do not have much to gain by
    enacting protectionist IP laws – but sometimes they get something else out of it.
        o Countries can agree to remove market barriers to their mutual advantage
        o It is becoming more common for these agreements to include IPR provisions
 Even if you agree to things in principle, implementing them into the domestic
    setting where they are not reflected by domestic norms is problematic.
 Often created under auspices of international organizations, and include their own
    provisions for ongoing negotiations of treaties – e.g. WTO, etc.
 If participation of a country is critical, then they have a lot of power
 Recent negotiations at the WTO have shown groups of developing countries with
    similar interests getting together and gaining more power – this will be a significant
    dynamic in international IP law in the next few years
 Most agreements have been sponsored by WIPO or WTO
 WTO has increasingly stepped in to create trade norms – WIPO is somewhat
    outside this, but there are a number of agreements it regulates.
 EU has become tremendously important – not just its members – p. 5 – Imprint of
    EU legislation has had effect outside it – e.g. states that may become members, and
    gained sympathy and support outside because it has strengthened protections (e.g.
    extension of term has been adopted by US).
 NAFTA (1994)
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The Players
   Nation States, International Institutions and Elites: IPR Holders and the Public

International Institutions
 International treaties as a source of IP law
 International treatment, MFN, Reciprocity.
 EU
 WIPO
 Other Institutions – the nation state, etc.
 Dinwoodie Overview

European Union – its role in development of IP and comparison to NAFTA
 EU operates as one entity when it comes to trade agreements – the European
   Commission has the responsibility for negotiating and monitoring trade agreements
 Keeps members in check through legislative instruments:
      o 1. Regulations – a source of law within domestic jurisdiction
      o 2. Directives – actually not direct – has to be implemented into the domestic
          law in order to apply Member states are bound to give effect, but can
          choose how to express it.
 In IP, new legislation has generally taken the form of harmonization directives
      o Doesn’t change the nature of IP as territorial, but this is not important since
          the territories have the same laws.
 European Court of Justice – may hear IP-related cases in two capacities:
      o 1. As an adjudicative body between member states – e.g. If a member has
          failed to implement – can be brought by another member or Commission
      o 2. Providing domestic courts with preliminary references

NAFTA:
 A much more limited economic agenda – not political and social
 Goal is to remove barriers to the free movement of goods and capital
 Doesn’t have a legislative organ – not capable of creating new laws, but rather Free
  Trade Commission supervises the implementation of the agreement.
 Disagreements are settled by arbitration panels.
 NAFTA Chapter 17: Intellectual Property
     o Created before TRIPS, but based on draft of it.
     o Art. 1701 Nature and scope of IP rights: will provide adequate and effective
         protection of IP rights, without allowing them to become barriers to IP rights.

EU versus NAFTA:
 Ysolde Gendreu P. 20 – “A common market is a stronger union than a free-trade
  area and a customs union because, in addition to the free movement of goods and
  common customs tariffs for imported goods, it implies the free movement of all the
  elements that are required for economic production (persons, services, and capital)
  as well as the possibility to organize the free movement of markets”
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   EU directives are super-national provisions – read like law - Because EU has
    ability to create laws, it can be very specific in obligations it imposes on its members
   NAFTA just establishes general guidelines and minimum requirements – leaves
    details to member states
   Consequences of this: comparing EU legislation is much easer and consistent
   All-embracing nature of EU is its greatest strength and weakness – idea is great,
    but lacking in practice.

North America and the EU are united by trade agreements under WIPO or WTO

WIPO
 A specialized organ of the UN – aims for economic, social and cultural development
  through IP rights
 Objectives: International forum for development of IP norms; administers IP
  agreements, and provides assistance to countries.
 An administrative entity – not the source of laws, but just provides framework for
  norms and implementation.
 The big question is the extent to which it has been relegated in importance with
  the rise of the WTO in IP

WTO – p. 43 and 14
 Purposes: the facilitation of free trade amongst states – forum for negotiation and
  dispute settlement – this latter aspect differentiates it from WIPO
 WTO emerged out of Uruguay negotiations in 1994 – provided an umbrella for
  different agreements (i.g. GATT, TRIPs, etc.)
 WTO’s jurisdiction was extended  includes trade in IP.
 *** Ruth Gana 14 – “By offering a single package, it provides that countries
  wanting the benefit of trade agreements also have to submit to IP agreements –
  gives non-IP related motivations to join “IP-respecting nations”
 Each member of WTO is entitled to membership on Council for TRIPS – can weigh in
  on different interpretations of TRIPS before going to dispute settlement.
 Sense that WIPO had been co-opted by interests of developing nations – needed
  to go elsewhere to find support
 New era defined as “an era for information technologies” – monopoly over IP
  works is essential to wealth of nation.
      o Vulnerable to the extent that you’re economy is based upon the intellectual
          products – thus need to shore up trade agreements
 Ruth Gana: p15, para 3 – “impetus behind TRIPS is not to encourage creativity
  and innovation, but rather to protect a particular conception of property privileges
  across national borders  promotes national economic interests and social values
  in the legitimizing form of treaty law”
 Dinwoodie: Shift towards trade organizations brought about the “real
  internationalization of IP”
 By putting IP at the core of trade negotiations, it has for the first time been
  internationalized – adopted a universal mode
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*** Sunny Handa
 This makes sense, to the extent that we do view IP as an economic tool
 But other point is that IP is related to culture: “IP approach is reflective of
   national soul” – with each successive trade agreement, the world moves one step
   closer to homogenous (i.e. American) IP law.

WIPO versus WTO:
 Supposed to be a complementary relationship – WTO system was designed to fill
  the gaps left by the WIPO system.
 WTO-WIPO Cooperation Agreement: supposed to encourage an information flow
  (i.e. report given to TRIPS Council and WIPO)
 However, they are different – i.e. you could be in violation of WIPO-administered
  treaties, but not under the WTO (thus dispute settlement option not available).
       o While they are supposed to be mutually supportive, there is some tension.
 WIPO seen to be most friendly to developing nations, WTO to developed nations


Three Themes of International IP (or just of this week’s readings?):
1. Notion of Harmonization Accompanied by Expansion of IP
 Emerges in a few of the articles
 Dinwoodie p. 30 – Harmonization: - dominant impulse of international lawmaking
        o 1. This will reduce the cost, time and uncertainty in determining/acquiring
            rights – reduces barriers to trade.
        o 2. But a desire for harmonization is often a desire to make other countries’
            laws similar to our own (as opposed to searching for practices). Replication
 Countries are required to provide minimum levels of IP protection – just focuses on
    the floor
 Dinwoodie – Trend of “Harmonizing Up” – always mandate higher levels of
    protection – never restrain the more excessive forms of IP protection
        o Underlines presumption that more rights are always better – not really
            engaging in the kind of substantive analysis/search for best practices that the
            subject matter seems to require: many different approaches, not natural way
 David Vaver (39) calling IP “property” obscures differences attempts to trim
    back excesses of IP are always seen as an interference with propert are even
    unconstitutional “takings”
        o 40, para 2 – attempts to widen exceptions are resisted as interferences with
            vested rights – this reflects a focus always on owner’s rights, not user
            rights/public interest.
        o Para 3 – recent expansion of IP has become an end in itself, as opposed to
            means to the end of stimulating desirable innovation
 While domestically call IP a legal fiction to encourage creativity, when we step into
    the international sphere we view it simply as another commodity in the trade regime
 SCC has said CR is about a balance – what if there is a gap in logic between this
    domestic justification and international obligations?
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        o To what extent domestically can we reign in our IP laws as the SCC has
            advocated if we are party to international treaties?
   Denicola 48-49 – not only is this self-perpetuating increase in protections in the
    international realm, but it puts pressure on domestic lawmakers to increase
    protections, even in the US – i.e. fair use provisions?
        o The lure of increased revenues abroad leads to stronger protections at home
   *** This basic framework of allowing exceptions but not requiring them
    supports the creep towards more expansive IP rights – i.e. “harmonizing up”

2. Sovereignty and the Nation-State in Light of Ideological/Philosophical Differences
 Fred Cate 33 – Agreements like TRIPS restrict national sovereignty: not only must
    harmonize laws, but also submit them to international scrutiny and review.
        o By virtue of the fact that the nation has chosen to give up some of its
             sovereignty, it has acted as a sovereign nation in doing so.
        o Under TRIPS, limitations on national sovereignty is far greater than WIPO
 Neil McKormick – sovereignty is like virginity – only a good thing so that you can
    lose it.
 It is often more fundamental than enacting particular laws – often based on very
    different fundamental IP laws.
 Vaver – (starts p. 36) – US and Canadian IP laws differ in detail and philosophy –
    thus the wisdom and practicality of harmonization may be doubted.
        o Focuses on criticism of Canadian IP to give greater protections – failure to
             identify proper limits.
        o There is nothing natural/essential about the way we currently understand
             IP – arguably it is the flaws of the domestic model that is being exported
        o The checks/balances that we have domestically are dropped when we move
             into the international realm.
        o 40 – TRIPS may have imposed standardized IP norms on much of the
             world, but it has not made believers out of everyone  IP system was
             developed in the West to serve needs of the industrialized world
        o Suggests that in order for Int’l IP to operate it may need to move away from
             present rigid standardized norms towards greater tolerance for diversity and
             flexibility.

3. Sovereignty and Political/Economic Pragmatism
 Notion that different nations are in different contexts – has implications for their
    understanding of IP and extent to which international norms are likely to affect them.
 Vaver 40 – too many countries that became WTO members to benefit them
    overall have been negatively affected by TRIPS section of agreement.
        o 46 – Fails to take into account differences of countries – may deprive
           countries of ability to tailor their IP laws to national context.
 If we remember that IP rights are legal fictions designed to further economic
    objectives, the int’l IP system forgets that nations may have national goals or
    different ways of achieving them.
 Denicola 35 – US stayed out of Berne Convention until the benefits outweighed the
    drawbacks – criticizes US’s recent “holier-than-thou” approach in light of this.
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   There are differences between countries that are net producers of IP and those
    that are net consumers of IP.
   Marshall Leaffer - 50 – US has shifted to IP as main export – greater losses due to
    counterfeiting – because of a changing pattern in the modern economy and trade, the
    schism between the West and developing countries is growing.
   It is perfectly reasonable for developing countries to want weaker protections –
    cheap access to goods, large counterfeiting industries, no IP tradition
         o Since most of their products are physical goods they’re not helped much by IP
   Really asking foreign nations to provide economic incentives for our own
    domestic creators – a more convincing argument would be that that lack of
    protections prevents foreign investment or transfer of technology.
         o This may be true, but it is only since the West has become dependant on
             selling information that this focus on creating a normative structure has
             occurred.
   Buscaglia and Long – why this will ultimately also benefit Latin America as well.
         o Argue that stronger IP will lead to greater transfer of technology
         o Allegation that this is in the interests of all the developed countries, but that
             only US is really vocal.
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2. INTERNATIONAL ASPECTS OF COPYRIGHT LAW
Review of General Trends:
 Harmonizing Up – minimum baseline
 Notion of Sovereignty – limits imposed on this in the name of int’l IP system
      o It may encroach on sovereignty to the extent that it may pose cultural
          difficulties or may be disadvantageous to some countries

THE NEED FOR COPYRIGHT

Overview of Copyright Regime:
 Protection of original LDMA expression – comes into being automatically
 Exists for life of author plus 50 years (in Canada) – this is the minimum standard
  required by most multilateral agreements.
 Basic Rights: CR owner has exclusive right to reproduce, publish for the first time,
  and to perform in public
 Anyone who does these things w/o permission of owner or license is infringing.

Paul Geller – CR History and the Future: What’s Culture Got To Do With It? (62)
 Evolution of CR - Similar to Gana article – frame arguments the same way
 First Historical Hypothesis (62, para 2): “only when media technology and
   market conditions made piracy possible could CR arise”
      o Goal was not to enact scheme how we have it now, but state-controlled
          monopolies
      o Roman Empire – slaves copied scrolls – CR did not arise; it was not
          necessary because of practical considerations that existed at that time
               Any pirate would have had to pay as much as other publishers
      o Copier in this context does not enjoy any economic or social benefit over
          that of original creator – not cheaper to copy than initial producer to
          produce – no problem of free-riding; thus no need to prevent copiers
      o Contrasted with Chinese Empire – printing press – leads to some
          intervention into the market – limits on copying some works
               Happy coincidence of goals of censorship (government) and desire to
                  monopolize (private sector)
      o Geller’s point is that this is William Caxton’s introduction of printing
          press in Europe – explosion in trade of printed works
               Booksellers begin to organize themselves into guilds – sovereigns
                  decide to censor political/religious texts – same interests as in China
                  – some say the same thing about our current system
 Second Historical Hypothesis (63) – CR laws tended to decentralize power over
   printed media and the dissemination of creative content
      o Shift towards individual author occurred in 17th and 18th century in Europe
      o Goes with Enlightenment political philosophy – monopolies became less
          tolerable as did censorship
      o In countries that didn’t have censorship, their books would flow into others -
          Lawmakers wanted new laws to protect domestic markets and prevent piracy
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       o Could have given rights to publishers, but instead they went to authors
       o This is the foundation of the contemporary CR system
       o Statute of Anne (1710) – right to prevent copying of books – lasted 14 years
           and vested in author
       o Before this the author just got paid when they submitted work – now they
           tended to give rights to publisher at this time, but still significant
       o Emergence of author as a romantic figure, individual inspired genius seemed
           to inform the surrounding rhetoric at this time
       o Locke: labour - and Kant: right to self-expression
       o CR is a creature of 17th/18th century Europe - very time specific
       o Ghana Article
                 77, para 2 – CR grant to authors represents an element in the
                    progression towards
                 Adam Smith’s Wealth of Nations – new understanding of state and
                    economy that is again, very time and place specific
                 She questions the appropriateness of this for cultures that do not share
                    this philosophy or history.
                 Nothing natural, essential or inevitable of how we understand these
                    concepts or how law has developed
   Third Historical Hypothesis: In response to industrialization, CR was
    augmented both with new economic and moral rights, while it was transplanted
    worldwide
       o Here we start to ask how it evolved into international creature
       o 19th/20th century, technology evolving very quickly – new opportunities for
           communication and potential to benefit from piracy
       o Legislators were inclined to protect emerging mass markets – constant growth
           and expansion of CR to protect these markets
       o CR is very flexible – suggests how important technological neutrality is, so
           that it can respond to new technologies.
       o 66, para 2 – in 20th century, CR has been looked to as a means to protect
           income streams – new need to protect capital investment
                 Explains nature and subject matter of CR, and geographical reach
                         Crossing borders, need to protect through international regime
                 Initially this was done through bilateral agreements
       o Multilateral treaty-making process – most important conclusion was with
           the Berne Convention (1886) – here the whole institution became global in
           nature (colonies forced to go along).
   Future of CR - Since this is a regime that arose out of historical context, economic
    necessity, etc. – what does this mean?
       o The Internet – international network as opposed to international patchwork –
           interconnectivity changes the demands – content is free from traditional
           restrictions, which brings with it new challenges
       o Role of CR is the same as it always has been: to deal with new technologies,
           to facilitate and encourage - Need for harmonization and simplification
                                                                                      14


      o But not every country has the same approach to conflict of laws –
           harmonization is almost essential so that there is consistency and
           foreseeability in all jurisdictions
      o Geller – newest problem has been to over-regulate – doing the opposite of
           what made CR so successful (i.e. flexibility). – Trend of Hyperregulation
                E.g. Digital Millennium Act, application of WIPO, etc.
                Has become ridiculously complicated – even lawyers can’t understand.
      o To respond to this, we must return to first principles – see goals, how it
           has accomplished these – how should it operate in the future?
   CR is about enhancing culture and rewarding those who do
      o 70 – CR and culture – how can this crude instrument of the law enhance
           something as subtle as culture?
      o 73 – We should be looking for a scheme that can apply on same global
           scale as media we are trying to regulate – but these should also allow to
           open up new channels for creativity on this global scale

Gana Article – CR and Public Welfare Similar Approach, but more emphasis on US
 What should motivate IP rights on global scale? Motivations will define outcomes
 Law and Economics theory for CR – economic incentive to produce – thinks this is
  a little too focused on author’s rights, but justifiable
 Both these justifications are instrumentalist or consequentialist – end goal, CR is
  the means – US has a history of justifying CR in terms of public welfare
 75, para 2 - This has been translated into the international realm – these
  philosophies legitimized CR as a method of economic well-being
 Ghana’s objection is that innovation/creativity is not a direct result of CR
       o Marginal countries have experienced the cost without the benefit
 *** 77, second last para - everyone agrees IP imposes costs, but the assumption
  that the system benefits public welfare is not necessarily true and not something
  that has been demonstrated (particularly in the context of developing countries).
       o Essentialism of this claim – i.e. this just “is” the way it works
       o Questions its ability to be transplanted outside of the West
 Tendency to focus on rights of rights-holder – this has happened at expense of
  other social objectives that have informed CR at the beginning (particularly in US)
  – not the same objective that has informed Anglo-American law.
       o E.g. Statute of Anne: “an act for the encouragement of learning”
 We should be asking whether new rights will really stimulate more creativity and
  what are the costs involved in granting rights (particularly for developing countries)

Both Ghana and Geller claim overall social goals as underpinning IP system – also
both optimistic that we should and can make global system based on this, despite
current flaws.
                                                                                        15


CANADA’S INTERNATIONAL COPYRIGHT OBLIGATIONS
 Gana – as we are changing our global regime, our domestic situation is not
  insulated – may be taking us away from our initial justifications and policy goals.
 The sovereignty of the nation is really at play in international law – since Canada is a
  colony, it assumed obligations through Britain before independence.
 BNA 1867 – some dispute over whether UK imperial legislation would continue
  to apply to Canada – In 1868 Canada decided to enact its own Copyright Act
      o Protection was not extended to British subjects unless work was printed,
         published, and registered in Canada
      o Reflects Canada’s desire to insulate its industry from UK competition
      o SS. 55-57 – allows UK power to disallow Canadian legislation – only used
         once  the 1868 Copyright statute (lack of protection for UK authors).
      o Shows political nature of CR – huge debates at the time for the general
         population (just like Statute of Anne).
 1875 – Canadian CR Act – basically dictated by Britain – protection given to any
  country that had an agreement with the UK – nothing could prevent UK imports
      o Canada was bound to extend this to all signatories of Berne Convention

Sunny Handa – Review of Canada’s International Copyright Obligations
 Canada’s model generally uses “national treatment” – countries that have an
   agreement with Canada will receive the same treatment as Canadian authors
 s. 5(1) CRA – eligibility of protection for Canadian CR is not dependant on
   being a Canadian national or published here
        o (a) if author at time of creation was a citizen or resident of a treaty
            country – Berne Convention, UCC Country, or WTO member (basically all
            the countries we will deal with).
        o (c) For published works,
 S. 1.1 – deemed to have been first published in a treaty country if it was within 30
   days of real first publication
 Alternative basis for protection for films – if corporation had HQ in treaty country,
   or if a natural person, was a citizen or resident in a treaty country.
        o This is since no one knows who the author of a film is
        o “Maker” – really refers to producer (or publishing company).
 *** Because the rules in s. 5 are so all-encompassing, and treaties are so inclusive,
   it is largely irrelevant who the author is or where it was published.
 It used to be important where it was created (1.01), (1.02) – now it is just the
   question of whether you had protection when your country joined Berne
        o If you lost protection before country joined Berne, you cannot benefit from
            these longer protections
 All of these amendments were due to the implementation of TRIPs in 1997
 Specific provisions for Neighbouring Rights – e.g. sound recording makers:
   slightly different application group - Rights based on reciprocity
 Even where someone slips through all of s. 5, s. 5(2) has provisions for other
   countries: minister of industry can extend protection on a national treatment basis
        o To ensure there is room for Canada to conclude bilateral treaties.
                                                                                    16


Overview of Particular Copyright Treaties:
 Berne Convention (1886):
       o Before this it was primarily bilateral treaties only
       o Established a minimum standard of protection: national treatment
       o Many amendments/revisions (7 levels) – important ones are:
               Berlin (1908), Rome (1928), Stockholm (1967), and Paris (1971).
       o Art. 5 (1) – National Treatment - (2) prevents basing protection on
          formalities – US stayed out of this (based CR on registration)
       o Ran into trouble in 1960’s after Stockholm – tried to implement a protocol
          to benefit developing countries, but couldn’t get enough support – 1971 was a
          bit of a rewind – becoming increasingly difficult to revise CR on this scale
               People began looking outside Berne
       o Art. 22 – allowed for agreements outside of Berne
       o Berne is now administered under WIPO – new initiatives include the
          WIPO CR Treaty, WIPO Performances and Phonographs Treaty (1996)
               Came into force (2002) – Canada has still to ratify them
       o Canada signed Berne in 1928 (Rome Level), where it stayed until NAFTA
       o Since 1998, we have been bound by 1971 revision of Berne
 Universal Copyright Convention (1952) - current revision (1971)
       o Reason it came into being because the US was not inclined to sign Berne
       o Way to bring counties into the fold that were not prepared to sign Berne
       o Since US signed onto Berne at 1971 level, UCC has been unimportant
 NAFTA: - Chapter 17 deals with IP
       o Arose out of scepticism of the potential for international agreement
               Didn’t think TRIPS was going to happen
       o CR – Art. 1705 – must protect all works covered by art. 5 of Berne
       o Additional rights – extended protection to computer programs as literary
          works, rental works applied to them, compilations of data (see Tele-Direct –
          court mentioned this should set domestic standard), and sound recordings.
       o Same provisions as in CRA – we are in compliance with NAFTA
 Trade-Related Aspects of IP Rights (TRIPS):
       o *** Art. 9: Requires states to comply with Berne
       o Art. 7 – Objectives of TRIPS – protection of IPRs should contribute to the
          promotion of technological innovation and the transfer/dissemination of
          technology, to the mutual advantage of producers and users of technological
          knowledge and in a manner conducive to social and economic welfare, and to
          a balance of rights and obligations.
       o Part II of TRIPS deals specifically with CR and Neighbouring Rights
       o Art 6bis – inclusion of moral rights
Handa: special matters taken by US – results in Canada as on list of countries that
doesn’t adequately protect IP


THE BERNE CONVENTION –FOUNDATIONAL INT’L CR REGIME
 Continues to form the baseline of protection globally
 NAFTA art. 1701(2)(b) – requires parties to give effect to Berne Convention
                                                                                     17


   TRIPS Art 9(1) Required to comply with articles 1 – 21 of the Berne Convention
   Thus, obligations under Berne can also be applied to NAFTA and TRIPS

Sam Ricketson – Birth of the Berne Convention (98)
 Most famous article on history - “First true multilateral convention on CR”
 99 para 1 – Berne is a manifestation of a period where the world was trying in a
   high-minded way to bring about change in many areas through cooperation
 1886 – Domestic CR laws were still in their infancy – not longer after monopolies
   of publishers were dismantled – but by the end of the 19th century in the UK, CR was
   considered to be that of the author not publishers, and to be controlled by private
   individuals not the Crown
 Post-Revolutionary France – The “rights of man” – included a right to one’s work
       o Different from source of right in UK
 100 – Belgium, Italy, Germany, etc. – recognized rights of authors (end of 18th
   century?) – also found in US and some Latin American nations
 Concept vs. conception  former can easily be agreed on, but the latter may be
   disagreed upon – often it is the latter that proves problematic in law
 Explains important differences in range of protection in different nations
       o Many would recognize artistic works, but not architectural works
       o Photographic works ….
       o Duration - Some said life of the author, some added 5, or 80 – others did not
           attach it to life of the author at all.
       o Kind of rights protected – most recognized reproduction, but some didn’t
           include the right to control derivative works under this – e.g. adaptation,
           translation (very important in terms of international CR).
       o Differences in terms of exceptions or formalities
 Goal by end of 19th century was to harmonize and replace bilateral agreements
   that had sprung up – roots of Berne can be found in 1878 Paris congress
 Victor Hugo – “father of CR” (by French) – founded ALAI in 1878
 ALAI – International artistic and literary association (in French) – in 1882 they
   proposed a union for the protection of IP – draft in 1884 which formed the basis for
   the Berne Convention in 1886
 During negotiations, 16 countries were present – mostly European with a few Latin
   American (US as observer) – signed by 10 European counties (others found in
   Eurocentric – Prof: arguably correctly).
 Wasn’t universal by any means – fell short of ALAI’s goals, but still a major step

Lionel Sobel – Framework of Copyright
 Shows various models that could be used to create an international CR system
 Not actually that complicated: shows how to think about international CR questions
 Table (109) – Possible Models for an International Copyright System
       o Premise – Int’l IP consists of two elements: CR treaties and domestic laws
 Box 1 – Uniform system throughout the world – same rights, ownership rules –
   wouldn’t have to apply to domestic law (i.e. not national treatment), but separate
   independent system for international CR - Almost impossible to apply
                                                                                       18


        o Because we are not using this, we must build on domestic law
   3 Questions (2 options for each – 8 combinations):
        o 1. Which countries’ laws will apply?
                Country where protection is sought, or country of origin of the work
        o 2. Will it be applied only if required by treaty?
                May only be applied if there is a treaty, or maybe it will be applied
                   unilaterally whether or not there is a treaty requirement
        o 3. Will reciprocity be necessary if that law is applied?
                Either protection will be granted only if country of origin reciprocates,
                   or regardless of this.
   Box 2 – National Treatment, by Treaty, Under Law of Country Where
    Protection is Sought, Regardless of Reciprocity:
        o General rule that is reflected in international system (norm is that
           reciprocity is not required, and that it is national treatment)
        o All other boxes are exceptions/derivations from this general rule of Int’l CR.
   Box 3 – Law of country where protection is sought; NT required by treaty; but
    only granted if reciprocal treatment - national treatment does not necessarily lead
    to uniformity, but reciprocity does (also called mutuality)
   Box 4 – NT, by Treat, Regardless of reciprocity, a country will apply the law of
    the country of origin instead of national law.
   Box 5 – NT, by Treaty, Law of Country of Origin, Requires Reciprocity
   Box 6 – Rare situation where country unilaterally extends same protection to
    foreign works that it gives to national works regardless of treaty or reciprocity
   Box 8 – Same, but gives protection of country of origin - France used to do this to
    encourage others to raise protection
   *** Bear these questions in mind if we see derivations from Box 2
   Questions we should ask to determine model:
        o 114 bottom – Treaties as providing a “pipeline” for CR owners in one
           country to reach the CR laws of other countries
                If pipeline, law is generally of that country – national treatment
        o 114-115 – if this exists, 3 questions: identify treaty, identify national law,
           then ask what this means for author (apply)
   8 Considerations:
        o 1. Determine country where protection is sought – usually where party wants
           to launch infringement action or claim royalties
        o 2. Determine which treaties and national laws of that country are pertinent
                Berne Union Country?
        o 3. Is the work or right in question protected by the national law in step 2?
        o 4. Is the work in question connected to the country in which protection is
           sought in one of the required ways – e.g. nationality, residence, country of
           origin of work
        o 5. Is the work eligible for national treatment in accordance with the law
           where protection is sought? – e.g. Canadian work protected by US law in
           US? – might be issue if reciprocity required, CR expired, etc.
        o 6. Is the work eligible for treatment that is more favourable than that
           granted to its own nationals? – Sometimes countries offer greater protection
                                                                                             19


         to foreign works – e.g. US might not require foreigners to follow formalities
         (due to Berne), but does require own citizens
       o 7. Are there any issue as to which the law of the country-of-origin applies
         rather than the law of the country where protection is sought?
       o 8. What protection is available under the mix of treaty and national
         provisions identified under the preceding steps?

Substantive Provisions of the Berne Convention
 WIPO Extract (122) – good sense of convention – however, since this is a WIPO
   publication, it is not really objective – 198 – e.g. says it is in the interests of all
   countries, particularly developing ones.
 *** If the domestic CR regime is supposed to embody a proper balance of policy
   goals, this is complicated by the fact the domestic regime is dictated somewhat by
   international obligations
 Art. 5(1) – National Treatment – 5(2) protection is automatic (without
   formality), and protection is independent of protection in country of origin.
       o This leads to Box 2 from Sobel
 Art. 36 “pacta sunt servanda” clause – countries undertake to adopt these rights,
   and must be able to do so.
 Art. 33 – Gives jurisdiction to ICJ to decide disputes that arise in relation to the
   convention. – Never used; WTO and TRIPS can now be used.
 All following articles are minimum standards – i.e. can protect more

Minimum Works Protected:
 Art. 2 – Protected works – literary and artistic (includes: anything in scientific
   and artistic domain which includes… i.e. not exclusive list.)
       o Can. CRA – s. 2 – “every original LDMA, whatever may be the mode of its
           expression” – taken directly from s. 2(1) of Berne
                It has been suggested that Canadian definition is more limited, but Prof
                   does not agree – combined with definitions of artistic works, etc.
                   almost everything is included.
       o Besides, according to Berne we must protect all this (minimum floor)
 Art. 2(3) Derivative works are also protected under Berne – works based on pre-
   existing work – they are in themselves derivative works that are protected.
       o Translations, adaptations, arrangements of music and other alterations
       o CRA – compilations included – inclusion of fact does alter this
 (5) Collections protected by reason of the selection and arrangement
 (4) It is up to country of the Union to determine the protection given to official
   texts of a legislative, administrative, and legal nature, and to official translations
       o E.g. statutes and court decisions
       o Canada generally does protect these works without exception – generally
           under Crown CR under s. 12 (works created
       o US CR is not available for any publication of US government – court
           decisions are part of public domain – taken advantage of this exception
                                                                                      20


   (7) Another optional provision is for “works of applied art and industrial designs
    and models” – in Canada we do extend protection to artistic works whether or not
    they are also functional – but we do have limitations by nature of (7) – definitions
        o If something is mass-produced (i.e. over 50 times), it will not be infringement
            to reproduce it
   Art. 2bis(2) – optional for lectures – in Canada we give CR, but limit protection
    in s. 32.2(1)(c): not infringement to report lecture given in public, (e) for
    publishing report of a political nature
   Art 2(2) Protected Works – countries can require that works be fixed in some
    material form – this is required in Canada – e.g. definition of “dramatic work”
   Art 2(6) Ownership of Rights – for the benefit of the author
        o Canada: 13(1) author is first owner
   Art. 3(1) – Protection shall apply to (a) authors who are nationals of a country of
    the union whether published or not, or (b) authors who are not nationals of one of
    the counties of the union, for their works first published in one of those countries,
    or simultaneously in a country outside the Union and in a country of the Union
        o (2) non-nationals who have habitual residence  assimilated to nationals
        o (4) work shall be considered to have been published simultaneously in
            several countries if published within 30 days of first publication
                 CRA definition section (1.1) first publication
   Art. 4 Authors of cinematographic works – see. CRA 5(1)(b)
   Art. 4 Architectural works – CRA 2.2(1)(a)(ii)
   Art. 5(4) Country of Origin defined as country in which work is first published
        o (a) if simultaneously published in several countries of union, country of
            origin is the one with shortest term of protection
        o (b) if simultaneously published in union/non-union, then union counts
        o (c) for unpublished works and works published in country outside union
            without simultaneous union publication, then country where author is a
            national counts – cinema = HQ, architecture = where located

Exclusive Rights of Authors: To do something or to authorize it
 Art. 8 – right of translation  CRA – s. 3(1)(a) – to produce, reproduce, perform
   or publish any translation… and to authorize any such act.
 Art 12 – exclusive right to authorize adaptations, arrangements, and other
   alterations – should be caught under CRA s. 3
 Art. 11 – to communicate to the public
 Art. 11ter – right to recite in public literary works – included as public
   performance in Canada
 Art. 11bis – also right to broadcast work to public
 Art. 9(1) – right to make a reproduction in any form. – CRA 3(1)
       o Includes the right to make any sound recording – CRA 3(1)(d)
 Art. 14 – right to make cinematographic adaptation – CRA 3(1)(e)
 *** All of basic right required by Berne are in CRA s. 3(1) and in additions
       o To ensure that it is understood that we have complied with Berne
                                                                                       21


   Art. 14ter(1) “Droit de suite” if author sells work, he has right to cut of
    subsequent sale  ***We are allowed to not include this by nature of 14ter(2) –
    we don’t need to extend this to foreign nationals
   Art. 16 Infringing works are subject to seizure
   *** Art. 6bis – Moral Rights – right to claim authorship and to object to its
    distortion, mutilation, that is prejudicial to author’s honour or reputations – in
    CRA s. 28.1 and 28.2 – controversial; tension between common law and civil law
    traditions.
        o (3) manner of safeguard up to country: allows differences for enforcement.

Length of Rights – page 124
 Art. 7(1) Protection must be granted until 50th year after the author’s death
      o Supposed to protect author’s children – arguably this reflects a strong author’s
          rights focus in the convention
 Exceptions to 7(1)
      o Art 7(3) If author is unknown or wrong name given, it is 50 years from date
          of first publication – if author discloses
               Reflected in s. 6 of the CRA – also specific provisions for terms when
                   the identity of the author is unknown (6.1)
      o Art. 7(2) (and s. 11.1) Cinematographic works have a separate term – 50
          years after its publication, or from its creation if not published.
      o Art 7(4) – countries have choice of term for photographs – minimum term
          is 25 years from the making. – s. 10(1) different term if owner is a
          corporation, but doesn’t really use flexibility allowed in Berne
               If there is a human person who is the majority shareholder, then we
                   used the life plus 50 rule.
      o *** The exceptions for photographs and cinematographic works reflect
          fact that authorship may be less clear  Berne reflects scepticism of the
          truly authorial nature of photographs - we are moving towards eliminating
          this distinction
 Art. 6bis(2) - Moral Rights must last at least for length of Economic Rights
      o This is just a minimum level – countries may choose to protect moral rights
          in perpetuity.

Limitations of Rights under Berne
 124, para 3 – Because Berne establishes minimum protection, this is
   counterbalanced by some exceptions - But are these proper counterbalances to the
   minimum standards? – Very few and quite narrow in their application.
 There are some narrowly drafted provisions:
       o E.g. “Without requirement of paying for it or seeking authorization”
                Essentially allowing for fair use/fair dealing of CR works
 Example: Art. 9(2) – the right of reproduction should be a matter of domestic
   legislation to permit the reproduction of works in certain special cases, provided this
   does not conflict with normal exploitation of the work and does not unreasonably
   prejudice the legitimate interests of the author.
 Berne Three Step Test (in TRIPS as well – Art 13):
                                                                                          22


         o 1. Must be a special case – not a generic exception
         o 2. Must not conflict with normal exploitation of the work
         o 3. Must not prejudice the legitimate interests of the author
   Berne is author-focused, whereas TRIPS is focused on the rights-holder (more
    utilitarian) – not much has been written about this difference, although it could be
    significant  It Canada, FD is not an exception to moral rights which is more in
    line with Berne -
   *** This section begs the question however, because does the author have a
    legitimate interest in preventing any kind of reproduction?
   US also doesn’t really have specific cases for its exception – Thus, fair use could be
    in violation  This demonstrates the potential for international agreements to limit
    how much we can do domestically.
   Art 10(1) Quotation Exception – it shall be permissible to make quotations for a
    work that has been made available to the public – seems members must allow this
         o Although it must be consistent with Berne practice and the extent of the
             quotation must be justified by the purpose.
   Art. 10(2) Optional exception for teaching.
   Art 10bis (1) Optional exception for articles on political or religious topics
         o source must be indicated
         o (2) Optional exception for purposes of reporting current events
   Another kind of exception relates to compulsory licensing – allows someone to do
    an otherwise unlawful act without seeking authorization from the author
         o But requires appropriate compensation – author just can’t restrain use
         o Art. 11bis(2) – allows countries to determine this for several categories – but
             equitable remuneration is required – thus it will have to be a compulsory
             licensing scheme.
         o Art. 13(1) – also allowed for musical works
   Perhaps most important examples of compulsory license are in appendix
         o Added in 1971 – makes special provisions for developing countries
         o Essentially a compromise – Stockholm never took hold; this does a lot less
             than what that was supposed to accomplish
         o Developing countries are given exceptions for translation and reproduction
             – e.g Page 127, bottom para (5.200) – translations for teaching, research –
             reproduction for instructional activities
         o Bearer of right can’t prevent this, but equitable or just remuneration is still
             required.
         o Limitation: If owner is offering the work in that language, than compulsory
             license must stop – no need for it.
         o Because developing countries may not be lucrative markets, rights-holders
             may not translate works into their languages – this is an attempt to provided
             limited access.
   10 Year Rule P. 124 (5.179) – countries are allowed to make a reservation upon
    entering Berne to limit the duration of rights of translation
         o If author has not caused to be published the work in the relevant language
             from its first publication, then the right to authorize a translation will cease
              Goes into the public domain
                                                                                          23


        o But it is not possible to enter this reservation and to also use the
           appendix’s compulsory licensing scheme – countries must choose between
           them.
   The appendix rules are very specific and technical versus the broad minimum
    standards – indicative of tendency to create broad restrictions and narrow
    exceptions.

TRIPS
 Art. 9(1) – Requires members to comply with Berne and its appendix
      o Don’t have to sign it, just make domestic laws consistent with it.
      o Also: Art 9(1) Nothing actually requires countries to protect moral rights
         as in the Berne Convention – i.e. no rights under 6bis BC
      o Other substantive provisions are respected
 TRIPS also adds some subject matter
      o Computer programs included as literary works in Berne – all provisions and
         minimum standards must also be applied.
              Both source code and object language are included.
      o Compilations of Data also brought under Berne
              Canada would have been required to include these provisions by
                 membership in the WTO
      o Rental rights for cinematographic works/computer programs: art 11
      o Last major addition is Neighbouring Rights – protection of performers,
         produces of phonographs and broadcasters: Art. 14 - to fix performance
      o These rights do not conform to civilian tradition, since these groups are not
         really authors – this is why they was not in Berne
 *** Berne represents civilian tradition, TRIPS is at least more in line with
  common law – although fact that it includes Berne makes this somewhat
  controversial


TWO TRADITIONS COPYRIGHT AND DROIT D’AUTEUR

Paul Goldstein (129) – General Overview
 Survey of regimes: ideological divide as a source of tension in international law
 CR is contrasted with author’s rights or droit d’auteur system – CR is just right
   to prevent copies - Source of conflict lies in different justifications for the CR systems
 CL system is rooted in utilitarian premise while the civilian author’s rights
   system is rooted in the philosophy of natural justice
       o If CR is a CL system, its purpose is to ensure author’s have the incentive to
          create – this should mean that we only protect rights to the extent that it is
          required to create a proper incentive.
 Droit d’auteur system: Rights that author’s have are not being granted for any
   larger social goal (like human rights are not justified by a cost-benefit analysis).
 The perception of this gulf has fuelled animosity at the international negotiating stage
   – whose philosophy of CR should the norms reflect?
                                                                                         24


   Berne Convention has always been regarded as very civilian – moral rights,
    duration tied to author’s life, etc. – Preamble: desire to protect rights of authors..
        o This characterization probably harks back to its inception
   TRIPS Preamble: desire to reduce distortion in international trade; private rights;
    public policy examples, etc.
   *** This juxtaposition is not really an appropriate description of the dynamic
    between civilian and common law traditions – especially in characterization of
    TRIPS as more CL, Berne as more Civilian
   130 - Goldstein suggests Berne was a bridge between the two traditions
        o Far more alike than they are unlike  One reason for convergence is Berne
   140 - Vaver takes issue with this in his piece
        o Minimizes differences between civilian and common law, but agrees the
            convergence has been affected by international agreements
        o However, he suggests this is just a convenient story while in fact the civilian
            tradition is dominant  Civil countries’ intent on ensuring that any
            compromises did not undercut the sacred premises of author’s rights
        o Thinks this has made common law more like civil law – 120 years too late
            to complain about this.
   130, para 3 – Goldstein disagrees that the real divide is philosophical
        o Really thinks the divisions lie along sectoral not national lines – i.e.
            publishers all probably have the same attitude.
        o Similarly, users of CR share interests.
   CR Maximalists – advocates of maximal author’s rights
   CR Minimalists – advocates minimal or balanced rights – i.e. public policy
   *** Sense is that courts are moving towards more minimalist view, whereas
    industry is more maximalist
   Belief that civilian lawyers are more likely to be maximalist, but Goldstein thinks the
    divide is really between producers and users, not civil vs. common law – this focus
    on philosophy misses the point.
   CL is full of theory of natural rights and allusions to natural justice – usually framed
    as right to reap the fruits of one’s labour  No clear utilitarian justification of CL,
    anymore than Civil law.
   CR has been just as expansionist in CL systems w/o any utilitarian justification
   Banal works are just as protected in civil law countries.

David Vaver – The Copyright Mixture in a Mixed Legal System
 Concern of UK is that it is being forced to implement civilian principles
 134 –Commn notion that UK’s CL based CR is being assumed under a mess of
   European notions – this is a bad thing – i.e. these frameworks are incompatible
 Points to Canada as example of why this is not true – peaceful coexistence of both
   traditions
 136 – In principle, no reason exists to prevent a single system from accommodating
   both these traditions without undue strain - Thinks problems due to poor drafting
 *** Main point: there are weaknesses in the law, some of which result from
   international obligations, but the expansionist tendencies cannot be attributed to
                                                                                       25


   civil or common law principles but instead reflects a general tendency to expand
   CR without giving any justification to do so.

Remember:
 Traditions are far more alike than debate suggests
 Important divides are between interest groups and conflicting agendas, not
  nationalities or philosophies.
 Focus should be on whether it is good law (serves purposes), not which side is
  winning the battle.


TERRITORIALITY AND CONFLICTS OF LAW

One Remaining Framing Issue: Private International Law and the Conflict of Laws
when CR Cases Cross Borders - Challenge here is Territoriality:
 Many jurisdictional issues – must think whether there are any rules or norms
  which must apply to which issues – Cases not clear but identify questions/principles
 Potential for extra-territorial application of CR laws
 If you are litigating over CR, you first have to determine if CR exists and who
  owns it. – Question is not only what court should hear the case, but also what law
  should apply (e.g. Canadian court applying German law)
      o Should it be where the rights-holder is domiciled?
 Generally, international treaties do not really help us determine these issues of
  conflict of laws and jurisdiction
 The only helpful provisions are those already looked at – i.e. national treatment
  for nationals and non-nationals – but no specific reference to jurisdiction per se
      o But do arguably address the issue indirectly through national treatment model

Berne Convention:
 Art. 3 and 4 – these tell us whether a work falls within the scope of the convention –
   but do not actually tell us which country’s laws apply
 International model depends upon domestic law of contracting parties – all treaties
   govern through minimum standards
 National treatment standard thus only work country to country – *** could
   potentially lead to choice of law scenarios (since they are not uniform) - This could
   effect ownership, etc.
 Art. 5 – National Treatment provision
       o Lex Fori – “law of the forum” – local law
       o This might seem to control choice of law, but only does so at a very limited
           level – only says foreign authors
       o What law does court use if it is considering infringements that took place
           abroad? Does court use the same laws for all issues or not?
       o Who should benefit from the domestic law? – temptation of domestic court
           may be to ensure the domestic author gets high level of protection abroad – to
           what extent can domestic courts control the behaviour of individuals abroad.
                                                                                       26


Peter Yu Article (145): - Two different views of national treatment:
 1. Melville Nimmer’s view: national treatment is essentially a choice-of-law
   provision – the applicable law is always simply the law of the state in which the
   infringement occurred.
       o Lex Loci Delicti  law of the place where wrong occurred (i.e. infringement)
       o We know we apply national law across the board – no regard for country of
           origin – this makes the domestic situation very simple
       o Problem is that it radically complicates CR on a trans-national level –
           would result in multiple ownership laws – could essentially be separate
           ownership of Canadian CR, American, French, etc.
                 E.g. see s. 13(?) controversial photograph rules.
       o Multiple CRs could prove to be very problematic – this is why Nimmer’s
           view is widely resisted
 2. National treatment is really just a non-discrimination provision – doesn’t
   influence which law should be applied, just that it must be determined in same way
   for nationals and non-nationals alike.
       o E.g. If rule in Canada was that we always apply law of origin, Canadian law
           would apply to domestic works, French law to French works, etc.
 More help from Art. 5(2) of Berne: apart from provisions of Convention, extent of
   protection and amount of redress is governed exclusively by laws of country where
   protection is claimed
 Lex Protectionis  law of protecting country
 Although seemingly helpful, it is somewhat ambiguous – could lead to lex fori or lex
   loci delicti – which law should be applied
 Also just applies to extend of protection and redress.
 Lex Causae  essentially just the conclusion of this question of what law should be
   applied
 Classify issues, then determine which laws should apply to which issues
 Art. 5(2) leaves open this question of lex causae.
 Lex Originis – law of the country of origin
 Many of these are used because courts do not know what the laws are.
 146 – 5(2) tell us that holder of UK CR that sues in Canada is entitled to same
   remedies as holders of Canadian CR and is entitled to the same extent of
   protection (but still does not make clear what exactly that law is).
 Two questions:
       o 1. Territorial reach of domestic laws – e.g. can you ask UK courts to apply
           UK law to infringement in Canada? - Up to the courts
                 But prof. generally disagrees with idea you can just choose which
                   laws to use by choosing where to file claim – unless you have a
                   connection to a 3rd party country, you will probably not be allowed to
                   file an action there
       o 2. What law determines ownership?
 143 – Patry – argument that by recognizing a foreign CR, this seems to support that
   there is a single CR that is subsequently recognized by other countries due to treaty
       o Existence of right are determined by country of origin – but remedies are
           determined by place where infringement occurs
                                                                                       27


        o This would complicate the role of the court – has to familiarize itself with
           foreign laws to determine ownership before it can determine infringement.
   Ownership and infringement are very interrelated – ability of court to separate
    these and deal with each under different laws is complicated itself.
   Conclusion: jurisdictional issues are rarely clear; often dealt with on a case-by-
    case basis (or country-by-country, although there can still be disagreement within a
    court)  In the absence of any clear understanding internationally, courts will rely
    on their own laws

Cases involving extent to which CR can have a extra-territorial reach:

Computer Associates v. Altai (US 2nd Cir., 1997):
 Principle of territoriality is the starting place – fundamental principle of
  international IP: that IP rights are national in nature - This case underscores this
  point, even if the national laws are determined by international standards.
 Facts: P had sued D in 1988 over claim that D had released software largely derived
  from P’s software
 P ultimately lost – court found it was not substantially similar; not an infringing copy
  - This was a bit of a groundbreaking case at the time; based on US concerns: not to
  extend CR to functional works, keeping things in the public domain, etc.
 By no means clear that this case would be decided the same in other jurisdictions
 In 1990, P filed an action in France’s commercial court – charged Altai and Altai’s
  French distributor (Faster) with violating P’s French CR
 D argued that 2nd circuit’s decision was determinative – court disagreed; but did go on
  to find that program was not infringing.
 P appealed; D brought a motion in the US to enjoin that action (prevent them from
  continuing to litigate it in France) – denied by US district court and 2nd circuit (in
  materials); French appeal allowed to proceed.
 Issues:
       o 1. Argued that US action precludes French action on basis of res judicata
       o 2. Claim for it to be estopped
       o 3. Anti-suit injunction should be granted to enjoin the foreign suit
 Decision:
       o 1. Res judicata does not apply here – only where facts of first case were
          present and addressed in first case – here it has not been established that the
          infringing activity in France occurred before US claim had been filed.
                New York court would not have exercised jurisdiction over French
                   importer  Did not and could not have litigated the issues of French
                   court in US court
       o 2. Estoppel – cannot apply because the issues are not identical – different
          legal standards govern infringement in US and France; thus French
          litigation is not barred by US litigation (e.g. idea/expression distinction may
          have different applications)
       o 3. Anti-suit injunction would be inappropriate because of international
          comity (informal rule: nations will extend certain courtesies to other
          nations, in particular by recognizing the legal effect of others’ actions)
                                                                                         28


                  Essentially just a rule of mutual respect.
                  Where two courts have jurisdiction, one should not restrain the
                   proceedings of the other in the name of international comity
                 There are cases where this will be done to protect the jurisdiction of
                   the US court or its decisions.
                 Yahoo Case – attempt to control access to Nazi websites which is
                   illegal in French law but protected by first amendment
                         Court refused to say that the French law would not be
                            recognized(?)
   Altai found this multiple litigation in many jurisdictions to be vexatious – brought on
    eve of merger - 159 – while Altai’s experience may be vexatious, the French action
    will in no way affect the action in the US
        o I.e. Actions can be brought in any jurisdiction in which there is standing
            – possibility of a multiplicity of actions in different jurisdictions

Subafilms (US CA 9th Circuit 1994) (160):
 Issue: Since CR is national in nature, to what extent can national CR apply to
   activities that occur abroad? – i.e. extra-territoriality
 First paragraph: whether a claim for infringement can be brought under US CRA
   when the authorization has occurred within territorial boundaries for acts occurring
   outside
 Decision: No – allegations regarding authorization do not provide the basis for a
   claim in the US – this is arguably an overly strict application of territoriality
 Facts: Beatles and Suba Films co-produced Yellow Submarine – led to separate
   financing and distribution agreements with United Artists, who subsequently released
   it in various markets
 Problem arose because they could not foresee changes in technology – issue was
   whether distribution agreements embraced the videocassette market
 P alleged CR for this – originally won 2 million and an injunction
 Affirmed, but then vacated by the 9th Circuit – overruled lower court decisions
 Authorizing infringement: authorization is itself an exclusive right of the rights holder
 Question with respect to extra-territoriality arose because the primary issue
   involved foreign distribution – but we are dealing with authorization given by D
   for distribution outside of US – argument that this is in itself an infringing act
 Peter Star case (161) – cited throughout case
        o Held that an act of infringement within the US occurs where the legal
            authorization of an international act takes place within the US
        o This authorization creates a cause of action in US – essentially overruled
            by Suba films
 Decision: Court held that (161) in general US CR laws do not have extra-territorial
   effect; infringing actions that take place entirely outside US do not allow actions
   within US Acts authorized by D could not in themselves have been infringement
   under US Act because of this principle of non-extraterritoriality
 What about authorization of foreign distribution? (rationale behind Peter Star)
                                                                                      29


        o Court: notes that you cannot be liable for authorizing an act that could not
            be infringement itself - This is the first premise of the Subafilms ruling -
            162 (3rd para) – This is also true in Canadian CR law.
   Second Premise: relied upon presumption against extraterritorial application of US
    law – 165(?) – longstanding principle of US law… also invoked in Canadian
    context; that is, that domestic law does not apply beyond borders unless explicitly
    stated – congress has the power, but it must be clear when it does so
   UK Act (16) is very explicit that is CRA gives rights to do things within UK
   Result: not violations of US Act since they did not occur in US – consequently, D
    could not be liable for authorizing these actions
        o Court was completely unmoved by arguments that harm was caused in the US
            and that this should be a basis for applying US law
   Court refused to acknowledge that activities of foreign distributors abroad would
    have been infringing if in US, nor that they would have been infringing under almost
    any country’s laws. – this did not matter since they were not actionable under US law
   *** Thus the case is a very strong (and perhaps overly) application of principle
    of territoriality
   Many people argue that court should impose liability on people who authorize others
    to make infringing copies
   Curv case: better view would be that domestic authorization violation should occur
    whenever action occurs that would have been infringement if in US
        o Doesn’t follow Suba, but these comments are made in obiter
   Others argue whole question of extraterritoriality should not have been addressed –
    important fact that it was a US citizen, and that there would not have been a
    conflict of laws –i.e. maybe we should water down this principle
   Most of the criticism has focused on potential damage it does to US CR holders –
    affects incentive scheme, since people can improperly authorize foreign distribution
    with impunity
   Argument that Subafilms ignores the economic reality in a global marketplace -
    A phone call to Alaska could be infringement; a call to France could lead to riches.
   Suba leaves open the possibility of suing each individual infringer in country of
    infringement – however, this is quite onerous
        o This issue has not been litigated much in other jurisdictions
   Summa is still an authority, but its applicability has been disputed by some
   Unlawful authorization is not a defence to actual infringement

Review of Subafilms (9th Circuit):
 Yellow Submarine case – 9th circuit refused to attach liability to authorization within
   US for foreign infringement
 *** Overzealous application of presumption against extraterritoriality – flipside
   of fact that CR is domestic-based
 Presumption against extraterritoriality also exists in Canada, as well as idea that
   for authorization to be infringement the act itself must also be infringing 
   Canadian court could reach same result; although subsequent controversy could
   make the opposite result.
                                                                                      30


   Muzak  Canadian court accepted that statement of claim could be served to
    someone in US for authorizing infringing act that occurred in Canada.
   Prof’s idea of what court might do in Canada:
        o An authorization in US for infringement in Canada will be actionable in
            Canada under Canadian law - It will not be actionable in US under US law
        o An authorization in Canada of an infringement that occurs in the US will
            likely be actionable in the US under US law  since ultimate infringement
            occurs in US
        o Authorization by a Canadian of a US infringement would not be
            actionable in Canada under Canadian law (this is the Subafilms result) –
            since infringement is not within the territorial scope of Canada, the
            authorization of it is also not within it.
        o An authorization can only be actionable in the same jurisdiction where
            the infringement occurs, and under that law  according to
            Subafilms/territoriality
        o But authorization may be actionable in foreign jurisdiction – see Muzak
   Little lasting support for Subafilms; although it is still the law  courts are
    currently split on whether this is the appropriate approach to take.
   Canadian courts will probably look at what approach serves purposes of Canadian
    law and international regime.
   Looks like US courts have made some attempt to limit the application of Subafilms –
    LA News is an example of this.

LA News Service (LANS) v. Reuters (9th Circuit, 1998):
 Facts: 2 works filmed during LA riots – LANS licensed broadcasting rights to NBC
   but retained ownership
 When NBC broadcast it, they were transmitted to BIZ new (associated with Reuters)
    made a video copy and transmitted them to Europe and Africa.
 LANS sued Reuters and Biz news for CR infringement in the US
 Based upon Subafilms, district court barred P’s claims for extraterritorial broadcast
    not within jurisdiction; this would be the application of US law extraterritorially
   (just focused on domestic act – i.e. awarded $60,000 for copying of videotapes)
 P appealed ruling w.r.t. extraterritorial damages – CA reverses the decision
 170 , para 4 – Subafilms distinguished – here Biz news did complete infringing
   acts within the US – the issue in LA News was not decided in Subafilms:
       o “whether P may recover damages for international distribution of works,
           based on theory that an act of direct infringement took place in the US”
 171 – the overseas transmissions were made possible by the infringing acts that
   occurred in NY – therefore the Subafilms court’s concerns are inapplicable here.
 Basically court is saying this is not an extraterritorial problem since there was
   an infringing act in the US – only question is whether they are allowed damages
   from overseas infringing uses.
 Issue: are these damages allowed because of a “predicate” infringing act within
   the US? (171)
                                                                                          31


   Decision 2nd last para – party becomes liable for extraterritorial damages only when
    an act occurs within the US - This decision limits the clout of Subafilms – it is now
    hinging on fact that there was not a completed infringing act on US soil.
   Since there was domestic infringement, court thought it was not fair to prevent
    recovery for damages where exploitation of infringement occurred outside US
        o **Now, as long as they can prove infringement occurred in the US, they can
           recover damages in a US-based suit, even when damages occurred abroad.
   In Subafilms, it didn’t matter that act would have been infringing under foreign law.
   Presumption against extraterritoriality is motivated by international comity and
    general practices, but most recognize power of countries to pass such laws.

SOCAN (SCC 2004): 187 - Deals with extent CR applies beyond Canada’s borders
 Facts: P (music industry) demanded that ISPs pay a royalty to cover unauthorized
  copying of musical works by their subscribers.
 Part of long-running saga of who should compensate music industry for downloading
  music from foreign countries via the internet. - SOCAN trying to collect money to
  redistribute amongst their members  similar to a licensing arrangement
 In 1995, SOCAN suggested that a tariff be applied to telecommunications.
 Communicating via telecomuncation is a specific right of right-holder
 Copyright Board – ISPs could not be held liable for their role in communication
  of CR works since they are merely a conduit for the material.
      o Subject to judicial review  Fed. CA and SCC agreed on this point (only
          provided the means of the communication, not the content).
 Issue: how could this tariff (if it existed) be made to apply territorially and not
  extraterritorially?
 Idea of territoriality is not really applicable in internet age – courts are forced to work
  out where, for the purposes of the law, a communication can be said to occur.
 To localize means to identify the locale of the act – issue is whether it should be
  where it originates, where it is received, or somewhere in between.
      o Thus, this whole issue of extraterritoriality is only half the battle – still
          have to localize cross border activities before we can claim to apply
 Internet presents a particular challenge to internet laws that are extraterritorial in
  nature  Berne convention and TRIPS don’t include rules to determine where
  infringement has occurred (usually this is not a problem).
 Problem with internet is that we can’t say where an act occurs, etc. - People can
  upload content available everywhere – host server could be located anywhere.
 Decision: All 9 justices agreed ISPs are not liable
 But controversial aspect concerns localization issue (majority and dissent):
 Majority: If the ISPs were not exempt, then they could be liable for unauthorized
  copying even from servers outside of Canada, if copied by individual within Canada
 Paras 56-57 - Presumption against territoriality – and this is not rebutted in the CRA
 National treatment principle
 How do we define territoriality when talking about internet communications?
      o **TEST: It occurs in Canada if there is a “real or substantial connection”
                                                                                      32


   Para 60 – from the outset, the real and substantial connection test has been a way to
    prevent overreaching and to restrict jurisdiction over extraterritorial transactions.
   This might extend to transmissions received in Canada or originating in Canada
        o Going to depend on individual facts of the case.
   194 Para 61 – Connecting Factors:
        o Uploader in Canada? Host server is in Canada? Intermediaries? End-user?
   However, just because it is received in Canada does not mean it will be a real and
    substantial connection  will depend on the facts of the case.
   By localizing the communication at home under these broad rules, it avoids these
    extraterritoriality problems – not extraterritorial since it will be considered to be
    occurring in Canada.
        o But if communication can include any step of the process, then Canadian
           law can reach any communication that is sent to or received in a foreign
           jurisdiction – expands the scope of Canadian CR
   One potential problem is duplicative liability:could be liable in Canada and in US
   Court: solution lies in negotiating bilateral treaties with other countries.
   Two major criticisms against this aspect of the ruling:
        o 1. It does represent extraterritorial leanings – relies on a legal fiction
                Court’s willingness to apply Canadian law to foreign jurisdictions
                    seems quite extraterritorial.
        o 2. The test is essentially unworkable – doesn’t create any certainty as to when
           Canadian law will be applied to cross-border communication.
   *** Lebel’s Dissent:
        o Would not apply Canadian law to servers outside of Canada unless there is
           an indication by parliament to do so – thinks this is extraterritorial
                201, para 152 – the real and substantial connection test is
                    incompatible with territoriality principle because it may apply to
                    those outside Canada just because end-user is in Canada.
        o Instead, Lebel agrees with CR Board – communication on the internet
           should be considered to have occurred in Canada only if the host server is in
           Canada – although seemingly arbitrary, this is the only practical approach
   Potential consequences:
        o Court’s may just apply test to infringing acts within Canada,
        o Or it could be found that it applies to an action within Canada that has a
           real and substantial connection to an infringing act outside of Canada.
                I.e. the opposite of Subafilms: authorization of foreign infringement
                    could be brought under Canadian law (as well as the act itself) ***
                What if just the harm occurs within Canada?
   The more a country is willing to overreach its jurisdiction, the more potential for
    duplicative liability.


Next two cases deal with choice of law issue

I-TAR TASS v. Russian Kurier (US CA 2nd Circuit) (173)
 Facts: D reproduced 500 articles written by Russian journalists in foreign publication
                                                                                     33


   P brought action in US – P is a group of Russian publishers, news service, etc.
   Problem: differences in US and Russian law are hugely significant to outcome
   Work for hire doctrine – In US, employers qualify as authors of works produced by
    employees – thus, publishers have standing to sue for works produced by employees
   In Russian law, this doctrine does not apply to newspapers  most of the Ps would
    not have standing to sue  Thus, newspapers must begin by showing they have CR
   Issue: which law should apply regarding ownership of CR?
   District court used Russian law for both ownership and infringement
   174 – under the Berne convention, holders of the CR are eligible for same protection
    (i.e. national treatment) – thus we look to the law of Russia
         o Not very well equipped to apply Russian law.
   Distict Court Decision: court granted very broad standing, and very broad remedies
    – found infringement far beyond what the US law would have found
   D appealed  said P did not have CR, therefore no standing to sue in US
   CA Decision: had to decide which law to apply to both ownership and infringement
   178 - Nimmer’s argument discussed and rejected by the court – found he overstates
    the significance of national treatment.
   When it comes to rights it makes sense to apply the law of the country
   Thinks we should be dividing up issues and applying the appropriate law
   178 Adopts other amicus brief – the convention’s principle of national treatment
    doesn’t tell us what law to apply; just a principle of non-discrimination.
   179, para 2 – Court looks to private international law (law of conflicts) – going to
    develop federal common law on this issue
         o *** Problem is that there are different conflict rules for different issues
         o Classification of issues, then lex causae of each (applicable law)
         o For ownership, it finds Russian law applies
   *** 179 Conflict Rule for Identifying Ownership: identifying the state with the
    most significant relationship to the parties and the work
         o Since the works were created in Russia by Russian authors, Russian law is the
             appropriate law to apply for ownership - Note, however, this will not
             necessarily mean country of origin as in art. 5(4) of Berne.
   *** Conflict Rule for Determining Infringement: Place of the wrong (i.e. where
    infringement occurs) is the law that applies. - Thus, US law is used here.
   Following this decision, it seems clear that there is only one law for which CR
    ownership needs to be attained, and then that right attaches to work across borders.
         o This rule is favoured by efficiency, makes cross-border work much simpler.
   But one problem is that is it makes choice of law a judicial fact-based inquiry –
    maybe something more concrete would be better  would lend more predictability.
         o Nimmer’s approach would be simpler for domestic courts
   This decision has been debated – some say it creates unnecessary choice of law
    dilemmas, but it also makes things easier
   Does not violate national treatment, or coherence of International CR regime
   No guidance on choice of law issues in International regime.
   Also contract issues  how do we determine if CR has been transferred?
                                                                                      34


   Left with messy proposition that we should break down cases into issues and
    apply different laws accordingly

Review from Last Class: Extra-territorial reach (or lack thereof) of IP law
 Itar-Tass: choice of law questions – which law should be applied to which issue?
 Following this decision, it appears that there is only one law that will apply to
   determine ownership  the law of the country that has the closest connection to
   the property and the parties.
 In Itar-Tass, this meant you apply the law of the country of origin – but this will
   not necessarily always be the case; but generally a good default rule unless there is
   another good alternative.
 Only one CR that vests in work, like nationality: follows citizen around world

How many issues do we need to deal with, and how to we break them down to
determine which law should apply?

Bridgeman Art Library v. Corel Corp (US 1999)(183):
 Facts: P (UK) suing for CR infringement of photographic transparencies in NY
 P argues UK law should apply to determine whether they are CR eligible
 Issue: Which law should apply?
 Decision: Works are not original enough to qualify as works under UK law
 Here Itar-Tass is expanded – i.e. national treatment does not require the
   application of US law to all issues
 The law of the country of origin can be applied to determine copyrightability.
 However, this doesn’t really matter since the works would not have CR under US law
   either – although easier under UK law.
 Court didn’t really discuss conflict of laws issue much, just accepted that UK law
   should be applied – much negative response – Patry wrote to judge noting that CR
   law in US has a constitutional foundation; should limit ability of court to apply a
   foreign country’s more limited approach
 Here we are not really dealing with original decision – court agreed to reconsider
 We are reading the subsequent reconsideration of Judge Kaplan – decided that
   copyrightability of work should be determined by applying US law, and that the
   only source of this was the US Act, not international sources.
       o However, this was false conflict since it was also not CRble under US law.
 Prof suspects a Canadian court will probably take the same approach – should
   only protect work to the extent that it would be protected here (i.e. Canadian law)
       o Although, foreign law might still be used
 Understanding of US court seems to be that US law will be used to determine if
   CR exists (originality, etc), whereas country of closest connection will be used to
   determine ownership.
       o Appears to be supported by s. 5(2) – ownership only real exception to this
           general approach – does very little to harmonize laws of participating states
 This case is really about whether CR exists, not ownership
                                                                                      35


Summary of Territoriality/Conflicts:
 National treatment would generally seem to imply, although not actually require,
  that the courts of each country are expected to be applying domestic law equally to
  all.  *** Applies to all issues if simple – but see below
 S. 5(2) (Berne) Infringement and remedies are to be determined w.r.t. law of the
  protecting country  Because damages are usually sought in country where
  infringement occurs, the general rule will be that the law of the forum applies
 However, there are complications:
 If damages are sought in a country other than where infringement occurs, the
  principle of territoriality generally applies  legal protection can only be claimed
  where infringement occurred within that country.
 However, it may be held to have occurred within Canada if there is a “real and
  substantial connection” to Canada – this may extend the territoriality principle
 In LA News, we saw that damages were awarded where there was a predicate
  domestic activity
 In UK, it can apply if it would have been infringement in UK – see criticism of
  Subafilms
 Sometimes, some domestic courts will exercise jurisdiction over infringements
  that were somewhat foreign  Despite domestic law generally applying, there may
  be some issues that are better dealt with under foreign law
       o Courts have and probably generally will refer more to international conflict of
          laws for issues that are before the court.
       o General rule: lex loci delicti – law of the country in which infringement
          takes place will apply. - This will at least be true for issues of infringement
          and appropriate remedies.
       o W.r.t. ownership issues, it appears that lex originus (law of country of
          origin) will apply; or at least country with closest connection
       o Subject matter and Copyrightability issues will probably be determined by
          the law of the forum – if not, it will probably be the law of the country where
          the infringement occurred.
 Sense that the efficient adjudication of IP laws internationally would be a good
  goal to aspire to, but right now we do not have a great deal of certainty or
  harmonization in this area – not much on the horizon.
 In 1991, there was a WIPO draft initiative, but it did not get off the ground
 *** Just know cases and principles  don’t need magical answers to these
  questions, since they don’t exist


THE CONCEPT OF ORIGINALITY IN INTERNATIONAL COPYRIGHT
 Many different approaches – tends to reflect attitudes towards CR as a whole
 Some indication that harmonization is beginning to occur.
 Originality in a work is the cornerstone of CR – defines subject matter, reflects
  relationship of author to word, and defines extent of protection
      o “Intellectual creation” is also sometimes discussed.
 Problem that the definition differs depending on the differing legal standards and how
  they are applied in different jurisdictions
                                                                                      36


   209 – different approaches can generally, but not always, reflect approaches to CR
    (i.e. common-law vs. droit d’auteur).

Sweat of the Brow – minimal labour will be enough to attract CR protection in the
absence of copying.
 Gervais refers to this as the University of London Press standard: a work must not
   be copied from another work; it should originate with the author
 Cornish 211: 1. less subjective, and 2 allows for protection of basic labour/capital
 Most of differences in originality only arise in marginal cases: data compilations, etc
       o SOTB standard provides a way to protect routine compilations that we would
           not really considered literary works – prevents free-riding on others labour
 SOTB is generally associated with common-law countries  reflects a more
   utilitarian understanding of function of CR
 Most generally associated with UK, exceptions include: US, and arguably Canada
 Australia has recently committed itself to the SOTB standard (Telstra): allowed
   CR to extend to routine compilation of subscriber info (only labour, time, & effort)
 219 – U of L Standard: really there to deal with notions of equity; developed in
   absence of well-developed tort of misappropriation (which was used in News case)
       o Courts sense of justice caused them to use CR for this goal
       o But this may have devalued CR
 211 Cornish says it is the “debased” common-law test
 Notion that standard fails to acknowledge what it means to be an author – substitutes
   notions of labour for creativity
 Standard in UK is now the Skill and Labour Standard
       o Not copied, and some degree of skill and labour
       o Versus Australia’s Telstra: just not copied.

Bridgeman (again) - 225 shows how US applied UK originality standard, which is
supposed to be much lower
 Facts: Photographic transparencies are a reproduction of paintings – copying them
   exactly involves some degree of skill and labour
 P thought it would be to their advantage to use UK law
 227, 3rd para: to be an original, it need not be novel, but must originate with author
   – simple changes to work would be original contribution that could be protected.
       o Derivative works can be protected (e.g. translations)
 Issue: P’s Argument that this is a separate work – includes addition of colour strip
 Court: it doesn’t matter, colour strip was not copied Skill, labour or judgement
   in the copying of a work does not confer CR protection
 There is no originality here – it was just a copy as accurate as technology would allow
 Because the underlying works were in the public domain, there was no one that
   could control the downstream uses.
 Do we need something more than not copied? - This is where differences emerge
 Bridgeman reconsideration (not in CB?) – a slavish copy of a painting would lack
   originality – SOTB alone is not the creative spark that is required for originality.
                                                                                     37


   On this case, there is agreement across the CR spectrum that such works are not
    original

More countries are turning originality (even in common-law countries):
 US: Feist Publications v. Rural Telephone (US SC) - Gervais“Feist goes global”
      o Feist standard: originality requires a modicum of creativity in addition to
         not copied Faced with the question of protecting a telephone directory, US
         court refused to protect it since it was a routine compilation of data and
         “devoid of the merest spark of creativity”
      o This removes SOTB or “industrious collection” from protection
      o This standard is given the level of a constitutional requirement in Feist
              In order to promote constitutional goal, information/facts must be free
                 for the taking – only the results of original authorship and creativity
                 should be capable of protection.
 Canada
      o Following Feist, it was unclear which direction Canada would go
      o Now it looks like we have something more than a SOTB standard.
      o Tele-Direct (FCA 1997)
              Endorsed Feist
      o CCH v. Law Society
              Facts: Concerned legal materials
              TJ - used a creativity standard as in Tele-Direct
              FCA – 5 years after its own decision, it overruled it in favour of just
                 “not copied”
              SCC – requires it to be not copied and that it involve skill and
                 judgement in its production
                      Skill: use of one’s knowledge or ability
                      Judgement: use of discernment or evaluation in deciding on
                         possible options
              Gervais article (written before this decision) – thinks that CCH
                 captures the notion of “creative choice”, although it refuses to
                 explicitly endorse creativity - I.e. above SOTB and below Creativity
 Civil Law Countries
      o Expects its authors to really be authors, not just labourers
      o The higher standard of creativity reflects the different conceptual approach to
         creativity in general
      o It is the intellectual creativity that will reflect the author’s personality.
 France
      o 215 – Gervais – French law (1992) protects “all works of the mind”
      o Traditionally this was interpreted to refer to imprint of personality
      o Focus is on whether there has been creative choices – not dissimilar to Feist
      o It becomes harder to apply this standard when talking about more
         mundane works (which are required by international agreements)
      o Under French standard, it is clear however that labour alone is not enough
      o Gervais explains the evolution of French law required by these commitments
         has caused them to focus more on creative choices.
                                                                                      38


   Germany
        o Schreicher 231: evolution of German standard in face of int’l obligations
        o Historically, Germany was considered to have one of the highest standards
           in the world – as harmonization has occurred, this capacity for Germany to
           differentiate itself has changed.
        o Germany has a monistic view of CR – economic rights of authors are
           completely intertwined with moral rights
                 This radically sets it apart from a common-law approach to CR
        o Thus, author is always the first owner – no exceptions for work-for-hire,
           etc. – rights cannot be alienated/assigned; only licenses can be granted.
        o Looking for “personal intellectual creation” to get protection – interpreted
           as a level of artistic creativity – different results for different works
                 For computer programs, it had to be better than average
        o But in the context of EU directives, gradually they’ve had to integrate the
           common intellectual standard.
   It seems inevitable that these different originality standards will result in
    conflicts internationally – wide spectrum for originality: SOTB at low end, and
    imprinting of author’s personality at high level
   Consider which direction harmonization is taking us and to what extent

Originality Standard Review:
 Defining characteristic of domestic and international schemes
 Not explicitly mentioned or defined in international conventions  Problem is that
   there are different definitions around the world, and also applied in different ways.
 Main divide that separates the originality doctrines are really a divide between
   civil and common law copyright – originality creates tension at the international
   level because it is reflective of these larger divisions.

Extent to which International System Requires Harmonization:

Gervais – 219 – The Compatibility of Skill and Labour with Berne and TRIPS
 Thesis: This minimalist U of L Press approach to originality is not compatible
 WIPO committee has defined work as an “intellectual creation” – suggests
   originality is key to this definition. – also at 215 last 2 paragraphs
       o Use of terms literary and artistic works, author  all suggest we are dealing
          with intellectual creativity (inherent in these concepts)
 “Original” appears in several places (although not required or defined)
 Berne - 14bis – Cinematic works shall be protected as an original work
       o It is clear from background that it is inextricably linked to creativity.
       o History of cinematographic works show that it was covered by CR because
          there was creative choice in how they were made.
 Gervais argues this should be incorporated into TRIPS because of its incorporation
   in Berne – i.e. we uses preparatory work to understand Berne, which is in TRIPS
 223– leads to conclusion that originality, as used in the convention, is closely
   linked to author’s creativity – Prof thinks that “necessarily” is a bit strong, but
   underlying idea is correct.
                                                                                         39


   It could be that the standard was intentionally left undefined to allow common law
    countries to participate, but this was probably the understanding amongst most states.
   TRIPS Art. 10 Computer Programs and Compilations of Data: (2) where the
    selection or arrangement means they constitute an intellectual creation they shall be
    protected as such - Suggests creativity standard may be inherent in int’l scheme.
   Tele-Direct – first Canadian case that follows Feist at Fed. CA
        o Follows Art. 1705 of NAFTA (but same language as TRIPS)
        o Court (para 15) – intellectual creations means compilations are to be
            measured by standards of creativity.
        o Notes that Canadian government, in signing the agreement, must have desired
            court to use creativity standard as opposed to labour - Interesting in that they
            looked to an international agreement despite lack of a language in CRA
   CCH
        o This position was stated without any disapproval – i.e. notion of
            intellectual creation is implicit in Berne - Also notes that UK, with its low
            standard of originality, has departed from spirit, if not the wording, of Berne.
   Thus, jurisprudence seems to show that presence of creativity in the originality
    standard of international agreements should affect our interpretation.
   223 (bottom) – Possible Conclusions:
        o 1. Skill/Labour is incompatible with Berne and TRIPS, or
        o 2. Skill/Labour Lowers standard of originality – more things will be
            included under CR Thus, using Skill and Labour may be a higher
            standard than required by TRIPS, but there is nothing that prevents
            countries from providing greater protection
   Telstra – Australian case that reaffirmed SOTB standard
        o Para 326 - Argument that Feist and Tele-Direct were consistent with
            international conventions, so Australia should follow suit.
        o Para 400 – but conventions only give minimum requirements. – i.e. #2
        o Gervais thinks Telstra is hard to reconcile with Berne notion of originality.
   BUT in reality skill and labour just protects different kinds of works – potentially
    locks ups factual works – result is that we may need to create greater exceptions
        o Thinks better view is to accept originality as based on intellectual creations is
            an international norm – using any other standard is a violation of TRIPs – 224
   *** Prof: thinks Telstra court is more likely right – re: traditional understanding
    of conventions  If countries are not allowed to contradict this, it would pose
    problems for other areas of common law CR
   There may be some doubts about this so-called international creativity standard; his
    earlier piece showed how countries may be going toward similar standard.
   Current trend is expansionist – two possible alternatives:
        o 1. Include everything without discrimination.
        o 2. If we freeze CR as it is, we will just look for sui generis rights to deal with
            same demands
   Difficulty with this is that if you move beyond CR, you move outside the
    international CR scheme which do not have international standards (e.g. national
    treatment, etc.) – lead to agreements based on unilateralism or reciprocity instead.
                                                                                        40


   Movement beyond well-established rules of CR often just results in cherry-picking
    the broadest rights and narrowest exceptions – doesn’t have same balance.


ORIGINALTY AND DATABASE PROTECTION
 Good example - If CR refuses to give protection, something else is expected to
  step in instead with potentially dramatic consequences.
 Digital technology makes it easier to create databases in the first place, and also
  dramatically accelerated the use of that data
      o Classic problem: time and money required to make them, easy to reap
          benefits – argument that we need an economic incentive.
 Civil law standards do not give protection to the data/facts – only the creative
  aspects of the compilations are protected  Since time and effort does not
  necessarily result in creativity, consequently no CR
 *** Argument is that if you raise the originality standard, you orphan a lot of
  works that are in the public interest to be created – i.e. routine/mechanical
  compilations that are worthy of some sort of protections
 Telephone directory standard: If you are using SOTB, then the industrious
  collection of info might be enough to create CR – might be infringement for someone
  to copy some - Versus Feist (US) – no originality here

International Agreements that have tried to fill this gap
 1990’s – EU tried to address these concerns by adopting the Database Directive.
 Paul David 262-3 – Surveys had demonstrated that database industry in Europe was
   lagging behind US – perceived this as due to a lack of advantage
       o One quarter of online databases were European, US had over 50%
       o Directive was aimed at correcting this – i.e. “levelling the playing field”
       o One problem was that Spain supplied many of the databases despite no
          protection at all.
       o David – a lack of inquiry into whether protection was actually needed
               Notes that US industry did not rely on any IP laws to protect the
                   industry, since post-Feist (1991) there were no protections.
       o Better rationale: to give EU an advantage so it could get a foothold in industry
 First draft produced in 1992 – year after Feist – only protected against commercial
   uses – also allowed for some compulsory licenses if other source was not available.
 Over the past 5 years, it was given a much stronger level of protection

EU Database Directive – Four Key Elements:
 1. Set of recitals that provide justifications for the directive (60 of them)
      o 1. DB not presently sufficiently protected, and not consistent.
      o 7. the making of DB require an investment of human/technical resources but
          can be accessed for a fraction of the cost
      o 8. Unauthorized extraction/re-utilization of a DB can have serious economic
          and technical consequences
 2. Chapter 1 – Scope of Directive – definition of database itself
                                                                                          41


        o This Directive concerns the legal protection of databases in any form –
             seems to give some sort of fixation requirement, but really there are no other
             requirements – i.e. purpose does not matter.
        o A collection of independent works, data or other materials arranged in a
             systemic or methodical way and individually accessible by electronic or
             other means.  Very broad in its scope – e.g. legal compilations could be
             included, biographies, libraries, etc.
   3. Chapter 2 – CR that exists in databases
        o DB by reason of selection/arrangement of their contents constitute the
             author’s own intellectual creation shall be protected as such by CR – No
             other criteria shall be applied to determine their eligibility for protection
        o UK – databases 3A – only original if and only if it constitutes intellectual
             creation by reason of selection and arrangement. – results in less CR
             protection than would otherwise be available under the originality standard –
             rationale is that gap that is left is covered by sui generis rights.
                  Given same rights as CR works
   4. Chapter 3 - Sui Rights that will attach to databases – art. 7
        o DB creates an extensive right that attaches to the DB itself that is based on
             the level of investment  Actually uses the term “maker” when it is talking
             about sui generis rights, and “author” for CR
        o Investment must be substantial in either obtaining, verifying, or presenting
             contents and determined on a quantitative or qualitative way
   Initial draft said you only have sui generis rights if you don’t have CR, but this was
    eliminated  Some have said CR gives a thin level of protection for overall
    aspects, whereas SG applies to data itself.
        o Thus, distinction drawn between selection/arrangement which shows
             originality for CR, and investment in obtaining/verifying/presenting data
   Person that has SG right can prevent extraction of materials or re-utilization
        o Extraction seems to be a reproduction right like in CR
        o Re-utilization right seems to be a “making available” right
        o You can still extract or re-utilize insubstantial amounts of the DB, but not if
             the repeated and systemic extraction/re-utilization will unreasonably prejudice
             the legitimate interests of the maker –
   Art. 9 – Exceptions:
        o (a) extraction for private purpose of the contents of non-electronic databases.
        o (b) extraction for the purposes of illustration for teaching or scientific research
             – seems quite narrow, but we don’t know how narrow yet.
        o (c) for purposes of public security or and administrative/judicial procedure
   Here we have the cherry-picking notion – quite broad coverage, narrow exceptions
   However, term of protection can only be exercised for 15 years – problem is that
    it doesn’t begin to run until making available of the DB
        o And, any substantial change to the contents of the DB, if they reflect a
             substantial new investment, will qualify the DB for a new term of
             protection  essentially unlimited term of protection ***

Paul David – 265-266 – Tragedy of the Public Knowledge Commons?
                                                                                       42


   DB Directive departs from long established properties of IP law.
        o CR always distinguished between ideas/expressions: see art. 9(2) TRIPS
        o Also departs from fundamental distinction of original/unoriginal expression
        o In CR, if you were to add content to a work, the only thing that would be
            protected would be the addition.
   Could argue that this doesn’t matter since this is not CR – but he also notes that
    there is nothing that actually creates an incentive for the creation of new data,
    just compilations of data  may just be locking up information that is already
    available to the public. Opens door to renewable monopolies of non-scientific data.
   Results or consequences: the cost of obtaining this data will rise
        o Those who consume/require data will end up paying more – will create a
            squeeze on resources for public research – this is where public funds will go.
   267 (3rd para) – this is tantamount to the rejection of long-held features of IP law
   *** Facts and ideas constitute the basis for research – there is no sound reason
    for removing them from the public domain.

Review of EU Directive on Legal Protection of Databases
 Focus on concern of investment as opposed to copyrightability
 Maker of DB has exclusive right to prevent others from extracting/using a substantial
   part of the DB (or repeated/systemic use of insubstantial part)
 Whole directive was an attempt by EU to first of all harmonize the protection of
   these works, and to create an advantage for the EU DB industry
 Arguments against this: Seems to undermine traditional norms – protects things
   that are unprotectable under idea/expression dichotomy; public policy implications

Evaluation of Database Directive:
 1.4 - The economic impact of the sui generis right on DB production is unproven
      o Next paragraph speculates as to whether there is any need for protection
      o Industry actors are very much in favour of the directive
 Don’t want to reopen debate over originality standard; best to just leave things be
 1. In addition the ECJ in Nov. 2004 significantly curtailed the scope of sui generis
   protection, thereby pre-empting the concerns that the right negatively affects
   competition.

Important ECJ Cases interpreting the EU Directive:

British Horse Racing Board v. William Hill (E.C.J Nov. 2004) (241)
 Facts: DB contains names or horses, trainer, jockeys, races that will take place, etc.
 William Hill (D) is an off-course bookmaking operation – has online betting service –
    used information obtained indirectly (it seems) from P’s DB
 In the UK at first instance, Justice Laddie said it was protected by the DB directive,
    and D’s use was an infringement of that right.
 CA – broadly supportive of P’s claim, but deferred a few questions to ECJ to aid in
    interpretation of DB right
 ECJ – surprisingly was very much in favour of user of information (i.e. D).
                                                                                           43


   *** Key part of judgement: ruling that substantial investment which is crucial to
    establishing the rights that exist in the DB must be in the obtaining and
    presentation of the DB  But distinction between DB as such, and the creation of
    the information/data
        o 246 Expression in investment, etc. must be investment in (e.g.) verifying DB
        o Only concerned with the storing of investment and not storing of data itself
   Application  resources that were deployed by P in selecting horses that would
    run each race etc. were all investment in creation of DB and not in the data itself
        o Investment was not independent, and therefore was not of the right sort
        o No account could be made of investment in the horse racing itself
   Aim of directive is not to encourage people to create information, just to create
    DB – thus, not to create horse racing leagues.

Fixtures Marketing v. Spenska Spel (ECJ Nov. 2004) (236):
 Facts: P handles football fixtures for premier leagues, etc.
 Objected to D’s use of data in its betting pools
 It is finding and collecting the data that is the substantial source of the investment
   that is relevant for the DB directive – but doing this was not something that took
   any substantial effort on behalf of the league
       o It was indivisibly linked to their responsibility to run league – i.e. had to do it.
 Decision: No independent substantial investment in putting this in DB that was
   above and beyond creating the data itself – therefore no infringement
 240, para 37 – In order to acquire rights in the DB there must be substantial
   investment in the creation of the DB apart from the investment in creating the
   information - This could have significant implications for scientific fields

ECJ DB Cases:
 This significantly limits the protection of the DB – prof was very pleased
 But doesn’t think this is what they intended
 Similar to CR distinction in Ladbroke
 Often in these cases, the DB is the only source of the information, which does seem
  to give a monopoly over the information.

One of the most controversial parts of the DB Directive is Article 11
 Art. 11: Right is extended only to rights-holders or nationals of a EU country.
       o Some additional provisions made for companies with principle place of
          business or even if registered in EU if they have genuine link to economy
       o 259 – at a minimum, US proprietors will want to establish a subsidiary in an
          EU country to own the rights in the database for EU countries
       o Designed to ensure that benefits stay within EU
 Art. 11(3) – makes provisions for extension to other countries – designed to elicit
  reciprocal protection  In response, there is pressure on all other jurisdictions to
  provide reciprocal protections so that they can benefit from the SG rights in the EU.
 In the US, there has been several bills introduced.
       o Met with opposition from unversities, etc.
                                                                                         44


       o Second proposal was supposed to be much more moderate – essentially an
            unfair competition rule that limited itself to situations where the user was a
            competitor using the info in a commercial setting – this also failed
   Paul David article (269) – Advice to other countries: just say “no”
       o DB directive is a mistake, undermines CR traditions
       o No obligation for other countries to establish rights over such subject matter.
       o Also shows growth of DB industry in US – says any other country would
            make a mistake to follow EU – EU evaluation also seems to support this.
   *** This controversy suggests that one reason behind this drive to “harmonize
    up” is the principle of reciprocity – will give right to ourselves, but only share it
    with you for reciprocal protections.


RECIPROCITY (as an exception to National Treatment)
 299 National treatment = central principle in CR, Reciprocity = the exception
 NT was incorporated into Berne before IP was part of a trade system (which tend to
  rely on reciprocity) – idea: to give harmonization a chance over longer period of time
  against backdrop of isolation, etc.  Over time, NT has led to gradual expansion of
  the system in terms of geographic scope and in terms of the rights it protects.
 Some Exceptions to NT in Berne:
      o 1. Droit de suite – resale royalty
      o 2. Term of protection
 *** 299, Last para: Rationale behind these exceptions to NT – cases where a
  higher level of protection could not be agreed upon.
      o Large number of countries agree something is desirable, but no way to agree
          and make it part of NT program
      o E.g. resale right: lots of civil law countries recognize this; longer term of CR
 *** Reasons for this are quite clear: when countries grant rights that are
  substantially greater than rights protected in other countries, you can be put in a
  substantial disadvantage if you have to use NT
      o Countries with lower level of protection could gain benefit without extending
          this to other countries
 Reciprocity solves this problem – nobody is at an inherent disadvantage
 Can take two forms:
      o Substantial Reciprocity - Just don’t recognize right – their citizens will not
          benefit in countries that do – e.g. you don’t protect our moral rights, so we
          won’t protect yours.
      o Partial Reciprocity – you only get the protection you offer our citizens – e.g.
          moral rights may only be protected for the extent of CR, since that’s all other
          country protects.
               Tailor level of protection to what is available in country of origin
 Idea that extent of protection will gradually be agreed upon until they can be
  assumed into a wider multilateral agreement with NT
 *** 300 middle para: reciprocity can therefore be seen as an intermediate stage,
  where general agreement on increased level of protection cannot be obtained.
      o But it can also be leverage to gain higher level – e.g. a stepping stone to NT
                                                                                       45



Droit de Suite - Resale Royalty Right – example where reciprocity governs
 Berne Art. 14ter – allows for domestic legislation to included droit de suite
 304 – DS entitles author to demand a percentage of the resale price of his works.
       o Author gains financial reward from each subsequent sale – 2-5%
       o Often this is managed by collecting societies
 Must make a distinction between artistic work and the physical work in which it
   is embodied – in CR, most of the time we are just concerned with the reproduction
   of this work, but in DS we are concerned with transfer of the physical thing
 French government adopted this as part of CR
 Before EU, it existed in 30 countries (and state of California), but not recognized in
   an common-law jurisdiction at the federal level
 Problems of DS:
       o Difficulty of administration are huge
       o Only a handful of countries with this right actually enforced it.
 Berne Art. 14ter – DS provision is not mandatory – operates under the principle
   of substantive reciprocity.
       o Protection may be claimed in a country only to the degree it is offered to
           nationals, and if it is offered by home country.
       o Berne essentially treats DC as an aspiration
 One of the more controversial aspects of Int’l CR because it reflects the inherent
   differences that exist between the two systems.
 309 – Berger’s article – Why Resale Rights are a Bad Idea:
       o DS has its origin in a natural law tradition of CR
       o Resale right is part of author’s moral rights – reflects non-economic
           connection between author and his work.
 The CL position is that the sale of artwork is the same as any other property.
 First Sale Doctrine  once the copy is sold, no rights can be exercised over it.
       o End User can do whatever they want which CR allows them to do (can’t
           violate moral rights).
 Theberge – once an authorized copy of a work is sold, it is for the purchaser to
   determine what happens to it.
 Berger - Adverse economic effects to protecting DS:
       o Ignores the realities of profit margins; inequity of sharing profit without risk;
           tends to reward only successful artists, etc.
       o 310 - It follows that resale right treats art as a metaphysical concept, since it
           doesn’t make sense as an economic right.
       o Because market for art is international, there are problems w/o
           harmonization – this could also be an argument against DS
 This explains impetus behind inclusion of DS in EU Directive in 1991
       o Recital #4 – resale right forms an integral part of CR and is an essential
           prerogative for authors – the imposition of such a right in all member states
           meets the need for providing creators with an adequate and standard level of
           protection. – Recitals state importance of droit de suite rights 313
 Rights as they are protected in the directive:
       o Author does have a right to receive a resale payment – is inalienable
                                                                                       46


               Applies to all resales from private individuals and also to museums
       o Also applies to all original graphic and artistic works of art.
       o Recital 18 (art. 1(3)) – exemption where sale within 3 years <= 10,000 euros
       o Up to states to determine whether the buyer or the seller has to pay the artist
          – but very specific for the amounts
       o Art. 4 Rates: - as price goes up, the percentage goes down.
       o Member states can allow for collecting agencies: compulsory/optional
       o Lasts for same length as CR itself – life + 70 in EU
   Implications for UK as a result of this directive:
       o Was opposed to inclusion of DS – given extension until 2006 to implement it.
       o Prof assumes that the proposed statute has been implemented
       o Basically just doing the minimum of what is required  View that perhaps
          sales would move to UK where these royalties did not apply (like taxes)
       o Art. 7 – artists that are not EU nationals are only given this right if their
          home countries similarly protect the resale royalty right of EU artists.
       o Recital 7 – Internationalization of the Community market in modern and
          contemporary art - supports Berger’s argument that reciprocity is a stepping
          stone to NT – goal is making art. 14b BC compulsory.
       o Thus, reciprocity can also be viewed as a part of this trend to harmonize up.

Term of CR – another area where reciprocity has been the standard
 Berne Art. 7 – life plus 50
       o Subsections give protection for cinematographic works, photographs, etc.
 Also, Art. 7(6) allows countries to provide longer protections.
 ***Art. 7 (8) – Rule of Comparison of Terms or “Rule of the Shorter Term”
       o In any case, the term shall be governed by the legislation of the country where
          protection is claimed; however, unless the legislation of that country provides,
          the term shall not exceed the term fixed in the country of origin of the work.
       o Thus, shorter term will be applied to the work An example of a rule of
          partial reciprocity.
       o Duration of right is determined with respect to country of origin.
 *** It has been said that this has been intended to gradually raise protections by
   giving countries with shorter terms an incentive to match those with higher terms.
 1993 European Council Directive Harmonizing Term of Protection of CR
       o Art. 1 – expanded level of protection such that term is life plus 70
       o Cinematographic/photographic works were also extended to 70 years –
          significant increase
       o Art. 7 obligates countries to apply the rule of shorter term to foreign works
               Limited to the European term, but for countries that protect less than
                  70 years, their works will only be protected for 50 years in the EU
       o Incentive for others to gradually increase the level of protection they offer
       o Recital (22) – comparison of term will also apply for third countries.
 TRIPS:
       o Requires minimum term from Berne – i.e. life plus 50
       o Art. 12 – specific provisions (makes minimum life plus 50)
       o Art. 3 – National Treatment is standard, subject to exceptions in Berne
                                                                                         47


                Reciprocity will continue to apply as an exception - Thus, reciprocity
                 is still the norm when it comes to term of CR
       o But life plus 70 is gradually becoming the norm.
   Other countries
       o In US – Sonny Bono Legislation was contested on basis that congress that
          only has right to enact protection for limited times.
              Also specific provisions for works made for hire – term is 120 years.
       o Now pressure on Canada to increase term: LM Montegomery proposal failed
       o Australia recently agreed based on a reciprocal agreement.

Review of Reciprocity as an Exception to National Treatment:
 *** Reciprocity as a tool to generate consensus on increasing levels of protections –
   provides incentives Examples:
 1. Droit de Suite – Berne Art. 14ter – now this right is recognized much more
   widely; has become a minimum standard in EU directive
 2. Term of Protection – BC requires life plus 50; but only obliged to recognize rights
   of foreign nationals for length of that foreign country – has led to life plus 70
       o US, EU and Australia.

Restrictions on Use of Reciprocity:

Phil Collins v. IMTRAT (E.C.J. 1993): (p. 333)
 Disputed rights in performances under the Rome Convention - Provides a link since
   ECJ ruling has potentially far-reaching repercussions for CR and related rights
 Facts: Collins (British) opposing sale of bootlegs in Germany (made in the US)
 Under German law, foreign performers were only protected against performances that
   took place in other countries that were signatories of the Rome Convention
 Since US(Or UK?) was not a signatory of RC, he could not assert rights
 Had he been German, he could have asserted his rights anywhere in the world
 Argument: this amounted to different treatment of UK and German citizens under
   the law – contrary to obligations from EEC treaty
 Decision: CR and related rights do fall within the scope of EEC treaty b/c they
   affect trade and competition amongst members of EC
 Disparities in amount of protection, which may result from membership in different
   treaties, does not justify discrimination on the basis of nationality.
       o Thus, principle of non-discrimination amongst members of EU meant UK
           citizen had same rights as German national
 *** Significance: effectively precludes the use of reciprocity, as opposed to NT,
   amongst member states by virtue of principle of non-discrimination
       o They can still use reciprocity with other states

*** Dworkin and Sterling: based on Collins, CR cannot be subject to any rule of the
shorter term in the EU – wherever there are discrepancies in the term, this rule cannot
be applied without violating principle of non-discrimination – just applies to other states
                                                                                            48


   Resale Rights Directive – Recital (6) - explicit statement that the rule against non-
    discrimination means that any principle of reciprocity cannot be relied on to deny
    other EU members the same protections as granted to national authors
        o I.e. Reciprocity does not apply amongst member states

Van Themaat and Bettink – Another Side of Phil Collins
 Thesis: Where reciprocity appears to be required, as opposed to just permitted,
  perhaps they should be bound to reciprocity in spite of later obligations to EU
 E.g. BC Art. 2(7) – provides for reciprocity for applied arts and industrial designs
 329 – according to this article, it looks like reciprocity is required – arguing that in
  these cases they might be in violation by not using reciprocity in spite of Phil
  Collins case – i.e. these earlier agreements might be binding.
 *** Potential conflict between Berne and EC Treaty – Art. 234 says apparently
  earlier one should be respected. Except for this gap, reciprocity cannot be relied
  on amongst EU members, but still important with other nations.


NEIGHBOURING RIGHTS
 A term used to describe a series of rights that attach not to original works of
  authorship per se, but rather to performances, recordings, broadcasts of works.
       o The more industrial works that may accompany works themselves
 Traditional areas:
       o Gives performer right to fix performance
       o May give person who makes sound recording the right to control reproduction
       o Broadcasters – most common right is to fix or transmit broadcast
 Uneasy element – feeling that these people are not really authors, and that these
  are not really works – i.e. neighbouring rights as opposed to CR proper.
 Jerhoren Article 372: - also gives history of these rights
       o 2nd Column, 3rd last para: by definition NR are not genuine CR – give
           protection against unfair competition.
       o In recent years, an ideological war has been raging over this relationship
                Gillian Davis – says NR are just CR – the laws of several CL
                   countries already treat sound recordings as CR
 It is true that must countries do use the word CR when describing NR
       o Canadian Provisions are in s. 18 – 21
 US and UK Acts also brings NR under CR
       o For US there is no problem with corporations being authors
 Jerhoren  but this does not mean that NR are used in the same way as CR 278
       o Use of CR is indicative of a utilitarian approach in general - 378 – typical
           of CL idea that sees no difference between authors and investors.
 Enough agreement to have allowed NR into international agreements through
  national treatment (although notably not in Berne itself)

Rome Convention (International Conventions for the Protection of Performers,
Produces of Phonographs and Broadcasting Organizations)
 Birth of Neighbouring rights - Began in 1941
                                                                                           49


   Doesn’t use term “neighbouring rights”, but this is what it describes
   Performing rights were least controversial – most clearly associated with types of
    expression that CR traditionally protects.
   Before recording/transmitting technology, this was not an issue since performances
    were transitory.
   One debate: performer’s rights look more like CR; perhaps they shouldn’t be
    lumped in with sound recorders and broadcasters
   375 – WIPO guide notes that the making of a record/broadcast is a more
    industrial character – justifies bundling them together due to labour – reflects
    CL/utilitarian approach

Interaction between Neighbouring Rights and Copyright:
 Really a layering of rights
 E.g. a sound recording on the radio – 4 potential rights:
       o 1. CR in the musical work (notes, score, etc.) – protected under Berne as an
           artistic work
       o 2. NR in performer’s performance in work – subject matter of RC, not BC
       o 3. Right of Sound Recording Maker who recorded the performance –
           protected under Rome
       o 4. Right of Broadcaster who broadcast the sound recording of the
           performer’s performance of the work
       o Thus, potential for someone who wants to copy this broadcast to have to
           get permission from each one.
 The premise is that NR have no bearing on the CR itself – entirely separate
 Rome Art. 1 – Safeguard of CR Proper – quite clear on this: shall in no way
   affect CR in literary and artistic works.
 Author of work can prevent someone from performing it in public, or recording it.
       o Even if performer authorizes someone to record her, she would be infringing
           right of author of underlying work.
 When author authorizes performance and recording (e.g. non-exclusive license),
   performer and recorder gain neighbouring rights in performance/recording itself
       o When someone copies this recording, they would be violating NRs as well.

Provisions of Rome Convention:
 Art. 24(2) Only members of Berne or Universal CR Convention are allowed to
   secede to Rome Convention – i.e. have minimum standards
 Art. 2 – Requires National Treatment for RC – beyond this, reciprocity is allowed
       o In Canadian CRA – 22(1) we will negotiate protections with non-RC
          countries on the basis of reciprocity and multilateral agreement
 Art. 4 – Provide for linking factors that allow national to claim NT protection
       o 1. If performance takes place in RC country,
       o 2. If fixed on phonogram in Art. 5, or
       o 3. If broadcast under Art. 6
 Art. 5: either criterion of nationality, criterion of fixation, or criterion of publication
 Art 6 – if HQ of broadcaster is in RC country or transmitted from RC Country
                                                                                        50


   Generally it turns on place of making or nationality.
        o Interestingly, it looks to Prof like criterion of nationality applies to
            recordings and broadcasters, but not performers.
   Art. 7 – Minimum Protection for Performers
        o Not specifically enumerated – “shall include the possibility of preventing”
        o Broadcasting, Fixation, or Reproduction, without consent, of a recording
   Art. 10 MP for Sound Recording Producers Producers of phonograms shall
    enjoy right to authorize or prohibit reproduction
   Art. 13 – MP for Broadcasters  Right to prevent re-broadcasting, fixation of their
    broadcasts, reproduction of fixations of broadcasts
        o CRA S. 19 (1) right to remuneration – maker and performer entitled to
            remuneration for public performance or transmission to public
   CRA s. 80 Private Copying Exemption – allowed by RC Art. 15(1)(a)(?)
   RC is a pioneer convention - Rights it protects weren’t present in domestic law before
   Art. 14 of TRIPS – Protection of NR rights – focused more on substance of right,
    not way in which it must be implemented – “shall have the possibility of preventing”
   *** Rome is not incorporated into TRIPS – but art. 14 is clearly inspired by
    rights protected in RC - In some respects the rights are slightly less/more
        o E.g. 14(4) Rental right – over and above art. 10 of RC – incorporated into
            CRA 18(1)(c)
   One significant improvement (depending on perspective) is extension of term to
    50 years instead of 20 – we now have 50 years for all NR (CRA s. 23)
   *** US has not joined Rome Convention – didn’t protect performer’s rights;
    since most is now in TRIPS, this is largely moot.

WIPO Performances and Phonograms Treaty (1996)
 *** Signed by Canada, but not bought into force – we will be undergoing changes
 Performer’s rights – in preamble: recognizing the profound impact of technologies
  on the production and use of performances/phonograms.
 Art. 7 – Right of Reproduction – note: it is a right to control reproduction, not just
  right of remuneration - Can prevent others from copying it; not compulsory license
 Art. 8 – Right of Distribution – making available right – designed to deal with
  posting on internet.
 Art. 9 – Right of Rental
 Art. 10 – Right of Making Available of Fixed Performances
 *** Most interesting addition is Art. 5 – Moral Rights of Performers
      o Performer shall have right to be identified as performer, and to object to
          distortion, modification, mutilation that would be prejudicial to his
          reputation.
 This would have been effected under Bill C. 60 (proposed) – 17.1 – Moral Rights

Convergence of NR and Moral Rights seems to show that performers are being
welcomed into the CR fold, and is being accepted by civilian countries
 Perhaps effort to show special rights of performers, which goes back to roots of RC
                                                                                            51


   Other student rationale: perhaps this is to prevent changing title of tracks (i.e. no
    longer put artist’s name)
   Decision to extend moral rights might reflect just another expansionist push, or a
    recognition of “spiritual” rights of authors.

Just know primary provisions, controversies around NR and MR

Much of ideological debate around MR has been addressed in Civil/Common Law:
 MR developed in France, but now part of law in most European and Latin American
  countries – spread to at least one of the international conventions.
 *** BC Art. 6bis – Moral Rights – incorporates MR into international CR
  regime as part of its minimum standards and subject to NT, not reciprocity.
      o Right of Paternity – to be associated with one’s works
      o Right of Integrity of the Work - to object to any mutilation, distortion or
          other modification of a work that would be prejudicial to reputation
 Can. CRA – art. 14.1 – sets out rights - And 28.1 which tells us more about them
 Borrows closely from Berne – Canada was first CL country to enact provisions of
  this sort in response to obligations under Berne

RECAP - Neighbouring rights and their role in the IN regime
 Source of controversy: CL and civilian regimes
 CL countries: quite happy to include NRs into CR proper and treat it the same and
  give more expansive rights
 Civilian systems: keep a division b/w CR and NR reflecting their sense of the
  authorial nature of CR proper
 This division ahs been substantiated in the IN regime:
      o NRs aren’t in Berne but rather Rome. We do see them in TRIPS though.

WIPO Performances and Phonogram Treaties
 MRs have been accorded to performers in their live performances (Art. 4)
     o Right of attribution and right of integrity (object to distortion/mutilation
 This was the link b/w NRs and MRs (today’s class)
 MR reflect civilian philosophy whereas NRs are distinct from civil law CR


MORAL RIGHTS
 MR is a right of personality that reflects the author’s connection to the work
 The importance of MRs in France and other civil countries reflects the belief that CR
  embraces something more than pecuniary interest
 The “something more” is deemed to be more significant than the economic rights
  (the MRs don’t have a deadline, they don’t expire but rather are perpetual)
 Core rights: Art. 6 bis of Berne: You can assign the CR but the right to claim
  authorship and object to distortion of the thing will remain with the author.
 Right of Integrity s. 14.1 (Canada CR Act)
 Right of Attribution s. 28.1 (Canada CR Act)
                                                                                      52



Different Kinds of Moral Rights in Other CR Systems:
 Right of divulging the work: the author has a right to withhold the work from the
   public and decide when it is complete and when it is to be shown to the public
       o This is recognized as a right of the author b/c when you give the work out to
           the public it is the author’s spirit in the public realm
       o This is in France, Germany, etc. but not in any IN convention
       o The CL countries have signed on to the Berne bits but not this one
 Right to repent (retake): If you decide that the work no longer reflects who you are
   then you can withdraw it from circulation (even maybe from the CR owner)
       o Arguably the most important right that there is under the MR category
       o It’s not been recognized IN’ally
       o There is an obligation to pay an indemnity if it imposes costs on someone but
           they can control their representation through the work in public realm
       o Could you K out of that?
                MRs are not transferable  There are some cases where the rights are
                   waivable: this is an area where there’s lots of divergence
                Civil countries would say no, CL countries would say yes
       o In some countries the right of paternity is non-waivable: ghost writer
           wanting to be made known as author even though concept of a ghost writer is
           anonymous - but then there was a case in another country where there was the
           same scenario but the GW wasn’t allowed to be known
There is a vast array of MRs that can be protected, significant divergence b/w the
protection of them as b/w diff countries
 In France even although the right can be passed on to the estate there is an
   obligation on anyone exercising the MRs not to do so out of self-interest
       o A court will assess whether the right is being exercised on behalf of the
           author’s spirit as it lives out in the work or the successor’s interest
 In terms of the integrity right: some countries go further than Berne by taking out
   “would be prejudicial to honour..”  give author right to object to ANY distortion
 Under Berne there is a lesser standard: author can only object if the modification
   is such that it could do damage to your reputation In Canada this phrase is in our
   CR Act and has been used to significantly curtail the rights otherwise available
 E.g. Prise de Parole v. Guerin (Fed. Ct TD 1995):
       o An author objected to the fact that the work was in an anthology and was
           edited, he didn’t like it, objected based on MRs, other people had read it and
           it was fine, no one was laughing at him and so there wasn’t prejudice to
           honour, reputation and so the right wasn’t enforced
 At the crux of MRs is the idea of the respect for the author and his connection to
   the work and not at a legal/financial level only - This is in stark contrast with the
   Utilitarian economic reasons for why we have CR
French vs. US Approach
 US: CR provides economic incentives to progress art/sciences for public 
   author’s rights are just means to an end; can’t trump public interest
       o Supposed to be a commodity that is freely alienable in free market
                                                                                       53


   US successfully insisted upon excluding Art. 6bis from Berne from inclusion in
    the TRIPS agreement (see Art 9(1)
   In 1988 US did adhere to Berne: under Berne 6bis MR is a minimum standard
    subject to national treatment - So, really the US should comply with Art 6bis of
    Berne notwithstanding the limitation of Art. 9(1) of TRIPS
   US argument: there is a composite of laws already available in the US that together
    provide the kind of protection envisioned by 6 bis  this line of argument relies
    upon the case at pp 390: Gillian v. American Broadcasting Co

Gillian v. American Broadcasting Cos. (2nd Cir., 1976
 FACTS: concerns Monty Python Flying Circus, gained popularity in UK first and
    then moved to rest of world, writers had agreement with BBC, MP wrote the scripts
    gave them to the BBC, BBC had authority to make minor changes but nothing
    substantive w/out consultation with writers. MP retained all rights not granted to BBC
 In 1973 BBC gave Time Life Films the rights to distribute the films in the US, they
    gave ABC the right to broadcast 2 90 minute specials (through various licensing
    arrangements). Each of the 90 minutes specials were to comprise 3 30 min shows.
 When ABC went to broadcast the first show they had to edit 24 minutes to include
    commercials (BBC is commercial free). MP sued to enjoin them from the second
    broadcast on this basis.
 HELD: they lost and the 2nd broadcast went ahead. This is the appeal
 ISSUE: whether court can enjoin re-broadcast of TV program subject to heavy
    edits that hadn’t been authorized. - If so, under what law and what authority?
 ANALYSIS: this is exactly the type of thing you would deal with under an MR
    issue. The problem is that in the US court there is no such action.
 EHDL they were able to enjoin the broadcast and the reasoning was that the editing
    was likely to constitute a breach of K, CR infringement, and unfair competition
 What’s interesting for us: discussion of likelihood of success on the merit
CONTRACT:
 The court notes that the heavy editing of the program would be in direct
    contravention of the K b/w BBC and MP (they had a clause in the original K that
    BBC didn’t have right to heavy editing) BBC can’t assign more rights than it has.
 Thus, we can look to K law to deal with the kind of situations to which authors might
    object. If an author wants to protect their interest they just have to put it in the K
    and it will be enforceable
CR INFRINGEMENT:
 Logic similar, this is a substantial reproduction of the MP work, which would be an
    infringement of MP’s rights to the extent that it is unauthorized.
 BBC doesn’t have right to authorize action when it doesn’t have right to do action.
 It can’t grant a license to ABC that goes beyond the terms/constraints of its own
    license.  b/c of the control that the economic rights holder has over downstream
    uses of the work they can enforce things that are like MRs
Action under Lanham Act:
 Appeal to TM principles
 US Laws give a cause of action to anyone damaged by a false designation of origin
                                                                                        54


  This would be a false/misleading description/misrepresentation of fact or origin
  So the edits impaired the integrity of the work (the court agrees that it represented to
   the public what was a mere caricature of the Ps talents) and then represented it to the
   public as though it were simply the Ps work and in doing so they created a false
   impression of the program’s origin - Unfair competition
 Like “reverse passing off”: something comes from someone else when it doesn’t
***Pull all these laws together you get a web that allows an author to assert MRs
under a different name

COMMENT: - Leaves us with two questions (after reading the case)
 1. Does the US meet the standards of Art. 6bis of Berne?
 2. And if so, why did it press for the exclusion of this article from TRIPs?
 *** You can’t have your cake and eat it too: hypocritical: US doesn’t meet Berne
  this is why they don’t want MR in TRIPs

How has US has been able to claim it adheres to Berne w/out being held to task?
 The point is: Berne is largely unenforceable (versus TRIPs enforcement mechan)
 In theory you can go to the ICJ to enforce Berne but it’s never been done.
 Maybe US thinks that it might meet Berne but want to make sure they don’t fail
  to meet TRIPS standards: WTO could impose trade sanctions etc.

How much emphasis to place on domestic decisions of courts?
 US really is only meeting Berne by a domestic case decision - relied on legislation.
 As long as US isn’t throwing out cases that seem to involve MRs this seems to be
  enough. But this might change if another case looks like they aren’t enforcing MR

Counterarguments – MR versus Derivative Rights, Unfair Competion, K Law
 There is a difference b/w a right that is there to respect the authors interests and
  the kinds of laws that US points to as analogues
 Derivative rights under CR [right to control substantial repro] that really
  incorporates author’s integrity - But core value of these two rights is v. different
       o Really just the author’s downstream control of the marketplace [v. different
          from core value of MR: author’s perception of the work]
       o The inalienability restriction for MRs don’t apply to the derivative CR
          [author can transfer the CR (control over derivative market] and then suddenly
          they don’t have anything- It’s not enough to rely on this
 Unfair competition: gives some protection to an author against misrepresentation
  in a marketplace, but focus is wrt consumers and fairness for traders in a
  marketplace – very different normative focus than moral rights
 Finally when talking about K law: it may be that an author can use K law to
  protect their moral rights but the principle underlying this is the freedom to K
       o There is no guarantee that they will be allowed to K the K in this way
       o Moral rights aren’t about what you get agreement on
 Is it enough that laws provide same end results or is there a spirit to Berne that
  should be recognized by other parties?
                                                                                      55


       o After Gillian US added s. 106(a) of their CR Act: bolsters their argument
         that they adhere to Berne but only to a limited state
       o Applies only to works of art (paintings, sculptures, subject to sweeping
         exceptions) effectively almost any commercial use of a work (inclusions in
         books, magazines, films, works for hire) won’t come w/in the section, so it’s a
         v. limited right
       o There isn’t much in this addition to US CR Act that has satisfied those who
         would like to see US adhere to the spirit of Art 6bis of Berne

Another e.g. huge differences in protection flowing from philosophical underpinning
 Yonover, Netanel articles: MRs are purely substantiation of civilian philosophy
      o Fair use is a CL approach to CR
 Dynamic b/w MRs which are fundamental to civilian understanding of CR and
  fair use which is fundamental to a US approach to CR - MRs can trump fair use
      o Parody of CR work might be fair use but it might also modify a work so as to
          damage to author’s reputation - Which one is more important?
      o This is something upon which we have a great deal of disagreement
 It’s tough when both of these things are incorporated into our domestic system by
  virtue of IN conventions and norms


LIMITATIONS AND EXCEPTIONS TO COPYRIGHT
 Exceptions and limits to rights protected as minimum standards under the IN regime
 Fair use/fair dealing: this is the main exception
 Generally an unauthorized taking/reproduction of a substantial part of a protected
  work will prima facie amount to an infringement. But sometimes this won’t really be
  infringing b/c there is an exception that applies (defence to infringement)

Fair use/ Fair Dealing (the Anglo-Canadian Counterpart)
 If D has dealt fairly with work w/in meaning of CR Act then use is not infringement
       o Fair dealing can be a full defence
 CR Act (Canada) ss. 29, 29.1, 29.2 – Defence only available if specifically listed
       o S. 29: FD for purpose of research or private study doesn’t infringe CR
                You can K out of the fair dealing defence
       o S. 29.1 FD for purposes of review - subject to a requirement to cite the
           source of the work and the author/performer/maker/etc.
       o S. 29.2: for the purposes of news reporting - subject to the
           acknowledgement requirement
       o In the Canadian Act we have a restricted approach to FD flowing from the UK
           Act, it is built upon the original exceptions in the UK Act 1911
       o It’s also quite typical of most common law countries (Australia is same)
       o if you’re not doing one of these purposes you can’t claim fair dealing
 US Equivalent: Fair Use - Distinction from fair dealing (Canada):
       o fair dealing is available only wrt specific enumerated provisions
       o fair use is more broad than that
                                                                                        56


       o fair uses are non-infringing and purposes are those indicated by it’s non
           exhaustive you just have to show that your use is fair
   Factors for consideration when assessing whether a use is fair or not
       o s. 107: purpose of the use, character of use, what user did with work, nature
           of work, amount that was used, effect on potential market (would the use be
           in competition with the uses of the CR owner?)
       o it’s v. flexible and case-by-case approach - anything could potentially be
           fair use subject to these considerations: it’s greatest strength/weakness
                court can deal with new purposes, markets, freedom of speech, it’s
                   more responsive to the equities of particular case
                but it gives up predictability and certainty
       o it’s an embodiment of the American philosophy of CR protection: fair use
           exists to allow CR to achieve purpose of furthering progress of arts
       o Fair use in the US system is integral to the functioning of the CR system
   Fair Dealing
       o Very broad compared to approach in civilian countries
       o general approach in civilian: narrowly drawn enumerated provision like
           fair dealing but even more specific
       o you can put restrictions on the limits: v. specific and v. restrictive in terms
           of what people can do
       o Canadian CRA is becoming more specific like this
   Difference is a normative one: greater attention paid to rights of author as
    foundation of CR than fewer exceptions will be available to override rights
       o If the right of the author is the central force: then derogations will be
           restrictive and well-tailored and they will be few
       o If the system is focused on the public interest and downstream creative
           uses of works, dissemination etc: you will have tolerance for expansive
           rights to use protected works b/c use of protected works is part of ongoing
           process of creativity and contribution to the public domain
   Different Conceptions of Fair Use:
       o either natural exception and derogation from the norm of enforcing/protecting
           author’s rights, Or
       o It simply defines limits of author’s entitlement and ensures that CR system can
           function in public interests (ensuring balance b/w authors and users)

Canada Context:
 we have a history of restrictively applying the exceptions so that the fair dealing
  defence was rarely pled and rarely successful
      o but recently in Canada we are seeing the growth of fair dealing
 ***CCH:  SCC said “fair dealing is a user’s right and to maintain the proper
  balance b/w CR owner and user’s interests it can’t be interpreted restrictively”
 Significance: Canadian courts are moving towards US understanding of fair use
  while legislature is stuck reflecting civilian principles or limited enumerated defences
      o Tension: it isn’t clear if courts or legislature are going to define future
 Extent to which IN obligations will place limits on the CCH decision:
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       o Does SCC’s decision give too much room to fair dealing, meaning that
         Canada might be in violation of its international obligations?
       o Is it feasible to call fair dealing a “user’s right” in the face of an IN
         regime that only acknowledges “author’s rights”

Role/Relevance of Fair Dealing at the International Level
 In terms of domestic law it will have a different role depending on formulation
 But one way or another it is supposed to have room for downstream use of CR works
 Okediji: In global terms, there are “creator countries” and “user countries”
       o I.e. there is a huge incentive for corporate interests of developed countries to
           require strongest protection from developing countries (user countries)
 Domestic balance: encouragement and dissemination of works of arts and obtaining
   just reward for the creator
 IN balance: not just b/w authors and public users’, the balance is also b/w the
   creator countries and the user countries.
 Different Interests at a National and IN level:
       o Arguably the role of an expansive fair use doctrine on the IN scene could
           potentially be in parallel to the domestic to balance the rights of developed
           and developing countries, of north and south
       o Expansive fair use standard IN’ally could benefit the developing countries
 IN fair use is hard to talk about b/c it doesn’t exist
       o There is no IN fair use defence/standard
       o Nothing in any of IN Conventions guarantees/requires/provides for fair use
       o IN treaties that we’ve seen create protection for IP owners and do little to
           safeguard the interests of users
       o IN Conventions are premised on: a floor for protection + National
           Treatment so they don’t require limits to those rights
       o Because harmonization is always up, user’s interests are particularly
           threatened by the current expansion of the IN regime
       o In terms of IN law-making countries have to defend their defences
                Potentially there are serious constraints on a country’s ability to
                  develop their own defences in terms of their own policies
       o Nothing in IN conventions that user can rely on to get their rights enforced

What do the Provisions for Exceptions Look Like in the International Conventions?
 Art 9(2) Berne The most expansive provision wrt exceptions; applies to
  reproduction rights: “it shall be matter for legislation of countries of union to
  prevent reproduction in special cases provided it doesn’t …prejudice legitimate
  interests of the author”  individual nations can decide that they want to permit
  reproduction of protected works in special cases subject to these limitations
 Similar provisions: Art 10(2) and (3): literary and artistic, by way of illustration, for
  teaching”  It’s up to member states to determine how/if they are going to include
  exceptions to these particular uses
 ***Art 9(2) Three Step Test (most important point in terms of IN conventions)
      o Step 1: exception must be a special case (no sweeping exceptions allowed)
      o Step 2: the copy must not conflict with a normal exploitation of the work
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       o Step 3: does not unreasonably prejudice the legitimate interests of the
           author (or CR owner)
   TRIPs Art. 13: borrows the language of the 3 step test from Berne
       o Members shall confine limitations to exclusive rights, special cases, don’t …
       o Changes word author for right holder but the meaning is the same and it
           uses almost the exact same words
   Berne Art 9(2) only deals with specific things; TRIPS Art 13: deals with all
    protected rights
   Some discussion about the significance of “shall confine”
       o This language suggests maybe a more restrictive/protectionist tone
       o It’s not just up to nations but rather there are these limits that nations will
           confine themselves to permitting
       o There is nothing in TRIPs that says “you can make exceptions”

Also some talk in the materials, the WIPO Internet treaties, WPPT treaty:
       o Art 16 deals with limitations and exceptions, something comparable in Art 10
           of WIPO CR treaty
 Provision is made for national legislation to provide for same kind of exceptions as
   for performers as wrt authors
       o This provision allows countries to extent fair use to NRs but it’s also
           interesting to see the 9(2) Berne language (the three step test)
 Aggrieved statement wrt meaning of Art 16 of WPPT: carry forward and extent
   into the Internet world exceptions that were allowed under Berne
 We’re beginning to see that the 3 Step Test is being used as core defining norm that
   helps countries to work out which exceptions are permitted and which go too far
 When these internet treaties were being negotiated US and EU were pushing to
   be more protectionist to limit state powers to limit exceptions to these rights
       o Didn’t want to negotiate for rights to then have wide-sweeping exceptions that
           would derogate from minimum standards - Wanted to reap the benefits of the
           rights they were imposing on everyone else
 Implementation of WIPO internet treaties suggests fair use is under attack
       o US Digital Millennium CR Act was US implementation of these treaties
       o Provisions v. slim  trumped fair use right by creating new digital use rights
 EU Directive: Harmonization of Certain Aspects of CR and Related Right “
       o This is the directive by which EU brought it the WIPO Internet Treaties
       o Good example of civilian understanding of exceptions: Art. 5 v. well-
           tailored provisions for exceptions, v. limited v. restrictives and come with
           provisos  Even when you get to the bottom of this Art 5(5) the exceptions
           will only applied…3 step Berne test - Even though the limitation were v.
           limited it was limited even more by the 3 step test
 So how much exceptions can you have w/out getting away from the IN regime?
 Why does the IN regime neglect to deal with user’s rights?
 Fair use comes under threat when we talk about the IN regime


Is US Fair Use Provisions really “a certain special case”?
                                                                                        59


 CR holder could expect to suffer economic harm.
 There is a concern about the potential requirements that this imposes on domestic
  courts and legislature when it comes to responding to their national interests and their
  domestic policies
 Interesting US double standard when it comes to fair use:
      o Pressure when it comes to Internet Treaties to make exceptions more limited.
      o Two-pronged information strategy: freedom of information, access and use
           of inform in the US while exercising strong proprietary rights over
           information abroad. If any of its trading partners that wanted to enact a
           provision like their own they would get in trouble. They have been actively
           discouraging Japan from enacting an exception to allow reverse engineering
           of computer programs. The exception proposed in Japan was modeled on a
           US case that had decide that reverse engineering was fair use.
 Domestically fair use is broadly drawn, IN’lally the exceptions are narrow
Okedichi:
 even w/in the US there is some ambivalence wrt fair use (lobbyist who believe that
  the fair use provision in the US is too expansive and would like to see it more limited)
 Warns that perhaps the double standard might evolve such that domestic legislatures
  can clam they need to limit domestic ones to “my hands are tied” defence to
  eviscerating fair use in public policy.
 It has an IN impact and a domestically: If fair use is under threat IN’ally then
  eventually it will be under threat domestically as well. We don’t have IN fair use
  standard but we can read in public policy purposes on an IN level.
 We should recognize that balance is integral to CR system domestically and IN’al.
 ***Art 7 TRIPS: balance is necessary; CR isn’t just about author’s rights.
      o Argument that this implies the need to ensure that others can use the works we
           protect and we need a balance of rights and obligations and this could be the
           basis for justifying fair use standard at IN level.
      o Something like a customary norm that allows for meeting the three part
           test. Focus upon user’s interest isn’t traditionally the domain of an IN regime.
           As the regime expands it becomes more important to increase.
 NEXT DAY: example of US exception being declared in violation of US IN
  obligation. The EU went against the US on one of its exceptions. It is a v. real
  possibility. Finishing off discussion of CR: pp 456-459, 495-505, 512 (or 506) –
  518 (good article)


***Review of Exceptions to CR (my notes):
 No requirement of defences/limitations on CR in conventions because they work on
   the basis of minimum standards  Any mention of defences is to limit exceptions,
   rather than require them.
 Berne Art. 9(2) – manifested in art. 13 of TRIPS, and in WIPO
 Three Step Test:
       o 1. The exception must be a special case
       o 2. Copying must not conflict with the normal exploitation of the work
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       o 3. Permitted copying must not unreasonably prejudice the legitimate
          interests of the author
   Even US fair use provision may be in violation of this.
   Canadian judiciary may find their hands tied by these international obligations

Example: US Domestic Provision Declared in Violation of International Convention
 Art. 110(5), (417 of materials)
 EU asked panel to decide if US was meeting its TRIPS obligation based on 1998
   “Fairness.. Act – incorporated 110(5) into the US act
       o Certain places like bars, restaurants could play music without a fee –
            generally this would be a public performance and require a fee.
 Two Separate Free Uses:
       o 110(5)(a): Homestyle Exception – allows communication on a single radio or
            TV of the type commonly used in homes.
       o 110(5)(b): Small Business Exception – allowed them to avoid paying license
            fee for performing or displaying works – specific square footage requirement
 Problem was that EC claimed this violated Art. 2 or Art. 11bis of Berne
       o This allows for compulsory licensing, but nothing like art. 9(2) Exception
 US: this is not in violation because it meets art. 13 of TRIPS – shall confine
   limitations and exceptions that meet the 3 step test.
       o Argument – that this applies even to substantive provisions of Berne
       o Argument - Art. 13 clarifies minor exceptions in general – doesn’t just
            apply to new protections in TRIPS, but Berne as well
 Court supports EC in part – if US can show that it meets the requirements of art.
   13, it is not in violation despite the more restrictive words in 11bis
       o Panel holds that the Homestyle exception 110(5)(a) is compliant with TRIPS
            but (5)(b) is not
 This is the first authoritative statement we have about relationship between
   Berne and TRIPS – striving to find harmony between documents; willing to read
   small implied exception into Berne
       o If you were just looking at the text of Berne, you could say you don’t need the
            limitation set out in 11bis – but the panel derives a doctrine of minor
            exceptions that are subject to the three step test – when this applied, the US
            provision is consistent with Berne
 ***Arrived at conclusion that TRIPS article applies to all provisions subsumed into
   TRIPS from Berne
 *** This implies that from now on the three step test will be used by policy
   makers to decide if their provisions are permissible.

Application of Three Step Test:
First Step – confined to “special cases”
 421 (para 6.112) – Panel interprets this first step as being that any exception
   should be clearly defined and narrow in its scope and reach.
       o Refuses to ask whether it is meritorious or justified – should not look at
           policy objectives that certain countries might think are appropriate
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  Whether you pass test will not depend on legitimacy of purpose, but of scope – to
   some extent this decision has been criticized for not looking at purpose (i.e.
   minimum impairment test, rationale connection, etc.)
Second Step
 If the exception allows user to compete with rights holder, you might fail at step 2
       o Probably will fail here if provision is depriving rights holders of significant
           financial gains.
 This step is both empirical (want to know how rights holders normally exploit their
   rights) and normative (i.e. talks about what rights holder is justified in expecting)
 423, para 6.180 – don’t cut off rights holders market before he has exploited it –
   what “should” he be entitled to?
Third Step:
 It cannot cause an unreasonable loss of income to the rights holder
 Interesting because it implies that there could be a reasonable loss of income.
       o But still measures it in economic prejudice to the rights holder
       o Seems hard to separate second and third steps
 Gervais suggests that reasonableness should be a question of justifiability – i.e.
   whether the loss is justified by the goals of the exception

Panel’s Application:
 (5)(a) was TRIPS compliant because it was limited to special cases – most of this
   came down to agreement that this only applied to dramatic musical works, since
   (5)(b) only applies to non-dramatic musical works
 Interestingly, there is nothing in the legislative history that would limit this in
   this way  But strategically it was easier for US to argue it in this limited way
 Since rights holders don’t generally try to license the public transmission of dramatic
   works, it didn’t conflict with expectation and didn’t become a significant economic
   harm. - On this basis (5)(a) got by the panel
 But (5)(b) did not – subject matter was much broader and where there was
   expectation of a licensing fee  To cut this off would cause significant economic
   harm and hinder exploitation of these works.
 Not limited to special cases: 421-422 – Panel is concerned with the fact that 70% of
   eating establishments, etc. would be covered – i.e. it is specific, but it is not special 
   the numbers are too broad
 Thus, it failed all three of the steps.

Significance:
 First statement on Berne/TRIPS and on multilateral CR treaty
 Significant that three step test applies across the board – led to much scholarship

Themes emerging from the scholarship:
 US Fair Use provisions probably violate this test
 Issue: should domestic courts keep these international conventions in mind when
   applying the legislation?
      o Perhaps this shows a problem with the international conventions
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   Gervais and Okadiji both argue that a stronger fair use doctrine is required at
    international level

Gervais: - Towards a New Core International CR Norm: The Reverse 3 Step Test
 We could reverse this presumption  rights holder would have to justify it
      o We should be protecting authors’ rights only in commercial uses, not those
           that do not conflict with normal exploitation.
 By reversing this test, we could change the whole normative aspects of the scheme
 By focusing on what the author deserves/needs, the public only gets what is left
   over  very author-centric understanding of the exceptions, which is quite
   opposed to the rationale for exceptions domestically

Okadiji – Towards an International Fair Use Doctrine:
 Envisions a fair use doctrine that is more broad than art. 13, but maybe less so than
  the fair use doctrine itself. - Because we have no Fair use doctrine at the international
  level, we do not recognize public interest there
 Suggests countries fair use provisions could reflect history, but that the normative
  value of fair use must be injected into the international regime.

*** Given How Integral Public Policy is Domestically, its Absence is Strange.
 What does this absence of fair use or strong public interest limitations tell us about
   the international CR regime?  Is it that at the int’l level the CR regime cannot
   escape from being trade policy?
 Okadichi – if the goals of TRIPS are to put CR into int’l marketplace, it makes
   sense that there is no concern for users – just focus on owners
       o Thinks there is nothing in int’l law to give this balance – although some have
           argued from human rights, etc. for cultural protections
 Pamela Samuelson – The US Digital Agenda – begun to affect some increasing
   awareness of a need to ensure an author-user balance even at the int’l level
 Preamble in WIPO CR Treaty: need to protect balance of rights of authors and
   larger public interest.


INTERNATIONAL COPYRIGHT AND NEW TECHNOLOGIES

Pamela Sanderson –WIPO Internet Treaties:
 456 – “Internet Treaties” refers to WIPO CR Treaty and WIPO Performers and
  Entertainers Treaties  Shows international treaties can still happen under WIPO
      o Cover a broad range of issues that are supposed to target CR in the digital era.
      o Deal with distribution of works under the internet
 Most controversially, they deal with anti-circumvention treaties
      o Relates to TPMs – Technological Protection Measures
      o Regulation of anti-circumvention is supposed to protect TPMs – could be
         anything from passwords, to CR protection
 Both WIPO treaties require anti-circumvention provisions - The law is
  confirming the rights holders right to use these measures to guard their content.
                                                                                           63


   Funny because use of TPMs is anti-competition, anti-privacy, etc.
   In the WCT, art. 11 – shall provide adequate legal protection and effective legal
    remedies against the circumvention of effective technological measures
        o Art. 18 in WPET
   Art. 8 WCT – authors have exclusive right of “making available”
        o Art. 10 and 14 of WPET
   *** These are the main rights we should be aware of.
   Interestingly, most of the ratifications of these treaties have come from
    developing countries – not as controversial, since it is not a relevant market for most
    of their markets - Some of them may not have included anti-circumvention provisions
        o Canada has yet to ratify – but has objective of reforming CR
        o US has implemented these reforms in the DMCA
   Samuelson – describes US CR agenda leading up to these treaties.
        o 456 – the actual text is a very positive starting point – i.e. reflects balance like
            traditional US approach to CR
        o But paradoxically, this is very contrary to the wishes of US delegates – i.e. if
            it looks like US policy it is more by accident than by design.
        o US wanted to make it illegal for any attempt to circumvent TPMs.
   Circumvention of TPMs will only be prevented if it is for infringing purposes
   Issue is how closely protection of TPMs should be linked to protection of the
    material itself. - Also issue of removing rights management info (RMI)
        o Decided there would only be liability for removing info if it was done in
            order to infringe CR – not infringing itself.
   US arrived with a very protectionist agenda – but the document ended up more
    consistent with US CR tradition then the US agenda.
   *** If you don’t tie anti-circumvention and fair use together, you might end up
    with a system that trumps fair use you can’t use it fairly if you can’t access it.
        o Canadian provisions right now don’t seem inclined to deal w/ TPMs this way
        o US provisions have been quite far-reaching – e.g. Russian prof. arrested
            after presentation on weaknesses of TPM
        o The DMCA has allowed CR owners to target manufacturers, ISPs, etc.

Canadian Situation:
 Seems to be agreed that new Conservative agenda will be to ratify these treaties.
      o We don’t need to be too knowledgable about these details
 Myra piece – pressure to ratify these treaties quickly and in a certain way
 End of Samuelson: she had presented these treaties as being positive overall since
  they imported this sense of balance which we hadn’t seen thus far
      o But: “just because balancing principles found their way in doesn’t mean there
           will not be broader protections for CR owners”
      o Balanced treaty doesn’t necessarily mean balanced implementation.
 So far it looks like Canada will stand its ground
 S. 34.02 of Bill C-60: “person who, without consent of …, circumvents, removes, or
  in any way renders ineffective a technological measure … for the purpose of an act
  that is an infringement”  This is quite balanced, but not clear it will stay that way.
                                                                                     64


   Tawfik Piece – Wither User Rights? – balance has always been a part, but has
    been recognized in new treaties  therefore countries should feel free to ratify but
    be aware of need to strike a balance
        o Admitted to Prof that she is not that optimistic in reality, but trying to
           encourage this.
   Academic circles seem to agree that this is an opportunity for Canada to take a
    stand and give protections even in constantly expanding international scheme
   ***Important conclusions:
        o 1. Too much of tendency to assume that these int’l agreements dictate our
           laws
        o 2. If domestic policy makers do ultimately point to int’l obligation to
           justify owner-centric approach to these new rights, they will just be
           placating special interests
                504 – Raising the spectre of a violation of int’l obligations is both
                   spurious and duplicitous.
   All we really need to know about these treaties is what she has told us

Copyright Conclusion: “balance” is complicated in the int’l realm - At least 3 levels:
 #1. Divergencies in Philosophies of CR – CL v. Civil Law conceptions of CR
      o Idea that int’l system should probably reflect a balance of these issues
      o Berne reflects civilian tradition – protects authors, moral rights, no public
         interest, etc.
      o But with the emergence of TRIPS, etc. more CL creeping it – not just about
         protecting rights of authors.
      o *** But differences are often overstated As long as both are pushing for
         expansion of CR, there may be a tension but not a conflict – mutual goals
 #2. Balancing Between Authors/Owners and the Public
      o Central to development of domestic CR policy
      o Int’l CR has a long way to go before it reflects a balance
      o The new treaties mention balance but is it just lip service or an actual shift?
      o Prof: this is one area where balance is absent in int’l regime and where it
         should be present.
 #3. Balance Between Net-Producers and Net-Consumers of IP Products
      o ***Allan Story “Burn Berne” (506)– idea that Berne should be repealed
      o 3 arguments:
      o 1. National treatment reinforces substantive inequality
              NT is a principle of formal equality – not fair to treat things that are
                 very different in the same way
              Not much licensing fees flow to Zambia from US
      o 2. Balance
              So-called balance is all about Western values.
      o 3. Concept of Values that are central to CR are Western, and therefore an
         int’l CR regime is simply the imposition of an ideology
              Conceptions of individual authorship, etc. are not universal
                                                                                        65


3. INTERNATIONAL ASPECTS OF TRADEMARK LAW
THE ROLE AND FUNCTION OF TRADEMARKS

Overview of TM:
 Definition of TM: also called trade symbols or names – a sign of symbol used on a
  good or in connection with services that is used for marketing a good.
      o 529 – By trade symbols we mean the devices classified in law as TM, trade
          names, or distinctive appearance of goods
 Can really be in any form: letters, numbers, pictures, shape of packaging, etc.
      o Any kind of symbol or indicia that could be used to distinguish wares or
          services in the marketplace (even certain sounds or scents are sometime
          protected, though generally it is something that can be depicted).
 TRIPS (section 2 TM; begins art. 15) is first international convention to define
  TM: “any sign, or any combination of sings, capable of distinguishing the goods or
  services of one undertaking from any other undertaking”: names letters, colours,
  figurative symbols, etc.
 Domestic definition in Trademarks Act (TMA): a mark used by a person for the
  purpose of distinguishing their wares from others.
 Concept of TM as thing that distinguishes the source of the wares/services from
  others in the marketplace,

Distinctiveness of the Mark:
 Since it distinguishes the trader, it must be distinct of the trader.
 TMA Defintions:
 “Distinctive”: a TM that actually distinguishes the wares
 A “Fanciful” or “Coined” Mark – E.g. Exxon or Kodak: only significance is that
   which has been created by the mark
 Weak Marks: Also marks that are not inherently distinctive, but which may
   acquire distinctiveness – generally things that already have some meaning to us: e.g.
   words, common names, etc.
       o Trader who wants to use the mark must create a secondary meaning so
           that it is in fact distinguished – E.g. McDonalds.
       o Descriptive marks – describe the product
       o Generic Mark: essentially just the name of the product (e.g. Red Wine for
           red wine) – if TM becomes so successful it becomes generic, it is no longer
           distinguishing the source of the product but the product itself – by
           definition we no longer have a TM

 Spectrum of Distinctiveness Diagram (online):
Unregistrable          |   Registrable
Generic  Descriptive  D + Acquired Meaning  Suggestive  Fanciful/Arbitrary

   When we are thinking about what a TM is, we must remember that its key
    characteristic is its ability to distinguish – can be created or a weak mark that
    acquires this capacity over time.
                                                                                        66


   Example diagram: Beer (generic), Golden (descriptive), or Golden (acquired
    meaning), Corona (inherently distinctive)
   Even a word that is inherently distinctive could be used in the marketplace so
    that it loses its distinctiveness or the opposite
       o The way the mark is perceived becomes the mark’s reality

Confusion:
 TM law allows owner to stake a claim on the mark – generally has exclusive right
  to prevent 3rd parties to use the symbol in connection with their wares.
      o But doesn’t have to be exact symbol  also right to prevent symbol that is
         confusingly similar (or same symbol with different product).
 TM prevents against confusing uses  flows from public perception: if public
  would be confused, it is infringing, if no confusion, not infringement (generally).
 TMA: “confusion” – if likely to lead to the inference that the wares come from the
  same person. (i.e. mislead as to the source of the wares).
      o If B uses a mark that suggesst to the public that A is the source of the wares,
         than A has an action against B for infringement of the mark.
 Thus, TM law is often about how public views and responds to marks in marketplace.

Goodwill:
 Not symbol or indicia itself that’s protected, but the goodwill towards the owner
 Clearall v. … Case: (in course outline): Goodwill attaching to a TM is the goodwill
  towards the owner that is the advantage or connection to the goods
     o This reputation or connection may have been built up by years of work or lots
          of money, but it is the goodwill that is protected
 B has done nothing in the creation of this goodwill, but want to “free ride” on it

Goal of TM:
 TM is supposed to prevent the misappropriation of goodwill.
 Not concerned with inherent value of the mark as an intellectual creation
 Doesn’t matter who created it (they may have CR in it): we are interested in how
  it allows us to distinguish products and services, to identify source, and to make
  decisions based on this.

History of TM Law:
 In the early stages of industrialization, the guild practice was for craftsman to attach
   marks to their works to ensure honesty and consistency.
 In Roman times, pottery was often marked by the name of the potter.
 In the middle ages, goods would be marked so if there was piracy, etc. they could be
   identified.
 Systemic protection of TM began to emerge in the 19th Century in the CL system
 In CL, origin of TM is in the law of deceive: - if someone had deceived someone.
       o Gradually intent to deceive dropped out, and it was focused on public being
           misled – Tort of “Passing Off” arose
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   1862 in UK, 1868? In Canada TM registry developed – achieved supplementary
    rights or remedies.
   Typically in CL systems we have these parallel sources of rights: right to prevent
    passing off under CL, and rights to protect oneself by registering  supplement but
    don’t supplant each other.
   Ultimately civil law protection developed similar to CL systems
   Closely linked with the development of a market economy.
   4 Distinct but Related Functions:
         o 1. Distinguish products of one enterprise from products of another (or
             within enterprise)
                  This is the primary function practically speaking; helps consumer
                     identify product that they already have exposure to.
         o 2. Allows you to relate TM to its producer – indicates origin or source
                  This is classic “source theory” of TM
                  Difference from 1 is slight – but consumer doesn’t always know or
                     care about the source of the product
                  This is the traditional CL theory, but it often
         o 3. Ability of TM to indicate a certain quality
                  Represents reputation or goodwill – protects TM owner’s investment
                     in the quality of their product.
                  Sometimes called the “guarantee” theory of TM – consumers use it as
                     an indicator of a quality.
         o 4. To promote the marketing/sale of products
                  According to this, the TM really represents the advertising value of the
                     mark, or that the TM has acquired its own “intrinsic” value
   Regardless of function, it is clear that protection of TMs reflects reality of how
    purchasers make decisions based upon symbols  525 – “the protection of TM is
    the law’s recognition of the psychological function of symbols”
   A brand name is a core node in our brain – when we see it, many connections are
    triggered – thus, well developed brands trigger an efficient stream of information.
   It is the advertiser’s job to build up these connections with the brand name

Ralph Brown – Advertising and the Public Interest:
 A critique against the normative provisions of the TM system – too broad
 525 TM is a “merchandising shortcut which induces a purchaser to select what he
   wants or has been led to believe he wants”; end is to convey desirability through TM
 The value that TM law protects is the “drawing power” of this congenial mark
       o Once the reputation has been created and attaches to a brand, then TM owner
          can count on increased sales, brand loyalty, etc.
       o People are also willing to pay more because of the value that is attached to it
          because of the brand.
 The core of the economic argument is that the informed consumer is the perfect
   rational actor – TM conveys information very efficiently.
       o But Brown points out that only a tiny part of advertising is about
          information – it is really about manufacturing desire.
 Advertising differentiates products in the marketplace.
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   UNCATD article: para 33: differentiation of products para 40: advertising is really
    the crucial link
        o Artificially-induced brand loyalty can result in consumer errors from an
            economic perspective I.e. reduces price elasticity – people will pay too
            much for something – competition ceases to perform its role.
        o New brands are introduced without any improvement
   Both articles are distinguishing the informative function versus the persuasive
    function of TM:
        o Brown: problem is that it is hard to distinguish these, so that often TM law
            protects persuasive function.
        o Crux of this critique is that this is of dubious social utility.
   The suggestion by Brown is that TM law is not really about protecting the
    consumer, but protecting the TM owner from competition.
        o The confused consumer is really just front that allows consumers to clear the
            way for their products - Really just protection from intrusion on a monopoly.
   Trend in international law to protect famous marks not because of confusion,
    but because of its economic value  Thus, the distinction between informative and
    persuasive functions is important when determining what we should protect
   Tension between ensuring the fairness of competition and the goals of free
    competition – i.e. TM can create monopolies which is contrary to the public policy
    underlying the system.
   P. 3 – Nice description of our daily bombardment by symbols


REGISTRATION VS. USE-BASED SYSTEMS

Particular Characteristics of TM that may cause problems at the international level
 Very similar functions regulate TM across world, yet laws often look very different.
 The qualities required of TM before they are worthy of protection differs
 Also differences in application systems of different countries  some are more
   onerous than others:
       o Some will check for confusing marks
       o Allowance for opposition
       o US, Canada, Germany are quite rigorous in their evaluation of registration;
          France is very relaxed.
 Requirements on TM owner post-registration:
       o E.g. renewals, etc.
 Like CR, this concept of exclusive national protections leads to partitioning of
   markets – disrupts cross border trade; can lead to discrimination against foreigners
       o Given global nature of trade, we have a desire for a harmonized system
 With TM, we’re talking about trade in any and all trades or services: very broad
       o We will look at how international agreements have dealt with this
 One problem: a brand may be very famous in one country, but registered by
   someone else in another - Potentially this interferes with international ability of trade
 How much protection should be given to well-known marks in other countries?
 What if a famous mark is not registrable in another country? (e.g. generic, etc.)
                                                                                         69


   All of these problems arise because TM is territorial in nature – baseline position
    is that there is no right to prevent others from using it outside your country.
         o If a TM has a separate existence in each nation, that it is perfectly conceivable
             that different people own the TM w.r.t. to different wares in different
             countries  Which one should be given priority on the international level?
   S. 16 of TMA – Sets out who is entitled to register the TM
         o This is one of the more controversial areas on the international level
         o The basis for determining rights may depend on either the use of the mark
             or the registration of the mark  Basic rule is “first in time, first in right”
             – but what does “first in time” entail?
   Two Competing Trends Internationally:
         o 1. First person to register the mark (registration-based systems).
                  Traditionally, this is the civil law system
         o 2. Rights based on first use of the mark (use-based systems).
                  Traditional common-law system

Use-Based System:
 Until it has a distinguishing function in the marketplace, there is no right to protect
 US is good example of country that awards right to person who first uses it.
 One of the virtues of the use-based system is its equity, but its downside is its
   inefficiency because it takes time to develop right
        o In particular, the would-be TM owner cannot protect or reserve the mark
             in anticipation of use – problem is that start-up costs occur before use
 Also, owner of mark by use only has the right to the extent that it has been used
   – i.e. if only in association with computers, than no right in association with cameras

Registration-Based Systems:
 Most countries have used this, but some fairness issues.
 Allows others to know extent of rights
 Also straight-forward determination of priorities – i.e. who owns rights
 Fairly minimal registration procedures – cheaper and less onerous.
       o Also can be reserved ahead of time in anticipation
 Problem: register is full of marks that are not being used.

These are the traditional ideal types
 We see certain normative assumptions in these types as to goal of TM
 These positions have become less stark – in 1998(?) Canada allowed registration
   of marks that had not been used.
 TRIPS: they may make application before use, but don’t get it until use – this is
   the position in Canada and the US now
 Important to see different approaches and how they are reconciled through
   international agreements
 TRIPS has been criticized for failing to recognize link between TM and product.
                                                                                      70


RECAP of TM Concepts and Systems
 Trade marks as symbols/indicia used in connection with products/services in
   marketplace
Core concepts:
 Distinctiveness (defining attribute)
 Confusion (central harm that tm law is supposed to prevent; confusion as to source)
      o Perception of a mark
 Use (different countries place different emphasis on this)
      o CL: use is the source of the right
      o Civil: registration is the source of the right
      o Over latter part of 20th century the systems have come to a middle ground
         where purely use based systems have been borrowing from registration
         systems So now in most countries the systems are a combination of factors


THE PARIS CONVENTION AND TRIPS:

Sources of International Regulations Related to TMs
 TM law is the most territorial in nature of all the IPRs
 Multilateral TM Agreement: Paris Convention for the Protection of Industrial
   Property, 1883 Regardless, domestic TM laws have developed v. differently
 The big problem in the Internationalization of TM law is that you’re dealing
   with systems based on individual national registration  It’s the registration
   element that makes IN’alization particularly difficult (national registers)
 This is why it’s easier with CR: Berne forbids this type of formality (Art. 5(2)).
 TM law is based on formalities per se
 Differences in national legislation and differences in bureaucracy at work in a
   particular country as well (due to the national registration system)
       o E.g. two countries might both only protect distinctive marks but then each
           country’s examiners might determine distinctiveness in a different way…in
           fact some countries don’t even have examination they just grant registration
 Registrations are presumptively valid: registration gets you presumed validity
 The significance of registration depends on the bureaucratic process you must go
   through to get it
Registration of CR vs. Registration of TM
 It’s possible to register CR but the rights you have won’t flow from that registration.
       o Registration just gives you a presumption in your favour that you own the CR.
           No examination process. The fact that you have registered CR in Canada is
           practically meaningless
 TM registration in Canada involves a long drawn out process where the validity of
   the mark is determined prior to registration.
International Protection of TM
 The big reason we need IN protection of TMs is to facilitate IN trade
       o Harmony in TM law would enable you to move seamlessly from selling in
           one country to another - The aim is to approximate a seamless system
                                                                                     71


   In practice: territoriality based on national registration means that TM owner will
    have to get separate rights for each country/territory in which he wants protection
        o As world moves towards a global marketplace we need global TM protection

Paris Convention
 Most important treaty; when enacted it was signed by almost all industrialized
   nations (including US who didn’t sign Berne)
 Objective of ensuring seamless trade and harmonized protection of TMs is achieved
   by granting domestic and foreign producers TM rights in a particular market
       o The national register will protect both nationals and foreigners
 The approach taken to establish the IN system is v. similar to that in CR
 The Paris Convention is on a national treatment basis; non-discrimination
 Drawback: no automatic protection in all member countries upon registration in
   one (country of origin); you need to establish rights in each jurisdiction through
   their registration system

***Analysis of Paris Convention
 Principle provisions that have affected development of system
 Comparisons b/w the international agreement and the domestic law
 Compare this with the additions and developments in the form of TRIPs and NAFTA

Substantive Provisions of the Paris Convention – Principles and Cond. To Register
 Art 2: National Treatment: members must afford nationals the same treatment as
   they afford their own. National laws must be applied w/out discrimination
 Art 6: Independence of Protection (anchor in national law): regardless of the
   origin of a mark, a union country can apply its own domestic legislation when
   determining conditions for filing and registration.
 Art 6(2): Initial registration in the country of origin cannot be a prerequisite to
   protection elsewhere
 Art 6(3): marks registered in one Union country are independent of marks
   registered in other Union countries. I.e. Independence of Rights: nothing that
   happens to a mark in one country should have any effect on what happens to it in
   another country. This rule extends NT to an extreme.
SUMMARY ART 6: Overarching principle and affirmation of trademark territoriality
 The following principles minimize the potential severity of the NT provisions
EXCEPTIONS to independence of rights principle
Art. 6qq: “telle quelle provision” (or the “as is” provision)
 Every TM duly registered in its country of origin shall be accepted and protected
   “as is” in the other country  provides some benefit to owners of TMs that have
   been registered in their country of origin - This provision makes the initial
   registration a basis upon which to seek and receive protection in other countries
 Art 6qq(a): defines country of origin: Union country where there’s a real and
   effective industrial/commercial presence, Union country of domicile, Union country
   of nationality, if none fit then you can’t benefit from the convention
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   Requirement that the mark be “duly registered”: does this mean validity? Simple
    registration?  Must be registered (not just use or application to register)
 Where registration already exists, move away from independence of rights principle;
    we see extra-territorial effects flowing from registration in the country of origin
 This article is controversial b/c it may permit the registration of marks in a
    domestic system that would otherwise be unregistrable
 Ellwood Article pp 549: E.g. Russian law only protect marks in Russian lettering;
    French applicant wants to register a mark  if you apply telle quelle principle Russia
    must register mark if it was registered in France.
        o So we’re seeing a disparity b/w the treatment of nationals and foreigners.
            The foreigners are getting more protection than the nationals
 Tension: Britain’s Registry refused to allow registration of marks that would not be
    registrable in UK (e.g. those lacking distinctiveness, pp 552 “syrup of figs”,
    “Carter’s little liver pills”)
 Over course of negotiations there has been watering down of telle quelle principle
EXCEPTIONS: to the telle quelle principle
Art. 6qq (b): (i) If mark would infringe rights of 3rd parties in the country (where
protection is claimed); (ii) if it is devoid of any distinctive character (generic, descriptive
marks); (iii) if contrary to morality/public order the country doesn’t have to register it
Art 6qq (c)(2): Registration should be of the mark as is or substantively similar wrt
all distinctive elements  once you make changes it might lose its distinctive character
such that telle quelle no longer applies and application and be refused.
Art 10 bis: Protection of nationals against unfair competition  If registration would
constitute unfair competition then it’s not registrable and it’s an exception to the TQ rule
SUMMARY of exceptions to telle quelle
 Overall result is to relieve countries with a more onerous registration system of
    the obligation to protect marks they wouldn’t otherwise protect
 Once registered in another country by way of telle quelle it’s now a new
    independent registration and not dependent on the first one in the other country

Domestic Legislation: Canadian TM Act – Conditions of Registration
 There are special provisions dealing with registration of foreign marks
S. 16 (2): entitlement
 Marks can be registered (title and right to apply) purely on the basis that it was duly
    registered in the country of origin of the applicant and was used
 Country of origin is defined in s. 2: any country of Paris Union or member of WTO
 ***Potential problem: are we in violation of our international obligations by
    requiring both registration and use in the country of origin?
        o This leads us to question the scope of Art 6qq: do the factors go to the
            form/content of the mark or the function/use?
        o If it goes to function/use then telle quelle does not require countries to register
            something that is not a TM or something that has not been used
        o TRIPs “members may make registrability be based on use”: so our provision
            is OK by TRIPs  But TRIPs also says that actual use cannot be a
            requirement for filing an application
        o We won’t know the answer until someone challenges it
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S. 12: conditions for registrability (s. 14 for foreign registered marks)
 S. 12 sets out lots of rules for when a mark is registrable or not
 S. 14 sets out less rules for marks that have been duly registered in country of origin
 The effect is that foreign marks can be registered in Canada even if they would
    normally be barred by s. 12  So we see foreigners getting more rights than
    nationals b/c the s. 14 requirements are less onerous
 S. 14 just has the same limitations as Art. 6qq: confusing, w/out distinctive
    character, contrary to morality, prohibition in s. 9/10
 Practically speaking s. 12 and 14 might not really be that different  Main
    distinction is whether something has distinctive character: proof of
    distinctiveness in Paris is less than the national standard in domestic legislation

Substantive Provisions of Paris Convention - Priority
Art. 4: Priority to register This article could be considered another exception to the
independence of rights principle in Art. 6
 Art 4(a)(1): right of priority during the periods hereinafter affixed
 “times hereinafter affixed”: anyone who filed an application for TM registration in
   Union country has 6 month right of priority to register in other Union countries
 We have a first in time first in right system so it’s v. important for an applicant
   to get the earliest priority date possible  This rule means that w/in 6 mos of the
   first application in a member state the applicant can register a mark in other Union
   countries using the first filing date to establish its priority
 Different systems have different ways to establish priorities: e.g. Application date
 It allows applicant to decide in which countries it wants to file, to get documents
   in order, to file in other countries w/out risking being beaten to the register
        o Otherwise, there is a danger that you could file in Canada and then look into
           whether the mark is registrable in US and then someone else registered in the
           US in the mean time
 This rule ensures that b/c you applied in Canada if you apply in US in 6 mos you get
   the better priority regardless of whether someone else started using it
        o Minimizes the effects of territoriality in the system
 This provision is in there to facilitate cross-border trade and function of multi-
   national trade operations  Traders don’t want to be limited to just one jurisdiction

Domestic Legislation in Canada - Priority
 TMA S. 34 (1) (a) Priority Rule: date of application in a Union country establishes
  priority in Canada w/in 6 mos of having filed application in the country of origin
 Different from telle quelle b/c it’s premised on application rather than
  registration (in some countries it’s the same b/c application = registration)
      o In Canada it’s not b/c there’s a long time b/w application and registration

Substantive Provisions Paris Convention – Well-Known Marks
Art 6bis: well-known marks
 Pp 563: the mark is already well-known so this should be a basis to prevent its
   registration by someone else if that would create confusion
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   Well-known mark doesn’t have to be registered in that country in order to
    benefit from Art. 6 bis protection
         o Protection flows from reputation/notoriety rather than registration
   If a mark is well-known then it would be contrary to public interest and TM owner’s
    rights to allow someone to use a confusing mark
   Whole thing comes down to what does it mean for a mark to be well-known: this
    is left up to the country in which protection is sought
   A mark can be famous in one country and not another
   This article lacks some teeth

Domestic Legislation in Canada – marks known in Canada
S. 16(1): registration based on making mark known in Canada
 Prevents someone from registering or using a mark that has been made well-known
    by someone else b/c making it known gives priority
S. 5: def’n of making known:
 TM is deemed to be made known in Canada if it’s been used in a country of the
    Union AND distributed in association with the mark or advertised in association
    with the mark in Canada (printed publications circulated in Canada or radio
    broadcasts received in Canada)
        o If we leave it up to countries to decide what it means to be well-known then
            they can just protect the kinds of marks they would have otherwise
 Notion of Art. 6bis is that you don’t have to be active in a market to get rights
    there so if someone tries to free ride off your goodwill then you can stop them
        o A party’s reputation might outgrow their commercial reach
 In Canada we have tailored what it means to be well-known, so we do require
    business activities of a sort
        o However, you still have CL rights in Canada that you can enforce (Orkin):
            if someone tries to free-ride your goodwill you can sue them for passing off
 Can an IN obligation to protect something be effective when that things isn’t
    defined and each K’ing state is free to determine what that thing means?

Substantive Provisions of Paris Convention – Prohibited Marks
Art 6 ter: prohibited marks: Distinctive signs of states & IN intergov’tal organizations
 Obligation to member states to refuse or to invalidate registrations and prohibit the
    use of the signs specified in the article (armorial bearings, flags, emblems, official
    signs, official hallmarks indicating quality or control over quality, etc.)
Domestic Legislation in Canada – Prohibited Marks
S. 9 (1) ((1)(i) (ii) (iii) in particular): Used as “TM or otherwise”: we have this in TM
and that means we go further than our obligations

Other Substantive Provisions of Paris Convention worth noting…
Art 6 sexies: Countries of the Union undertake to protect service marks but are not
required to provide for their registration
 Paris Convention draws a real distinction b/w service marks and marks used in
   association with wares  The former don’t need to be registered at all
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   Distinction reflects an outdated understanding of IN trade (1883: only wares were
    ship-able)
 TRIPs and NAFTA make it applicable to service marks
 Outdated/moot point in light of subsequent IN agreements
Art 7: The nature of the goods to which a TM is to be applied shall in no way make
an obstacle as to registration of a mark.
 If the wares aren’t lawfully traded this won’t prevent the tm from being protected.
Art 5(c): Compulsory use of a mark in any country where use is compulsory,
registration can only be cancelled if it has been for a reasonable period of time and only if
there’s no good reason for it  TRIPs says uninterrupted period of at least 3 yrs

Domestic Legislation in Canada- Compulsory Use of Mark
S. 45(3): TM will be expunged if not used for at least 3 yrs with no valid excuse

Recap:
 These are the substantive provisions of the Paris Convention.
 Generally we’ll find when talking next about TRIPS/NAFTA, we’ll see that
   TRIPS supplements Paris (TRIPS Art 2 requires members to comply with Arts 1-
   12 and 19 of Paris)  Where there is cause for confusion in Paris often TRIPs and
   NAFTA have clarified the provisions.

Paris Convention Continued (1883, last amended in 1979)
Contributed at least 3 very significant factors towards development of international
   TM regime:
       1. Introduction of national treatment (art. 2) - Also supplemented by
           independence of rights (art. 6) – e.g. invalid
       2. Inclusion of certain minimal procedural mechanisms – to facilitate
           acquisition of TMs abroad – e.g. telle quelle (person who has registered a
           mark in country of origin has right to register as is) and art. 4 priority
           provision – relevant date is that of first registration is application in other
           countries is made within 6 months)
       3. Basic levels of unfair treatment and competition protection – art 6bis
           (protection of well-known marks against confusing uses; this extends to
           country where it is well-known regardless of registration), and art. 10bis
           (also effective protection against unfair competition – e.g. confusion, false
           allegations, or those likely to mislead public as to quality of goods, etc.)
Other major agreements affirm and supplement these provisions

TRIPS versus NAFTA
NAFTA was largely based on a draft of TRIPS
Art. 2 of TRIPS – requires members to comply with articles 1- 12 and 19 of Paris
   Convention (PC)
        1701(2)(c) of NAFTA – requires compliance with PC
Art. 15 – TM defined: any combination of signs capable of distinguishing the goods or
   services – important part is that it extends protection to services (no obligation to
   provide for the registration of service marks under Paris – TRIPS remedies this)
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       Similar provision in 1708(1) of NAFTA
Art. 15(3) – Allows members to make registrability dependent upon use
       This had been in doubt following PC – wasn’t clear if this could be part of
            domestic law  Here statement was that yes it could be, but that “use would
            not be a requirement for filing of an application for registration”
Art. 15(5) Also requires publication of TMs (either before it was registered or after) –
   in Canada we require it upon application
       Also requires reasonable opportunity for petitions to cancel registration
       And may give reasonable opportunity to oppose registration of TMs
1708(4) is a bit more specific
       Requires the examination of application
       Notice of refusal to register
       Publication of TM before or after, and
       Reasonable opportunity to cancel registration.
TRIPS is also significant in rights conferred under domestic law
Art. 16(1) – owner of registered TM has exclusive right to prevent other using identical
   or similar sign, or i/s goods or services where it would create confusion
       If it is the same sign, then confusion will be assumed.
       Can TMA – s. 20: right of owner shall be infringed by person who sell wares or
            services in association with a confusing mark
Art. 16(1) - Also: Rights shall not prejudice any existing prior rights, nor shall it affect
   possibility of member states making rights available based on use
PC Art. 6bis – had proved quite weak w.r.t. international piracy
Art. 16(2) – extends 6bis of PC to services
       Also discusses well-known marks – “shall take account of knowledge of TM in
            the relevant sector of the public”
       And if it known as a result of “promotion of the TM”
Art. 16(3) – All that is necessary to get protection is that another person’s use can be
   an indication of a connection with goods/services of TM owner
       Connection is enough – doesn’t haven’t to be in same goods/services
                 Prof is unsure if this is about liability beyond confusion or about defining
                     confusion
       Attempt to expand liability of 6bis of PC – due to dilution notion?
       But more limited because is says “TM is registered” and “registered TM” –
            whereas 6bis has some protections for unregistered marks
Art. 17 – Exceptions to infringement – very bare bones
       Members may make limited exceptions, such as fair use of descriptive terms,
            provided they take account of legitimate interests of owner of TM
       E.g. Can TMA 20(1)(a) can make bona fide use of own personal name as a trade
            name  or any other bona fide use, other than as a TM, of: the geographical
            name of his place of business, or any accurate description of the character or
            quality of his wares or services.
Art. 18 – Term of Protection – Indefinite renewal, but initial term must be at least 7
   years – this is to help with problem of renewal of TMs in many countries.
1708(7) NAFTA – 10 years is minimum time required before renewal
       Canadian approach is actually 15 years.
                                                                                      77


Active Use:
       PC allowed this requirement, but marks couldn’t be forfeited for non-use except
           after a reasonable period and then only if…
       Art. 19 TRIPS – uninterrupted period of non-use has to be at least 3 years, absent
           any valid reasons
       S. 45 of Can. TMA – uses 3 year timeframe, and allows for excuse to be
           provided before their TM is expunged for non-use
       1707() – uninterrupted period of at least 2 years
Art. 21 – Licensing and Assignment: precludes any compulsory licensing of TMs
   (which is usually a policy idea)  forbids this taking away of owner’s rights
       A bit of a coup for the developed world
       Art. 21 also allows for the assignment of the TM with or without the transfer of
           the business (which was the historical limitation of many countries, including
           Canada).
       S. 48 of CTMA – TM, whether registered or not, is transferable with or without
           the transfer of good will – significance?
       Also in 1708(11) of NAFTA

Other TM Treaties Deal with Registration of TMs and Acquisition of Rights:
Madrid agreement (1891)/Madrid protocol – allows for one registration to count as
   registration in many states  Canada is not a member of either, but US has
   recently become a member of Madrid protocol
European Community TM - allows for a single TM application which is than
   enforceable in every country of the Union.
       This differs from the other agreements we have looked at which are based on
           national treatment and state to state relations.


TRADEMARKS AND TERRITORIALITY
Case Law – shows international tensions in practice

Person’s Co. v. Christman (US 1990) (596):
Always cited as example of idea that territoriality of TM allows piracy on a domestic
    level – Prof. thinks this is a bit of an overstatement
Facts: P is Japanese co., had been marketing “Person’s” clothing – did quite well
D bought clothes, returned to US and started selling clothes w/ copied logo/designs.
In 1983 D acquired TM registration in US – court accepts he didn’t know P was planning
    on entering US market - 7 months later Japanese products went on sale in US – filed a
    TM application that was granted - In 1986, companies became aware of each other
    and P filed an application to cancel D’s registration -
Issue on appeal: does knowledge of mark’s use outside US preclude good faith
    adoption of that mark within the US even though this is prior to the entry of the
    foreign user into the US market?
        Demonstrates that notion of good/bad faith is entirely subjective – they seem to
            rely on fact that he consulted a lawyer regarding the territoriality of TMs.
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*** In the Canadian context, if it gets to the point that the public would associate the
   mark with another person, you could get the mark expunged because it no longer
   identifies the source.
598 – each party claims prior use, but P’s prior use is in Japan, which has no affect
   on US commerce and is irrelevant here.
Court concludes P is the “junior user” of the mark (i.e. not first person to use mark)
    Christman is Senior user because we don’t look at the issue globally.
Argument: this must be bad faith since D knew about use of mark in US – but this is
   irrelevant due to territoriality of TM rights - Based on 6bis and 10bis of Paris
“An inference of bad faith requires something more than knowledge of prior use in
   another country” - Quite a controversial since it was obvious copying
Also interesting that D’s use was intermittent and not very successful – a successful
   brand has been blocked from global expansion by this
       Court: there is no rule of TM law that requires a certain level of success.

Two Articles Discuss Person’s – re: TM “Piracy”
Both commentator articles argue for a remedy –
James Carney (572, para 2): View that imitator is trying to pre-empt entry into US
   market – evidenced by their knowledge – should give original TM owner protection
Beth Fulkerson: Another proposal that WTO should give right based on use abroad if
   that use is known to domestic imitator.
These go beyond current treaties – 6bis only protects well-known marks.
       Prof – this is a little sketchy, but then again, there are methods for protecting
          your marks if one is serious about it.
Both commentators think this decision fails to recognize realities of international
   trade – brands do expand internationally – this is a barrier

Canadian Context:
First person to use it in Canada would be entitled to register it - We have national
   system: use anywhere will prevent a secondary use, but not if it is across the border.
Dinwoodie - Political territoriality vs. Intrinsic territoriality - 641 – see his terms
        This case is an example of political territoriality – just a legal issue
        Intrinsic territoriality means that the goodwill attached to a mark will only
            have a finite reach  But the national register gives protection far beyond
            the intrinsic territoriality of the mark.
        If we were really concerned with intrinsic territoriality, we would barely
            acknowledge the national border. - Relationship between Canada and US is
            often closer than East and West coast Canada
Question of bad faith could have been a factor in Person’s
        Prof doesn’t see much relevance of bad faith in Canadian law – doesn’t think it
            will be a factor in registration.
TMA S. 17(2) - As between two domestic actors, bad faith may be relevant, since there
   is no time limit for a senior user to seek the expungement of a junior user’s
   registration if the junior adopted the mark with the knowledge of the senior user’s use
        Normally, the registrant is safe after 5 years – but if there was bad faith, this
            time limit does not apply.
                                                                                          79


If we have a foreign use, and the domestic user has adopted it in bad faith, this does
    not seem to be relevant – foreign user can’t establish prior use or making known in
    Canada – likely have no basis to challenge mark.

Territoriality of TMs  they are protected, enforced and acquired on national basis
This leads to two propositions:
        1. Registered TM gives rights only in jurisdiction where it is registered
        2. Even if TM holder has rights in several countries, an action in domestic
            court can only involve the vindication/enforcement of domestic rights.
In the cases that follow, some deal with the extraterritoriality of TM in the US, and
    what can a domestic owner do to protect themselves from foreign courts.
        Establishing priority, registrability, obligation to use mark, etc. – no good
            Canadian cases on these issues

Steele v. Bulova (US SC 1952) (603)
Facts: One of largest watch manufacturers in the world – Steele is a US citizen who sells
    fake Bulova watches in Mexico – registered Bulova in Mexico
Issue: can a US court enforce the rights of a US TM owner against the allegedly
    infringing activities of a US citizen abroad? - Seems to be yes
TJ: dismissed case on basis of no jurisdiction – no illegal acts within US
CA: reversed this – dissenting judge (603) says no jurisdiction since only involving
    internal Mexican commerce
SC: - affirms CA – applies US law to conduct of D
Domestic law may apply extraterritoriality – the question is one of legislative intent.
        Was there legislative intent to regulate this sort conduct beyond US borders?
There was some potential damage to reputation in US – some people would take broken
    watches to Bulova in US
606 last para – SC notes that Mexican courts had by this time invalidated the
    foreign registration – therefore no conflict regarding sovereignty of Mexico
If there is some connection to home country, if comity does not preclude it, then maybe
    domestic court will regulate conduct abroad if it is conduct its own citizens.
This case is a bit of an exception to the general rule that a registered TM only
    confers rights in the territory where it is registered.

Review of Persons and Steele:
Person’s Case:  Classic example of “theft by territorialism” – copying mark before
foreign owner had a chance to enter the marketplace.
Was this a necessary evil? - Lauren
Was this a flaw in existing international agreements? – Dan
Is this a good thing? – Prof raised

Steele v. Bulova
Alleged infringer was a US citizen in Mexico – given the effects in the US and the
   citizenship, US court felt it was appropriate to take jurisdiction and apply US law.
This may be a limit to territoriality – simply moving your operation across borders
   may not be enough to avoid liability.
                                                                                        80


But this is the exception rather than the rule – the rule is that only infringing
   activities within national boundaries are subject to national law – see next case

Vanity Fair Mills v. Eaton (US SC 2nd Cir. 1956)
 US court refused to take jurisdiction  Canadian trademark law governed
   because alleged infringing activities occurred in Canada.
 Facts: P is Pennsylvanian company – been registered TM holder for a long time.
 D was Canadian company – applied to register Vanity Fair mark in Canada in 1950
 P had a long history of using mark in Canada, but only started in 1970
 For about 8-10 years an arrangement was made whereby D distributed P’s wares in
   Canada – but in 1953 D began to sell its own goods under the mark as well.
 Sidenote: Canadian registration could potentially be expunged because it is not
   distinctive anymore because it no longer points to Eaton’s as sole source
 Instead, P brought an action in NY claiming D was infringing their mark and sought
   injunction in US and Canada
 Issue: Can US law be applied extraterritorially to actions that would be infringing
   if they occurred in the US? Can the court even take jurisdiction?
 609 – Court declined to assert jurisdiction over the conduct – “rights and
   liabilities of US citizens that compete with foreign companies in their home territories
   should be determined under the foreign law” – lex loci delicti
        o This is a matter of practicality, and international comity.
 Court decided that this flowed from principle of territoriality that was implicit
   in Paris Convention – NT consolidates rather than overturning the general
   principle of territoriality of TMs.
        o Rights of owner of US TM is subject to the limitation of US law in the
            boundaries of the US – can expect to be protected in Canada to the extent that
            Canadian law allows for its citizens (as per international agreement).
 Distinguishes Bulova (612) – here D is not a US citizen – Bulova was premised on
   idea that US law can apply to its citizens abroad.
        o Also, here there is a presumptively valid registration by D.
        o In Bulova, D’s mark had been found to be invalid by time of appeal – no
            potential clash between Mexican and US law (unlike this case)
 611 – We do not think that congress intended that the infringement remedies provided
   in the US law applies to acts of a foreign national in their home country under the
   applicable law.
 This insistence on territoriality means that P alleging infringement in several
   countries must sue in each country – not efficient from this perspective.
        o But politics takes over – very controversial to apply a state’s laws in other
            jurisdictions
 **** Vanity fair as rule, Bulova as exception

Remaining cases in this section are Canadian – deal with foreign TM holders
attempts to assert rights in Canada  *** Show that foreign holder have an uphill
battle in spite of international agreements (haven’t achieved that much)

Wian v. Mady (Ex. Ch. 1965):
                                                                                          81


   What did Canadian law fail to do that it ought to if we want a more int’l system?
   Facts: P is trying to have D’s mark expunged from the Canadian register
   S. 57 TMA – an interested person can apply to court to have TM struck out of the
    register on the basis that it does not accurately reflect that person’s rights.
   D has registered Big Boy TM in Canada in association with Hamburgers and food (P
    has it in Canada – little doubt about confusion)
   P claiming invalidity of D’s mark on the grounds that before it was used by D it was
    already confusing with their mark which had been made known in Canada
   This is under Art. 6bis of PC – protection to well-known marks (despite lack of
    registration)  P must show that TM was well-known in Canada before D’s use
   But what is meant by “well-known”? Up to national laws to define.
         o In Canadian Act, the provisions are quite restrictive.
   TRIPS 16(2) – in determining if a TM is well-known – shall take into account
    knowledge of the TM in relevant sector
   CTMA s. 5 – TM deemed to be well-known in Canada if it is used by that person in
    a country of the Union (other than Canada) and
         o (a) the wares are distributed in Canada, or
         o (b) the wares/services are advertised in association with it in
                  (i) any printed publication circulated in Canada
                  (ii) radio broadcasts ordinarily received in Canada
         o And it has become well-known within Canada from advertising/distribution
   Needs to be use by an owner in order to ensure continued validity of mark – use by
    franchisees does not count in Canada (but it does count in US)
   Court applies Canadian law to see if it has been used in the US
         o Canadian act has since been changed so you don’t have to – now control is
             the relevant factor – this is required now by Art. 19(2) of TRIPS
   Thus, in any case, it is the law of the country where it is used (?) that governs whether
    it is well-known
   Court went on to other requirements and was equally restrictive in applying them
         o Refused to consider any knowledge Canadians might have due to being in US
         o 619, para 2 – only publications in Canada in the ordinary course of
             commerce are relevant (i.e. putting them in the hands of members of the
             Canadian public)
   Some radio broadcasts from Buffalo had reached Windsor – might have applied
    b/c of s. 5(b)(ii) – but court said it must be known in Canada due to this, and
    further must be “well-known” in Canada (which means knowledge of it must
    pervade the country to a substantial extant).
         o In subsequent case law, we have said that if it is a substantial part of Canada,
             this is ok (e.g. Ontario).
   When there is something directed at the Canadian audience, which results in
    knowledge, it should count – but just because we know of something do to popular
    culture doesn’t meant that there is knowledge for the purposes of the Canadian Act
    – this is because of lack of a definition of “well-known” in international convention
   So there are plenty of obstacles to this approach of acquiring a TM in Canada -
    next option is to apply to register a mark in Canada
                                                                                         82



Telle Quelle

Boston Pizza v. Boston Chicken (FCJ 2003):
 Facts: P had applied to have 2 TM expressions expunged – word mark and design
   mark – on the basis that they were confusing with P’s mark
 TJ dismissed application – no confusion (but did state that D’s mark was not
   inherently distinctive)  On appeal, lack of distinctiveness is also asserted
 CTMA S. 18(1)(b): TM invalid if it is not distinctiveness at time it is challenged.
 “Distinctive” means it is “actually distinctive” or is “adapted to distinguish”
       o P says it is not adapted to distinguish since it is inherently not distinct, and it
            is not actually distinctive because it has not been used in Canada.
 Court: it is irrelevant if TM is distinctive outside of Canada, only matters if it is
   distinctive within Canada
 624 - D argues that if distinctiveness cannot be attained by foreign use, how is it
   that foreign TM holders will be able to register TMs in Canada?
       o Court says exactly – in support they note s. 14, where registration
            requires a mark be not without distinctive character – but note that it only
            says we should have regard to all the circumstances including the length of
            time it has been used in Canada.
 Court says this is less than distinctiveness, but still requires some acquisition of
   distinctiveness in Canada.
 This case is not inherently distinctive – so what does it have to do to be registrable
   in Canada? Must acquire some element of distinctiveness through use in Canada
       o This even seems to imply that it must go beyond making known in Canada.
 Maybe court didn’t notice that use in Canada might be different from making known
   in Canada.
 Justification is that distinctiveness outside Canada is irrelevant: the consequence
   of this is that only inherently distinctive marks are registrable in the absence of any
   use in Canada – s. 16(2) seems like it is there to apply the telle quelle principle,
   but following this case, that will only apply if it is inherently distinctive (or at
   least that you will have to use it in Canada and acquire a secondary meaning before
   you can say it is not without distinctive character).
 Many people have said that if you do register your mark, you must use it quickly
   to protect against challenge – *** but actually this goes further in that it means
   they can be challenged on the basis that they were not registrable to begin with.
       o i.e. if it doesn’t satisfy s. 14, that it was not registrable to begin with
       o Although in reality, courts tend to say it has acquired distinctiveness so that is
            enough, but on the law this perhaps should not occur.
 Thus someone that has to register mark on the basis of 12(2) (i.e. that has become
   distinctive by date of application).
 Prof thinks knowledge in Canada should definitely be enough, but this case seems
   to say that only use will be enough.
 Question is really how much these provisions eat into the telle quelle provisions

Porter v. Don the Beachcomber (Ex. Ch. 1966):
                                                                                      83


   Illustrates the burdens imposed on owners of foreign marks if they want to
    maintain foreign marks in Canada
   Facts: Concerns what is now s. 45 of the TMA – obligations to use a mark
   Originally it was an application to have the mark expunged on the grounds that it was
    not in use – s. 45 requires the owner to produce evidence on request that it was used
    in the last 3 years, or give a valid excuse.
   Notice in this case they don’t have the 3 year requirement
   This kind of provision was allowed by Art. 5(c) of PC – but what is “reasonable?
   Art. 19 of TRIPS  at least 3 years is reasonable (NAFTA had said at least 2 years).
   Seems that mark had been on the register since 1961, request come in 1964 – but
    registrar refused to exercise his discretion to expunge the mark on the basis of non-
    use – it is this decision that is being appealed.
   Issue: The question is whether owner of the mark has actually used the mark in
    Canada – provided evidence of advertisements that were Canadian, but for its
    California restaurant. Does this count as use?
   Holding is that no, it does not  not just use, but use of the TM in Canada
   First Point: even though foreign registrant has a basis on which they can apply to
    have mark registered in Canada, doesn’t mean they can just occupy the Canadian
    register – at some point you must use it within Canada, or it can be expunged.
   The court’s reason is based on the fact that making known is different that use –
    it would be redundant if you just had to advertise once in awhile to avoid S. 45 –
    must be active in the Canadian market.


PRIORITY UNDER THE PARIS CONVENTION

Crocker National Bank (US 1984) (642):
 Priority of registration – this time the relevant application is Canadian and the
   registrar is American
 We finally see the international agreements being used as basis for foreign rights
 Facts: CIBC filed COMMCAST in association with banking services – didn’t assert
   use anywhere, just on the basis of their Canadian application.
 Had not yet used the mark in Canada but had filed to use it under 13(3)?
 P wanted to oppose the application – moved for summary judgement on the basis that
   it was void of issue due to lack of use.
 Art. 6qq – telle quelle: Requires application to specify the mode of its use and
   submit some evidence of that use (in spite of fact that s. 44 allows application based
   on foreign application (or registration?)).
 Court holds that it is true that D had not used its mark prior to its US
   application, but to hold that this was required would be contrary to ….
       o ***If we want to defend 16(2) and the requirement of use in Canada, we
           have to disagree with this decision
 The determinative consideration in this case was that s. 44 must be interpreted as
   allowing foreign applicants to attain registration without use because this is the
   only interpretation that’s consistent with treaty obligations under Paris Convention.
                                                                                      84


   6.. para 3 – s. 44 was intended to implement this – we are required to give an
    interpretation that is consistent with this.
   646 “there is no question that an unvarnished reading of Art. 6 cannot justify
    excluding the registration or protection of a mark based on a foreigner’s failure to
    meet requirements of use..:”
        o This is a substantive requirement, not explicitly allowed in Art. 6
        o It depends upon distinction between form/nature of mark and external
            considerations.
        o This board says this argument is nonsense – the Canadian foreign … office
            says this is the basis for our …
   Issue: whether the Canadian law is therefore in violation of the Paris Convention?
   Crocker is continued below

Review from Last Class - Difficulties foreign TM owners might face
 Vanity Fair: must rely on TM rights in Canada
 Wian Decision: while it is true foreign TM owners can rely on making known in
   Canada, must satisfy s. 5 of TMA to do so  Very restrictive/specific – possible a
   mark is well-known but will fail to meet this.
 Boston Pizza: while foreign TM owners can use that as the basis for registration
   in Canada, if it was not distinct it must be used in Canada to acquire that
   distinctiveness  This is arguably consistent with PC since you are allowed to
   refuse registration on basis of lack of distinctive character
 S. 15 of TRIPS: where signs are not inherently capable of distinguishing marks,
   states may make registration depend on distinctiveness acquired through use.
       o Use must be within Canada….
 System that has some protection for foreign owners, but actually quite restrictive
 The result is that TM law in Canada is territorial, largely use-based
 Intrinsic Territoriality vs. Political Territoriality - Dinwoodie
       o Cultural or commercial borders are not necessarily the same as political
           borders (between countries)
       o The latter are only significant because we make them so.
       o Really it is shared cultural and commercial realities that define how TM
           operates – the challenge for international TM law is to mediate between these
           commercial borders and political borders.
       o The failures of the international TM system are due to the political borders

Crocker – Priority of Registration (continued)
 Example of potential significance of international agreements when they are not
   subjected to a restrictive interpretation. - Consequently it’s been very controversial
 Facts: Crocker National Bank tried to have CIBC’s US application declared void on
   basis that it had never used the mark in any jurisdiction
       o They had applied for it under s. … for proposed use – then used this as basis
           for US registration.
 Board allowed the application to proceed not withstanding the absence of use.
       o This is the only interpretation of the act that would be consistent with the
           US’s PC obligations – registration of mark telle quelle.
                                                                                       85


       o I.e. we cannot ask for anything more than foreign registration
       o If use was required, this would be a substantive provision that was not one
           of the allowed types under PC - PC exceptions (…B)
 Rejecting argument that these exceptions go only to the form of the mark (i.e.
   what kinds of marks are registrable) and not to external conditions for its
   registration. – PC art. 6
       o 647 – basis for the rejection is that the distinction simply doesn’t work – e.g.
           you can refuse to register to a mark on grounds that it is confusing with
           another mark (this is an external condition)
       o Nothing in the negotiations to suggest it was limited in this way.
 Board – First Reason: it would be wrong to say that a use requirement was just a
   formality – it would have the substantive effect of killing art. 6qq
       o 648 (2nd last para) – this would be a means of rejecting substantive effect of
           convention (also 649 last para)
 650 – Second reason: requiring foreign use would actually be contrary to
   common law principle of territoriality (i.e. would be attributing legal significance
   to things occurring outside of US borders).
       o This reason has come under attack – i.e. cutting off nose to spite face
 Reference to Lemon Tree Case: (explained on 642) – use in the home country could
   not be a prior condition of filing – board underscores this position despite obiter and
   some other case law.
 *** Result: mark can be registered without evidence of use anywhere (contrary
   to prior belief)
 Crocker case is still leading case on interpretation of s. 44
       o Exception to general rule that use must precede registration
       o Thus, in US the only situation where use is not required is for foreign
           users – leads to controversy.
Final Criticism of Case: failed to recognize Canadian condition of prior use somewhere
   in the world – i.e. this would not have been awarded to a US applicant if situation had
   been reversed, but they did it in the name of an international agreement that both are
   party to.

Leaves question of whether Canada is in line with our obligations under 6qq –
according to Crocker the answer is no (use is in fact required for foreign
registration)
16(2) of CTMA – we do require registration in foreign country and use
S. 30(d) – what person has to do to get TM: has to give name of county in which TM
    has been used
According to legal counsel in Canada (miscellaneous materials online), we are in
    compliance with art. 6qq and have gone overboard with our inclusion of s. 16(2)
    and (3) of CTMA (i.e. not necessary)
       On its face, art. 6qq appears to be far-reaching, it has traditionally been
           accepted….
*** This position completely contradicts Crocker position – depends on whether we
    take internationalist view of TM, or a territorial view.
                                                                                        86


Distinction between Form and Substance
 Really talking about internal characteristics of mark itself; e.g. don’t register smells
 Basis of telle quelle: Russian position of not registering unless in Russian characters
   rejected - Difference between form of mark and requirements of certain procedures
   to get registration
 *** Question becomes whether use is a permitted additional requirement
       o Not explicitly permitted under 6qq
       o Crocker position: therefore it is not permitted
       o Canadian: those are just the substantive requirements that are permitted, but
           we can always require the same requirement we do of nationals (i.e. use)
 Depends on our view of international agreements – how they should be interpreted.
 Crocker position: you don’t want to give better protection to foreign nationals, but
   that’s what our international obligation entails.
 The cases from last week reflected the restrictive approach and Canadian legal
   letter also shows this.


INDEPENDENCE OF RIGHTS IN INTERNATIONAL TM LAW
 Next few cases deal with issue of Independence of Rights in International TM Law
 What is the significance of foreign registration when they seek to enforce their rights
   in our country?
 Origin of this: PC art. 6(3) – Principle of Independence of Rights

Ex parte Dorin, Inc. (US PQ 1954) (653)
 Facts: Mark registered in France in 1913 by French citizen – applied for US
   registration on basis of French registration – given in 1940
 Renewed several times, but French registration not renewed since 1928 (now expired)
 Issue: could US registration be renewed despite lack of French registration?
 Decision: yes, because US registration is now independent of French registration
   and can be renewed without any French basis.
 Under US TMA of 1905, it said registration shall cease to be in force on day that it
   ceases to be protected in country of origin.
 Prior to 1934, there was nothing in the French registration that….
 In 1934, principle of independence of rights added to PC (i.e. what is now 6(c))
       o Came into force in 1939 – then good law in US
 If there is a conflict:
       o First try to reconcile, but if unable to do so, the later law rules (i.e. PC)
 656 – Therefore, 6(d) super-ceded US TM law w.r.t. term of foreign marks.
 After registration, mark is subject to local law.
       o When the treaty provision came into force (i.e. principle of independence of
           rights), and the TMs were registered in both countries at the time, the US
           registration became independent of French registration
 This case illustrates the core of the independence principle – next few cases show
   exceptions to this principle - Independence only kicks in once it has been registered,
   not on acceptance of application
                                                                                         87


   *** Thus, even if foreign registration upon which it is based is later invalidated,
    once it has become independent this has no effect – this is controversial.

An foreign registration or application allows one to use the priority rules (PC art. 4
and TMA s. 34) – 6 month priority period
 Legal fiction: date of application is date of first union application (prevents someone
   from using it in the meantime) - What if something goes wrong during period
   between application and registration? – See Fioravanti

Fioravanti v. Fioravanti Corrado ((US PQ 1986)
 Facts: Corrado applied for US registration based on Italian application
 In Italy, application proceeded to registration (not surprising – no evaluation or means
   for challenge before registration). - Guido Fiorivanti challenges Italian registration,
   then US registration on grounds that basis is invalid.
 Issue: whether an application pursuant to s. 44 (based on foreign application) can be
   challenged on grounds that foreign registration is subject to invalidation proceedings
 Held that opposition based on Italian challenge is a valid claim – because
   registration in US is based on applicant’s holding of a valid priority application – this
   is true up to date of issuing of valid US registration.
 Board: suspends US application pending Italian outcome. - Thus, it is allowing
   foreign court to determine validity of foreign application,
 Based on s. 44 of Act, the mark must be duly filed (d), and duly registered (c)
        o 659 because it relies on these, then the US registration must be issued under
           these conditions – independence of foreign registration begins from time
           when foreign registration is issued: Principle of Independence of Rights
 660 (2nd para) Implications of Principle:
        o Frees US from any requirement to show status of foreign registration
           during life of mark – US registration can be refused on basis of invalidity of
           foreign registration if it occurs before registration in US
        o If they held otherwise, one could obtain registrations in US with
           absolutely no basis in country of origin (this would allow US registration
           without use) – would make it impossible for person with good title in this
           country of origin to every register in US

Marie Clair v. Kruger (US PQ 1993) (663) - Example of Fioravanti approach
 Facts: Application filed in US based on German application/registration
 German application to cancel the German registration upon which the US application
  is based – P wants court to suspend following outcome
 DeLuxe (664)
      o A foreign company had filed a US application on basis of foreign application
      o Then US application was assigned to another party before registration took
          place - US refused to give registration since the person would be
      o Assignment of a
      o US court: a foreign applicant must comply with requirements of s. 44 at
          time when application was filed – fact that it changed hands later was
          irrelevant to registration
                                                                                           88


        o Raised some questions as to scope of Fioravanti – if all that matters is that
            it was duly filed, does it still matter what occurs after?
   663 – Argument: at time US application was filed, the German registration was
    valid an in effect – therefore Fioravanti should not apply
   Court (664): DeLuxe does not apply: a Foreign applicant must own a mark that is
    duly filed; if at anytime prior to registration foreign registration is invalidated, this
   664 (3rd last para) Holding of DeLuxe is limited to proposition that a foreign
    applicant may assign an application that will not interfere with registration
        o Difference is that in DeLuxe, there was never any invalidation of the mark

Summary:
 Art 6(3) of PC – Principle of Independence of Rights
       o Kicks in upon registration  post-registration, any finding of invalidity
           has no bearing upon a foreign registration.
       o But between application and registration, it is important that this basis of
           rights remains (i.e. intervening invalidity will invalidate the second
           application)
 We don’t have cases that address this in Canada
 Canada does allow applicant’s to file on the basis of foreign application
       o If it is found not to have been duly registered, it loses validity under 16(2)
       o If foreign registration is successfully challenged after Canadian registration is
           granted, this is irrelevant.
 It is the country of origin that matters – this is what would need to be challenged


LANGUAGE AND INTERNATIONAL LAW
 One of the most natural problems an owner might face
 Small variation should not be relevant
 Some unavoidable cultural/linguistic problems in cross-border trade.
 Challenge is how to generate/create/use a mark in different jurisdictions – how
  do you create the unified meaning?  Because there are linguistic/cultural barriers,
  there are differences to how marks will work in different countries.
 E.g. Coca-Cola in China: first phonetic translation led to “bite the wax tadpole”
      o Eventually found “happiness in the mouth”
 Problem: how much can they change their brands while remaining the same?
 What rule should we use for registrability? – should it matter what it means in
  foreign country?
 Doctrine of foreign equivalence (see next class): analyze mark based on its
  accepted foreign usage – thus if it is descriptive/generic in Canada, it will be
  descriptive/generic in US, respectively. - Otokoyama Sake

Doctrine of “Foreign Equivalents”
 Subject of next several cases.
 E.g. the registrar of a country does not understand the mark or its significance.
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Otokoyama Co. v. Wine of Japan Import (US 2nd Cir. Apr. 1999):
 Facts: P has been importing sake into US since 1954 under name Otokoyama
 D began importing sake under name of Mitsuyu Otokoyama
 P had tried in Japan unsuccessfully to acquire this mark; failed b/c it refers to region
 In US it was successful because in the application they said it was just a coined or
   “fanciful” term – no meaning that can be translated into English.
 D argues in counterclaim that the TM registration is invalid since it is a generic term
   for a particular type of sake – and P failed to disclose this fact in its application.
 Issue: whether this evidence of the meaning of the term in its home country is
   admissible or relevant in the US context.
 Decision: Held that the meaning of Otokoyama in Japanese is highly relevant to
   whether P can assert an exclusive right to use the mark in the US.
       o Evidence as to this meaning is therefore admissible to prove that it is a generic
            term and consequently not eligible for US registration
       o P tried to rely on Vanity Fair – claimed finding of Japanese court was not
            relevant – court disagreed.
 Bedrock principle of TM law: generic words are not eligible for TM protection.
       o 669, 3rd para – this same rule applies even when the word language of the
            mark is not English – Court goes on to explain why this is (Prof. thinks it is
            not completely satisfactory)
       o States that speakers of that language would be confused – also idea of
            facilitating international trade by letting them use the appropriate designation
 Note: definition of doctrine of foreign equivalence (669) – courts apply this to
   make generic foreign words ineligible as TM – may lead to confusion, and obstacle to
   trade for competitors.
 This is a well-known doctrine, although it is not found in treaties or universally
   agreed upon – it a well-known approach: to analyze mark based on what it means
   in its foreign language – i.e. translate what it means and ask whether it could be
   protected if it were in English – if generic in Japanese, it is generic for US TM
       o It is used to avoid the overly “parochial” approach of only looking at meaning
            of mark in the domestic language.
 Holding: Since the foreign meaning has relevance, the district court erred by
   failing to accept evidence of this meaning in Japan – district court just looked at
   what it would mean to average domestic consumer.

General position in Canada: we do apply what looks likes doctrine of foreign
equivalence for generic marks, but not for descriptive marks.

Bella di Cerignola Olives Case (US 1999) (672)
 Facts: P is seeking to cancel mark on basis that it is a generic term used to describe a
   kind of olive – these olives come from a particular area
 Issue: would the mark be understood as generic in the US?
 Court finds this is not even necessary to invalidate the mark – it is enough to see
   if it is generic in Italy; if this is the case, it doesn’t matter what average US citizen
   would think  Otherwise this would prevent other producers from using the
   appropriate generic term to sell their wares.
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   672 - The focus is not on the consumer – to allow first importer to use this
    designation would give them an advantage that TM law does not apply – law should
    be concerned with fairness to foreign traders as well.

In re Le Sorbet case (673): court again points to doctrine of foreign equivalence 
generic terms are treated no differently from their English language equivalents.
 Others who bring in the product later would not be able to sell it under its real name.

General Cigar v. GDM (US 1997) (675):
 Facts: GDM challenges registration of “Cohiba” mark in US on grounds that it is the
   word for Tobacco in language of Aboriginal people.
 Under doctrine of foreign equivalence, applicant must disclose English translation of
   word which will be relevant to determining registrability.
 If English speakers would recognize the work as tobacco, it would be invalid –
   but then goes on to say that it is doubtful that most would make the association with
   meaning in language of indigenous people of Dominican Republic – this is not
   pertinent to the registrability of the mark.
       o 675 although it may be known to linguists, the fact is that it likely to be
           unintelligible or fanciful for most people – therefore doctrine of foreign
           equivalence is not applicable.
 Very political case, since “real” Cuban Cohiba is not available for sale in the US
 *** We see the overarching concern of how US citizens view the term, not its
   meaning in an obscure language.

Cross article: Criticisms of Doctrine of Foreign Equivalence:
 First Criticism: 677 – doctrine has often been criticised especially when it is used
   to deny TM to word that most will not understand
       o Also difficult to rationalize from a linguistic perspective – a word that is not
           recognized by the buying public is instead likely to be viewed as a indication
           of source – thus argument that since people see it as a TM, shouldn’t it be
           protected as one?
       o In reality, the foreign equivalent has a very different significance than the
           generic translation.
       o Leads to question of whether this “fictional” rule should be applied to TM
 Second: Also, the use of foreign terms is often used to convey meaning to
   purchaser that goes beyond meaning of the term itself (or its translation) – e.g.
   companies use foreign-sounding terms to attach significance; this “allure” cannot
   just be simplified to its translation - The doctrine of FE wipes this significance out.
 Third: foreign terms are not needed to describe product domestically – thus
   rationale of preventing generic and descriptive terms cannot apply.
       o One thing this argument doesn’t address is that sometimes packaging is the
           same across markets – also there is not always a translation
 Conclusion (678): D of FE is too restrictive – rarely are foreign terms equivalent
   to their foreign translation – courts should consider how marks are likely to be
   perceived by consumer.
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Foreign TMs in Canadian Law
 TMA - S. 12(c): a TM is registrable if it is not the name in any language of the wares
   or services in connection with which it will be used – this is an absolute bar; it
   doesn’t matter if it has acquired secondary meaning.
       o Thus, we see the application of the D of FE with respect to generic marks.
       o E.g. In TM course, La Strana mark prohibited (?) – the name in any language
           cannot be protected – s.12(1)(c) is actually a very strict application of D of FE
 *** Where Canada seems to differ from other areas is with purely descriptive
   marks – here all we care is whether it is descriptive in English or French***
 S. 12(1)(b) – prima facie, these marks are not registrable – however, under s. 12(2),
   these descriptive marks are registrable if they have acquired secondary meaning.
 On Otokoyama reasoning, this is strange – lots of people in Canada speak
   languages other than English or French
 Galanis case from TM – about 12(1)(a) – whether a mark
 When it comes to diversity of population in Canada, it doesn’t matter w.r.t.
   descriptiveness of the marks, but only if the name means anything in another
   language – however this may not be clear since it is a fine line between
   descriptive and generic; courts often mix these.

A few cases were recommended but not required:

Baby-dry and Doublemint:
 Both illustrate problems with language in European TM system – says you can’t
   register marks that are descriptive – Art. 7(1)(c) Euro TM Regulations
       o If it is descriptive in any part of the EC, it is not registrable for all of them.
 Baby-dry (diapers) – seems to be something a bit more than descriptive – court held
   this, but stepped into the shoes of an English consumer
 Doublemint – refused registration on the basis of its descriptiveness – essentially just
   means double the mint.
 700-703 – Advocate General seems to say that putting in shoes of English-
   speaking consumer is first step, but then should look at other consumers
       o e.g. German consumer would just think it is merely descriptive.
       o 702 Para 85: it may be necessary to assess the mark through the eyes of a
           consumer of another EC country.
 Court: it is very common to see the inversion of terms in certain romantic
   languages (e.g. Baby-dry vs. dry-baby)  The fact that the inversion or terms are
   unusual, this should be taken into account
 As TM is internationalized, need to look at multinational consumers will b necessary.

DILUTION AND FAMOUS MARKS

Protection of Well-Known Marks:
 We have already discussed Art. 6bis of PC and Art. 16 of TRIPS
 This is one of the most pressing concerns in international negotiations.
 761 article before this pieces everything together
                                                                                        92


McDonald’s v. Joburgers (South Africa SC 1996)
 Facts: McD had TMs registered in South Africa, but had not used them there.
 Court decides case on the basis of well-known marks
 780 – Well-known marks in the republic are mark of a person in convention country.
 Issue: what does it mean to say that a mark is well-known in the meaning of s. 35 –
  must it be well-known to all sectors of the population?
      o Back to question of allowing all countries to define well-known themselves.
 Court concludes that a mark is well-known in the Republic if it is well-known to
  likely potential consumers – this is something we see again in the Canadian Act (?)
      o Case didn’t turn on registrations, but on whether or not mark was well-known
 Enactment of s. 35 was attempt to expand CL to well-known marks according to
  international convention
 Survey evidence – the universe of potential respondents was quite small; limited to
  only white home-owners (i.e. wealthy).
      o 77% were aware of name or its logo - Dax argues that this is too limited –
          very low awareness of the mark amongst black population
 Para 82: court is satisfied that mark is well-known to those who travel; they are
  the likely potential customers – but poor people are not likely to know of the mark.
      o But evidence of knowledge amongst the first group is enough – a certain
          level of money is required to buy prepared food.
 Note: 6bis does not require registration – case would be decided same either way.
 It seems McDonald’s can prevent anyone from using these marks

Issue: are global brands a good thing?
 Does it seem fair that domestic businesses are prevented from using marks even when
    foreign owner does not use it domestically and will not license it?
 Look at the suggested readings (?) – what does it mean for licensees…

First Question of Canada’s Obligation Under Paris Art. 6bis
 First of all, we have to refuse to register or be able to cancel marks that imitate
   well-known marks that are likely to cause confusion.
       o It doesn’t consider dilution as in TRIPS, but it is quite old

Second Question from McDonald’s  to prohibit the use of well-known marks in
the absence of registration (this is what 6bis protects):
 This is purpose of s. 35 in South African legislation – 781 same as British legislation
    – only recently enacted, since they had said their obligations were met by passing off.
 In some cases, it was found that goodwill is local – it is situated where the business is
     if there were no business operations in Britain, there was no goodwill to protect.
 When it comes to prohibiting the use under PC Art. 6bis, Canadian law does this
    under the common-law of passing off – but there is a difference from these cases
    and Canadian common-law Canadian courts have allowed plaintiffs to succeed
    without domestic operations (see Orkin and Heskow(? – online)
 Orkin:
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        o Facts: P had established a well-known business for pest control – Ontario
            company began to use this in order to prevent P from using it in Canada
        o P was successful in an action for passing off on the basis that their
            reputation had spread to Ontario – may have been exposed to US ads.
        o Canadian court did not distinguish between reputation and goodwill – as
            long as this does not need to be attached to a domestic operation, it seems
            Canadian law is meeting its obligations under 6bis through passing off.
   PC 6bis and TRIPS 16(2) are concerned with protection of well-known marks in
    countries without registration
   All about confusing similarity  this reflects the principle of similarity (or
    speciality) (765 2nd last para): TMs can only be protected in relation to the same or
    similar purposes as their registration.
   Some countries had traditionally granted protection only for the same use of marks
    for similar products and had refused it for dissimilar products
   *** This is a key issue: to what extent should protection extend beyond similar
    products, and should it extend beyond confusion

Art. 16 of TRIPS and PC 6bis (1,2,3) – Well-Known Marks and Dilution
 Art 16 of TRIPS, builds on 6bis of Paris (added in 1925) – extends it to services
 Up to domestic legislation to define this concept of “well-known” - Also, when we
   say “well-known”, it means well-known in that jurisdiction, not internationally.
 During negotiation of TRIPS, attempts were made to acquire protection that did not
   depend on this – but these negotiations failed.
 Result is compromise: protection for well-known marks, but only in countries
   where they are well known. As far as Art. 16 and 6bis are concerned, we are
   talking about well-known marks in the absence of registration or use
 6bis was added in 1925 - Art. 16(3) goes a little further

Implications of Art 16(3) of TRIPS:
 Art 6bis shall apply in terms of goods and services that are not similar to what it is
   well-known, such that there would be an implied connection with owner of TM and
   owner would likely to be damaged.  Thus, there is protection beyond the
   principle of similarity/speciality – i.e. that TMs are only protected in relation to the
   same or similar goods as covered by their registration.
 Some countries have granted no protection at all for dissimilar products
       o E.g. French (?) Champagne Bubble Bath was declined
       o Use of Coca-Cola on T-shirts was allowed (French SC)
       o The fact that a mark is extraordinarily well-known does not defeat the
          principle of similarity.
 Other countries have given extended protection to “famous” marks (Germany)
       o Extended protection means beyond speciality principle – i.e. protection for
          dissimilar products - E.g. Whisky was prevented from using Car name.
 If you have a licensing arrangement, this suggests that your monopoly should
   extend over this subject matter
 What often becomes an issue is the scope of “dissimilar”
                                                                                          94


        o Canada is a country that, sometimes not consistently, says that a license shows
            that there would be confusion  But other jurisdictions say that you are not
            operating in this market, so no right
   This affects whether we view TM as a commodity: what sort of monopoly we
    want to give? - But there is a growing sense that more broad protection should be
    given to very well-known marks.
        o This might lead us to prevent unauthorized uses on non-competing goods on
            the grounds that the commercial magnitude is not limited to those goods.
   *** Art. 16(3) does protect beyond the speciality rule
        o Interestingly, neither a high degree of fame or value is protected – we are
            still just talking about well-known marks (i.e. not just “famous” marks)
                  All that is necessary is that the use of the mark can be interpreted as
                     indicating a connection between owner and user of mark, and that this
                     is likely to cause damage.
        o *** SUMMARY: 16(3) extends 6bis for well-known marks to include
            protection if (1) there is a connection, and (2) it is likely to cause damage.
   The sense informing these uses is that they are nonetheless attempts to free-ride
   *** This is seen to be wrong and since it may dilute the drawing power of the mark,
    or the connection between mark and source, or may tarnish reputation of mark.
   Examples of Domestic Law addressing these concerns:
        o US – Lanham Act s. 43: owner of a famous mark shall be entitled to an
            injunction against another’s commercial use of a mark if the use begins after
            it becomes famous and will result in dilution
                  Exceptions for comparative ads, news reporting, etc. (i.e. fair use).
        o EU – Community TM Regulations Art. 8(5): Protection where a TM has a
            reputation in the community concerned and use would take unfair advantage
            of or be detrimental to its distinctive character would not be permitted.
                  Is a mark having a reputation the same as being well-known?
                  The EU AG Jacobs (in Chevy case) has said that less knowledge or
                     fame is required to establish a reputation for this anti-dilution law
                     than is required for well-known under TRIPS or PC
                  In the US, the exact opposite has been suggested – e.g. you need to
                     be “famous” for its protection against dilution
        o In Canada, the comparable protection is s. 22 of TMA:
                  No person shall use a TM registered by another in a manner that will
                     likely depreciate its goodwill
                  We tend to talk about it as if it is about dilution, but it actually
                     applies to all marks, not just well-known  Although suggestion
                     has been made that if it is not well-known, its goodwill cannot actually
                     be depreciated.
                  Also, here we are only talking about registered marks  thus, in
                     Canada, there will not be protection against dilution for unregistered
                     marks, unless there is also confusion (i.e. common-law).

In US, there has been plenty of scholarly criticism:
                                                                                       95


   792 – Rosamary Coombe: these vague concepts have potential to grow into
    suppression of all unwelcome free speech – e.g. “Enjoy Cocaine” prohibited
   *** 791 – Argument that anti-dilution provisions have been very controversial in
    US, yet through TRIPS they are being internationally expanded as if they were
    universally agreed upon minimum standards of protection
   Second para. on 791 is where Coombe discusses the exporting of this.

Another Controversy re: 16(3) – It Seems To Only Refer To Registered Marks
 This is generally interpreted to mean that TRIPS members may make registration a
  prerequisite to extended protection beyond similar wares.
      o Controversial since it is different from anything else in art. 16 (or TRIPS?)
 Art. 16 is really to prevent pre-emptive opportunism (e.g. people jumping ahead
  of rights holders in new markets)
 *** Question is whether registration is only required in the country where
  registration is sought – if so, the affect of 16(3) is actually very minor.
      o It would not prevent people from filing marks with a connection to a well-
          known mark since they don’t get this protection until after registration
 This has led some to conclude that this was just a drafting error
      o Some earlier drafts had explicitly said registration was a prerequisite to
          extended protection, and these references were deleted.
               I.e. some say the remaining references are to this deleted aspect.
      o Thus, some say it should be ignored – but problem is that we can’t just
          discount the actual words to which they agreed.
      o But some note that it doesn’t say where the mark has to be registered 
          while on the face of it we may assume that this means in the country where
          protection is sought, some think that a more pragmatic interpretation would
          be to understand it a meaning registration in its country of origin.
               E.g. this interpretation is necessary to effectuate the evident purpose of
                  protection for owners of well-known marks in absence of registration
 It wouldn’t really be good for Canada to give it this interpretation, since we only
  tend to protect registered marks  *** If they are not registered, a use that is not
  confusing will not be infringing – they will have to rely on common-law, which
  requires confusion.
 We don’t really know scope of s. 16(3) – much of it is left to each country to define.
 One problem here might be that art. 16(2) & (3) deal with 2 different problems
      o Under (2) unregistered, but well-known marks belonging to foreign owners
          are addressed - On the other hand, we are concerned with dilution or
          tarnishment of famous marks When we put these together….
 Art. 16 extends protection of 6bis to at least beyond use of similar wares
 Some countries have created very strong anti-dilution provisions based on this
      o E.g. Japan  protects marks well-known anywhere even if unknown in Japan.

TRADEMARKS AND THE DEVELOPING WORLD
 Several themes help us to understand the tensions in TM
 First theme: Dominant trend in international market is the licensing of foreign-
  owned markets to subsidiaries or interested parties in developing countries
                                                                                      96


       o This raises questions about costs and benefits associated with this process
       o 796 para 144 – foreign subsidiaries tend to do better than domestic
           counterparts in developing countries, at least in areas where TM and
           advertising is an important part.
       o Where there are these domestic licenses, there are often technology
           transfers as well  e.g. given instructions of how to manufacture product.
                The problem is that these tech transfer agreements often restrict
                   the application of this know-how – e.g. only allowed to use in
                   conjunction with this TM, and if it is revoked, so is this technology.
                So your use is subject to these limitations.
       o The big concern regards the long term negative effects that this licensing
           of foreign TMs might have on domestic industries.
                797 para 149 – local enterprises that rely on foreign TMs are the
                   ones that must develop the goodwill in the marketplace, but they do
                   not reap the long term benefits since the goodwill they have
                   developed is not their own – once agreement is terminated at
                   discretion of licensor, licensee may be forced to use his own TM
                   which has no goodwill despite his production over a length of time.
   Second theme: Misallocation of resources that are wasted on advertising
       o Second excerpt (804-812): UNCRAD
       o Concern of social impact of these persuasive advertising expenditures.
       o Second kind of waste where consumers are paying for the brand, not the
           product – i.e. ads can make consumers behave irrationally and buy things
           with no inherent value.
       o When domestic products are exported from developing countries, they
           don’t tend to include this domestic TM – often will use foreign mark or
           simply won’t advertise etc.  Thus, consumption patterns in developing
           countries come to prefer foreign brands to the detriment of domestic brands
       o Also, this means that advertising is creating a demand in these countries as
           opposed to them responding to demand.
       o Where these foreign marks use domestic resources, these are resources not
           spent on meeting domestic needs or developing domestic industries.
   Ball and Vargas Article 813 – outlines some efforts in developing countries in
    response to these concerns.
       o E.g. 1970’s Argentinian law required assignment of TM instead of license
           – this means that they own it. - This law was repealed amidst international
           pressure  also companies simply pulled out.
       o Use of combined TMs in Mexico – all foreign TMs must be used in
           conjunction with a Mexican TMs so that over the course of the licensing
           agreement, goodwill would be associated with the domestic brand
       o Also compulsory licensing provisions  e.g. if they pull out, they might still
           be required to let domestic producer use the mark for a fee
       o Over the course of international negotiations, these types of laws have
           basically been disallowed.  Developing countries argued that there were
           compelling economic concerns for them to regulate foreign TMs.
   TRIPS –Principle of National Treatment Prevents Laws Only For Foreign TMs
                                                                                         97


       o Thus, they cannot discriminate at least formalistically
       o Art. 20 and 21 – describe many of the strategic provisions of TRIPS – simply
         not permissible for a country to license TM against will of owner.
       o Art. 21: compulsory licences explicitly not permitted – owner can assign TM
         with or without transfer of business
       o Art. 20: The use of a TM shall not be unjustifiably encumbered with special
         requirements, such as use with another TM, use in a special form, etc.
       o The developed countries got their way – but some limitations:
              If there is a domestic producer, that producer is allowed to make
                 known that they make the wares.
              They cannot still require…..
              Also some hope from use of word “unjustifiably” – doesn’t entirely
                 rule out such restrictions
              Some have pointed out that if we look at this in the context of TRIPS
                 as a whole (e.g. preamble recognizes public policy and developmental
                 objectives), that maybe this could be justified
                      Prof thinks this is a huge stretch.


GEOGRAPHIC INDICATIONS
 This is an area where the interests of different countries differ widely.
 TRIPS Art. 22(1): “Geographic indications are indications which identify a good
  as originating in the territory of a member or a region or locality of that territory
  where a given quality, reputation or other characteristic of the good is essentially
  attributable to its geographical origin”
      o Specific rights to use a name in relation to a product
      o Supposed to protect that goodwill that is associated with the name of that
          locality – leads to the development of the reputation
 *** Note: sometimes indication of source is distinguished from geographical
  appellation as latter includes the particular qualities or characteristics.
      o “Geographical indications” in Art. 22(1) is supposed to get over this
          distinction by encompassing both

Bita Amani – Persian Rugs: Use of Geographic Appellations as TM (817):
 First function: is to prevent exploitation of goodwill of producers of a region
      o i.e. can build reputation and associated characteristics, etc.
 Secondly, it protects consumers from misrepresentation as to origin
 Summary: Geographic indications does seem similar to TM: (1) protects the
   goodwill, and (2) protect consumers from confusion
 These functions map onto the general purposes of TM: protecting producers and
   consumers
 But they are not capable of functioning as TM: don’t indicate source, just
   particular area (don’t distinguish specific producers) – the mark is inherently
   descriptive, and in many cases it is generic (i.e. just the name of the kind of goods).
                                                                                       98


   One controversy is the relationship between Europe and North America  in
    NA you see many indications of geographical origin (Swiss cheese, etc.) often from
    Europe – France in particular tries to protect these.
       o The concept of protecting geographic indications comes from Europe – in
          other parts of the world, the recognition of this has been far more limited.
       o 519(?) e.g. France has been particularly outspoken; GIs are often used for
          wine and cheese – versus US, where these GIs are far less valuable.
       o Thus, it is no coincidence that some nations regulate GIs and some don’t

Clear Differences – First step is some sort of Agreement
 Tended to be bilateral, but also a push to multilateral treaty
       o E.g. Council Regulation on GIs (just need to know this exists) – greater
           protections than under TRIPS - Under TRIPS, there have been some steps
 Ultimate goal: to create unified system, but stop-gap solution has been one that just
   applies to wines and spirits – not surprising that US and Canada tend to offer the
   least protection (b/c these GIs have a tendency towards the generic in terms of what
   they mean to customers).
 When the mark becomes generic, it is no longer protectable unless new system.

INAO v. Vintners (US 1991?) – INAO is French appellation oragnization
 Facts: 823 – US application opposing the mark of “Chablis with a twist” in the US in
   association with a citrus-flavoured wine.
 First ground: equivalent to our 12(1)(b), i.e. it is a GI?
 Particular regulations in US: US Bureau of Alcohol, Tobacco, and Firearms allow
   the use of a word that’s the place of origin, so long as the real place of origin
   appears in conjunction with that name – i.e. California wine Chablis with a Twist
 824 – Regulations apply to marks that are “semi-generic” and Chablis is one of
   them - The only example of generic classes are sake and vermouth
 Chablis is a designation of origin controlled in France; only used for wines from
   this region that have specific characteristics – but in US, it means a type of wine
   regardless of origin.
 Consequently, they have failed to establish that it misdescribes the wine as
   coming from France – if it doesn’t describe this, it can’t be misdescriptive of
   origin. - Thus, they are allowed to register a mark that includes that word.

In the Canadian cases, we just see application of Canadian TM Law:
INAO v. Andres Wines (OCJ, 1987):
 Facts: INAO trying to prevent use of the word “champagne” under the common-law
    of passing off.
 Issue: this genericization of mark that leaves it without protection under Can. TM law
 Everyone concedes that champagne has meaning, and that its use is restricted in
    France – however, other countries don’t protect it in the same way
 829 INAO advances its purposes in several ways:
        o If the country does offer protection, they just try to get those rules enforced.
        o If no protection, than diplomatic measures are attempted.
 Thus it is the law of the foreign country where protection is sought that really matters
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   831 Requirements of Common Law of Passing Off:
         o 1. must show good will in product
         o 2. misrepresentation that will likely lead to confusion
         o 3. This will likely damage P
   Champagne has good will, thus basis to assert rights in Canada – but has D
    misrepresented products as from this region of France so as to damage P’s goodwill?
   No  there is no misrepresentation that causes confusion – this comes down to
    the generic nature of “champagne” – Canadian champagne has been sold alongside
    French Champange for years – Canadian regulations require Canadian label – over
    time, Canadian champagne has acquired its own reputation
   Because it does not refer to a place of origin, it has assumed generic characteristics
         o 834 – term has been misused for so long it has been effectively diluted –
            rather than indicating a source it indicates a type of product
   Court: it isn’t entirely generic: but semi-generic since capable of both meanings
   ***When used in this generic sense that does not confuse the Canadian public,
    there is no legal wrong.
   *** These cases outline problems that GIs encounter – some countries want them
    protect against genericization, and if they have, then to protect them back
         o I.e. (1) Should we protect them at all? And (2) if they are already generic,
            should we protect them? – seems answer is no
   But we have seen protections arising for marks that have not yet become generic
    – i.e. Amani’s article: this has come too late for wines, etc., but not for rugs.

Current International Agreements – Re: Geographic Indications:
 Paris Convention:
      o Includes Appellations of Origin in its protectible subject matter in Art.
          1(2)  thus, NT applies to AoO (but doesn’t actually mean that much)
      o In 1883, there was Art. 10: weak protection; required false and deceptive
          trade names…. – many countries were unsatisfied, led to 1891 Madrid
          Agreement (we will look at later); also Madrid Agreement for the
          Repression of False or Deceptive Indications of Source on Goods
               Problem is that most countries didn’t become members – only the ones
                  with real interest in protecting these marks
      o In 1958, Art. 10 was revised: more protection, but still quite limited;
      o Led to another new agreement: Lisbon Agreement (1958)
               Most comprehensive, but even less successful than Madrid – more
                  protection led to less membership
      o ** Left with art. 10 of PC: problem is it is mostly about border control
               See art. 9 – i.e. unlawful goods seized on importation, etc.
      o Also people point to art. 10bis (general unfair competition) – problem is
          that history of this provision make it clear that its intended effect was not to
          apply to this – i.e. “origin” was in provision and specifically removed.
               Doesn’t seem designed to deal with misleading appellation of origin.
      o This has led to drive to include protections in TRIPS
 TRIPS:
                                                                                      100


       o Definition in Art. 22: limited to indications of origins w/ particular qualities
          associated with them – i.e. essentially attributable to its geographic origin
               What does this “attributable” characteristic mean? – Accepted that
                  if a geographic environment gives characteristic
       o *** More controversial is whether human element counts – i.e. style of
          craftsmanship from region
       o *** Also, where does it have to identify origin? In country of dispute (e.g.
          Canada), or in home country? (e.g. France?)
       o Art. 22(2) Substantive Provisions: requires members to provide legal
          means for interested parties to prevent
               (a) the use of any means in the designation… that indicates it
                  originates in a geographical area other than the true place of
                  origin in a manner which misleads the public
                        *** I.e. must suggest origin, and suggestion must be
                          misleading
                        Seems interpretation from INAO cases is still relevant(?)
               (b) any act that constitutes unfair competition under s. 10bis
                        Interesting, since it is an extension of 10bis beyond what
                          members of PC were willing to do.
       o Art. 22(4) protection applicable against a GI which although literally true
          as to the territory, falsely represents to public that it originates in another
          territory
       o Art. 23 – additional protection for wines and spirits – controversial
               (1) Precludes defence that GI is accompanied by kind or type or style
                  (e.g. Chablis-like) – use of those terms will not avoid art. 23
               (2) Relates to law of TM directly – shan’t permit registration of TM
                  for geographic origin
       o Art 24: Exceptions: Main problem countries that wanted extensive protection
               *** Most damaging is 24(6): nothing in this section shall require a
                  member to apply its provisions in respect of a GI .. if it is a
                  customary term that indicates kind of goods.
               Second part of (6): deals with grapes: I.e. generic use of terms to
                  indicate kind of product, or kind of grape, is permitted
       o Thus, couldn’t role back common usage – but 22 and 23 provide protection
          for those terms that have not yet become generic.
       o *** In order to be a GI, there must be a suggestion of an identity or
          characteristics attributable to the origin – when these are diluted, its
          protection ceases.
       o You can quickly revive something that has become generic by imposing
          restrictions on its use – the problem here is that you don’t have the power to
          do this in other jurisdictions unless they protect it; this has been the problem
       o Note Art. 24(1) – aimed at ensuring that protection offered for GI will
          continue to grow – i.e. will negotiate to increase protections under. Art.23
   Relevant Provisions in Canadian TM Act:
       o Also, we’ve added s. 11.14 (?)– designed to meet TRIPS requirements w.r.t.
          wines and spirits  somewhere in between …
                                                                                     101


               Recognition of certain GIs – defined in s. 2 with reference to WTO
                members – i.e. GI must indicate it as originating in WTO member, and
                protectable by laws of that member
      o 12(1)(g) and (h) – prohibits registration of GIs for wines and spirits
      o Problem is that we have all of the limitations permitted under TRIPS (i.e.
        TMA 11.18(3)&(4)): generic, customary, etc. (i.e. champagne, etc.)
      o New Protections:
             11.14 no person shall adopt a GIof wines as TM
             11.15 --- spirits
             But only if it is a protected GI meeting definition in s. 2 (i.e. WTO
                members, and must have characteristic, etc. attributable to that region).
             These were added to respond to our international obligations
      o 11.16 - 11.18 – specific exceptions – e.g. generic or customary uses
      o Also 11.17 – if person has been continuously using it in good faith, then
        11.14 or 11.15 does not apply to its continued use
             This maps onto art. 4(4) of TRIPS which allowed continued good
                faith use.
             E.g. this is how champagne has been used in Canada for years, so we
                are allowed to continue to do so.
      o 11.19 – Time limitation on ability to challenge a GI - if you have been
        using it and no enforcement proceedings within 5 years of it becoming
        known, you can continue to use it. - Permitted by TRIPS 24(5)
   Summary:
      o Thus, in art. 24 of TRIPS, there are plenty of exceptions to art 22 and art
        23 – and all of these exceptions are made use of by Canadian TM
      o So if we have further negotiations, Canadian law might have to change
        again: i.e. overtime it may be that Canadian champagnes have to be renamed.
                                                                                  102


4. THE ACQUISITION AND ENFORCEMENT OF RIGHTS:
INDIVIDUAL RIGHTS-HOLDERS
TRADEMARK - ACQUISITION

Regional and International Mechanisms to Facilitate the Acquisition of Rights in
Multiple Jurisdictions Simultaneously:
 TM laws are inherently national - not that much harmonization has been made by
   PC and TRIPS; still many differences:
       o e.g. requirements of registration, enforcement, etc.
       o Territoriality can be significant barriers to cross-border trade.
 *** You don’t have to be intimately familiar with ins and outs – just know
   existence, relevance in terms of advantages, etc. over harmonized approach.

European Community TM:
 EC in pursuit of single market w/o restrictions on trade (like territoriality of TM)
 Goal was to find system that could grant a single mark throughout EU
      o otherwise had to file and work with 13 different systems and 11 languages
 CTM would provide an alternative – 30 years in the making.
 First step – TM Harmonization Directive (1988):
      o Basically required all member states to change their national laws to achieve
          more uniform system – given 4 years (till 1992); but many countries took
          longer (e.g. UK and Germany)
      o Some drawbacks: not quite uniform; implementation could come in
          somewhat different forms.
      o This approach has been mirrored in other
 Second Step: EC TM Regulation:
      o *** Regulations have direct affect whereas directives have to be nationally
          implemented.
      o Extensive provisions: oppositions, cancellations, enforcement, etc.
      o Approved in 1993 – came into effect in 1994
      o EC TM Register operates under Office of Registration in the Internal Market –
          situated in Spain (was controversial)
      o *** Most important aspect of CTM: Art. 1(2) “CTM shall have a unitary
          character” – single registration shall equal effect throughout union
      o Benefits: Now you only need to renew it once every 10 years in a single
          office, and can assign it by one office
      o Drawbacks: 838 Dinwoodie  cuts both ways; if CTM found to be invalid
          anywhere, it is invalid throughout the EU
               Although it can be converted into separate national registrations.
               Also CTM can only be assigned for the whole EU, not nation by
                   nations – although you can license it for each country separately.
 Application Process for CTM (839):
      o Not used-based, but file-based – doesn’t depend on use or intent to use
               I.e. First to file system
      o 840 Substantive provisions are intended to mirror Harmonization Directive
                                                                                     103


        o Grounds of Refusal:
        o Absolute grounds  go to inherent qualities of the mark; e.g.
           distinctiveness, etc.
                 OHIM examines – people can make “observations”, but OHIM can
                    disregard them
        o Relative grounds  go to competing claims; e.g. has a prior use been
           made, etc. – It is up to people to oppose these marks to prevent them from
           being registered.
                 If it is opposed, the prior use of a conflicting mark in a single EU
                    country will be enough to defeat the registration – i.e. flipside of
                    unitary - You get more, but you have to show more in order to get it.
        o If the mark is unregistrable in any jurisdiction in EU, it will be refused on
           that basis – i.e. if it has acquired secondary meaning in only England, it is
           still just descriptive elsewhere so not registrable.
        o If it is not registrable somewhere, you can convert the application into
           national applications  if you do this within 3 months of finding out CTM
           has been refused, your application date will be that of original CTM date.
        o If the CTM is cancelled after registration, you also have this 3 months to
           convert to national registrations
   The CTM system does not replace the national systems, which are somewhat
    harmonized – they operate in parallel  could have CTM and national mark of
    same or different marks.
        o This is all superimposed on top of PC etc. – so protection of well-known
           marks may also exist.
   Seniority  if you apply and have a national registration, all the rights from the
    national registration are preserved  has sole effect of where person allows
    national TM to lapse (after applying for CTM), he will continue to have all
    rights under national registration
        o Basically designed to encourage applications for CTMs
        o It continues to live even after its death – could give you more options over
           where to bring action, etc.
        o Dinwoodie – this might be important re: where you can bring
           infringement actions – See art. 93? - basically the rule is you have to bring
           actions for CTM in national courts that are designated for these CTM actions
                 They sit as CTM courts and apply regulation, not national legislation
                 Have to bring proceeding where D is domiciled if EU national
   *** Most important point re: CTM: it is an open system  not just for EU
    members or real or effective business connection. Open to any Paris Convention or
    WTO member (i.e. includes Canada – we can make one application in Spain which is
    good throughout EU)
   Also the Paris Union (art. 4) priority system applies  we can use the 3 months?
    To move ahead of other applications(?)
   Canadians should take advantage of this if it makes sense to apply for unitary mark

Review: CTM as only example of a truly regionally system for registration of TM
 A pretty unitary right in all respects - Enforceable throughout the EU
                                                                                       104


   A significant achievement in TM law – step towards internationalized scheme
   But some difficulties and challenges – i.e. can only acquire rights if they can be
    validly registered in all countries; problem when existing in parallel with national TM

What happens to national TM owners if CTM right registered?
 National TM owner could challenge registration on ground of prior right – this
  could defeat CTM - If they have failed to take this action in opposition, the
  situation is not as bleak as she laid out last time.
 Art. 8? Community Regulation (CR): Relative rights
      o Takes into account the earlier national TM – obviously will include prior
          marks in states, and registered, and well-known marks.
 (4) Recognizes that if you’ve used mark and it would… it too
      o I.e. person who has either applied or used a mark in UK may be able to
          oppose CTM if confusing.
 Art. 52 – Relative Grounds for Invalidity:
      o Can challenge on any grounds that would have led to its invalidity
      o 5 year rule – but slightly different from Canada
 Art. 53 It is a rule of acquiescence – if they have known about the mark and done
  nothing, then they lose right to challenge
      o Also vice versa – i.e. CTM owner acquiesces for 5 years to national mark..
      o Ultimately looks like a subjective test (although some objective elements
          could creep in).  This creates the possibility for concurrent use at the
          national level for certain situations
 Art. 53(3) Limitation in Consequences of Acquiescence: it seems like the national
  owner can continue to do what they are doing, but just can’t assert rights against
  CTM owner. - I.e. if found to have acquiesced – similarly, CTM owner can’t use
  rights against national owner.
 Don’t have to be expert on CTM law, just be aware of benefits and dangers
 Also, it is relevant to Canadians because CTM is open to Canadians
      o Art. 5 has been revised – originally about PC and WTO members; now
          you just have to be a person (natural or legal)
                Thus anyone doing business in EU might want to consider CTM mark.
 Perhaps there are perceived economic benefits to allowing anyone to apply (as
  opposed to reciprocity based)
      o This is also what distinguishes it from the Madrid system

Madrid System
 Dates back 100 years from Madrid Agreement (Concerning International
  Registration of Marks) 1891: obviously negotiated in wake of Paris
      o Also, now we have the Madrid Protocol (1989) – more recent
 MA’s purpose was to allow someone to gain an international registration that
  flowed from national TM – managed by WIPO (sent registrations from nations)
 Main problem with original MA was limited membership – it was and is a closed
  system – i.e. need to be in a member state to reap benefits of registration
      o 849 – Samuels and Samuels: Many important countries had problems with it
                                                                                          105


        o Sense that domestic applicants would be disadvantaged by length of
            registration system in some countries – i.e. it would take much longer in many
            countries to get the international registration. - Also, if you hadn’t objected to
            registration within 12 months, it will be extended
        o When you apply for international registration, you designate countries who
            are notified and their national offices decide if they will grant it – this would
            not be enough time for those with more extensive examination procedures.
        o Central Attack: If it was successively challenged in its country of origin, it
            was lost in all countries – thus this would be a disadvantage in countries
            like UK and Canada that had more rigourous regimes.
   In 1980’s WIPO made effort to accommodate these concerns – culminated in the
    Madrid Protocol (1989) MP
        o Really a separate system, but referred to as the Madrid System (both MA and
            MP; anyone signed onto either become members of Madrid Union) – allows
            international registration to be based on domestic application rather than
            domestic registration  avoids time delay disadvantage
        o Also, national offices given more time to consider applications for extension
            (18 months, but can be longer if challenges)
        o If you lose registraiotn in country of origin, you can convert that into
            national registrations in countries where it would remain valid –
                 I.e. not same vulnerability to domestic attack
        o Also accepted applications in English (not just French)
   Also provided link to EC CTM – b/c it allows EC to join the protocol
        o I.e. if you apply for a TM under the MP, you can designate the EU (will get
            registration throughout).
        o Similarly, if you begin by applying for CTM, that can be basis for an
            international registration under MP - Basically, we treat EU as one country
   These elements comprise the Madrid System – were 74 countries – Importantly,
    the US joined in 2003 - *** Canada has not joined
        o This means there is no way to file for an international registration through
            Canada’s domestic system
   Also, an international mark cannot be transferred to an entity w/o a commercial
    establishment in a Madrid Union country
        o Thus, a US enterprise could not assign to a Canadian enterprise
   But backdoor: if you do have a real and effective industrial establishment in a MU
    country, you can apply.
        o Thus if you had a branch/subsidiary in US, you could apply through them.
   Intermediary step: if you apply to US PTO, it will examine it to make sure it meets
    international system requirements – then forwarded to WIPO, which will notify the
    designated countries – these countries will then decide whether to grant extension



Main Limits of Madrid Protocol: (Besides closed nature)
                                                                                        106


   Still based upon national law – doesn’t create this supra-national harmonized law
    that we see in the CTM – since each country will apply its national law to determine
    if it will grant extension into this territory
         o I.e. same rules that it would apply to any foreign-based application – e.g. US
             requirement of intent to use.
   One problem for Canada is that we use a different classification system which
    may have to be changed if we wanted to use it.

Main advantages:
 Streamlined application process – also some degree of efficiency is necessitated by
  the 18 month period imposed on those countries.
 Gives several different application options: ….
 TM renewals are easier since you can do it through WIPO – don’t need to
  micromanage your protection.

Big question is whether it would be beneficial for Canada to join, given changes that
might be required
 Classification system
 Canadian has use before registration requirement - No basis in Madrid System
      o If the MS marks could be protected w/o being used, they could be used
          against marks that had been previously used in Canada
      o One potential option would be to require applicants to Canada to have
          this added requirement – but this would add another complexity to a process
          that is supposed to be easy.
 Canada won’t change lightly – nothing will happen here for several years at least.

Again, know what systems are, central premises, how they superimpose on other
systems, benefits/drawbacks – whether Canada should join.

Madrid System Review:
 While anyone can apply for a CTM, the Madrid system is closed – thus you can’t
  just get around this by applying in a country that is a member – still have to be
  domiciled in or real and substantial connection
      o I.e. not about where registered but who applicant is and where they come from
 Limitation on assignment:
      o One advantage of MS is ability to assign with one international application
          – but this is limited, since you can’t apply to non-member countries
      o Thus, if something has an international registration by virtue of registration in
          a certain country, and there is subsequently a change in ownership, countries
          will only recognize this transfer if there is a real and substantial connection to
          an MS country
 When application is made to extend mark into a country, it will process the
  application like it would any other application from a foreign registration
      o Thus, method for opposing will be the same – therefore we should not be
          concerned about people getting use without domestic requirements (e.g.
          Canada’s use requirement), since i
                                                                                       107




ENFORCEMENT OF IP RIGHTS: TRADEMARK AND COPYRIGHT

ENFORCEMENT BY RIGHTS HOLDERS THEMSELVES
 Often said most significant
 In one sense TRIPS allowed states to deal with these issues through WIPO dispute
  settlement procedures (see next Tuesday)
 In another sense, TRIPS sets standards for private enforcement of rights (i.e. it
  requires members to have certain procedures)
 TRIPS – gives as much focus on enforcement as on substance.

Part III of TRIPS – Enforcement of IP Rights
 Two objectives:
       o 1. Provide for effective enforcement in member states – includes efficient
           remedies to deter infringement, etc.
       o 2. Also safeguards to prevent use of these enforcement procedures as trade
           barriers
 First international enforcement treaty for IP – challenge was to create rules that
   were sufficiently forceful to resolve disputes, but also broad enough to take into
   account differences
 Goal was not to create harmonization of enforcement mechanisms in states, but
   just to provide minimum standards – but of course, all states can go further
 Two Kinds of Obligations:
       o 1. Prescribed remedies and procedures of each member in its legal system
                I.e. these are the things a court will be able to order
       o 2. Performance standards in relation to how these mechanisms will work in
           practice. - I.e. must be expeditious, or effective (albeit very subjective)
 5 Sections: 2 and 3 deal with infringement of TRIP
       o 1. General Obligations – procedures and remedies
       o 2. Civil and Administrative Procedures and Remedies
       o 3. Provisional Measures
       o 4. Border Measures
       o 5. Criminal Procedures

David Vaver Article – Comprehensive, but dull account of these provisions
 Nothing surprising – but a good overview.
 If a state does not provide effective enforcement measures, this constitutes a
   violation of TRIPS obligations – i.e. they are substantive in this sense

TRIPS Enforcement Provisions
 Art. 41(1) Remedies to prevent and deter infringement – required to be
  expeditious and effective – also should not be open to abuse.
      o (4) Procedures shall be fair and equitable - ….
 (2), (3), and (4) are all about due process – not too expensive or drawn out, etc.
                                                                                       108


        o Also decisions should be in writing, reasoned, based on evidence, made
            available and right or review or appeal
   (5) For developing countries: concern that they only have limited resources for their
    judicial system, don’t want to spend it all on enforcing IP rights.
        o This just says that it is not creating an obligation to create a legal system for
            IP in particular, nor state how resources must be used
        o Still have to obey other provisions; just here to alleviate some concerns.
   Art. 42 Fleshing out “fair and equitable” – use of evidence, etc.
   Art. 44 Injunctions
        o Remedies that courts and judges must have authority to order – includes
            injunctions, and damages (art. 45)
        o Where appropriate, the right to destroy or dispose of infringing materials
            outside the channels of trade
   Art. 48 Judicial authorities can indemnify certain parties that have been wrongly
    included – to prevent abuse


Section 3: Provisional Measures
 Art. 50(1)
        o (a) to prevent an infringement that is about to occur or is in the process
        o (b) to preserve evidence.
 50 (2) can grant on ex parte basis where delay is likely to cause irreparable harm
        o Two cases about this – resulted in offending nation having to amend laws.
        o Particular concern for computer programs – can easily destroy evidence if
            notice of search or seizure.
 50(3) Requiring adequate proof of title before using such measures
 50(6) Limiting Time Limits
 50(7) Protecting innocent defendant incurred as a result of such measures where
   there was such infringement
Section 4: Special Requirements for Border Measures:
 Counterfeit goods are defined as marks or wares identical or cannot be distinguished
   in its key aspects - Pirated goods: those that violate a reproduction right or
 Art. 60 De minimis imports – small amounts for non-commercial purpose allowed.
Section 5 Criminal Procedures
 Art. 61 TRIPS requires members to provide criminal procedures and penalties
        o At least for counterfeiting and CR piracy on a commercial level.
        o Remedies must be sufficient to be a deterrent consistent with crimes of
            corresponding gravity – i.e. theft, etc.
        o Canada does provide criminal remedies.
        o Require an effective or fair procedure for guaranteeing right under TRIPS.
 If those procedures are not satisfactory, there is a process(?) for entering into
   negotiations with government

Principal Goal of TRIPS: Facilitation of Enforcement Aound the World
 But you need to have national rights in countries which you want to enforce them.
 TRIPS is there to say what those national systems should look like
                                                                                      109


   One consequence: same person should own parallel rights in many jurisidictions
      o I.e. a system of parallel national rights


RAISES NEW ISSUE: INTERNATIONAL IP RIGHTS EXHAUSTION
 Same as first sale doctrine in CR
      o This is strange since it goes against general idea that right goes with work (?)
      o Really we are dealing with goods that “contain IP”
 Exhaustion: in the context of TM, which we will spend most of our time on, right of
  producer to control distribution of TM product does not extend beyond first sale.
      o Thus, resale of that article is not TM infringement or unfair competition
      o E.g. if you buy a Honda and then sell it, you are not infringing TM
      o Free alienability of the goods that contain IP elements
 Based on idea of Free trade in the marketplace – justified by idea that TMs should
  not be used as tools for market control or division – shouldn’t be able to use rights to
  divide up and monopolize markets.
 So long as it is Legitimate (i.e. placed on market by rights owner), they can’t restrain
  use down the chain
 So what kind of relationship do we need between TM owner and downstream use?
 One big question: what is the relevant geographical area where principle of
  exhaustion applies?
      o Does it matter where first sale or marketing took place?
      o distinguish between national exhaustion and international exhaustion
 National Exhaustion – when placed on market in domestic country, their rights are
  exhausted nationally - But if we only have NE, this means owner may still be able to
  oppose the importation of goods
      o E.g. X sells goods to Y in Country B
      o Can X stop Y from selling goods in Country A?
 International Exhaustion – someone who has placed goods on market has
  exhausted owner’s rights in any nation.
      o Internationally, you just apply the same concept – you sold those, so you
          exhausted your rights internationally to control them.
      o This would naturally follow from whole concept of exhaustion of rights
 However, difficulty arises from territoriality of TM – If rights are completely
  independent, why can’t X just say he owns rights in Country A?
      o Otherwise, it requires countries to look outside their jurisdiction.
 These are really old issues – because of free trade and tendency to treat TM as if
  it belongs in an international free trade regime, these problems arise.
      o .. clashing with absolutist vision of free trade.
 Within a particular nation, it may be difficult to see who benefits most
      o Depends on your perspective: from IP owner (X), you don’t like the doctrine
          of international exhaustion – don’t want cheap versions of goods flowing in
      o If you are a consumer, it is probably good if these flow in
               E.g. buying cheap goods in Asia
      o Only real way to protect against this, is to protect TM owner’s right to a
          monopoly
                                                                                         110


                  But suggestion that IP just begins to look like a tariff – inhibits the
                   importation of legitimate goods – i.e. it looks like a barrier to trade
                  TRIPS preamble specifically opposes this.

Review of Exhaustion Principle
 Generally just means e.g. that the right of a producer to control the distribution of
   TM goods does not extend past the first sale of those goods – producer no longer has
   rights to control the use of those products (i.e. by preventing sale, etc.)
 Example: X sells goods to Y
       o X cannot then
 EP is not by any means universally accepted, however.
 Scope of EP – does it matter where X sold goods to Y?
       o If you apply principle of international exhaustion, then no, X cannot control
           goods – TM owner could not prevent the import of products that legitimately
           bore his TM this scenario is referred to as “parallel imports”
       o It is usually the domestic licensees that get upset when this occurs; want to
           use Int’l IP to prevent the import of these “grey market goods”
       o X now has to compete with the products being brought
 ***Question from policy perspective:
       o Is this a good or a bad thing? Does it further premise of free competition?
       o Answer is that it depends who you are – consumers in state A will generally
           benefit (pay less for same goods).
       o But others point out that domestic prices reflect the costs in state A, not fair to
           make them reflect costs of state B
       o Also, domestic licensees tend to get upset since Y will benefit from X’s
           advertising.
 This issue simply hasn’t been resolved

TRIPS Art. 6 on Exhaustion and Policy Considerations
 Art. 6 - “for the purposes of dispute settlement, nothing in this agreement shall be
  used to address the issue of international exhaustion”
      o i.e. still subject to rule of NT, but doesn’t say if you have to apply this or not
 *** Thus, TRIPS does not require states to either prevent the importation of
  legitimately TMed goods or to let them in.
      o If not allowed in, this means domestic rights holder can essentially use their
          IPR to segregate the marketplace and secure themselves from competition
          from other markets
      o From a global perspective, it seems perfectly obvious on its face that the free
          movement of legit TMed goods would be a good thing supported by
          GATT/WTO principles
 *** One earlier reading discussed irony that TRIPS makes the international
  expansion of IPRs more easy, but makes transportation of IP goods more difficult.
      o When IPRs are used in this way, this is effectively a barrier to trade; operates
          just like a tariff or worse.
      o Global wealth trumps national self-interest
                                                                                     111


   If you let free movement of these goods, the only thing at risk are national actors
    (e.g. corporations, etc.) – thus the readings suggest the only reason there is no
    agreement is just that they haven’t been able to negotiate around these conflicting
    self-interests.
   General trend is that developed countries (net IP producers) will favour non-
    exhaustion – their nationals tend to gain from the continued flow of benefits to X in
    this example
        o Developing countries are net consumers, will favour exhaustion
   But Giappetta (889-90) argues we must complicate this:
        o Some developed countries have higher domestic costs, may still benefit from
            free trade
        o Also many contradictions: e.g. US has very strong policy on exhaustion at
            the national level, but anti-international exhaustion
        o EU has a principle of regional exhaustion – their goal was to create a free
            internal market.
   Art. 7 of EU TM directive: TM will not entitle the proprietor to prohibit use in
    relation to goods put on the market in the Community under that TM
        o But this exhaustion does not apply to e.g. Japan – EU TM owners can
            prevent imports to the Community.
        o EU also went further – national countries cannot apply international
            exhaustion principles, and must apply this regional exhaustion.
   TRIPS Preamble: need to ensure … prevention of barriers
   *** Thus no resolution at the international level – but we should be aware since
    parallel imports is an important issue in international negotiations (reflected by
    inability to agree).
                                                                                        112


5. DISPUTE RESOLUTION/ENFORCEMENT BETWEEN MEMBER
STATES
   Basically we will be looking at WTO Dispute Settlement Understanding.
   TRIPS Art. 64 – Principles of GATT 94 will apply w.r.t disagreements re: the
    obligations imposed by trips – these are the same for WTO disagreements
   How states will actually choose to enforce these will depend on practical and
    political considerations - Also possible for individuals to petition countries to
    initiate dispute settlement proceedings, but ultimately up to countries.
   WTO and TRIPS revolutionized international dispute settlement
         o Paris (art. 28(1) ) and Berne (art. 33(1)) had some provisions for taking
             claim to ICJ – problem was that it was regarded as impractical – never
             used from 1883 -1994
         o Vaver 891 – it was thought to be slow and costly b/c it was up to countries to
             refuse to recognize jurisdiction of ICJ if they chose, and court lacked ability
             to impose sanctions that would make it worthwhile.
   Thus disputes re: int’l obligations in this time were dealt with through
    international negotiations before TRIPS there were some dispute settlement treaties
   Move from GATT to WTO (e.g. flowed from Uruguay negotiations in 1994)
    marked departure from traditional reliance on diplomacy re: dispute settlement.
   This whole system was designed to ensure a quick, efficient way to settle disputes
         o Quasi-judicial, but also supposed to provide lots of opportunity to
             negotiate/settle amicably – based on idea that trade sanctions, etc. were
             viewed as unhealthy.

Vaver (894) – Process of Dispute Settlement (DS Understanding of WTO – from
Uruguay Round of negotiations)
 1 - Begins with request for consultation
      o Idea that countries have already tried diplomacy
 Once request is submitted, clock starts ticking
      o Art. 4(3) – Must be response to request within 10 days
      o Commencement of negotiation should begin within 30 days of receiving
          request.
      o At time request is made to other member, Dispute Settlement Body is notified
          (i.e. WTO Dispute Settlement Understanding under a different name)
      o 4(7) – consultations supposed to take place in good faith
      o But within 60 days, if complaining party is not satisfied that a resolution
          can be reached, they can request DSB establish a DS panel to hear dispute.
 Membership of Panel
      o DSB gives list of names to parties – if they can’t agree, they can appeal to
          WTO director general to name the panel (art. 8(7))
 Parties submit written briefs and meet panel to make their case.
      o Also allowed to make rebuttal briefs and meetings.
 Also opportunity at this stage for 3rd parties to intervene and make submissisons
   and be heard if they have a legitimate interest (Art. 10)
 Interim Report – parties given opportunity to respond and to settle
                                                                                      113


        o Supposed to be private here to encourage settlement (but frequently leaked to
            the press)
   Final Report
        o Gives first to members, and then within 20 days (?) gibes to DS Body
        o Then DSB is supposed to adopt the report – opportunity (60 days) for a party
            to appeal (this will prevent adoption until appeal is heard
        o The only way it will not be adopted is if there is a consensus among the DSB
            – very unlikely - This is as opposed to previous GATT… which required
            conversely a consensus to adopt.
   Appeal allowed given this nearly automatic adoption
        o Appellate body is nearly permanent group – 7 members
        o Appellate court will consist of 3 members
        o Will only hear issues of law, not facts (or errors of fact) at the panel stage.
   When appellate court gives report, there is same process – i.e. DSB adoption, etc.
    (art 7(14).

Seems this would be an excellent opportunity for international body of law –
developing consistency and harmonization – see Dinwoodie article
 Art. 3(2) of DSU – system serves to preserve rights of members – cannot do or
   require anything more or less than these rights
       o I.e. not creating law here – no room for judicial activism
 To what extent can panels fill IP gaps (e.g. complicated domestic CR issues)?
 Implication from 3(2) – stare decisis does not really apply – not creating law; so
   can’t really be bound by previous panel decisions
 Somewhat unsatisfactory – notion that this should at least be persuasive to promote
   consistency

Back to Process
 Final recommendation (from panel or appellate body) – if a measure is inconsistent
   with int’l obligations, suggestion of how member should bring it into conformity.
 After the adoption of final report, member must make submissions to DSB re:
   how it will implement these recommendations
       o Reasonable time allowance – articles 20 and 21
 DSB will track progress – member must make status reports (21(6))
       o If implementing measures are not taken within a reasonable time, initiating
          member can seek compensation
 Art. 22(2) – members are supposed to agree on appropriate compensation – if
   they cannot, complaining member is entitled to initiate trade sanctions – e.g. tariffs,
   or removal of trade benefits
       o These sanctions must be approved by DSB – have to be in response to the
          economic impact – this should be roughly equivalent in value to burden from
          failing to comply
       o Supposed to be only a temporary measure – art. 2(8): measures shall end
          when member brings itself into compliance. - Thus, retaliatory measures does
          not relieve obligation to conform with recommendations.
                                                                                     114


By including TRIPS within this large mechanism for resolving trade disputes, we
now have a step forward for Dispute Settlement of IP issues
 Some problems remain: transparency, lots done in private, potential lack of
   conformity
 ***Also issue of fairness of permitting IP in this trade regime
 Also fairness of allowing trade sanctions in other sectors for failing to protect IP
       o Ideally these should be in the same sector, but no obligation do so.
 Art. 24 – some mention of position of least developed countries – there should be
   “due restraint” to sanctions of them – but the wording is quite limited and vague.

Dinwoodie article 903 – Development International Norms in Copyright LAw
 Revisting Art. 10(1) Panel Report – US found to be in breach of its obligations
   under TRIP re: allowance of public performance by small …. – brought by EU
        o Limits in art. 13 of TRIPS – special cases, don’t unreasonably prejudice
 Basically just interesting to see DS at work – this was the first authoritative report
   to find that a member of the WTO was violating its obligations under TRIPS
 Dinwoodie says this is a significant milepost 909 – mere existence of report shows
   how balance between national/international has changed.
 CR Exceptions: Was it up to US to decide legitimacy of the public purpose the CR
   exceptions were supposed to serve? - Panel (3 step test for Art. 13 interpretation))
   not going to evaluate legitimacy of this purpose…
 Question: what is the relationship between national autonomy/sovereignty and
   international obligations? – what room do they leave for the assessment and
   response to national concerns and priorities?
        o Turns on whether panels are willing to engage in larger policy issues or
            whether they will leave lots of room for national policy makers to decide how
            they will implement TRIPS obligations and how they will interpret them
        o How much will they allow domestic policy makers to interpret international
            obligations?
 Also extent to which DS panels will be able to take in to account the principles of
   CR, etc. when interpreting TRIPS obligations or whether the “trade hue” taints
   this – i.e. reducing IP to a trade concern
        o 909 CR is about more than trade – Dinwoodie thinks that perhaps larger
            policy considerations will get lost in the mix
 Also, how much will states bring claims forward?
        o The way they are decided will determine this and kinds of claims made.
 904 Potential for DS mechanism to be at the forefront of international DS
        o Traditionally, IP plays catch-up in this area
        o But here, IP provisions may dictate national measures – i.e. is it appropriate
            for IP to work this way around?

Kenneth Port Article:
 One fundamental issue: search for harmonization is just another form of cultural
   expansionism.
                                                                                       115


   This charge is often leveled at US – perpetrating a new form of cultural imperialism
    by imposing its standards and norms (i.e. its legal fictions) on rest of the world and
    penalizing them for not following suit.
   Also, it is often through bilateral agreements/pressure that instigates change

Best example: “Special 301” in US trade law
 In US Trade Act (1974 there was 301  allowed President to unilaterally retaliate
   against any sanctions – due to dissatisfaction with GATT DR measures
        o These were expanded in 1988 Act – new subsection “special 301”
 US annually prepares a list of countries that inadequately provide protection for IPR
 Different categories – Priority watch list, and watch list (Canada is frequently on
   the latter). – e.g. haven’t ratified WIPO
        o This is used as a way of putting pressure on countries
 If on priority list, automatic investigation into your IP laws and instigation of
   negotiations – failing this they are obligated to take measures
 Most notable use of this involved relations with China – named on the list in 1991,
   forced to sign an understanding that it will accede to paris, berne, rome, etc.
        o In 1994, it was on priority list again for failing to enforce the measures it had
            agreed to - As a result: in 1980’s China had no IP laws, in 1995 it had one
            of the most developed in the world
        o Thus the threat of special 301 should not be underestimated
 Danger: it fails to recognize situation of different countries – many have better
   things to do than protect US IPRs
        o Also creates resentment (i.e. allegations of this new “colonialism”)
 Many treaty partners also criticize it since it undermines international trade
   regime by giving US undue bargaining power in bilateral negotiations.
 Also, in US implementation of TRIPS (s. 314 of Uruguay Round implementation act)
   it says special 301 still applies
 921 – US position is that trade negotiations should follow a “TRIPS plus
   standard” – More than TRIPS: e.g. see new US-Australia Treaty which gave
   concessions to US like DCMA without consideration of domestic IP policy
        o Thus, tendency towards expansion of IP
 *** Increasingly, IP is a global and trade-related phenomenon – and
   harmonization always seems to mean “harmonization up”
                                                                                        116


6. COURSE OVERVIEW/REVIEW
Course Overview:
 Don’t need to know every provision – open book, etc.

Beginning and end of course we have themes of IP generally
 Mechanisms for acquiring rights (beginning), enforcement (end)
 CR and TM in the middle

Exam:
 Can pick and choose quite a bit
 Part II choose 2 of 3 (CR, TM and CR/TM)
 Part III examples could choose whatever examples you want
 Same number of questions on both CR and TM

Sources of International Law:
 Major institutions: NAFTA, WTO, EU WIPO
 Know what all of these are, what they do/role they play in IIP system
 But don’t have to know constitution/operation

Fundamental Principles
 National Treatment – domestic law applied to nationals and foreigners alike without
   differentiation – compounds the territoriality of the law (national law that is applied
       o Art. 3 of Trips, 2(1) of Paris, Art. 5 of Berne
 Reciprocity –based on mutuality instead of non-discrimination
       o Tends to be employed when disparities between national laws are too great –
           wouldn’t be fair to use NT
       o Can work as a bridge in the short term until
       o Examples: art 7 Berne and 7 of EU term directive  rule of shorter term
                Resale royalty right 14ter of Berne
 Know principles, what they mean, examples of when they can be employed

Justificiations for Int’l IP
 Economic, Policy
 Tendency to harmonize up
 Is this just enforcing west’s standard?
 IP expansionism
 Relationship between sovereignty/national policy concerns and international
   obligations
 Think of these themes when you consider issues – be ready to engage with these
   questions on exam
        o If there were certain articles that you really like (i.e. TM licensing/developing
            world, CR berne, etc.(
        o Be ready to articulate your views.
                                                                                     117



Copyright Law
 Historical context  it is a construction and not a universal phenomenon.
 How have these domeistic purposes played out internationally?
 Berne (1886) – Canada is a member at Paris 1971 level
      o Push and pull of civil/common law
      o Seems to reflect civilian tradition – re: author’s rights
      o Priniciple of NT: author entitled to be protected as if national of any other
          Berne country
      o Art. 3 –
      o Art. 5(4) definition of country of origin’
      o Art 5(2) – independence of formality – not allowed to be based on registration
          – also ind. Of rights from any other country
      o Protects lit.art. expression, to reproduce (art. 9), translations (art. 8)
      o Art. 6 bis (moral rights)
      o Art. 7 term of protection
      o Art. 9(2) some specific exceptions
 Chapter 17 of NAFTa
      o 1705 – prelude to obligations under TRIPS (1994)
 TRIPS PART II deals specifically with CR
      o Art. 9(1) requires compliance with Berne, with the exception of moral rights
          provision (6bis)
      o Art. 10 – extends protection to computer programs as literary works
      o Data compiliations are to be protected if selection/arrangement is intellectual
      o Art. 14? Neighbourin rights
      o Art 13 – general exception that applies to all of the rights
 Challenges of Territoriality of CR
      o Suba Films – strict application of presumption against nationality –
               Authorization had occurred in US, but infringing activity outside of
                  US – Court refused to apply US law to find infringement
      o LA News – kind of reigned it a bit – allowed damages for extra-territorial
          ifnringment – but there was a domestic act
 Territoriality – generally justified in name of international comity
 Socan – Can. Case  applied real and substantial connection test to see if Can. CR
  law could be applied
      o Lebel in dissent said this extended territoriality too far.
 Berne 5(2) – means of redress to be governed by law of country where protection is
  sought – this is where the infringement is said to have occurred.
      o Issue: does this resolve all choice of law questions? – suggestion that no –
          cases where we had to apply laws of different countries to different aspects of
          the case.
      o E.g. ITAR-TASS case – US court applied Russian law to determine ownership
      o But if you apply different laws for ownership when you cross borders, there
          could be many owners
                                                                                      118


       o Just applying conflict of law principles to IP- Ownership is the matter for the
          country with closest relationship – in this case it was country of origin (i.e.
          Russia)
       o Bridgman Case – originality was decided by domestic law (US)
                Transparencies of public domain art had been copied
                Not really a conflict, since both US and UK law would have same
                  result.
       o Sidenote: Nimmer position says you apply national law in your domestic
          courts to everything – because of this ownership conundrum, people have
          rejected this (saying NT is really just about non-discrimination).
                Nothing in NT itself that tells us what law should be applied to what
                  issue
       o Law of country of forum should be applied to 2 areas: extent of protection
          and remedies available, as we know from Berne
       o Other issues are left up to conflict of laws principles of relevant nations.
       o Know how issues
       o Peter Yu piece
       o Don’t need to be expert of conflict of laws
   Originality –
       o CL and civil law take different approaches: CL = SOTB, Civil looks for
          creativity/personality
       o Gervais Argument that Berne is more civilian art 5(2)
       o Trips Art 10?
       o NAFTA 1705
       o Gervais says spirit of Berne is about intellectual creation
       o Problem is orphaning of things that don’t have this – i.e. databases
       o EU has a database Directive that extends a sui generis right
       o But this has been reigned in a bit by ECJ – see William Hill case
       o Other countries .. access to European database system
                Only open to EU countries; likely extended on basis of reciprocity to
                  other countries (art. 11)
                In US, attempts to make sui generis rights
       o Droit d’suite (resale royalty right)
                Entitles author to get a percentage of subsequent sales
                Strange – IP-like right but attaches to physical object – contradicts
                  first-sale doctrine (which is similar to principle of exhaustion)
                Good example of reciprocity – art 14ter of Berne(?) left up to countries
                  to negotiate this
                But now EU Resale Royalty Directive (2002) which requires countries
                  to provide reciprocity - Art. 7
   Terme of CR Protection
       o Berne art. 7(8) as minimum of term (rule of shorter term) – but can extend
          longer
       o EU term Directive = life plus 70
                But reciprocity for other countries to benefit from this – led to US life
                  plus 70
                                                                                      119


       o Phil Collins – EU countries w.r.t. works within EU can no longer use rule of
          shorter term
               Can’t discriminate amongst countires
       o Thus, no more
   Neighbouring Rights (can lack authorial component)
       o Sound recordings, etc.
       o In CL countries, treated just like CR
       o Excluded from Berne since nto artistic/lit works
       o But Rome  applies to signatories to Rome
               Provides for minimum levels of protection (art. 7)
               Art. 10 sound recordings
               Art 13 (….
               Don’t have to be intimately concerned with this treaty
       o But these have been put into TRIPS
               Main difference is that TRIPS extended protection from 20 to 50 years
       o Also supplemented by WIPO treaties
               E.g. making available right
               Also created moral rights in performances (art. 4)
   Moral rights
       o Reflects civilial
       o art 6bis of Berne  not assignable; protect reputation of author from
          distortions that would prejudice
       o Contrary to CL perspective – limit on economic rights to deal with the work
           a primary reason why US refused to
       o 9(1) TRIPS – excludes this
       o Gillam case
               When you string together tort law, etc., these can effectively protect
                  author from distortions
               But some have said that even if this is true, it is more about the spirit
                  of moral rights
               Currently, US still refuses to enforce spirit of moral rights – i.e.
   Exceptions to CR
       o They are subject to limits in international system – this provides the floor of
          protection, but not the ceiling.
       o Broad approach to fair use in US versus fair dealing in Canada/UK (and even
          more restrictions in civil countries)
       o Under Berne, the exceptions were quite limited and specific – although in
          panel report on 110 of US Act, it was accepted that minimum exceptions were
          generally permitted under Berne – 3 step test:
               Reappears in art. 13 of TRIPS
               1. Special cases
               2. Not conflicting with normal exploitation
               3. Not unreasonably prejudicing legitimate interests of rights holder.
       o On the basis of this test, the panel report said it could be invoked to find that
          certain exceptiosn were overly broad and not permitted by TRIPS
                                                                                    120


                 E.g. Small business exception in US – would have covered too much
                  and conlflicted ith normal exploitation
      o US double standard – broad exceptions at home, but limited internationally
               E.g. US-Australia treaty (extra reading)
      o … Fair use as a required exception rather than a permitted one (?)
   WIPO Internet Treaties
      o Recognition of pressure of domestic lawmakers to ratify treaties despite not
         fitting that well with our policy concerns.


Trademark
 Art. 15 of TRIPS gives a definition of TM: signs capable of distinguishing the goods
   of … from another
 CL: TM is usually Use-based
 Civil: TM usually acquired just by filing a registration
 But no system is now a pure system – most have some method for both
 Problems Inherent in Territoriality
       o TM is very subject to national law
       o Persons Case
               Some called: “theft by territorialism”
               Eg. No one sought protection in US yet
               Since TM is territoriality, generally first person to use or apply/seek
                 protection in country is entitled to right in the mark
               If persons mark had already been well-known in US, it might not have
                 been allowed – but not the case here.
       o Territoriality means that domestic TM law that applies to create domestic
          rights
               Case. ….
       o Compared to Steeles Case – Court found there was enough connection to US
          to apply US law
               But this involved a US citizen in Mexico
       o This will often come down to
       o Vanity Fair – D had TM rights in Canada
               It would be against comity to find it was violating US law
       o
 Paris Convention of 1886
       o To facilitate TM owners to protect rights beyond national borders
       o Based on national treatment
       o Art. 6bis – independence of marks
               This is even if reigst
 Dorin case – us registration based on lapsed French registration was sought to be
   renewed – US registration allowed – archetypal ind. Of rights case
 Contrasted with Fioravanti case and Marie Claire case
       o If questions present themselves before registration was granted, then it might
          prevent a domestic application – no longer a good basis to register
                                                                                           121


         o *** Independence of rights kicks in once registered  no longer tied to
            original registartion
   Art 6qq Telle Quelle
         o Gives certain rights based on country of origin
         o (1) obliges countries to accept applications that have been duly registered in
            country of origin “as it is” – i.e. in that form.
         o Thus, foreign registration can be the basis of domestic registration
         o Unless mark will infringe rights of 3rd parties or is devoid of distinctive
            character
         o Or is contrary to morality or public order, or likely to deceive
         o Distinctive Character vs. descriptive/generic, etc.
   Concept that mark’s distinctiveness should be assessed by its foreign meaning –
    i.e. translate it to see if descriptive or generic
         o Otokoyama
         o Sorbet
         o Marks generic in any language should be regarded as lacking distinctiveness
   Canadian Act
         o Generally we deny preotectoin to genric/descriptive marks
         o But we allow if they acquire secondary meaning –
         o Marks that have been registered in Union countries are subject to less scuitiny
            under s. 14 – registrable unless:
                 These exceptions are from 6qq(b)
                 If not confusing (conflict with 3rd party rights)
                 Not without distinctive character
                          Boston Chicken case
                                 o Descriptive of where its from – must use it so that it
                                     comes to identify you in marketplace and hten
                                     regisgtrable
                                 o Foreign registered mark refused since no distinctive
                                     character
                                 o Controversial element is that they say you must be
                                     distinctive in Canada, and you will only be distinctive if
                                     you use it in Canada
                                 o Thus, marks inherently lacking in distinctiveness will
                                     not be registrable in Canada until they develop this
                                     secondary meaning in the Canadian market
                                 o Argument that this is in compliance with TRIPS
                                     because of allowed exceptions
                                 o Could argue it is not in compliance with spirit
                                 o But if mark is inherently distinctive, you don’t need to
                                     worry about it.
         o Art 6qq – in Canadian act this allows registering in Canada on the basis
            of foreign registration and use (can be anywhere in the world)
                 Problem with Canadian registration is the use element
                 Conflict with “B”? of Paris
         o Crocker case(?)
                                                                                       122


                  Found this was an exception under …. Have to allow application based
                   on foreign registarion
      o Two views:
               1. Crocker – Foreign registration is all that is necessary
               2. Canadian CIPO Position – perfectly permissible to require use –
                   this is just a formality, doesn’t go to the characteristics of the mark.
      o Formal/Substantive distinction
               Is discussed in the Crocker decision – dismisses it, but gives a good
                   summary of argument
               Main thing: just know source of controversy/disagreement, and
                   whether you think Crocker is correct or not.
 Art. 4 (Paris) – Right of Priority
      o Anyone who applies in a second union country within 6 months uses the date
          of application from the original application in country of origin
      o I.e. a grace period – prevents others from just beating you to registration in
          another country and blocking your entrance into that market.
 Art. 6bis – Well-Known Marks
      o No one should be able to register a confuising marke even if well-known mark
          is not registered.
      o I.e. extending protection of w-k marks even absent registariton
      o Problem lies in scope of meaning of “well-known”
      o This is protected in Canada, but scope is restricted – s. 5
      o E.g. Robert… case
      o Joe Burgers (SA) – used survey evidence
               In light of 6bis, McDonalds was protected in SA even though no use
                   there.
TRIPS – PART II
 Art. 2(1) requires members to comply with 1-12, 13? Of Paris
 But builds upon those basic rights – we compared this to NAFTA 1708 which is very
  similar.
 Relevant provision in TRIPS
 1501
 1502 and 1503 – Clarifies Art 6qq of Paris – requires use for registration, but not for
  application
 Art. 5 – formal requirements that mark be published once registered and open to
  challence
 Art. 16 – rights conferred
 (1)
 (2) extends well-known marks proetection from Berne to service markes
      o Says relevance factors –i.e. knowledge in relevant sector
 (3) extends protection to dissimilar goods if it suggests a connection to owner of mark
      o Thought this was designed to deal with dilution
      o Controversy is that it seems to only apply to registred marks unlike 6 bis of
          Paris or 16(2) here
      o But could this just mean registered anywhere? Then it would seem
          compatiable
                                                                                  123


   Art. 19 – ….Reasonable time
        o Don the Beachcomber – use must be in Canada to maintain a mark on
            Canadian registre
   20 and 21 – limits requirements courntire can make
        o E.g. can’t make mandatory licensing – see re: developing countries
        o
   22(1) protection of Geographical Indications
        o Should be qualities that are attribable
   22 and 23 – some protections for GI – but some dispute between old and new world
        o See Exceptions for .. (6) victory for new world – says where soemthin is
            generic, it doesn’t need to be protected under 20/21
        o IMAO, etc. cases.

International Acquisition of Rights
 TM .. system and TM regulation in 1992?
 Open to everybody, not just to members of EU
 Compared to Madrid system (agreement and protocol) – another international
   registration system but still relies on national laws and registers
       o Also a closed system
       o Need real and effective business establishment in a Madrid Country

Enforcement Provisions in TRIPS
 PART III – Private Enforcement
      o Gives minimum standards that are to be available to rights-holders
      o Due process and effectve remedies
      o Failure to enforce these rights can be a violation of TRIPS – regardless of
         what the law says on the books
 International Exhaustion Principle
      o When IP goods are released into stream of international commerce by or with
         consent of IPR holder, this holder cannot exclude the goods from a
         marketplace by trying to enforce IP – i.e. first sale doctrine writ lage
      o But not required by TRIPS art. 6 expressly leaves this question up to members
         – is this a failure of International IP regime by allowing barriers?
 Enforcement between States:
      o Prior to TRIPS, enforcement basically just by diplomacy
      o But by including IP in trade, TRIPS appears to have provided
      o Art. 64 – WTO DS Understanding applies – thus can be brought under ususal
         DS of WTO
      o Begins with consultionat art 4, can lead to Panel…
      o Failure to implement can lead to trade measures against violating party.

EXAM
 Keep eye on larger themes, sources of disagreement and be ready to draw upon
  examples
 Can construct own answer – just important to have good body of examples to rely on
 E.g. how principles have played out in international cases, etc.
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   Key is to choose questions well
   Important to plan your answer well
   Will have points for examples, support of argument, consistency of argument,….
   15 minutes of reading time – won’t need – begin to plan
   Try not to create an overlap of examples – she marks whole exam – show off what
    you know

Example Questions:
    5 questions for Part I, 12 points each (12 minutes) – don’t spend more
    E.g. National treatment question
          o What, where, why, how, and to what end.
          o Perhaps use this in other parts as well
          o Start off by defining it – provide an explanation of where we find it (e.g.
               art. 3 of Paris, Berne, etc.)
    This may be an opportunity to use in other questions of where an example of this
      applies
    If you are talking about a case, describe scenario, issues, decision
    Why? – what is the role of national treatment? i.e. cornerstone, non-
      discrimination, etc.
    To what end? – don’t just need to be descriptive – e.g. advantages/disadvtanges,
      compared to minimum standards, etc.
    Think broadly, but don’t forget basics
    SOCAN: background, issues, ruling – introduce presumption against extra-
      territoriality – what does real and substantial connection test
    Why how much? Do you think the case is right or wrong – e.g. Lebel’s dissent
      was pretty persuasive here.
    Short essays – What’s the significance of excluding 6bis from TRIPS
          o Essays, but quite specific – begin by explaining what
               concepts/rules/relevant provisions,etc.they are
          o Significance
          o Answer the question – support answher
          o Take a position – describe argument in quote  then e.g. can reciprocity
               be used in this way in IIP regime
          o Support – give answer and bring in your examples – does it perform this
               example and is this good or bad
    Long Question
          o Plan answer
          o Pick issues you will discuss – think about these before you come into
               exam
          o Take a position – use the law, cases, proviiosn, quotes, arguments from
               case materials as support
          o Conclude – don’t just run out of time – better to be shorter and make a
               point.
          o
    Go in knowing what she has

				
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