International Aspects of Intellectual Property Summary
Prof. Craig – Winter 2006
100% Exam – short questions and essay answers – not a fact pattern exam
Alternative evaluation – 10 page discussion paper – 25% (no downside risk).
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.
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
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
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).
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
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
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
The political rhetoric has become more hysterical
Exanple: Piracy = terrorism (WIPO Chief in the context of dangers of counterfeit
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.
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.
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
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
(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
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
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 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).
Nation States, International Institutions and Elites: IPR Holders and the Public
International treaties as a source of IP law
International treatment, MFN, Reciprocity.
Other Institutions – the nation state, etc.
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
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”
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
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
*** 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
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
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
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?
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
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
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.
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
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.
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
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
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
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
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
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
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.
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
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
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)
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
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
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
(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
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
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
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
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):
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
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
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
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
o But it is not possible to enter this reservation and to also use the
appendix’s compulsory licensing scheme – countries must choose between
The appendix rules are very specific and technical versus the broad minimum
standards – indicative of tendency to create broad restrictions and narrow
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
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?
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
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
civil or common law principles but instead reflects a general tendency to expand
CR without giving any justification to do so.
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
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.
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
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
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).
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
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.
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
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)
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
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
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)
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
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
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.
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
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)
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
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”
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
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
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
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?
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
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
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
In UK, it can apply if it would have been infringement in UK – see criticism of
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
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.
On this case, there is agreement across the CR spectrum that such works are not
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.
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)
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
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
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.
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.
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.
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
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
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.
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
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?
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
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).
*** 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
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.
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
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
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
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
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 –
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.
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
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.
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
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.
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
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
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
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
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
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
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
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
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
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
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)
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
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
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
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
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?
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
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
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
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)
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:
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
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
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”?
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
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
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
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
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.)
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
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?
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
(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.
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
Gervais and Okadiji both argue that a stronger fair use doctrine is required at
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.
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.
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.
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
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
o 1. Too much of tendency to assume that these int’l agreements dictate our
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
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
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.
“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.
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
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.
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
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
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
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.
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.)
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
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
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
TRIPS has been criticized for failing to recognize link between TM and product.
RECAP of TM Concepts and Systems
Trade marks as symbols/indicia used in connection with products/services in
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
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
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
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
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
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
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
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
Distinction reflects an outdated understanding of IN trade (1883: only wares were
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
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
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
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)
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
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.
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
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.
*** 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
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.
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.
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
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
**** 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):
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
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
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
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):
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.
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
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.
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
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
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
*** This position completely contradicts Crocker position – depends on whether we
take internationalist view of TM, or a territorial view.
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
*** 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
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
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
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
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
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.
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.
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
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.
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
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
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)
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”
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
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:
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
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
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
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.
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
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).
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
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:
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
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
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
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
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 …
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
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)
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.
4. THE ACQUISITION AND ENFORCEMENT OF RIGHTS:
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
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
o Grounds of Refusal:
o Absolute grounds go to inherent qualities of the mark; e.g.
OHIM examines – people can make “observations”, but OHIM can
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
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
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
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
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
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)
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.
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
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
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
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
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
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.
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
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
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
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
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
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
*** 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
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
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
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
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
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).
5. DISPUTE RESOLUTION/ENFORCEMENT BETWEEN MEMBER
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
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
o Supposed to be private here to encourage settlement (but frequently leaked to
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.
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
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.
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
***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
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
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”
6. COURSE OVERVIEW/REVIEW
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
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
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
Tendency to harmonize up
Is this just enforcing west’s standard?
Relationship between sovereignty/national policy concerns and international
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.
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
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
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
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
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.
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
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
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
o CL and civil law take different approaches: CL = SOTB, Civil looks for
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
o EU term Directive = life plus 70
But reciprocity for other countries to benefit from this – led to US life
o Phil Collins – EU countries w.r.t. works within EU can no longer use rule of
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)
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
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.
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
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
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
o *** Independence of rights kicks in once registered no longer tied to
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
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 Marks generic in any language should be regarded as lacking distinctiveness
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
o Foreign registered mark refused since no distinctive
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(?)
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
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
Relevant provision in TRIPS
1502 and 1503 – Clarifies Art 6qq of Paris – requires use for registration, but not for
Art. 5 – formal requirements that mark be published once registered and open to
Art. 16 – rights conferred
(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
Art. 19 – ….Reasonable time
o Don the Beachcomber – use must be in Canada to maintain a mark on
20 and 21 – limits requirements courntire can make
o E.g. can’t make mandatory licensing – see re: developing countries
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.
Keep eye on larger themes, sources of disagreement and be ready to draw upon
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.
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
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
If you are talking about a case, describe scenario, issues, decision
Why? – what is the role of national treatment? i.e. cornerstone, non-
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 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
o Plan answer
o Pick issues you will discuss – think about these before you come into
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
Go in knowing what she has