Tuesday, May 30, 2023

The Great Bill C-18 Constitutional Gamble and “The Man Who Broke the Bank at Monte Carlo”



Bill C-18 (the so-called “Online News Act”), which is often referred to as the “link tax” bill, is very likely unconstitutional. There's been an excellent analysis of several reasons why this is the case by Konrad von Finckenstein and Phillip Palmer, whose joint and several expertise is quite formidable. 

These learned authors mention copyright and seem to acknowledge a possible connection to copyright – but I would go farther and add one more potentially final nail to the C-18 constitutional coffin. This involves copyright law. I would contend that there is not and cannot be any possible connection to copyright law. The bill has a few references to copyright that are either ill-conceived or perhaps included as Machiavellian tethers to support some sort of connection to constitutional mooring. Absent any valid connection to copyright law, where is the federal jurisdiction to be found?

In Canada there is no copyright in a “title” or headline as such or a short snippet not comprising a “substantial part” of the article. Thus, the issue of fair dealing doesn’t even arise & the reference to the Copyright Act is a constitutional red herring.

Also, a hyperlink by itself is not “publication”. It’s just a modern and more convenient form of the traditional footnote. It is the fundamental raison d'être of the internet.

One of my very favorite copyright cases of all time is that of  Francis, Day & Hunter Ltd. v. Twentieth Century Fox Corp. Ltd. et al., 1939 CanLII 276 (UK JCPC), a Privy Council decision from the legendary Lord Wright that involved alleged copyright infringement in Canada. In a nutshell, the case involved a movie entitled “The Man Who Broke The Bank At Monte Carlo” and a song written earlier with the same title. Other than the title, there was nothing in common between the two works. The Privy Council held that there cannot be copyright in a title because it is not a sufficiently substantial work of authorship.

The Privy Council also indicated that:

In this connection regard must be had to s. 3 of the Act of 1921 which defines copyright as the "right to produce or reproduce the work or any substantial part thereof." The definition (v) does not, in their Lordships' judgment, mean that the title of a work is to be deemed to be a separate and independent "work." Work is to include "the title thereof," that is to say, the title is to be treated as part of the work, provided that it is original and distinctive whatever these words may connote. When that definition is read with s. 3, the result is that to copy the title constitutes infringement only when what is copied is a substantial part of the work. This view would agree in effect with what was said by Jessel M.R. in Dick v. Yates (supra) in the words quoted above and would apply to a case such as a title covering a whole page of original matter, or something of that nature, but would not justify such a wide extension of copyright as the appellant company has contended for, or the holding of McEvoy J. on this point. It is said that so to construe the definition is to treat it as adding nothing to the law. But the definition may have been inserted to settle doubts and to avoid it being said that in no circumstances could a title receive protection. In any event their Lordships do not think that the new definition (y) entitles the appellants to succeed in this case.

(at p. 359 of report) (highlight and underline added)

Thus, any reliance on the notion that Google, or other Digital News Intermediaries (“DNIs”), are infringing copyright by reproducing the title (i.e. headline) of an article is ridiculous. The “Monte Carlo” decision is just as relevant to Canadian law today as it was 84 years ago.

Even the inclusion of  a one or two sentence “snippet” from an article would presumably not entail application of the Copyright Act because it would likely not be a “substantial part” of the article and would thus not even need justification as fair dealing – which only is necessary if a “substantial part” is reproduced. Google News simply does not reproduce whole articles or substantial parts thereof. It long ago stopped providing even “snippets” and now just provides headlines.

Thus, the references in sections 23 to 26 to copyright are simply a red herring. The reference to the Copyright Board about a possible tariff is simply beyond absurd. Given the Boards historical inability to deal correctly with much simpler and more lucid legislative provisions, and its record of taking many years to decide cases and inevitably then retroactively and often wrongly, the notion of a Copyright Board “tariff” dealing with headlines of news articles is simply cringeworthy.

And, of course, links are no more than a modern and more convenient form of classical footnotes. The act of linking to an article without more is simply not “publication” and to legislate otherwise would threaten the very viability of the internet, as the SCC ruled a long time ago in Crookes v. Newton 2011 SCC 47 (CanLII), [2011] 3 SCR 269:

[36] The Internet cannot, in short, provide access to information without hyperlinks.  Limiting their usefulness by subjecting them to the traditional publication rule would have the effect of seriously restricting the flow of information and, as a result, freedom of expression.  The potential “chill” in how the Internet functions could be devastating, since primary article authors would unlikely want to risk liability for linking to another article over whose changeable content they have no control.  Given the core significance of the role of hyperlinking to the Internet, we risk impairing its whole functioning.  Strict application of the publication rule in these circumstances would be like trying to fit a square archaic peg into the hexagonal hole of modernity.

(highlight and emphasis added)

 Thus, there is no rational connection between Bill C-18 and copyright law as we know it in Canada. Any desperate reference to the concept of “neighbouring rights” based upon some civil law based European approach is also a non-starter in Canada, absent a major and likely unconstitutional amendment to the Copyright Act.

The only reason to include the references to copyright in Bill C-18 was presumably to somehow tenuously tether it to a constitutional lynch pin. I would be dismayed if government officials were unaware of this fictitious foundation. Apparently, however, they are doing what officials tend to do – which is to try to rescue their Minister’s misguided and politically based missions and to get them across the finish line through Parliament.

If this should happen with Bill C-18, one hopes that Google would challenge it in the courts. However, Google’s policy strategies have become increasingly opaque in recent years. Moreover, its litigation strategy that effectively snatched defeat from the jaws of victory in the SCC in the 2017 in Equustek decision case was and remains very puzzling. See Google Inc. v. Equustek, 2017 SCC 34.  Hopefully, Google will handle this and other possible constitutional issue issues, such as of whether it operates "a search engine or social media service, that is subject to the legislative authority of Parliament", more effectively than it dealt with the Equustek case in the SCC.  

Although I am “not practicing law” these days, I would be willing to elaborate on the above in the Senate hearings as a policy provocateur if asked.

 HPK

Friday, May 26, 2023

A Fair Deal for Canada on Fair Dealing

Kate Taylor - Globe and Mail

The recent sadly and badly misinformed “opinion” dated May 20, 2023 by veteran Globe and Mail cultural columnist Kate Taylor entitled “Copyright loophole for education should be plugged”  highlights the need for the educational sector to step up to the plate on fair dealing and copyright revision. Her “opinion”, which some might mistake for journalism given her 34 year tenure with the Globe and Mail (which regards itself as “Canada’s National Newspaper”), could have been written by lobbyists for Access Copyright and publisher interests, though it would lack her hallmark and that of the Globe and Mail.

This is not the first time she has blatantly opined for Access Copyright. Here she is in 2016 using her Globe and Mail podium, which does not even pretend to be an “opinion” piece as does the current effort.

  • She doesn’t seem to understand that fair dealing rights are “users’ rights” that must be given a “large and liberal interpretation” and are “always available.” She needn’t take my word for this. Those statements come from the Chief Justice of Canada, Beverly McLachlin in the landmark 2004 CCH v. LSUC decision. Above all, fair dealing is not a “loophole”. Fair dealing rights are absolutely essential and integral to the concept of copyright in Canada and every other comparable jurisdiction.
  • She doesn’t seem to know the difference in terminology between “fair dealing” (Canada) and “fair use” (USA).
  • She is apparently unaware that the USA has provided more and more explicit rights to educators since 1976 than Canada has ever done, i.e. by hard wiring teaching (including multiple copies for classroom use), scholarship, or research” into its copyright law since 1976. See 17 USC 107. Nobody could credibly suggest that this is non-compliant with international treaties. It’s simply absurd to suggest that Canada is an “outlier” in this respect; if anything, our fair dealing users’ rights need to go even farther to catch up with the USA.
  • She is apparently unaware that key Canadian SCC fair dealing decisions, including the landmark 2012 Alberta v. Access Copyright and the SOCAN v. Bell  iTunes preview cases, were decided on the pre-2012 law that goes back to 1921 before the word “education” was added to s. 29. 
  • She is misleading readers by suggesting that the addition of the word “education” to s. 29 of the Copyright Act via the 2012 Copyright Modernization Act caused the decline in Access Copyright’s revenues. Indeed, the 2019 INDU Committee Report from Parliament confirms that:
  • ... in Alberta (Education) v. Canadian Copyright Licensing Agency (Access Copyright),5 the SCC concluded that teachers could rely on the fair dealing exception when reproducing works for their students since these students were engaging in “private study.” The SCC reached this conclusion without relying on an explicit fair dealing exception for “education”—which, as noted above, has since been added to the Act.
  • See also:
Prof. Ariel Katz’s 2018 testimony at the INDU hearings explaining that  correlation does not imply causation and outlining the many of the actual reasons for Access Copyright’s declining revenues
Prof. Ariel Katz’s 2014 blog about The Loss of Access Copyright Royalties and the Effect on Publishers: Sifting Fact from Fiction, which debunks the myths about the Oxford University Press “OUP”)decision close its Canadian K-12 division. Ms. Taylor in her current opinion to continues to attempt to refloat the OUP fiction

There have been no court cases since 2012 that have specifically considered the effect, if any, of the 2012 addition of the word “education” with respect to the fair dealing rights of educators, librarians, students and other essential “users” of the copyright system. In any event, the effect of the dealing on the market for the work being copied is one of the factors that courts would consider in determining fairness or lack thereof and, if Ms. Taylor is somehow correct in her assertion of causal connection, then copyright owners are already protected – so there’s another reason why there’s no loophole that needs to be fixed.

She is apparently unaware of the greatly increased spending since 2012 that bypasses Access Copyright not just because tariffs aren’t mandatory (as Ariel Katz and I have been preaching for a decade or so and the SCC agreed in 2021) but because Access Copyright’s “tariff” offers such poor value. Its repertoire is very limited – especially in the post-secondary educational (“PSE”) sector – and its terms of use are too limited to justify any more than a small fraction of their “approved” tariff, which is:

  • $24.80 per FTE student, if the educational institution is a university.
  • $9.54 per FTE student, if another educational institution (i.e. college)

The PSE sector is spending more money than ever though acquisitions, direct licensing, and dealing with the much more responsible and responsive American Copyright Clearance Center for transactional licences. Access Copyright is notoriously inefficient in its distribution, offers very limited “rights”, and its repertoire is focussed on Canadian literature – which is not a major component in the PSE sector. Most Canadian university or college grads will never need to read Margaret Atwood or Alice Munro. Maybe they should for their literary betterment. But such material is not part of the curriculum for engineers, doctors, lawyers, computer programmers, and the overwhelming majority of PSE students.

Access Copyright persists in attempting to collect revenues based upon repertoire for which it has NO rights. It once was able to get educational institutions to hold their noses on its dubious and now defunct “indemnity” scheme, which may have appeared to offer some practical value to some institutions. I’ve written a lot about this in the past, including this from 2009.

I have often suggested that Access Copyright could serve a useful purpose if it offered decent value to license its actual repertoire based upon useful terms and conditions at a reasonable price. But that price would presumably be a fraction – perhaps 10% - of what it currently sees itself entitled.

BTW, Access Copyright’s website is deceptively out of date regarding the PSE tariff case law, where it stops in 2017.

Ms. Taylor concludes her perfect puff piece for Access Copyright by saying “The legalized robbery of Canadian authors by the education sector is an international embarrassment and a national shame.” (emphasis and highlight added) Frankly, the national shame is that Canada’s national newspaper would publish something this misinformed, outrageous, and imbalanced that might get mistaken, due to its provenance and the Globe and Mail’s status, for credible journalism or analysis. BTW, I posted several timely tweets about this “opinion” and compiled  them for the comments section for the Globe and Mail, which has apparently decided not to publish my comment  in the “comments” feature following her opinion.

All that said, Ms. Taylor’s analytically and factually challenged “opinion” should at least be useful as a wakeup call for the educational sector – which frankly has not stepped up to the plate with sufficient vigor and confidence since its great victory in the SCC in the 2021 Access Copyright case, for which Ariel Katz laid the legal foundation and influentially intervened and I made the prevailing arguments on behalf of the intervener Canadian Association of Research Libraries (“CARL”).

The good copyright news overall now is that we recently passed Passover this year without the feared fatal budget announcement regarding fair dealing or mandatory tariffs that this Government might have hidden away in Federal Budget. That’s the good news.

The bad news is that this doesn’t mean these dangers have passed, as Ms. Taylor’s opinion piece blatantly demonstrates. Although the Hon. Pablo Rodriguez has his hands full with his incredibly misguided legislation in the form of Bills C-11 (now passed)  and C-18 (the “link tax” bill), that doesn’t mean that he or his enabling officials have forgotten about copyright and the shrill and misinformed voices from Quebec (of which he is Trudeau’s “Lieutenant”) and Bay Street.

Wiser ministers know that copyright revision – other than very careful incremental changes – is not a hill to die on in Canada. Fortunately, there are two other ministers who will hopefully bring some essential legal and policy wisdom to the table, should this become necessary.  The Hon. F-P Champagne, the ISED minister, is actually the minister with historically primary responsibility for copyright. The Minister of Justice – the Hon. David Lametti – who is mentioned by name by Ms. Taylor – may also play a role. He was a leading copyright law professor at the McGill Faculty of Law for about 15 years before he ran for office. His department is responsible for ensuring the constitutionality of any legislation and is responsible for the review and drafting of legislation for the government. He was my client and appeared with me in his capacity as law professor and head of the Centre for Intellectual Property Policy at McGill in another important SCC case that helped to pave the way to the definitive 2021 SCC York ruling that Access Copyright tariffs aren’t mandatory. See Canadian Broadcasting Corp. v. SODRAC 2003 Inc., 2015 SCC 57 (CanLII), [2015] 3 SCR 615.

In the lull before the possible copyright storm, the best thing that the user community can do would be to follow the suggestion of Justice Abella in her last and crowning SCC decision of her illustrious career, namely to “actualize” their fair dealing rights as she puts it in the 2021 Access Copyright v. York University decision from the SCC.

As I’ve said before:

The victories of the PSE (post secondary education) sector are in peril – not only because of AC and its collaborators but because of sometimes unwise strategies in the PSE sector itself. Recall this important analysis by Prof. Ariel Katz following York’s defeat at the trial level in 2017: Access Copyright v. York University: An Anatomy of a Predictable But Avoidable Loss. The fact that the AC litigation against York was not struck down early on and had to go the SCC and that York chose to bet the farm on a bad set of fair dealing guidelines and risk a severe smack down overall on fair dealing does not bode well for the future unless basic lessons have been learned – which is hopefully happening but is not yet evident. York very nearly lost that litigation. Fortunately, my brave client the Canadian Association of Research Libraries (“CARL”) and Prof. Ariel Katz were very instrumental in saving York from this fate – though it’s far from clear that all those responsible for York’s strategy actually appreciate our work.

It surely suggests that the PSE sector needs to update fair dealing guidelines and to follow Justice Abella’s wise words in the York decision:

[106] At the end of the day, the question in a case involving a university’s fair dealing practices is whether those practices actualize the students’ right to receive course material for educational purposes in a fair manner, consistent with the underlying balance between users’ rights and creators’ rights in the Act. Since we are not deciding the merits of the fair dealing appeal brought by York, there is no reason to answer the question in this case.

(underline highlight & emphasis added)

This can only mean that the PSE sector needs to come up with viable fair dealing guidelines that are:

  • Neither too permissive nor too defensive
  • Sufficiently specific to be actually useful.
  • Sufficiently to broad to enable adult responsibility by individual professors and library personnel without the need to seek legal advice or permission from so-called rights owners or their licensees (after all, that is what fair dealing is all about)
  • Likely to stand up to scrutiny in the event of litigation.

As I’ve said before:

Perhaps York should have been rather more careful about what it wished for. Both the Federal Court and the FCA had to respond to the counterclaim, which they did as asked. I am on record from the beginning as having questioned not only the guidelines themselves, which emanate from AUCC (now UC) guidelines but York’s decision to needlessly, in my view, put them on trial. Essentially, I had suggested that York get a summary ruling on whether the tariff was mandatory – which should have been very easy at least after the 2015 SCC judgment – and not unnecessarily “bet the farm” on the controversial fair dealing guidelines. Here are some of my blogs in reverse chronological order.

The process of actualizing educators’ fair dealing rights, which includes updating fair dealing guidelines, is essential and may suffice to head off any improvident legislation, such as Ms. Taylor and her supporters would like to see. It is too important to be entrusted to any single organization. That said, it should not be unduly complicated, given the good beginning of the 2012 U of T guidelines with which I was closely involved. These could be satisfactorily updated relatively quickly by a very small number of experts. If different organizations separately develop new guidelines, then let the market decide which approach is better. This may prove more efficient than attempting to form a coalition that could result in delays and devolution to the lowest common denominator. Above all, the mistakes that almost resulted in defeat being snatched from the jaws of victory in the long saga of the York litigation as a result of problematic guidelines and litigation strategy must not be repeated.

The original 2012 U of T fair dealing guidelines were developed in a cooperative collaboration between usually contrasting viewpoints (Casey Chisick and I) under the wise leadership of the now retired and much missed U of T general counsel Steve Moate. I was pleased to have been part of this process. These were, IMHO, the best fair dealing guidelines to date and suggest a method and process of going forward. If Casey and I can agree on anything concerning copyright, chances are that it must be right!

U of T has recently controversially updated its fair dealing guidelines, supposedly in response to the 2021 York decision from the SCC. Here is the new version. I was NOT involved in this update because I was not invited. I and many others are very disappointed with these new guidelines which are a big step backwards and, in some respects, simply wrong and even harmful. I will not go into any detail now as to how they are less than helpful, other than to say this.

Overall, these revised 2022 (as slightly updated in early 2023) guidelines are a disappointing and, in several instances, questionable and even inaccurate revision and update. They are more restrictive for the PSE sector than the 2012 guidelines.

Overall, the guidelines have gone from a reasonably balanced “safe harbour” approach that  enabled and empowered fair dealing to a much more risk-averse restrictive approach that overly protects publishers and needlessly errs on the side of caution at the cost of good education, research, and private study. With three strong SCC fair dealing victories in the last decades and two recent strong SCC judgements that tariffs aren’t mandatory, why wouldn’t U of T offer more assertive and empowering guidelines for the benefit of teachers and, above all, students – in other words, the university community.

If the current government is unwise enough to follow the histrionic hyperbole of Access Copyright and powerful publishers as presented by Ms. Taylor, then the PSE sector must be ready to defend itself with a good offence. This might include:

  • Clarifying that TPMs can be circumvented for fair dealing purposes
  • Ensuring that users’ fair dealing rights cannot be overridden by contract or waiver
  • Ensuring that if crown copyright is not abolished in its present form, then republication of any crown work that is not officially “secret” should be permitted as fair dealing. This would be almost as good as in the USA where the federal government has no copyright rights in its works
  • Adding the two little words “such as” to the s. 29 fair dealing provision, consistent with American law.

Anyway, thank you to @ThatKateTaylor this unintentional call to arms to all those who care about a fair deal for fair dealing and other essential aspects of copyright in Canada.

HPK

Wednesday, May 10, 2023

IP Judges in the Federal Court: Chamber, Echo Chamber and/or Star Chamber?

 Chief Justice Crampton of the Federal Court has recently on March 2, 2023 formally announced the creation of three “chambers” in the Federal Court, namely:

  • Intellectual Property and Competition Chambers
  • Maritime and Admiralty Chambers
  • Class Actions Chambers

 The Court’s Notice states that:

The Registry categorizes and codes all proceedings. This and other case information is considered by the Judicial Administrator when assigning judges to a case. It is therefore not necessary for parties to make a formal request for a matter to be assigned to a judge from the relevant Chamber. For assignments to the Intellectual Property and Competition Chambers, the Judicial Administrator will also consider sub-specialties related to practice areas particular to IP (e.g., copyright, trade-marks, patents and competition).

Assignment of matters to IP Chambers is automatic.

It is not necessary for parties to make a formal request for a matter to be assigned to a judge from the relevant Chamber. The Federal Court Registry categorizes and codes all proceedings, which is considered by the Judicial Administrator when assigning judges to a case.

(highlight added)

The list for the main category of IP & Competition is as follows, as provided by the Court:

  • Chief Justice Crampton
  • Associate Chief Justice Gagné
  • Justice O’Reilly
  • Justice Zinn
  • Justice Manson
  • Justice Roy
  • Justice McVeigh
  • Justice St-Louis
  • Justice Brown
  • Justice Fothergill
  • Justice Gascon
  • Justice Southcott
  • Justice McDonald
  • Justice Lafrenière
  • Justice Pentney
  • Justice Grammond
  • Justice Walker
  • Justice McHaffie
  • Justice Fuhrer
  • Justice Pallotta
  • Justice Little
  • Justice Furlanetto
  • Justice Aylen
  • Justice Tsimberis

This list comprises 24 of the 41 current judges of the Federal Court. Only about seven of the judges on this list had any significant experience in IP law prior to their appointment.

 In recent years, we have seen the cohort of judges with some previous IP litigation experience rise from none to one or two and now to at least seven or eight out of 41. Three of the nine Associate Judges (formerly called Prothonotaries) have a significant background in IP. Overall, this may seem like a good thing – and in many ways it is.

 Predictably, at least one  active plaintiff side litigator firm sees this a positive move that will be “An improvement to IP enforcement in Canada”. However, some cautionary notes should be considered. Some of the best IP judgements over the years have come from judges with a more generalist background who had not previously practiced in IP before being appointed. More about this below…

An ongoing and not unrelated concern on my part and that of some other thoughtful colleagues is with respect to judgments rendered in default proceedings. There is a risk above all that any judge – even one with previous IP experience – may not be sufficiently briefed in a default proceeding in which the adversarial process does  not unfold as it should. Judgments in such cases should rarely if ever be given “neutral citations” and thereby presumptive precedential status. There could be a risk that the “chamber” concept may increase the possibility of judges following their own default judgments or those of their colleagues when such judgments should have little or no precedential value. The American courts have long had a tradition of treating default judgements and some other decisions unworthy of precedential status as “unpublished” judgements that bind only the parties but nobody else and are NOT to be cited as precedents. One hopes that the chamber approach does not exacerbate the problematic potential of default judgments being given neutral and, hence, potentially precedential status. I’ve written about the problem with default judgements getting neural citations before.

 The increasing use of Anton Piller orders (which by definition result from ex parte proceedings and can potentially lead to incarceration for contempt)  - and Norwich Orders exposing the private information of hundreds of people at a time (which are rarely any longer adequately opposed) are particularly fraught with precedential peril and should not be issued on a routine basis and require a very broad understanding of fundamental legal principles. Hopefully, the chamber approach will not lessen the need for all due care and attention to these types of proceedings.

 The late, great, leader of the IP bar and one of the best all-around Canadian barristers of all time  was Gordon F. Henderson, author of the Henderson Report entitled “Intellectual Property: Litigation, Legislation, and  Education” published in 1991 (Cat. No, 43-25\1991E, ISBN 0-662-19084-X,  CCAC No. 00114 91-08) and, sadly, not available online – though hopefully it will be  one day sooner rather than later. I worked very closely with him on that project when I was in government, but it was his distinguished decades of experience that informed the main recommendations. He commented that:

 On balance, I do not think that we need to seek out specialized practitioners to constitute an intellectual property “panel” as such on the Federal Court. However, consideration should be given to the appointment of some practitioners experienced in intellectual property matters. It would not be expected that they would hear all or only intellectual property cases. This would be a solution with no significant downside. It would not require any legislation to implement, although it would require considerable consultation with the Canadian Bar Association, the Patent and Trademark Institute of Canada, and other interested parties in the ever more democratic process of judicial appointments. Those responsible for recruiting should consider no only the practicing Bar but the specialized cadres of government, industry and academia. (highlight added) 

 He cautioned against a specialized court and recommended that:

 Judges should be appointed to the Federal Court with specialized background in intellectual property law, although they should not be assigned exclusively to this area. Recruitment should consider not only private practitioners but government, industry and academia. (highlight added)

A potential danger of having too many IP judges from the private sector is, frankly, that they may tend to come from plaintiff side practices. Some IP firms have very pronounced points of view. Although a judge can leave their practices and any  conflicts behind, can they always leave their sometimes strong points of view behind?

 Copyright, in particular, has become highly polarized - not unlike labour law- where firms tend to pick one side or another. When a firm acts for a major copyright user organization on the one hand and a major copyright collective on the other hand – even where there is no direct conflict of interest – the issue of a business or philosophical conflict may at least appear to arise and some may question whether the public interest is being compromised. Waivers may not solve all the potential concerns. Indeed, certain major media companies are now simultaneously major players as ISPs, copyright owners, and copyright users in various proceedings in various fora. They presumably are doing the best for their shareholders. As for the public interest, maybe not so much. Patent practice tends also to be rather polarized overall – especially in pharmaceutical litigation – though this generality may be evolving. Trademarks law is relatively less prone to polarization.

In any event, most of the money in IP practice is on the plaintiffs’ side – in other words, in enforcement on behalf of rights owners.

 Another phenomenon is that even some IP practitioners tend to think that expertise in one of the three main areas – namely copyright, patent, and trademarks – translates to insight and expertise in the other areas. However, that is very often not the case and is an increasingly problematic proposition as these practices become more like specialized silos. Mindful of the dangers of analogies, one might ask whether a great NFL football player – but someone who can’t even skate – could suddenly be on an NHL hockey team? I would much rather take my chances with a wise generalist judge than a judge who is a former patent lawyer who mistakenly thinks they understand copyright law or vice versa. There are many IP lawyers who lack reliable expertise in all three areas. A little knowledge can be a very dangerous thing.

 Some of the best jurisprudence in IP law has come from judges who had little or no background in IP. Former CJ Beverly McLachlin  -  who penned the landmark “magna carta” Canadian copyright case in CCH Canadian Ltd. v. Law Society of Upper Canada, 2004 SCC 13 (CanLII), [2004] 1 SCR 339 did have some related background in her early career having written a book on architecture and penned an important copyright trial judgement  in Slumber-Magic Adjustable Bed Co. Ltd. v. Sleep-King Adjustable Bed Co. Ltd. et al., 1984 CanLII 54 (BC SC).  

 Other important appellate jurisprudence has come in recent times, for example, from Justices Abella, Bastarache, Rothstein, Rowe, Nadon, and Stratas  - none of whom had a background as IP litigators. Another, of course, is Justice Binnie – a great all-around barrister who was appointed straight to the SCC. He did have some important experience as a litigator in some IP cases. And there have been many excellent IP trial judgments from generalist trial judges in the Federal Court over the years, as well as from judges from the Superior Courts of the provinces.

 While one has high hopes for this “chamber” development, let us not have excessive expectations. We certainly hope that the IP chamber doesn’t somehow become an echo chamber or even a star chamber. We watch with cautious optimism.

 HPK