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.


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