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

Canadian Embassy IP Event in Washington on April 5, 2017: Where's the Canadian Content?

This looks like an interesting and timely event with some high powered people. But where's the Canadian content?

HPK

UNCITRAL security interests consultation update

Canada is off once again to Vienna to chair the UNCITRAL initiative on security interests. The Canadian delegation is now in Vienna from November 2 to November 6, 2009.

Canada has provided the Chairperson for UNCITRAL'S Working Group VI, which deals with Security Interests since its first session in New York in 2002. She is Kathryn Sabo of the federal Department of Justice. This is the 16th session of Working Group VI. All of the meetings have taken place in New York and Vienna.

Working Group VI has come up with a basic “Guide” document dealing with security interests generally. The main document is here. Don't be in a rush to hit “print”. It's over 500 pages long.

The supplementary material, currently under consideration, and which seems to deal mainly with IP, is inconveniently split up into small chunks, is here.

Even though these latest draft papers date from July of 2009, the consultation by telephone took place only last week on October 29, 2009.

IPIC (Intellectual Property Institute of Canada) took part in the consultation and has prepared some good written commentary. It has an active and well informed committee. It provided suggestions on acquisition financing, continuous filing, the “ordinary course” rule, and choice of law relating to royalties. IPIC also provided detailed comments back in April. Without the prodding of IPIC and perhaps my occasional blogs, I doubt that there would have been any consultation.

The problem for most readers of this blog, and even its author, is that these several hundred pages of documents are written in very inscrutable international bureaucratese about very technical stuff at the edge of IP, bankruptcy, insolvency, licensing, and banking/lending law. Even if one has the time to read all of the documents, this is very tough going. There are probably only about a couple of dozen people in Canada who can make much sense out of them, and probably less than a handful of people who have serious expertise in all of the necessary areas.

We struggled with all of this almost a decade ago when the late lamented Law Commission of Canada looked at the issue - and we did come up with a perfectly readable book that I edited, still available here.

But the current landscape is quite unreadable. Given the undoubtedly large investment made by Canada in the time and travel costs of providing a Chairperson and three experts to advise her for this UNCITRAL Working Group VI efforts over the several years, I would have thought that Canadians could be provided with a few pages of explanatory documents about what is going on and how it may affect them.

I've been told that the UNCITRAL soft law initiative is consistent with Canadian law. That is not without irony because Canadian law is not exactly very clear on lots of fundamental questions, as anyone who reads my book will quickly see. Little has changed since that book was published in 2002. The UNCITRAL efforts will presumably provide a framework for other countries thinking of legislating in this area. This will supposedly benefit Canadians seeking to do business in such countries. If this is so, is it too much to ask that our government inform Canadians what this is all about in language that Canadian lawyers, bankers and other stakeholders can understand?

These issues are potentially very important for those in sectors such as film, sound recordings, software, and high tech generally where financing deals can readily involve IP as collateral, if there is sufficient expertise to do such deals. Indeed, most of the discussion at last week's “consultation” concerned acquisition financing, presumably a hot topic in these sectors. There was considerable confusion about what version of the latest document from UNCITRAL will be “official” on this issue.

Unfortunately. the Department of Justice, which is leading Canada's participation, has no interest in providing any explanation of the UNCITRAL documents to Canadians and the consultation effort has been invariably been passive, infrequent (only two or three occasions of which I am aware) and on the eve of any of the meetings in New York or Vienna, Consultation requires more than providing a link to UNCITRAL's website.

One would hope that Canada's expert team could provide a brief of a few pages outlining what this Guide and its IP Supplement will do, Canada's role in this process, and why Canadians should be interested. Above all, we need to know the main features of the proposed soft law regime. Surely with all of the expertise our delegation has, and the fact that we Canada has invested hundreds of thousands of dollars or more in providing the chair and other support for this effort, the provision of an explanatory document is not too much to ask. It might even foster investment and innovation.

HK

Canadian Un-Consultation re UNCITRAL Security Interests in IP Project

Despite the fact that a Canadian government official from the Department of Justice has been chairing UNCITRAL's work on security interests in IP for several years, there has been almost no consultation with the private sector in Canada on this important subject. The Europeans are very aware and involved - for the obvious reason that using IP assets as collateral to raise capital can be crucial to financing innovation. Here's info about a recent seminar in London, in which my friend Jeremy Phillips was instrumental.

Here are the links to the papers that will be discussed in Vienna from November 2-6, 2009. The papers date from July, 2009.

But so far, there have been no attempts of which I am aware by Canada's government to consult with Canadian experts and stakeholders in preparation for the November meeting. This failure to consult on this issue is deja vu all over again.

This is really a pity, given all the work of the late lamented Law Commission of Canada and many individuals under that aegis that was done on this issue. I was privileged to have advised the Law Commission on this project and to have edited the resulting book, which contains many excellent papers from Canada and abroad.

HK

PS - the UK government is seeking input on this process, perhaps as a result of my friend Jeremy's efforts. See this.

It is possible that the Canadian government believes that there is insufficient interest here to warrant consultation. That, however, would be an incorrect and conclusory inference. If there is lack of obvious exitement over this in the private sector, it may be only because the private sector is almost completley unaware of what has been going on at UNCITRAL for several years. One of the the main functions of consultation by government is educational. Up to now, this has not happened. Hopefully, our government will find a way to share its expertise with the private setor, so that meaningful and timely input can be obtained. The issues are very technical and complex. But there are those who care and are capable of comprehending them. It would be unfortunate if the private sector becomes informed about all of this only when it is a fait accomplit.

Pope Benedict VI on IP

(Wikimedia)

Thanks to the tireless devotion of Jamie Love's KEI Online, we are now aware of Pope Benedict VI's Encyclical of July 7, 209 on IP. According to KEI:

Pope Benedict XVI today issued a statement saying that “On the part of rich countries, there is excessive zeal for protecting knowledge through an unduly rigid assertion of the right to intellectual property, especially in the field of health care.” The criticism came in a section of his most recent encyclical letter dealing with social issues, and specifically focusing on international human development and systemic failures of bodies large and small to solve development problems.

Further, according to KEI,

While Papal Encyclicals do not determine official doctrine for the Church, they do offer a chance to annunciate the personal thoughts of the Pope and encourage specific priorities that the Pope wishes to set for the Church. Encyclicals such as the Caritas in Veritate are traditionally addressed to church heads, and not to the laiety at large (though the current one seems to be an exception, and all are made available publicly). They are the second most important statement that can be issued by the Pope (after an Apostolic Constitution, which proclaims dogma and/or issues of canon law).

Here's the gist of the Encyclical:

22. Today the picture of development has many overlapping layers. The actors and the causes in both underdevelopment and development are manifold, the faults and the merits are differentiated. This fact should prompt us to liberate ourselves from ideologies, which often oversimplify reality in artificial ways, and it should lead us to examine objectively the full human dimension of the problems. As John Paul II has already observed, the demarcation line between rich and poor countries is no longer as clear as it was at the time of Populorum Progressio[55]. The world’s wealth is growing in absolute terms, but inequalities are on the increase. In rich countries, new sectors of society are succumbing to poverty and new forms of poverty are emerging. In poorer areas some groups enjoy a sort of “superdevelopment” of a wasteful and consumerist kind which forms an unacceptable contrast with the ongoing situations of dehumanizing deprivation. “The scandal of glaring inequalities”[56] continues. Corruption and illegality are unfortunately evident in the conduct of the economic and political class in rich countries, both old and new, as well as in poor ones. Among those who sometimes fail to respect the human rights of workers are large multinational companies as well as local producers. International aid has often been diverted from its proper ends, through irresponsible actions both within the chain of donors and within that of the beneficiaries. Similarly, in the context of immaterial or cultural causes of development and underdevelopment, we find these same patterns of responsibility reproduced. On the part of rich countries there is excessive zeal for protecting knowledge through an unduly rigid assertion of the right to intellectual property, especially in the field of health care. At the same time, in some poor countries, cultural models and social norms of behaviour persist which hinder the process of development.

Here's the original document CARITAS IN VERITATE from the Vatican. Note that it is "© Copyright 2009 - Libreria Editrice Vaticana"

HK

PS - Contrast the above with the Knights of Columbus position on "piracy" as a violation of the seventh commandment.

McCullagh on MacBride

Declan McCullagh has a story on President Obama's appointment of a senior BSA enforcer to a senior position at the Deaprtment of Justice:

For his vice president, Barack Obama chose Joe Biden, a senator with a long history of aiding the Recording Industry Association of America. Then Obama picked the RIAA's favorite lawyer, Tom Perrelli, for a top Justice Department post.

Now, as one of his first official actions as president, Obama has selected the Business Software Alliance's top antipiracy enforcer and general counsel, Neil MacBride, for a senior Justice Department post. Among other duties, MacBride has been responsible for the BSA's program that rewarded people for phoning in tips about suspected software piracy...

Is there a pattern emerging here? If there is, will be soon see a balanced pattern?

There is some speculation that antitrust enforcement could stiffen up - which could help to establish balance.

HK

The Obama Effect on IP

IP-Watch has a good analysis of the likely direction of the Obama administration here. IP-Watch also speculates on some Obama appointments here.

Although a Democratic administration is likely to be very sympathetic to the wishes of IP owners and rightly so, there is reason to hope that the Obama administration will take a more nuanced approach than we've seen in the past as a result of such factors as:

• Obama's commitment to affordable health care
• Obama's commitment to improving child education in order to improve competitiveness
  
• Obama's experience as an academic
• the very Internet savvy campaign he ran
• the need to balance traditional Democrat protectionist instincts with the pressing need to to restore America's lead in high tech R&D and even manufacturing
  
• the need for the USA to regain respect internationally by informed policy leadership and not by brute force trade hegemony
• the need to satisfy likely great expectations from Africa and developing countries in other regions
  
• more intellectual rigor and honesty in separating bogus terrorism and exaggerated counterfeiting issues from real trade and IP issues.
  

It's worth noting that Bill Clinton's IP point man, Bruce Lehman, has stated that the DMCA "didn't work out very well" under the last Democratic administration. Hopefully, Bruce's soul searching and public confessions will impart valuable wisdom to the new Democratic White House, whether or not he has part to play in it.

As I say, and without being political, there is now indeed plenty of reason to hope.




HK

EU Court Upholds Microsoft Competition Ruling

From the EU Court of First Instance ruling today upholding Commission's large fine and its finding of abuse of dominant position regarding IP:

It is only when it is accompanied by exceptional circumstances such as those hitherto envisaged in the case-law that such a refusal can be characterised as abusive and that, accordingly, it is permissible, in the public interest in maintaining effective competition on the market, to encroach upon the exclusive right of the holder of the intellectual property right by requiring him to grant licences to third parties seeking to enter or remain on that market. It must be borne in mind that it has been established above that such exceptional circumstances were present in this case. (para. 691)

Here's a good article from the IHT.

Here's the CFI decision itself and the Court's press release.

And here's the response from Microsoft's top lawyer and Senior VP, Brad Smith.

It will be interesting to see if antitrust/competition law enforcement in intellectual property ever gets back on track in Canada.

HK