Justice Marhsall Rothstein on Advocacy in IP Litigation in the Supreme Court of Canada

Here's a remarkable recent talk by Justice Rothstein on Advocacy in IP Litigation in the Supreme Court of Canada. Among other things, he provides frank, wise,and often witty remarks on:

• leave applications, including the recent rare example of oral argument in the Eli Lilly case
• the use of a "glossary" in factums
• the dangers of using disrespectful rhetoric
• the relative importance of written arguments and some very good tips on how to write them
• the recent development of a conference amongst the judges 15 minutes before the hearing
• the recent changes in intervener factum lengths and time limits
• some insights into split decisions
• the role of precedent
• some interesting comments on some specific recent SCC cases and issues

This is a "must" for all law students and even experienced appellate counsel.

Thanks to IP Osgoode for this.

HPK

Speech From the Throne 2013 – Will We Really Get Price Parity on Consumer Goods with the USA? IP Law is a Key Issue.

Yesterday’s  Speech from the Throne (#SFT13) contained two items that will require detailed consideration of amendments or clarifications of existing Canadian intellectual property law and amendments or clarifications to the anti-counterfeiting Bill C-56 from the previous session – or whatever it is numbered if and when it is resuscitated.

#SFT13 says:

·         “Our Government will ...Take further action to end geographic price discrimination against Canadians."
·         “And our Government will take additional action to protect Canadian consumers. Canadians are tired of hidden fees. They deserve to know the real cost of paying by debit or credit card. And they should not be charged more in Canada for identical goods that sell for less in the United States.”

Achieving these goals requires dealing with some extremely complex issues that have bedevilled courts and legislatures for decades. The elephant in the room is the issue of “parallel imports” or “grey market” goods – namely perfectly legitimate and authentic products that have been legally made and put on the market outside of Canada and which can be imported into Canada at a cheaper price than that demanded by the so-called “exclusive” distributor.  These good are by no means whatsoever “counterfeit” or “pirate” in any sense.

Despite the complexity of the “parallel imports” issue in terms of copyright law, some propositions are very simple.

Truly “free” trade cannot permit the imposition of “private tariffs” in the form of IP laws that permit geographic price discrimination or market segmentation. That would allow copyright law to become an unintended “instrument of trade control”, in the words of retired Justice Fish of the Supreme Court of Canada, and a very effective and unregulated “private tariff”.

Canada has explicit provisions in its Copyright Act regime that permit and encourage just such a regime for books. The situation for goods other than books is more complicated.

In 2007, the Supreme Court of Canada in the Kraft decision allowed a victory for the importer of “parallel import” or “grey market” Toblerone chocolate bars, largely based upon arguments that I made on behalf of the Retail Council of Canada. For a number of reasons, including the complexity of the decision and the issue itself, that victory has not been fully understood, even by some those importers who might benefit from it. Here’s an analysis I did for the Law Society of Upper Canada in 2008 that’s still useful.

Here is a summary of where the law now stands:

1. The sui generis book regime in the Copyright Act works well to keep out commercial scale importation of parallel imports and my much missed “remainder” fine art books, but is ineffective to stop personal importation by travellers and by Canadians who cross-border shop from the comfort of their own home or with their smart phone via electronic commerce in very large quantities.
2. Trade-marks law is ineffective to stop parallel imports.
3. In theory, copyright on elements of packaging and labelling can be used to exclude parallel imports if the copyright is assigned to a Canadian entity that is different than the foreign entity that made the packaging.
4. However, there’s a very good chance that such an assignment will trigger one or more of the following unintended and unfortunate consequences:

• Undesirable corporate and tax law consequences
• “Loss of distinctiveness” resulting in invalidity of trade-mark registrations
• Defence and Counterclaim allegations in any vigorously fought litigation relating to sham transactions, copyright misuse, abuse, and/or various Competition Act issues. (I have raised such allegations in a test case proceeding which then fizzled and never went forward).

Thus, copyright law – other than in respect of books – is essentially a toothless tiger when it comes to excluding legitimate parallel imports. But a lot of supposedly well-informed importers don’t get that, for the reasons stated above and for other reasons, which I won’t go into here.

Therefore, clarification of the law would be useful and maybe even essential. Even experienced IP lawyers have been baffled by it for decades. It is little wonder, then, that many of their clients and even the general counsel of their clients often don’t understand it. Maybe Parliament needs to make it sufficiently clear in simple terms so that even a copyright lawyer can understand it. I look forward to helping to find the appropriate language.

In the case of books, unless we want to keep an arguably anachronistic, anomalous and clearly protectionist regime that guarantees higher prices to Canadian consumers and higher profits to Canadian “exclusive distributors” but little else in terms of benefits to Canada, it is essential that the Copyright Act be amended. Otherwise, we are certain to continue have higher book prices overall in Canada than the USA, unless the current market forces of Amazon and others put Canadian exclusive distributors and some publishers out of business, which would not be a desirable result. As for the rest of Canadian copyright law, clarifying language seems necessary for the reasons stated above.

The anti-counterfeiting Bill C-56 – which may or may not get revived in the new session – has countless confusing references that deal with parallel imports.  While the intention seems benign, the result may not be. Much more scrutiny and simplification may be required to ensure consistency with the Speech from the Throne statements.

In any event, these Speech from the Throne items cannot be achieved without considerable attention to IP details.

No doubt, the lawyers and lobbyists who would like to preserve the “private tariff” of IP to prevent real free trade and to geographically segment the Canadian market for price discrimination purposes are already hard at work to thwart the Government’s intention and to recover from their failed attempt in the Kraft case to hijack copyright law for this purpose.

And last but not least, let’s hope that the #CETA and #TPP agendas don’t derail the perfectly laudable sentiments in #SFT13.

In that connection, beware of the predictable efforts from the US Government and lobbyists representing American interests who will take their frequent posture of “do as we say, not as we do”. The US Supreme Court recently clarified in the Kirtsaeng decision that copyright law cannot be used to stop the parallel importation of goods – indeed the case was about books – largely based upon a “parade of horribles” that would result had it ruled otherwise.

As I occasionally explicitly reiterate, the views expressed on this blog are solely my own.

HPK

Bill C-56: Just When You Thought It Was Safe To Go Back Into The Water?

Some may have thought that ACTA was dead and that, after a year of arguably the most sweeping changes in Canadian copyright law in almost a century, there might be time to pause, reflect, absorb and assimilate.  No such luck.

Bill C-56 could very well be intended to set the stage for Canadian ratification of the controversial Anti-Counterfeiting Trade Agreement (“ACTA”).The European Union has clearly rejected ACTA – amid much controversy and even internal acrimony. Canada has signed the ACTA treaty - but has not yet ratified it. Canada has no obligation to ratify it and has no current binding obligations to make any of the changes proposed in Bill C-56. Clearly, the USA would like Canada to implement whatever changes ACTA may require and to ratify it soon.

This is what the Bill says it does, according to the published summary, which has no direct legal  effect:

SUMMARY
This enactment amends the Copyright Act and the Trade-marks Act to add
new civil and criminal remedies and new border measures in both Acts, in order
to strengthen the enforcement of copyright and trade-mark rights and to curtail
commercial activity involving infringing copies and counterfeit trade-marked
goods. More specifically, the enactment
(a) creates new civil causes of action with respect to activities that sustain
commercial activity in infringing copies and counterfeit trade-marked goods;
(b) creates new criminal offences for trade-mark counterfeiting that are
analogous to existing offences in the Copyright Act;
(c) creates new criminal offences prohibiting the possession or export of
infringing copies or counterfeit trade-marked goods, packaging or labels;
(d) enacts new border enforcement measures enabling customs officers to
detain goods that they suspect infringe copyright or trade-mark rights and
allowing them to share information relating to the detained goods with rights
owners who have filed a request for assistance, in order to give the rights
owners a reasonable opportunity to pursue a remedy in court;
(e) exempts the importation and exportation of copies and goods by an
individual for their personal use from the application of the border measures;
and
(f) adds the offences set out in the Copyright Act and the Trade-marks Act to
the list of offences set out in the Criminal Code for the investigation of which
police may seek judicial authorization to use a wiretap.
The enactment also amends the Trade-marks Act to, among other things,
expand the scope of what can be registered as a trade-mark, allow the Registrar
of Trade-marks to correct errors that appear in the trade-mark register, and
streamline and modernize the trade-mark application and opposition process.

Nobody defends counterfeiting – especially when it involves medicines or other products with health and/or safety aspects. However, the evidence that counterfeiting of such products with health and safety consequences actually occurs in Canada on a commercial scale seems strangely elusive and mostly anecdotal, as is the case with respect to economic data. Moreover, there are other laws to deal more directly with hazardous and dangerous products, especially food and drugs. 

On the other hand, the rhetorical attempts (without any evidence) to conflate “counterfeiting “and “piracy” with terrorism, pornography, theft, stealing, money laundering, organized crime  and other ills  continue unabated. Indeed, overly zealous border enforcement to prevent trade in counterfeit drugs has held up the transshipment of life saving generic and perfectly legal drugs to developing countries (for example, even via such an advanced country as The Netherlands) because customs officials took it upon themselves – or perhaps were encouraged – to block such shipments. 

Excessive criminalization and excessive border enforcement measures do not promote respect for the law. It also costs a lot for society to enforce such laws at the expense of taxpayers. 

What we do know is that ACTA is an American initiative and Canada has been under intense pressure to support the Americans on such initiatives. We see this every year in the annual “301”show. We will likely see similar efforts in the Trans Pacific Partnership ("TPP") negotiations. We vividly saw attempts to pressure Canada on IP  a few years ago when a prominent American lobbyist named Scotty Greenwood blatantly tried to trade off “buy American” protectionism for Canadian copyright capitulation. In the past, various Canadian Governments including the current Government, to its credit, have mostly resisted these kinds of tactics. Funny – we thought we already had free trade with the USA – but we keep finding out that we still just have to tweak a little here and there in our IP laws... which, incidentally, comply with every treaty we have ever ratified. The same cannot be said of the USA – as the WTO has confirmed on the copyright front, where the USA is an ongoing scofflaw in respect of the infamous “Section 110” violation.

Against this background, we now see Bill C-56 – introduced on Friday, March 1, 2013. Even with the whole weekend to look at it, one will need much more time. It is 50 pages long.  The first 13 page deal with copyright – the balance with trade-marks.  

There may be some  positive aspects of this legislation that will be useful to combat seriously harmful counterfeiting. However, there are countless questions that require answers. No answers in today’s blog – but just some questions that many will or should be asking:

COPYRIGHT 

1. How will these provisions affect “parallel imports”? These are imports that may in some way be protected by copyright or other IP law and which were made perfectly legally in the country where they were made and which can be imported (apart from possible “private tariff”  IP legal tactics) into Canada at a lower price than the “exclusive” Canadian distributor is able or willing to charge. Canada is known to be a high price market where price discrimination is prevalent, as a Senate Report recently confirmed. The party with copyright ownership in Canada and the place of manufacture may or not be same or related. But the goods are perfectly legitimate. The copyright owner has already been paid where the goods were made. We had a Supreme Court of Canada decision about this in the 2007 Kraft decision, in which arguments that I made were instrumental in the prevailing judgment. The complexity of that judgment is enough to show that there are no easy answers to the issues involved, as I show in a short paper for the Law Society of Upper Canada. To what extent is this initiative being driven by those whose real agenda is opposition to parallel imports and the use of IP law as "an instrument of trade control"?
2. What are the consequences of customs officers getting more immediate and short term power than we now give to judges? 
3. What does “reasonable grounds” mean, when see through the eyes of a customs officer?
4. If the Supreme Courts of Canada and the USA struggle with the difference between legitimate parallel imports and pirated goods, how are customs officers supposed to make these decisions on the spot and accurately?
5. What protection will there be for the privacy of importers?
6. What redress will there be for importers whose goods have been wrongfully seized?
7. Why does the bill deal with a “communication signal”?
8. Will the personal baggage exception be sufficient to prevent overly zealous and intrusive border searches of laptops, smart phones, etc. to ensure that "the number of copies, indicate that the copies are intended only for their personal use"? After all, it could be argued that such a determination cannot be made without a search in the first place.

TRADE-MARKS

1. Why change the definition of trade-mark – which derives from who knows how many centuries of  jurisprudence – to be based upon “sign” rather than “mark”? If this is meant to sweep in colours, sounds, smells and other things that are not “marks” in the classic sense of “making a mark”, “marking out a territory”, setting out a boundary, the “mark” of a signet ring, etc., is this a major policy shift that requires extensive debate? Or is this simply another example of “If IP protection is good, more IP must be even better”.  It’s not obvious to everyone that the colour of delivery trucks or the sound of a motorcycle or the smell of a perfume should be protected by trade-marks law and, even if so, how such a regime can be effectively maintained and enforced. For example, if I should want to start a little parcel delivery business on the side and I find a good deal on a brown van, should I need to get it repainted?
2. Will we now have a “Trade-signs Act”? Alan Macek has already decried that we have not reverted to pre-hyphen days – so many may focus on the very name of the legislation.
3. Do we want to introduce a concept of being able to expunge an existing registration that “is likely to unreasonably limit the development of any art or industry”? The Courts have struggled for years with very mixed results to interpret much clearer provisions under the Competition Act.  Whatever the intention may be here, what does this really mean?
4. Do the provisions mix up the copyright aspect of packaging and labelling with the trade-marks aspects, and create a result that could prevent or severely inhibit legitimate parallel trade? It is common ground that trade-marks law has become virtually totally ineffective in Canada and the USA in the blocking of legitimate parallel imports – and most agree that this is how it should be. But is this now about to change without a thoroughly informed discussion?
5. Are we criminalizing a whole range of activity that has at most been subject to civil remedies? Are we criminalizing activity that may even have been perfectly legal, such as parallel trade?
6. Do the criminal provisions as drafted – with the mens rea concept of “knowingly” - suggest that wise parties should do more diligent searching when adopting a trade-mark, or should they avoid any kind of searching whatsoever so as to avoid any “knowledge” of possibly “criminal” infringement?
7. Is it really a good idea for a trade-mark examiner to be able to block a registration on the basis that “the trade-mark is not distinctive”? Is this really what is intended? This is potentially a huge change in policy and practice. Does this mean that examiners will now browse the internet and raise countless problematic objections?
8. Again, is it wise to give powers to customs officials that even judges do not have?
9. Again, what redress is in place for importers and their customers for wrongful seizures.

This bill is bound to raise a lot of difficult technical and policy issues on its own. It is immensely complicated and requires enormous scrutiny.  Indeed, the proposed changes to the Trade-marks Act are the most comprehensive in 60 years. 

Moreover, questions will also be asked focussing on:
1. Is ACTA a good idea for Canada?
2. If so, does this bill go farther than necessary?
3. What are the unforeseen effects of this bill resulting from  non-transparent policy objectives, if any, and problematic drafting, if any? 
4. Could the bill, through its substantive provisions or through overly zealous enforcement or in other ways, affect trade in legitimate goods?

The coincidental timing of the bill with certain aspect of the Canada/USA file having to do not only with IP but potentially other issues is also bound to raise many questions.

HPK

(rev. March 6, 2013)

What to Watch for in Canadian Intellectual Property Law in 2013

A soothsayer in front of a king: (Olaus Magnus 1555)

Here are a few things to look out for this year. These are essentially in the form of questions – for most of which there is no easy answer to predict. So, I’ll refrain from predicting.

COPYRIGHT

1. The year will no doubt kick off with the Voltage Pictures “mass litigation” campaign. It might be noted that a similar effort by Voltage involving Quebec based ISPs that did not oppose the motion to disclose their clients’ identities fizzled last year for unknown reasons – and with no individuals actually being sued. This time around, some seem to think that Voltage is more determined. Will feisty, progressive Teksavvy, the ISP that has built its reputation on being customer-friendly, actually stand up and fight for its customers’ “privacy” without taking sides on “piracy”? That’s what Shaw and Telus did vigorously and successfully in 2004, with Bell and Rogers onside if not quite as actively. What should/will Teksavvy do if it turns out to be relatively easy for it to challenge the adequacy of Voltage’s material for the motion that seeks disclosure of the names and addresses of potentially thousands of Teksavvy’s customers? The law on this, including the evidentiary concerns that could arise, was clearly laid out in the BMG case by the Federal Court of Appeal in 2005 and the background is all there on CIPPIC’s website. If Voltage’s widely circulated current material is indeed inadequate (upon which I make no comment) and an ISP as savvy as Teksavvy doesn’t challenge its adequacy at the outset, what signal will this send to future potential mass litigators and copyright “trolls”? And to Canadian ISP customers generally and Teksavvy’s customers in particular? What could CIPPIC do if it is permitted to intervene? Is this something that CIPPIC will have to do on a regular basis? What will happen if the names and addresses are eventually provided to Voltage? Will there actually be lawsuits, or will there simply be high pressure settlement demands en masse? To be continued on January 14, 2013 in the Federal Court.
2. Will the Copyright Board impose a retroactive levy on microSDs from January 1, 2012 to November 7, 2012, when the microSD exclusion regulations were published in the Canada Gazette Part II?
3. Will the Access Copyright (“AC”) post-secondary tariff hearing continue unabated towards what may be a “mandatory” tariff, despite the many “opt-outs” from the interim tariff and the widespread decision by institutions ranging from school boards to research universities that they don’t need and don’t want what they perceive as an expensive and unnecessary blanket license from AC anymore? If so, who will represent the interests of Canada’s universities, who have reportedly spent almost $2 million on this case (not counting immeasurable internal “interrogatory” and management time) and now have no ongoing role or representation in this hearing, which could turn out very badly for them?
4.  Will U of T and Western exercise their options not to extend their agreements with Access Copyright beyond 2013 by providing notice to AC before the end of June, 2013?
5. How will the various fair dealing “guidelines” be received and used by those who were intended to benefit from them? The main ones emanate so far from U of T and ACCC. The AUCC guidelines are essentially identical to those of ACCC, but do not yet appear to have been yet officially deployed. In fact, AUCC has been virtually silent on the copyright front since before C-11 was given Royal Assent on June 29, 2012 and the Supreme Court of Canada delivered its “pentalogy” on July 12, 2012.
6. Will the copyright chill in Canadian classrooms and libraries continue to thaw and will Canadian teachers, librarians, and administrators now get back to their real roles and “just do it” when it comes to education, as they have been empowered to do by Parliament and the Supreme Court of Canada?
7. Will AC actual make good on its threats of litigation, and if so, will AC finally achieve success against anyone other than “Mom and Pop” copy shops?
8. Will Rogers et al get their “ring tones” tariff payments back, either via the Copyright Board or the Federal Court or both or neither?
9. How will the SCC “pentalogy” results play out at the Copyright Board and the Federal Court of Appeal, particularly concerning the strong substantive messages about technological neutrality, layering and fair dealing – not to mention the “sempiternal” issue of “standard of review”?
10. Wll the Board allow SOCAN to continue with its quest for a new tariff for what SOCAN considers to be a new “making available right” that, in its view, renders moot and inapplicable the recent conclusion reached by the Supreme Court of Canada in ESA v. SOCAN, 2012 SCC 34? Will other collectives such as Access Copyright jump on board if this train leaves the station? What would the Federal Court of Appeal and, potentially the Supreme Court of Canada, do with this if the Board lets go forward?
11. How will the Supreme Court deal with the Cinar v. Claude Robinson case, which will be heard on February 13, 2013 and argued by some very prominent counsel, which deals, inter alia with “steps and tests for determining whether substantial part of work reproduced within meaning of ss. 2 and 3 of Copyright Act” according to the SCC summary?
12. How will Canada fare in the TPP and CETA negotiations? Can our negotiators at least “do no harm” on the copyright front? Can they resist the pressure from foreign interests to inject harmful red herrings such as “three step test” language and harmful concepts, such as term extension, into Canadian law?
13.  Are we going to see any further attempts to convince the Board and the Courts that a word such as “excludes” really means “includes”?
14.  What will happen in the Warman v. Fournier appeal, which appears to be back on track following the Fourniers’ attempt to have it dismissed? Will the Fourniers continue to be self-represented, now that the National Post is weighing in as a party on the other side with experienced and prominent copyright counsel? There are important issues at stake re what is “substantial” and what is “fair dealing”. Will there be interventions that may assist the Court in a  case involving an unusual fact situation that that could have far reaching results?
15. Will Catherine Leuthold succeed on appeal in getting $21 million+ from the CBC and recovering her legal costs or least not having to pay CBC twice its costs because she refused a settlement worth almost twice as much as the just over $19,000 that she was awarded by the Court?
16.  Will the “Canadian” record and film industries sue isoHunt under the new post C-11 law, now that their much sought after legislation is in place? What, if anything, will happen with the existing and apparently dormant litigation commenced by both sides a few years ago under the former law?
17. Will we see the beginning of a measurable correction and perhaps even a tipping point – whether through Copyright Board decisions, the Courts, the market, or ultimately the Government’s regulatory power – with respect to the increasing powers of Canadian collectives and the increasing and already enormous costs of opposing their proliferating and increasing demands?
18.   Will we see the demise of one or more of Canada’s three dozen or so collectives resulting from such factors as changes in technology (e.g. a shift from paper course packs to digital delivery, the demise of blank CDs, etc.), increased sophistication of users (e.g. educators), and legislation from Parliament and jurisprudence from the Supreme Court of Canada?
19.  Will Canada re-appear at or near its recently achieved high ranking on the “Priority Watch List” of the USA’s “Special 301” list of IP malefactors and will anyone, except some lobbyists and USTR officials, actually care?
20. Will WIPO be successful in its high-stakes effort to secure a good copyright treaty for the blind, and what role will Canada play in this effort, which is not only important for the future of blind people everywhere but for the future of WIPO?

PATENT LAW

1. Will Pfizer succeed in its very unusual attempt to get the Supreme Court of Canada (“SCC”) to change its mind following the recent ruling in the Viagra case that rendered its patent “void”- period - and not just invalid as against Teva for Notice of Compliance purposes?
2.  Will the generic drug industry suffer as a result of the CETA negotiations?
3. Will the Government use the CETA agreement – if there is to be one – as an opportunity to reform the PMNOC regime, which is taking up enormous amounts of the time of the Federal Court and the Federal Court of Appeal and is creating serious problems and immense expense for both the “innovative” and generic sides? Will we see a movement toward the American Hatch-Waxman model, which is a one-stop mechanism?
4.  Will Canada remain an island of calm in the global smart-phone patent wars?
5.  Will patent “trolls” try to bring their business model to Canada?

TRADE-MARKS LAW

Canadian trade-marks law works remarkably well – which is quite understandable for those who know its history.  However, Canada is not immune from foreign and even domestic pressures to make it work  much less well:

1. Will Canada agree via CETA or TPP to permit “ex officio” border enforcement actions – i.e. officials acting on their own with their limited legal training and without judicial oversight – to stop alleged “counterfeit” products, thereby putting legitimate parallel imports at great risk of seizure? If the nine justices of Supreme Court of Canada can’t agree on what is a legitimate “parallel import”, should customs officials be given the power to tie up millions of dollars worth of goods – perhaps even life saving medicines - on the spot on their own initiative?
2. Will Canada ban the use of “geographic indications” such as “Parmesan cheese” by Canadian consumers for the sake of a trade deal with Europe? If so, what will we ask for with our pizza or pasta in the future?
3. Will major retailers such as Wal-mart, Costco, etc. be permitted to use their federally registered trade-marks “as is” in Quebec? Or will they have to adopt trade-marks such as “Le Magasin Wal-Mart”?
4. Will Canada join the Madrid Protocol, a one-stop shop international filing process operating through WIPO that is much favoured by large international brand owners and much feared by Canadian trade-mark practitioners?

There is no doubt that we “live in interesting times” in the IP world. I should disclose that I have or have had or may have some involvement in some of the above matters. If that seems rather vague, it’s more disclosure than some of my friends in other firms and institutions are providing these days…

Welcome to 2013. And a Happy New Year to one and all….

HPK

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

VANOC's Excessive IP Efforts

There’s a big fluff over VANOC’s trade-mark application for WITH GLOWING HEARTS. See the Globe and Mail story, for which I was interviewed, here.

Far be it from me to defend the overly zealous - indeed excessive - Vancouver Olympic IP effort, but actually, it was a "normal" trade-mark application. However, enough defence. The application does have an abnormally excessive and absurd list of wares and services, especially considering the nature of VANOC and what the Olympics is all about.

The list includes everything from automobiles, to diesel fuel, to circuit breakers and pages and pages of other seemingly random stuff that suggests a massive merchandising and endorsement scheme afoot. But would anyone really

As for taking of public domain phrases for use as a trade-mark, I don't see a problem in principle.

If someone decided to sell cat food under the trade-mark RULE BRITANNIA, that might be silly from a business standpoint and self respecting cats might not eat it, it would be quite acceptable from a TM law standpoint.

The other interesting aspect of this is that when the reporter called me late the other night, I asked if he had googled WITH GLOWING HEARTS. He had not and we did it on the spot. The first hit was this lovely website for a small business in Stratford, Ont. that sells woollen clothing and appears to have prior use of this trade-mark for clothing.

Clothing. That could be a problem for VANOC. Fortunately, the little Stratford business, called WITH GLOWING HEARTS, and a URL with that same trade-mark has a very fine IP lawyer. So this could get very interesting.

HK