Note: This page includes links to resources on lexisnexis.com, also known as "QuickLaw". When prompted for a userid and password, simply click the button to "register later". Access to lexisnexis.com from the York University campus is through IP authentication. To access lexisnexis.com from home, you will need to authenticate through Passport York.
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Intellectual property is not called that because it is smarter or better educated than other property. Instead, as the Oxford English Dictionary entry, "intellectual property", indicates, intellectual property is "apprehended by the intellect alone", unlike property which is "perceived by the senses". (Compare the unusual use of the word "logical" in the Wikipedia entry, "Logical volume management", where "logical volumes" are contrasted with "physical volumes". Those who enjoy etymologies may note that "intellectual" and "logical" are both, according to the American Heritage Dictionary, derivatives of the Indo-European root: "leg-", meaning to "collect", or "speak".)
The World Intellectual Property Organization article, "What is Intellectual Property?", distinguishes
In Canada, these rights are mostly defined and protected by the following federal statutes:
The Government Department responsible for policy development in intellectual property is Industry Canada. Within Industry Canada, there is a specialist office, the Canadian Intellectual Property Office, which has a number of useful guides on its website.
One additional statute, the Plant Breeders' Rights Act, S.C. 1990, c. 20, is administered by the Canadian Food Inspection Agency, and a specialized office within it, the Plant Breeders' Rights Office.
In the province of Ontario, there are additional intellectual property rights which are infringed by common law (i.e. non-statutory) wrongs, such as
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Under the Constitution of Canada, the Parliament of Canada is responsible for some legal subjects, and the Legislature of Ontario is responsible for others. The rules for this division of powers are set out in the Constitution Act, 1867 (U.K.), 30 & 31 Victoria, c. 3
91. It shall be lawful for the Queen, by and with the Advice and Consent of the Senate and House of Commons, to make Laws for the Peace, Order, and good Government of Canada, in relation to all Matters not coming within the Classes of Subjects by this Act assigned exclusively to the Legislatures of the Provinces; and for greater Certainty, but not so as to restrict the Generality of the foregoing Terms of this Section, it is hereby declared that (notwithstanding anything in this Act) the exclusive Legislative Authority of the Parliament of Canada extends to all Matters coming within the Classes of Subjects next hereinafter enumerated; that is to say, ...
2. The Regulation of Trade and Commerce.
...
22. Patents of Invention and Discovery.
23. Copyrights.
...
27. The Criminal Law, except the Constitution of Courts of Criminal Jurisdiction, but including the Procedure in Criminal Matters.
...
29. Such Classes of Subjects as are expressly excepted in the Enumeration of the Classes of Subjects by this Act assigned exclusively to the Legislatures of the Provinces.And any Matter coming within any of the Classes of Subjects enumerated in this Section shall not be deemed to come within the Class of Matters of a local or private Nature comprised in the Enumeration of the Classes of Subjects by this Act assigned exclusively to the Legislatures of the Provinces.
92. In each Province the Legislature may exclusively make Laws in relation to Matters coming within the Classes of Subjects next hereinafter enumerated; that is to say, ...13. Property and Civil Rights in the Province.
...
15. The Imposition of Punishment by Fine, Penalty, or Imprisonment for enforcing any Law of the Province made in relation to any Matter coming within any of the Classes of Subjects enumerated in this Section.
16. Generally all Matters of a merely local or private Nature in the Province....
132. The Parliament and Government of Canada shall have all Powers necessary or proper for performing the Obligations of Canada or of any Province thereof, as Part of the British Empire, towards Foreign Countries, arising under Treaties between the Empire and such Foreign Countries.
...
Cases involving constitution interpretation can be very complex, and a good example is MacDonald et al. v. Vapor Canada Ltd., 1976 CanLII 181 (S.C.C.), [1976] S.C.J. No. 60. In that case, the Supreme Court of Canada considered whether certain provisions of the Trade Marks Act, R.S.C. 1970, c. T-10 had been validly enacted under some federal legislative power. The court found that the provisions in question were supported by neither the trade and commerce power nor the criminal law power. In addition, there was nothing in the legislation to indicate that it had been enacted in order to perform any obligation under the Union Convention of Paris, March 20, 1883, for the Protection of Industrial Property, revised at Brussels on December 14, 1900, at Washington on June 2, 1911, and at The Hague on November 6, 1925, CTS 1928/3.
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The treaty just noted, the Paris Convention for the Protection of Industrial Property (March 20, 1883), 161 Parry 409 (also available on the WIPO site), is, despite its age, still relevant for Canada. The Canada Treaty Information: Multilateral Treaties website has a note on its status. The Canada Treaty Information site is maintained by the treaty section of the federal department for Foreign Affairs and International Trade.
Two more historically significant treaties are the
The WTO, or World Trade Organization. was established by the Marrakesh Agreement Establishing the World Trade Organization (April 15, 1994), 33 ILM 81 (available on the WTO website.) The Marrakesh Agreement was implemented in Canada by the World Trade Organization Agreement Implementation Act, S.C. 1994, c. 47. For our purposes, the most important schedule to this agreement was TRIPS, the Trade-Related Aspects of Intellectual Property Rights (Marrakesh, April 15, 1994) (available on the WTO site, and noted on the Canada Treaty Information site.
These treaties are noted in each of the
Copyright Act, R.S.C. 1985, c. C-42,
s. 2
In this Act,
...
"treaty country" means a Berne Convention country, UCC country or WTO Member;
...
"Berne Convention country" means a country that is a party to the Convention for the Protection of Literary and Artistic Works concluded at Berne on September 9, 1886, or any one of its revisions, including the Paris Act of 1971;
...
"UCC country" means a country that is a party to the Universal Copyright Convention, adopted on September 6, 1952 in Geneva, Switzerland, or to that Convention as revised in Paris, France on July 24, 1971;
...
"WTO Member" means a Member of the World Trade Organization as defined in subsection 2(1) of the World Trade Organization Agreement Implementation Act.
...
the
Patent Act, R.S.C. 1985, c. P-4,
s. 2
In this Act,
...
"country" includes a Member of the World Trade Organization, as defined in subsection 2(1) of the World Trade Organization Agreement Implementation Act;
and the Trade-marks Act, R.S.C. 1985, c. T-13, s. 2
In this Act,
...
"country of the Union" means(a) any country that is a member of the Union for the Protection of Industrial Property constituted under the Convention, or
(b) any WTO Member;
...
"Convention" means the Convention of the Union of Paris made on March 20, 1883 and any amendments and revisions thereof made before or after July 1, 1954 to which Canada is party;
...
...
"WTO Agreement" has the meaning given to the word "Agreement" by subsection 2(1) of the World Trade Organization Agreement Implementation Act;
"WTO Member" means a Member of the World Trade Organization established by Article I of the WTO Agreement.
WIPO, the World Intellectual Property Organization, was established by the Convention Establishing the World Intellectual Property Organization (Stockholm, July 14, 1967), 828 UNTS 3, 6 ILM 782 (available on the WIPO website.)
Canada is also a party to the WIPO Copyright Treaty (Geneva, December 20, 1996), 36 ILM 65 (available on the WIPO website, and noted on the Canada Treaty Information site.) Additional WIPO-Administered Treaties are listed here. As noted by Vishva V. Ramlall, "Two WIPO 'Internet' treaties enter into force this spring", The Lawyers Weekly, Vol. 21, No. 46 (April 12, 2002), Articles 4 and 5 of this treaty require Canada to extend copyright protection to computer programs and databases.
Another significant treaty is NAFTA, the North American Free Trade Agreement, CTS 1994/2, implemented in Canada by the North American Free Trade Agreement Implementation Act, S.C. 1993, c. 44. For our purposes, the most important part is Part Six: Intellectual Property.
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The law of treaties is a part of Public International Law. There is another area of law known as Private International Law (of Conflict of Laws). One of the recurring questions that private international law tries to answer is, When dealings involve multiple jurisdictions, which law applies? For example, if I, here in Ontario, buy software online from a company in Washington State, will the laws of the Province of Ontario and Canada govern, or the laws of the State of Washington and the U.S.A.? This is known as a "choice of law" question. A different question is "choice of forum." If there is a dispute, will it be decided by an Ontario court, or a Washington court? It's possible that an Ontario court will decide the dispute, but apply the laws of the State of Washington. There are the other possibilities as well. A brief article that discusses some of these cross-border issues is Michael Erdle, "Cross-jurisdictional issues arise in arbitration of IT contracts", The Lawyers Weekly, Vol. 25, No. 7 (June 17, 2005).
Often, the contract of sale answers these choice-of-law and choice-of-forum questions. As the article just noted indicates, parties to a contract can also agree to settle their disputes through arbitration, instead of in a court proceeding. Parties may agree by contract to sell their rights, or restrict their rights, or license their rights. It often happens that contractual rights, which are normally a matter of provincial law in Canada, can be far more important in resolving a dispute than the underlying intellectual property rights that are being dealth with. A brief article that explores some of these issues in the IP context is Paul Jones, "Can parties agree to restrict Copyright Act's fair dealing rights?", The Lawyers Weekly, Vol. 23, No. 20 (September 26, 2003). I'll have something to say about fair dealing rights a little later in this talk.
Another brief article, Arnold Ceballos, "Drafting software and technology licences in the digital age", The Lawyers Weekly, Vol. 25, No. 31 (December 16, 2005), discusses some of the challenges involved in drafting software licenses:
"One of the biggest problems," [Lisa] Abe said, "is that many agreements are drafted by commercial lawyers with no intellectual property law background." For example, some software agreements refer to a "right to use" , which she observed "is not a right under copyright legislation." The result, she said, is a "totally vague grant of licence that really doesn't mean anything."
A very interesting topic is open source licenses. One of the more famous ones is the GNU General Public License, maintained by the Free Software Foundation. New versions even get reviewed in legal newspapers, as an article by Ian McMillan, Kevin Shipley and Ebad Rahman, "New public licence protects use of open source software", The Lawyers Weekly, Vol. 27, No. 34 (January 18, 2008) shows. Two additional recent articles which discuss the practical significance of open source licenses are
Wikipedia has an interesting List of software licenses. So does the Open Source Initiative. There's even an O'Reilly book on the subject, Andrew St. Laurent, Understanding open source & free software licensing (Sebastopol, CA : O'Reilly, 2004) (Steacie call number: K 1443 C6 S7 2004).
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You may have noticed that the Open Source Initiative appears to have a trade mark. We can find its registry information using TESS (the Trademark Electronic Search System) on the United States Patent and Trademark Office site.
There is also a Canadian Trade-marks Database site. If we search "open source", we note that the Open Source Intiative doesn't appear to have registered in Canada. York University has registered, but we will see that, as a University, York's registration is of an unusual sort.
The basic definitions are in
Trade-marks Act, R.S.C. 1985, c. T-13,
s. 2
In this Act,
...
"trade-mark" means(a) a mark that is used by a person for the purpose of distinguishing or so as to distinguish wares or services manufactured, sold, leased, hired or performed by him from those manufactured, sold, leased, hired or performed by others,
(b) a certification mark,
(c) a distinguishing guise, or
(d) a proposed trade-mark;
...
"certification mark" means a mark that is used for the purpose of distinguishing or so as to distinguish wares or services that are of a defined standard with respect to(a) the character or quality of the wares or services,
(b) the working conditions under which the wares have been produced or the services performed,
(c) the class of persons by whom the wares have been produced or the services performed, or
(d) the area within which the wares have been produced or the services performed,from wares or services that are not of that defined standard;
...
"distinguishing guise" means(a) a shaping of wares or their containers, or
(b) a mode of wrapping or packaging waresthe appearance of which is used by a person for the purpose of distinguishing or so as to distinguish wares or services manufactured, sold, leased, hired or performed by him from those manufactured, sold, leased, hired or performed by others;
...
"geographical indication" means, in respect of a wine or spirit, an indication that(a) identifies the wine or spirit as originating in the territory of a WTO Member, or a region or locality of that territory, where a quality, reputation or other characteristic of the wine or spirit is essentially attributable to its geographical origin, and
(b) except in the case of an indication identifying a wine or spirit originating in Canada, is protected by the laws applicable to that WTO Member;
...
"trade-name" means the name under which any business is carried on, whether or not it is the name of a corporation, a partnership or an individual;
...
Note that a trade-name is not a kind of trade-mark. Trade-names are not registered, just trade-marks. The use of a trade-name may, however, infringe a trade-mark.
Trade-marks Act, R.S.C. 1985, c. T-13, s. 9
9. (1) No person shall adopt in connection with a business, as a trade-mark or otherwise, any mark consisting of, or so nearly resembling as to be likely to be mistaken for,
...
(n) any badge, crest, emblem or mark(i) adopted or used by any of Her Majesty’s Forces as defined in the National Defence Act,
(ii) of any university, or
(iii) adopted and used by any public authority, in Canada as an official mark for wares or services,...
in respect of which the Registrar has, at the request of Her Majesty or of the university or public authority, as the case may be, given public notice of its adoption and use;
Trade-marks Act, R.S.C. 1985, c. T-13, s. 16
16. (1) Any applicant who has filed an application in accordance with section 30 for registration of a trade-mark that is registrable and that he or his predecessor in title has used in Canada or made known in Canada in association with wares or services is entitled, subject to section 38, to secure its registration in respect of those wares or services, unless at the date on which he or his predecessor in title first so used it or made it known it was confusing with
(a) a trade-mark that had been previously used in Canada or made known in Canada by any other person;
(b) a trade-mark in respect of which an application for registration had been previously filed in Canada by any other person; or
(c) a trade-name that had been previously used in Canada by any other person.
People don't always succeed in getting a trade-mark registered, of course. There is a system for appealing decisions. You can do a Quicklaw search for decisions of the Trade-marks Opposition Board.
Various section set out the rights of owners of registered trade-marks.
Trade-marks Act, R.S.C. 1985, c. T-13, s. 19
19. Subject to sections 21, 32 and 67, the registration of a trade-mark in respect of any wares or services, unless shown to be invalid, gives to the owner of the trade-mark the exclusive right to the use throughout Canada of the trade-mark in respect of those wares or services.
Trade-marks Act, R.S.C. 1985, c. T-13, s. 20
20. (1) The right of the owner of a registered trade-mark to its exclusive use shall be deemed to be infringed by a person not entitled to its use under this Act who sells, distributes or advertises wares or services in association with a confusing trade-mark or trade-name, but no registration of a trade-mark prevents a person from making
(a) any bona fide use of his personal name as a trade-name, or
(b) any bona fide use, other than as a trade-mark,(i) of the geographical name of his place of business, or
(ii) of any accurate description of the character or quality of his wares or services,in such a manner as is not likely to have the effect of depreciating the value of the goodwill attaching to the trade-mark.
...
Trade-marks Act, R.S.C. 1985, c. T-13,
s. 22
22. (1) No person shall use a trade-mark registered by another person in a manner that is likely to have the effect of depreciating the value of the goodwill attaching thereto.
(2) In any action in respect of a use of a trade-mark contrary to subsection (1), the court may decline to order the recovery of damages or profits and may permit the defendant to continue to sell wares marked with the trade-mark that were in his possession or under his control at the time notice was given to him that the owner of the registered trade-mark complained of the use of the trade-mark.
Here's an illustration of how some of this works in practice. You may have heard of the Canadian Internet Registration Authority. They are a non-profit corporation, not a part of the government. You apply to them (indirectly, through a registrar) for a .ca domain name. They have a mechanism for Dispute Resolution. Getting a name registered with CIRA doesn't necessarily mean you can use it, however.
The following case illustrates that: Law Society of British Columbia v. Canada Domain Name Exchange Corporation, 2004 BCSC 1102 (CanLII), [2004] B.C.J. No. 1692; affirmed 2005 BCCA 535 (CanLII), [2005] B.C.J. No. 2500.
The above case cites
Trade-marks Act, R.S.C. 1985, c. T-13,
s. 7
7. No person shall
(a) make a false or misleading statement tending to discredit the business, wares or services of a competitor;
(b) direct public attention to his wares, services or business in such a way as to cause or be likely to cause confusion in Canada, at the time he commenced so to direct attention to them, between his wares, services or business and the wares, services or business of another;
(c) pass off other wares or services as and for those ordered or requested;
(d) make use, in association with wares or services, of any description that is false in a material respect and likely to mislead the public as to(i) the character, quality, quantity or composition,
(ii) the geographical origin, or
(iii) the mode of the manufacture, production or performanceof the wares or services; or
(e) do any other act or adopt any other business practice contrary to honest industrial or commercial usage in Canada.
As federal legislation, the constitutionality of parts of this section has been doubted. Since it largely restates provincial law, it seldom matters in practice.
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The key definitions are in Patent Act, R.S.C. 1985, c. P-4, s. 2
In this Act,
...
"invention" means any new and useful art, process, machine, manufacture or composition of matter, or any new and useful improvement in any art, process, machine, manufacture or composition of matter;
...
"patent" means letters patent for an invention;
...
As with trade-marks, a patent must be applied for: Patent Act, R.S.C. 1985, c. P-4, s. 27
27. (1) The Commissioner shall grant a patent for an invention to the inventor or the inventor’s legal representative if an application for the patent in Canada is filed in accordance with this Act and all other requirements for the issuance of a patent under this Act are met.
...
(3) The specification of an invention must(a) correctly and fully describe the invention and its operation or use as contemplated by the inventor;
(b) set out clearly the various steps in a process, or the method of constructing, making, compounding or using a machine, manufacture or composition of matter, in such full, clear, concise and exact terms as to enable any person skilled in the art or science to which it pertains, or with which it is most closely connected, to make, construct, compound or use it;
(c) in the case of a machine, explain the principle of the machine and the best mode in which the inventor has contemplated the application of that principle; and
(d) in the case of a process, explain the necessary sequence, if any, of the various steps, so as to distinguish the invention from other inventions.(4) The specification must end with a claim or claims defining distinctly and in explicit terms the subject-matter of the invention for which an exclusive privilege or property is claimed.
...
(8) No patent shall be granted for any mere scientific principle or abstract theorem.
Patent Act, R.S.C. 1985, c. P-4, s. 28.2
28.2 (1) The subject-matter defined by a claim in an application for a patent in Canada (the "pending application") must not have been disclosed
(a) more than one year before the filing date by the applicant, or by a person who obtained knowledge, directly or indirectly, from the applicant, in such a manner that the subject-matter became available to the public in Canada or elsewhere;
(b) before the claim date by a person not mentioned in paragraph (a) in such a manner that the subject-matter became available to the public in Canada or elsewhere;
...
Patent Act, R.S.C. 1985, c. P-4, s. 28.3
28.3 The subject-matter defined by a claim in an application for a patent in Canada must be subject-matter that would not have been obvious on the claim date to a person skilled in the art or science to which it pertains, having regard to
(a) information disclosed more than one year before the filing date by the applicant, or by a person who obtained knowledge, directly or indirectly, from the applicant in such a manner that the information became available to the public in Canada or elsewhere; and
(b) information disclosed before the claim date by a person not mentioned in paragraph (a) in such a manner that the information became available to the public in Canada or elsewhere.
Patent Act, R.S.C. 1985, c. P-4, s. 42
42. Every patent granted under this Act shall contain the title or name of the invention, with a reference to the specification, and shall, subject to this Act, grant to the patentee and the patentee’s legal representatives for the term of the patent, from the granting of the patent, the exclusive right, privilege and liberty of making, constructing and using the invention and selling it to others to be used, subject to adjudication in respect thereof before any court of competent jurisdiction.
Trade-marks are potentially forever, as long as they are used in selling wares and services. Patents are not forever. Patent Act, R.S.C. 1985, c. P-4, s. 44
44. Subject to section 46, where an application for a patent is filed under this Act on or after October 1, 1989, the term limited for the duration of the patent is twenty years from the filing date.
Patent Act, R.S.C. 1985, c. P-4, s. 46
45. (1) Subject to section 46, where an application for a patent is filed under this Act before October 1, 1989, the term limited for the duration of the patent is seventeen years from the date on which the patent is issued.
(2) Where the term limited for the duration of a patent referred to in subsection (1) had not expired before the day on which this section came into force, the term is seventeen years from the date on which the patent is issued or twenty years from the filing date, whichever term expires later.
Patent Act, R.S.C. 1985, c. P-4, s. 55
55. (1) A person who infringes a patent is liable to the patentee and to all persons claiming under the patentee for all damage sustained by the patentee or by any such person, after the grant of the patent, by reason of the infringement.
(2) A person is liable to pay reasonable compensation to a patentee and to all persons claiming under the patentee for any damage sustained by the patentee or by any of those persons by reason of any act on the part of that person, after the application for the patent became open to public inspection under section 10 and before the grant of the patent, that would have constituted an infringement of the patent if the patent had been granted on the day the application became open to public inspection under that section.
...
One of the more interesting issues has been that of software patents, or business-method patents. Wikipedia has a useful List of softward patents, all issued in the United States.
Canada has been much more restrictive. Several useful articles are
The leading cases here are
The best way to try to find examples in Canada is to search for discussions of these decisions. One can search for decisions of the Commissioner of Patents using Quicklaw or the CIPO/Industry Canada site.
To search for the patents themselves, search the Canadian Patents Database.
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The key definitions are in the
Copyright Act, R.S.C. 1985, c. C-42,
s. 2
In this Act,
...
"every original literary, dramatic, musical and artistic work" includes every original production in the literary, scientific or artistic domain, whatever may be the mode or form of its expression, such as compilations, books, pamphlets and other writings, lectures, dramatic or dramatico-musical works, musical works, translations, illustrations, sketches and plastic works relative to geography, topography, architecture or science;
...
"literary work" includes tables, computer programs, and compilations of literary works;
...
"computer program" means a set of instructions or statements, expressed, fixed, embodied or stored in any manner, that is to be used directly or indirectly in a computer in order to bring about a specific result;
...
"compilation" means(a) a work resulting from the selection or arrangement of literary, dramatic, musical or artistic works or of parts thereof, or
(b) a work resulting from the selection or arrangement of data;
...
The legislation now clearly establishes that computer programs are literary works. It wasn't always so clear. You may find it interesting to see the courts discuss the issue in this case: Apple Computer Inc. v. Mackintosh Computers Ltd., 1990 CanLII 119 (S.C.C.), [1990] S.C.J. No. 61; affirming [1987] F.C.J. No. 916 (C.A.); which affirmed [1986] F.C.J. No. 278 (T.D.)
Copyright Act, R.S.C. 1985, c. C-42, s. 64.2
64.2 (1) This Act does not apply, and shall be deemed never to have applied, to any topography or to any design, however expressed, that is intended to generate all or part of a topography.
(2) For greater certainty, the incorporation of a computer program into an integrated circuit product or the incorporation of a work into such a computer program may constitute an infringement of the copyright or moral rights in a work.
(3) In this section, "topography" and "integrated circuit product" have the same meaning as in the Integrated Circuit Topography Act.
Copyright Act, R.S.C. 1985, c. C-42,
s. 3
3. (1) For the purposes of this Act, "copyright", in relation to a work, means the sole right to produce or reproduce the work or any substantial part thereof in any material form whatever, to perform the work or any substantial part thereof in public or, if the work is unpublished, to publish the work or any substantial part thereof, and includes the sole right
...
(f) in the case of any literary, dramatic, musical or artistic work, to communicate the work to the public by telecommunication,
...
(h) in the case of a computer program that can be reproduced in the ordinary course of its use, other than by a reproduction during its execution in conjunction with a machine, device or computer, to rent out the computer program, and (i) in the case of a musical work, to rent out a sound recording in which the work is embodied,
...and to authorize any such acts.
(1.1) A work that is communicated in the manner described in paragraph (1)(f) is fixed even if it is fixed simultaneously with its communication.
The confusing provision dealing with the rental of computer programs is the result of the North American Free Trade Agreement (NAFTA), Article 1705: Copyright
Like patents, copyrights are not forever: Copyright Act, R.S.C. 1985, c. C-42, s. 6
6. The term for which copyright shall subsist shall, except as otherwise expressly provided by this Act, be the life of the author, the remainder of the calendar year in which the author dies, and a period of fifty years following the end of that calendar year.
Employees should note the Copyright Act, R.S.C. 1985, c. C-42, s. 13
13. (1) Subject to this Act, the author of a work shall be the first owner of the copyright therein.
...
(3) Where the author of a work was in the employment of some other person under a contract of service or apprenticeship and the work was made in the course of his employment by that person, the person by whom the author was employed shall, in the absence of any agreement to the contrary, be the first owner of the copyright, but where the work is an article or other contribution to a newspaper, magazine or similar periodical, there shall, in the absence of any agreement to the contrary, be deemed to be reserved to the author a right to restrain the publication of the work, otherwise than as part of a newspaper, magazine or similar periodical.
(4) The owner of the copyright in any work may assign the right, either wholly or partially, and either generally or subject to limitations relating to territory, medium or sector of the market or other limitations relating to the scope of the assignment, and either for the whole term of the copyright or for any other part thereof, and may grant any interest in the right by licence, but no assignment or grant is valid unless it is in writing signed by the owner of the right in respect of which the assignment or grant is made, or by the owner’s duly authorized agent. ...
The puzzling term, "moral rights", are defined in the Copyright Act, R.S.C. 1985, c. C-42, s. 14.1
14.1 (1) The author of a work has, subject to section 28.2, the right to the integrity of the work and, in connection with an act mentioned in section 3, the right, where reasonable in the circumstances, to be associated with the work as its author by name or under a pseudonym and the right to remain anonymous.
(2) Moral rights may not be assigned but may be waived in whole or in part.
(3) An assignment of copyright in a work does not by that act alone constitute a waiver of any moral rights.
(4) Where a waiver of any moral right is made in favour of an owner or a licensee of copyright, it may be invoked by any person authorized by the owner or licensee to use the work, unless there is an indication to the contrary in the waiver.
Copyright Act, R.S.C. 1985, c. C-42, s. 27
27. (1) It is an infringement of copyright for any person to do, without the consent of the owner of the copyright, anything that by this Act only the owner of the copyright has the right to do.
...
Copyright Act, R.S.C. 1985, c. C-42, s. 29
29. Fair dealing for the purpose of research or private study does not infringe copyright.
Copyright Act, R.S.C. 1985, c. C-42, s. 30.6
30.6 It is not an infringement of copyright in a computer program for a person who owns a copy of the computer program that is authorized by the owner of the copyright to
(a) make a single reproduction of the copy by adapting, modifying or converting the computer program or translating it into another computer language if the person proves that the reproduced copy is
(i) essential for the compatibility of the computer program with a particular computer,
(ii) solely for the person’s own use, and
(iii) destroyed immediately after the person ceases to be the owner of the copy; or(b) make a single reproduction for backup purposes of the copy or of a reproduced copy referred to in paragraph (a) if the person proves that the reproduction for backup purposes is destroyed immediately when the person ceases to be the owner of the copy of the computer program.
Copyright Act, R.S.C. 1985, c. C-42, s. 34
34. (1) Where copyright has been infringed, the owner of the copyright is, subject to this Act, entitled to all remedies by way of injunction, damages, accounts, delivery up and otherwise that are or may be conferred by law for the infringement of a right.
(2) In any proceedings for an infringement of a moral right of an author, the court may grant to the author or to the person who holds the moral rights by virtue of subsection 14.2(2) or (3), as the case may be, all remedies by way of injunction, damages, accounts, delivery up and otherwise that are or may be conferred by law for the infringement of a right.
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Ordinarily, copyright owners sue infringers in the ordinary courts. Certain issues, however, are dealt with by the Copyright Board of Canada.
Copyright Act, R.S.C. 1985, c. C-42, s. 66
66. (1) There is hereby established a Board, to be known as the Copyright Board, consisting of not more than five members, including a chairman and a vice-chairman, to be appointed by the Governor in Council.
...
(3) The chairman must be a judge, either sitting or retired, of a superior, county or district court.
...
Copyright Act, R.S.C. 1985, c. C-42, s. 70.1
70.1 Sections 70.11 to 70.6 apply in respect of a collective society that operates
(a) a licensing scheme, applicable in relation to a repertoire of works of more than one author, pursuant to which the society sets out the classes of uses for which and the royalties and terms and conditions on which it agrees to authorize the doing of an act mentioned in section 3 in respect of those works;
...
Copyright Act, R.S.C. 1985, c. C-42, s. 70.12
70.12 A collective society may, for the purpose of setting out by licence the royalties and terms and conditions relating to classes of uses,
(a) file a proposed tariff with the Board; or
(b) enter into agreements with users.
Copyright Act, R.S.C. 1985, c. C-42, s. 70.13
70.13 (1) Each collective society referred to in section 70.1 may, on or before the March 31 immediately before the date when its last tariff approved pursuant to subsection 70.15(1) expires, file with the Board a proposed tariff, in both official languages, of royalties to be collected by the collective society for issuing licences.
...
Copyright Act, R.S.C. 1985, c. C-42, s. 70.2
70.2 (1) Where a collective society and any person not otherwise authorized to do an act mentioned in section 3, 15, 18 or 21, as the case may be, in respect of the works, sound recordings or communication signals included in the collective society’s repertoire are unable to agree on the royalties to be paid for the right to do the act or on their related terms and conditions, either of them or a representative of either may, after giving notice to the other, apply to the Board to fix the royalties and their related terms and conditions.
(2) The Board may fix the royalties and their related terms and conditions in respect of a licence during such period of not less than one year as the Board may specify and, as soon as practicable after rendering its decision, the Board shall send a copy thereof, together with the reasons therefor, to the collective society and the person concerned or that person’s representative.
Another user right is set out in a series of provisions involving the Copyright Board.
Copyright Act, R.S.C. 1985, c. C-42, s. 79
79. In this Part,
"audio recording medium" means a recording medium, regardless of its material form, onto which a sound recording may be reproduced and that is of a kind ordinarily used by individual consumers for that purpose, excluding any prescribed kind of recording medium;
"blank audio recording medium" means(a) an audio recording medium onto which no sounds have ever been fixed, and
(b) any other prescribed audio recording medium;"collecting body" means the collective society, or other society, association or corporation, that is designated as the collecting body under subsection 83(8);
Copyright Act, R.S.C. 1985, c. C-42, s. 80
80. (1) Subject to subsection (2), the act of reproducing all or any substantial part of
(a) a musical work embodied in a sound recording,
(b) a performer’s performance of a musical work embodied in a sound recording, or
(c) a sound recording in which a musical work, or a performer’s performance of a musical work, is embodiedonto an audio recording medium for the private use of the person who makes the copy does not constitute an infringement of the copyright in the musical work, the performer’s performance or the sound recording.
(2) Subsection (1) does not apply if the act described in that subsection is done for the purpose of doing any of the following in relation to any of the things referred to in paragraphs (1)(a) to (c):
(a) selling or renting out, or by way of trade exposing or offering for sale or rental;
(b) distributing, whether or not for the purpose of trade;
(c) communicating to the public by telecommunication; or
(d) performing, or causing to be performed, in public.
Copyright Act, R.S.C. 1985, c. C-42, s. 81
81. (1) Subject to and in accordance with this Part, eligible authors, eligible performers and eligible makers have a right to receive remuneration from manufacturers and importers of blank audio recording media in respect of the reproduction for private use of
(a) a musical work embodied in a sound recording;
(b) a performer’s performance of a musical work embodied in a sound recording; or
(c) a sound recording in which a musical work, or a performer’s performance of a musical work, is embodied.
...
Copyright Act, R.S.C. 1985, c. C-42, s. 82
82. (1) Every person who, for the purpose of trade, manufactures a blank audio recording medium in Canada or imports a blank audio recording medium into Canada
(a) is liable, subject to subsection (2) and section 86, to pay a levy to the collecting body on selling or otherwise disposing of those blank audio recording media in Canada; and
(b) shall, in accordance with subsection 83(8), keep statements of account of the activities referred to in paragraph (a), as well as of exports of those blank audio recording media, and shall furnish those statements to the collecting body....
Copyright Act, R.S.C. 1985, c. C-42, s. 70.2
83. (1) Subject to subsection (14), each collective society may file with the Board a proposed tariff for the benefit of those eligible authors, eligible performers and eligible makers who, by assignment, grant of licence, appointment of the society as their agent or otherwise, authorize it to act on their behalf for that purpose, but no person other than a collective society may file any such tariff.
...
(5) A proposed tariff must provide that the levies are to be effective for periods of one or more calendar years.
...
...
(8) On the conclusion of its consideration of the proposed tariff, the Board shall(a) establish, in accordance with subsection (9),
(i) the manner of determining the levies, and
(ii) such terms and conditions related to those levies as the Board considers appropriate, including, without limiting the generality of the foregoing, the form, content and frequency of the statements of account mentioned in subsection 82(1), measures for the protection of confidential information contained in those statements, and the times at which the levies are payable,
(b) vary the tariff accordingly,
(c) certify the tariff as the approved tariff, whereupon that tariff becomes for the purposes of this Part the approved tariff, and
(d) designate as the collecting body the collective society or other society, association or corporation that, in the Board’s opinion, will best fulfil the objects of sections 82, 84 and 86,but the Board is not obligated to exercise its power under paragraph (d) if it has previously done so, and a designation under that paragraph remains in effect until the Board makes another designation, which it may do at any time whatsoever, on application.
(9) In exercising its power under paragraph (8)(a), the Board shall satisfy itself that the levies are fair and equitable, having regard to any prescribed criteria.
(10) The Board shall publish the approved tariffs in the Canada Gazette as soon as practicable and shall send a copy of each approved tariff, together with the reasons for the Board’s decision, to the collecting body, to each collective society that filed a proposed tariff, and to any person who filed an objection.
...
A recent case involving the tariff for storage media is discussed in Charmane Sing, "Federal court rejects bid to impose iPod levy", The Lawyers Weekly, Vol. 27, No. 41 (March 7, 2008). The case itself was Apple Canada Inc. v. Canadian Private Copying Collective, 2008 FCA 9 (CanLII), [2008] F.C.J. No. 5.
An earlier case on the same issue was discussed in Henry Lue, "Private copying provisions upheld by Federal Court of Appeal", The Lawyers Weekly, Vol. 24, No. 36 (February 4, 2005). The case itself was Canadian Private Copying Collective v. Canadian Storage Media Alliance, 2004 FCA 424 (CanLII), [2004] F.C.J. No. 2115 (C.A.); leave to appeal refused [2005] S.C.C.A. No. 74.
Another case dealing with the possible copyright liability of service providers for internet caching was discussed in Pablo Fuchs, "SCC lets Internet servers off hook on music caching", The Lawyers Weekly, Vol. 24, No. 10 (July 9, 2004). The case itself was Society of Composers, Authors and Music Publishers of Canada v. Canadian Assn. of Internet Providers, 2004 SCC 45 (CanLII), [2004] S.C.J. No. 44.
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Intellectual property issues sometimes arise in telecommunications and broadcasting. The major legistlation is
Peter Ruby, "Internet throttling dispute nears resolution", The Lawyers Weekly, Vol. 28, No. 20 (September 26, 2008)
Arnold Ceballos, "Broadcasters take big hit on fees", The Lawyers Weekly, Vol. 28, No. 3 (May 16, 2008)
Canadian Association of Broadcasters v. Canada, 2008 FCA 157 (CanLII), [2008] F.C.J. No. 672;
Arnold Ceballos,
"Record companies sue XM Satellite Radio",
The Lawyers Weekly, Vol. 26, No. 8 (June 23, 2006)
CIRPA Joins With Other Groups to File Notice of Appeal
Satellite-Use Policy to accommodate Broadcasting Services to the Canadian Public
Petition to the Governor in Council to set aside Broadcasting Decisions CRTC 2005-246 and CRTC 20005-247
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Copyright Act, R.S.C. 1985, c. C-42, s. 38.1
38.1 (1) Subject to this section, a copyright owner may elect, at any time before final judgment is rendered, to recover, instead of damages and profits referred to in subsection 35(1), an award of statutory damages for all infringements involved in the proceedings, with respect to any one work or other subject-matter, for which any one infringer is liable individually, or for which any two or more infringers are liable jointly and severally, in a sum of not less than $500 or more than $20,000 as the court considers just.
(2) Where a copyright owner has made an election under subsection (1) and the defendant satisfies the court that the defendant was not aware and had no reasonable grounds to believe that the defendant had infringed copyright, the court may reduce the amount of the award to less than $500, but not less than $200.
...
A case in which statutory damages were awarded is discussed in John Cotter and Tara James, "Microsoft wins maximum award in counterfeit software dispute", The Lawyers Weekly, Vol. 26, No. 41 (March 9, 2007).
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Copyright Act, R.S.C. 1985, c. C-42, s. 42
42. (1) Every person who knowingly
(a) makes for sale or rental an infringing copy of a work or other subject-matter in which copyright subsists,
(b) sells or rents out, or by way of trade exposes or offers for sale or rental, an infringing copy of a work or other subject-matter in which copyright subsists,
(c) distributes infringing copies of a work or other subject-matter in which copyright subsists, either for the purpose of trade or to such an extent as to affect prejudicially the owner of the copyright,
(d) by way of trade exhibits in public an infringing copy of a work or other subject-matter in which copyright subsists, or
(e) imports for sale or rental into Canada any infringing copy of a work or other subject-matter in which copyright subsistsis guilty of an offence and liable
(f) on summary conviction, to a fine not exceeding twenty-five thousand dollars or to imprisonment for a term not exceeding six months or to both, or
(g) on conviction on indictment, to a fine not exceeding one million dollars or to imprisonment for a term not exceeding five years or to both.
Patent Act, R.S.C. 1985, c. P-4, s. 75
75. Every person who
(a) without the consent of the patentee, writes, paints, prints, moulds, casts, carves, engraves, stamps or otherwise marks on anything made or sold by him, and for the sole making or selling of which he is not the patentee, the name or any imitation of the name of any patentee for the sole making or selling of that thing,
(b) without the consent of the patentee, writes, paints, prints, moulds, casts, carves, engraves, stamps or otherwise marks on anything not purchased from the patentee, the words "Patent", "Letters Patent", "Queen’s (or King’s) Patent", "Patented" or any word or words of like import, with the intent of counterfeiting or imitating the stamp, mark or device of the patentee, or of deceiving the public and inducing them to believe that the thing in question was made or sold by or with the consent of the patentee, or
(c) with intent to deceive the public offers for sale as patented in Canada any article not patented in Canada,is guilty of an indictable offence and liable to a fine not exceeding two hundred dollars or to imprisonment for a term not exceeding three months or to both.
Some articles and cases involving prosecutions for copyright infringement are:
Brian Isaac,
"Canadian courts get tough with product counterfeiters",
The Lawyers Weekly, Vol. 27, No. 34 (January 18, 2008)
John Cotter and Tara James,
"Fine for criminal copyright infringement sets important precedent",
The Lawyers Weekly, Vol. 22, No. 47 (April 18, 2003)
R. v. AFC Soccer, 2002 CanLII 19441 (MB P.C.), [2002] M.J. No. 441; quashed as a nullity 2004 MBCA 73 (CanLII), [2004] M.J. No. 194.
Michael Deturbide, "Does the law help, not hinder, spyware?", The Lawyers Weekly, Vol. 26, No. 27 (November 17, 2006)
Some other criminal laws involving the use of computers follow:
Criminal Code, R.S.C. 1985, c. C-46,
s. 342.1 Unauthorized use of computer
Criminal Code, R.S.C. 1985, c. C-46,
s. 342.2 Possession of device to obtain computer service
Criminal Code, R.S.C. 1985, c. C-46,
s. 326 Theft of telecommunication service
Criminal Code, R.S.C. 1985, c. C-46,
s. 327 Possession of device to obtain telecommunication facility or service
Criminal Code, R.S.C. 1985, c. C-46,
s. 406 Forging trade-mark
Criminal Code, R.S.C. 1985, c. C-46,
s. 407 Forging trade-mark
Criminal Code, R.S.C. 1985, c. C-46,
s. 408 Passing off
Criminal Code, R.S.C. 1985, c. C-46,
s. 409 Instruments for forging trade-mark
Criminal Code, R.S.C. 1985, c. C-46,
s. 410 Other offences in relation to trade-marks
Criminal Code, R.S.C. 1985, c. C-46,
s. 432 Unauthorized recording of a movie
Criminal Code, R.S.C. 1985, c. C-46,
s. 172.1 Luring a child
Criminal Code, R.S.C. 1985, c. C-46,
s. 184 Interception of private communications
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A number of statutes not only authorize, but demand, the copying of material for use in court:
Federal Courts Act, R.S.C. 1985, c. F-7,
s. 46
Federal Courts Rules, S.O.R./98-106,
s. 222
Federal Courts Rules, S.O.R./98-106,
s. 233
Courts of Justice Act, R.S.O. 1990, c. C.43,
s. 66
Rules of Civil Procedure, R.R.O. 1990, Reg. 194,
r. 30.10
Rules of Civil Procedure, R.R.O. 1990, Reg. 194,
r. 1.03
Criminal Code, R.S.C. 1985, c. C-46,
s. 320.1 Warrant of seizure for hate propaganda
Criminal Code, R.S.C. 1985, c. C-46,
s. 164.1 Warrant of seizure for child pornography
Criminal Code, R.S.C. 1985, c. C-46,
s. 487 Search warrant for computer systems
Criminal Code, R.S.C. 1985, c. C-46,
s. 487.011 Production order
Criminal Code, R.S.C. 1985, c. C-46,
s. 487.012 Production order
Arbitration Act, 1991, S.O. 1991, c. 17,
s. 21
International Commercial Arbitration Act, R.S.O. 1990, c. I.9,
s. 2
UNCITRAL Model Law on International Commercial Arbitration, as set out in
International Commercial Arbitration Act, R.S.O. 1990, c. I.9,
Schedule, especially Article 19
Statutory Powers Procedure Act, R.S.O. 1990, c. S.22,
s. 5.4
Ontario (Human Rights Commission) v. Dofasco Inc.,
2001 CanLII 2554 (ON C.A.),
[2001] O.J. No. 4420
Provincial Offences Act, R.S.O. 1990, c. P.33,
s. 158
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The basic idea of any property is that it belongs to some and not to others. It's a small-scale monopoly. On a larger scale, the impact may be too great. When that happens, there may be anti-trust or competition laws involved. You have probably read about some of Microsoft's problems in Europe and the U.S. Wikipedia has a useful article about that, "United States Microsoft antitrust case (Wikipedia)".
In Canada, we have Patent Act, R.S.C. 1985, c. P-4, s. 65
65. (1) The Attorney General of Canada or any person interested may, at any time after the expiration of three years from the date of the grant of a patent, apply to the Commissioner alleging in the case of that patent that there has been an abuse of the exclusive rights thereunder and asking for relief under this Act.
(2) The exclusive rights under a patent shall be deemed to have been abused in any of the following circumstances:...
(c) if the demand for the patented article in Canada is not being met to an adequate extent and on reasonable terms;
(d) if, by reason of the refusal of the patentee to grant a licence or licences on reasonable terms, the trade or industry of Canada or the trade of any person or class of persons trading in Canada, or the establishment of any new trade or industry in Canada, is prejudiced, and it is in the public interest that a licence or licences should be granted;
(e) if any trade or industry in Canada, or any person or class of persons engaged therein, is unfairly prejudiced by the conditions attached by the patentee, whether before or after the passing of this Act, to the purchase, hire, licence or use of the patented article or to the using or working of the patented process; or
(f) if it is shown that the existence of the patent, being a patent for an invention relating to a process involving the use of materials not protected by the patent or for an invention relating to a substance produced by such a process, has been utilized by the patentee so as unfairly to prejudice in Canada the manufacture, use or sale of any materials....
In addition, there is Competition Act, R.S.C. 1985, c. C-34, s. 32
32. (1) In any case where use has been made of the exclusive rights and privileges conferred by one or more patents for invention, by one or more trade-marks, by a copyright or by a registered integrated circuit topography, so as to
(a) limit unduly the facilities for transporting, producing, manufacturing, supplying, storing or dealing in any article or commodity that may be a subject of trade or commerce,
(b) restrain or injure, unduly, trade or commerce in relation to any such article or commodity,
(c) prevent, limit or lessen, unduly, the manufacture or production of any such article or commodity or unreasonably enhance the price thereof, or
(d) prevent or lessen, unduly, competition in the production, manufacture, purchase, barter, sale, transportation or supply of any such article or commodity,the Federal Court may make one or more of the orders referred to in subsection (2) in the circumstances described in that subsection.
(2) The Federal Court, on an information exhibited by the Attorney General of Canada, may, for the purpose of preventing any use in the manner defined in subsection (1) of the exclusive rights and privileges conferred by any patents for invention, trade-marks, copyrights or registered integrated circuit topographies relating to or affecting the manufacture, use or sale of any article or commodity that may be a subject of trade or commerce, make one or more of the following orders:(a) declaring void, in whole or in part, any agreement, arrangement or licence relating to that use;
(b) restraining any person from carrying out or exercising any or all of the terms or provisions of the agreement, arrangement or licence;
(c) directing the grant of licences under any such patent, copyright or registered integrated circuit topography to such persons and on such terms and conditions as the court may deem proper or, if the grant and other remedies under this section would appear insufficient to prevent that use, revoking the patent;
(d) directing that the registration of a trade-mark in the register of trade-marks or the registration of an integrated circuit topography in the register of topographies be expunged or amended; and
(e) directing that such other acts be done or omitted as the Court may deem necessary to prevent any such use.(3) No order shall be made under this section that is at variance with any treaty, convention, arrangement or engagement with any other country respecting patents, trade-marks, copyrights or integrated circuit topographies to which Canada is a party.
In Canada, the public authority responsible is the Competion Bureau. In March of 2006, the Bureau published a useful article, "The Competition / Intellectual Property Interface–Present Concerns And Future Challenges".
cs2008.html Copyright © 2008 John N. Davis