Let’s say you pitch a story idea to a TV production company – and not just an idea, but a complete set of storyboards, characters and scripts. You would be surprised if one day you saw that story idea come to life in a TV production that gave no credit to you as the orginal creator of the materials. That’s what happened to Claude Robinson and his idea for a children’s TV program inspired by Robinson Crusoe.

One of the most important copyright decisions in 2013 was issued by the Supreme Court of Canada (SCC) in late December: In Cinar Corporation v. Robinson, 2013 SCC 73, the court reviewed Mr. Robinson’s claim that Cinar Corp. infringed copyright in his original story materials by copying a substantial part of those materials in the new TV production called “Robinson Sucroë”.

I am often asked when or why someone can copy the ideas of someone else. Ideas themselves are not protected by copyright law. Many features of a TV show or a movie are simply non-protectable, including ideas, elements drawn from the public domain or generic components of a story, like heroes, villains, conflict and resolution. However, in this case, the idea was articulated and expressed in a set of original written materials which resulted from the skill and judgement of the author.

The court framed this fascinating issue in this way: “The need to strike an appropriate balance between giving protection to the skill and judgement exercised by authors in the expression of their ideas, on the one hand, and leaving ideas and elements from the public domain free for all to draw upon, on the other, forms the background against which the arguments of the parties must be considered.”

In the end, the court rejected the notion that the two works must be compared piecemeal to determine if protectable elements of the original work were similar to the copy. Instead, the court reviewed the “cumulative effect” of the features copied from the original, to determine if those features amount to a substantial part of the original work as a whole. Thus the court approved a “qualitative and holistic assessment of the similarities between the works”, rather than dissecting both works to compare individual features in isolation.

This decision will be applied in other copyright infringement situations in Canada, including art, media, music and software.

Calgary – 05:00 MST

In a recent default judgment granted to Twentieth Century Fox, a Canadian Federal Court recently issued an injunction and a damage award in Twentieth Century Fox Film Corp. v. Hernandez et al (T-1618-13) for copyright infringement based on copying and rebroadcasting The Simpsons and Family Guy programs through the defendant’s websites “Watch The Simpsons Online” and “Watch Family Guy Online”.

As the court noted: “Statutory damages, elected by Twentieth Century Fox in this case, would be insufficient to achieve the goal of punishment and deterrence of the offense of copyright infringement in this case. Hernandez’s repeated, unauthorized, blatant, high-handed and intentional misconduct, and his callous disregard for the Plaintiff’s copyright rights, is deserving of the penalty of punitive damages.”

The court went on to issue a damage award of $10 million in statutory damages under 38.1 of the Copyright Act, as wel as $500,000 in punitive damages, costs of $78,000, plus interest

Hat tip to Alan Macek at Dimock Stratton for a link to the decision.

Calgary – 07:00 MST

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It is rare for a case to combine energy drinks, copyright law, DJs, rap and snowboarding in Canada. The court’s decision in Beastie Boys v. Monster Energy Co. is such a case.

In this recent decision of the United States District Court (S.D. New York), Monster Energy defended a copyright infringement claim brought by the rap-group Beastie Boys. The Beastie Boys allegations centred around Monster’s use of a remix track, known as Megamix, originally created by the DJ known as Z-Trip. The remix of well-known Beastie Boys hits was created by Z-Trip with the permission of the band – in fact they had invited the DJ to mix the track in 2011 in order to promote a Beastie Boys album.

At a Canadian snowboarding event in 2012, an executive from Monster approached the DJ to get permission to use the remix for Monster’s promotional video of the event. It was these discussions that became the focus of the Court’s analysis of Monster’s defence that it had obtained a license from the DJ for the use of the remix. After producing the video with the remix included, Monster sent a copy to the DJ who responded “Dope!”, as DJs will. Monster took this exclamation as an affirmation of the terms of a license granting permission to use the song for Monster’s promotional purposes. The DJ testified that this term merely expressed approval for how cool he looked in the video. The Court concluded that no reasonable person would consider the term “Dope!” to constitute “clear, unambiguous and unequivocal” acceptance of license terms for the use of the remix. As a result, there was no valid consent or license granted.

Calgary – 07:00 MST

As an update to my previous post in August (click here), this bill (Bill C-8) has been re-introduced in Canadian Parliament, and is currently in second reading. Bill C-8 amends the Copyright Act and the Trade-marks Act to add new civil and criminal remedies and new border measures designed to curtail the importation of knock-off products.

Stay tuned, this bill is expected to get through the Parliamentary process and could be law in 2014.

Calgary – 07:00 MST

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Zynga, the world’s largest app-developer has scored a win against the owner of the SCRABBLE brand. This case brings up several interesting points about international trade-mark protection in the era of apps.

The well known SCRABBLE® brand is a registered trade-mark owned by different owners in different parts of the world. Hasbro Inc. owns the intellectual property rights in the U.S.A and Canada. In the rest of the world, the brand is owned by J.W. Spear & Sons Limited, a subsidiary of Mattel Inc. Mattel is not affiliated with Hasbro – in fact, the two companies are long-time rivals.

In JW Spear v. Zynga, a UK court has decided that the use of the SCRAMBLE brand by Zynga for its word-based app game does not infringe the SCRABBLE trade-mark in the UK, nor does it constitute passing-off. However, the court did consider Zynga’s SCRAMBLE logo design (above left) to constitute an infringement, since the stylized M appears at first glance to resemble a letter B. A few interesting points on this long-running battle:

• As we’ve seen in other IP disputes covered by ipblog, this litigation is part of a wider dispute in multiple jurisdictions, including France and Germany.
• Mattel was chastised by the court for its delay in responding to Zynga’s earlier use of the SCRAMBLE mark, in late 2007. This delay influenced the court’s conclusion that Mattel did not truly perceive SCRAMBLE to be a threat to the SCRABBLE mark. This in turn influenced the court’s opinion that the public would not be confused by the use of the 2 marks.
• Mattel’s delay was likely caused by the efforts of the parties to negotiate a license agreement to produce a physical board-game version of the SCRAMBLE app.  The litigation followed a break-down in negotiations, when Zynga concluded a deal with Mattel’s rival Hasbro.

Calgary – 07:00 MST

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Canadian patent and trade-mark applicants take note: the  USPTO has indicated that it will remain open despite the pending shutdown of US government offices and agencies. Therefore, prosecution of US patent and trade-mark applications should be uninterrupted by the current political drama in Washington.

Calgary – 12:00 MDT

Update: October 4, 2013

As the shutdown drags towards the end of week 1, the USPTO maintains that it has reserves to continue operations and accept new applications. As of October 3, 2013, the U.S. Copyright Office has shut down.

Calgary – 9:45 MDT

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When you upload your pictures to a website, you might click through some terms of use…Did you just transfer ownership of the copyright in your pictures?

In a recent US case (Metropolitan Regional Information Systems, Inc. v. American Home Realty Network, Inc., No. 12-2102, Fourth Circuit Court of Appeals) the court dealt with a copyright infringement claim over photos uploaded to a real estate website. Users were required to click-through the website terms of use (TOU) prior to uploading, and those terms clearly indicated that copyright in the images was transferred to the website owner.

In the course of the infringement lawsuit, this was challenged, so the court had to squarely address the question of whether copyright can be validly transferred via online terms. “The issue we must yet resolve,” said the Court, “is whether a subscriber, who ‘clicks yes’ in response to MRIS’s electronic TOU prior to uploading copyrighted photographs, has signed a written transfer of the exclusive rights of copyright ownership in those photographs consistent with” the Copyrght Act.

In Canada, the equivalent section of the Act says “The owner of the copyright in any work may assign the right, either wholly or partially …but no assignment or grant is valid unless it is in writing signed by the owner of the right…”.

The Court in the Metropolitan Regional case decided that yes, an electronic agreement in this case was effective to transfer copyright for the purposes of the Copyright Act.

Calgary – 07:00 MDT

When it comes to Canadian IP battles, neither The Great Olympic Sweater Debate nor the Distinctly Canadian Patent Fight can rival the court battle over the design of the Bluenose for sheer Canadianess.

In Nova Scotia v. Roué, 2013 NSCA 94 (CanLII) the court addressed the copyright in the design of the famous schooner Bluenose. This is the ship that graces the back of the Canadian dime. Certain descendants of the vessel’s original designer, William J. Roué, launched an action against the Province of Nova Scotia, claiming that the Province was infringing copyright and moral rights in the original design drawings of their ancestor, by restoring or rebuilding the Bluenose vessel.

A little history is in order: The original Bluenose was launched in 1921. A legendary racing schooner, the ship was undefeated for 17 years straight. The original Bluenose sank on a reef off Haiti in 1946. A replica Bluenose II was constructed in 1963, with access to Mr. Roué’s original designs. The Province took ownership in 1971 and now the Province describes its current efforts as a restoration of Bluenose II.  Mr. Roué’s descendants allege that the Province is in fact creating an entirely new vessel and thus infringing copyright and moral rights in the original drawings. The Province responded by arguing, among other things, that the restoration of the Bluenose II is not a “substantial reproduction” of the original Bluenose, but rather an independent design, and if any of the original design was used “it was only dictated by the utilitarian function of the article”, and thus outside the purview of copyright.

As with many fascinating copyright battles, this one turned on relatively mundane court rules. Here, the application and the appeal centred on the question of whether the case could proceed as an application rather than by means of a full trial. Weighing all of the factors, the court suggested that the application could go ahead, without the need to convert it to a full trial. Stay on this tack… the case will continue.

Calgary – 07:00 MDT

As a follow-up to our earlier post (Combating Counterfeit Products Act), we wrote in March 2013 that Parliament had introduced a bill (Bill C-56) to amend the Copyright Act and the Trade-marks Act, to combat counterfeit products. With Prime Minister Harper’s decision to prorogue Parliament, this Bill will die on the order paper.

There was a time when the word “prorogue” sent people running to their constitutional dictionaries. Since the prorogations in 2007, 2008 and 2010 this manoeuver has become a common feature of Canadian legislative and political life. The Bill will have to be reintroduced in the next session. Assuming the current senate expense scandal can be resolved, the Bill may make it through the next session of Parliament and be passed into law. Stay tuned.

Calgary – 08:00 MDT

While “famous” marks are handled differently in Canada than they are in the US, there is nevertheless a great advantage for marks such as the well-known  McDonald’s “family” of marks when it comes to effective trade-mark protection. In the recent case of CHEAH v MCDONALD’S CORPORATION, the Federal Court dealt with an application for the mark MACDIMSUM in association with a number of food items. The application was opposed by McDonald’s restaurants.

Anyone seeking to register a mark using the prefix “MAC” or “MC” in association with food and restaurant services should expect some scrutiny by McDonald’s trade-mark lawyers.

As noted by the Court, McDonald’s owns “a large number of trade-marks referred to as a ‘family’ of trade-marks registered and used by McDonald’s in Canada in association with foods and drinks and restaurant services. These are referred to in argument as the MC plus food item, or MAC plus food item, marks.” By presenting evidence of the dozens of these MAC / MC marks, coupled with survey evidence of the public’s likely perception of the mark MACDIMSUM as yet another one of McDonald’s marks, McDonald’s as the opponent of this application was able to persuade the Trade-Marks Oposition Board that this application should not be permitted to proceed. The Court agreed. A few interesting points to note:

1. Yes, let’s face it, there is an undeniable advantage to having dozens of marks to present as part of a billion-dollar chain of restaurants. A ‘lesser’ opponent (with less recognition, lower sales, less advertising and a smaller family of marks) simply would not be in a position to present such evidence in opposition proceedings.
2. Survey evidence is expensive to obtain but can be effective, as it was in this case. However, note Justice Hughes’ comments that:  “The Court has been suspect as to the growing use of and reliance upon surveys in proceedings such as this. The remarks of Rothstein J, in the Supreme Court of Canada decision in Masterpiece Inc v Alavida Lifestyles Inc, [2011] 2 SCR 387 at paragraphs 78 to 101, stating that survey evidence should be used with caution and not supplant the role of the judge, are apt.”

Calgary – 07:00 MDT

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As a follow-up to our earlier post about Revoking an “Implied” Software License, this interesting US case (Davis v. Tampa Bay Arena Ltd.) deals with the use of photographs on Facebook postings. A freelance photographer, Davis, worked for the Tampa Bay Arena, taking photos for various events. The photographer and arena had a verbal agreement since 1996, and then a written agreement since 2000. The written agreement stated that the arena had “rights to reproduce images for newsletter, advertising, display prints, broadcast, and the [Forum] web site.” The agreement was also clear that Davis retained copyright in the images.

That was the language dating from 2000. Fast forward 10 years, and the arena started posting Davis’s photos to its Facebook page, something not contemplated in the scope of the original agreement. However, for months Davis permitted the images to be posted, and even set up a upload site to allow the arena’s marketing department to easily resize images for the Facebook page. By this course of conduct and the email record, the court found that Davis granted an implied nonexclusive license to the arena to make use of the images in this way. Davis countered by saying that if an implied license was granted, it was only granted with certain strings attached – conditions regarding additional payment that were never met. Because these conditions were not met, the use of the photographs was unauthorized, giving rise to a copyright infringement claim.

The court disagreed. On the copyright claim, the court decided that “even assuming that Davis attached conditions to the Forum’s use of his images on Facebook, the record is clear that these conditions were covenants, not conditions precedent to the granting of the implied license. Accordingly, any breach on the Forum’s part of these covenants provides Davis with a breach of contract claim against the Forum, not a copyright infringement claim.” (Emphasis added.)

Lessons?

• A chain of emails can easily establish a contract, such as the implied copyright license in this case;
• For any license – particularly copyright, media or trade-mark licenses – check the original terms of the license. Social media can cause problems when its use is unauthorized by the scope of the original license, even though it seems like a natural extension of what is authorized within the scope of the original license.

Related Reading: Click & Copy: Breach of Online License Agreements & Copyright Infringement

Calgary – 07:00 MDT

A license can be granted without any written agreement. It happens more often than you might think. For example, a license by verbal agreement and a “course of conduct” was granted by one party in the case of  Planification-Organisation-Publications Systèmes (POPS) Ltée and Elizabeth Posada v. 9054-8181 Québec Inc., 2013 FC 427. In that case, the lack of a written agreement was irrelevant. The court found that there was an “implied” license. The next question was whether that license could be revoked or terminated? The software owner asserted it was entitled to revoke the licence that it had previously granted, because that licence had been granted for no consideration (or “à titre gracieux” – sounds better in French).

The court disagreed. It’s true that a license granted for no value or no consideration can be revoked unilaterally. The B.C. Court of Appeal came to this conclusion in Katz (c.o.b. Michael Katz Associates) v. Cytrynbaum, [1983] B.C.J. No. 2421 (C.A.), where an architect revoked consent to the transfer of copyright where it was given without any consideration. However, in the Planification decision, the court found significant value had been transferred over many years by the licensee, though it was never documented in writing as “consideration” for the grant of a license.  This came in the form of “conceptual contributions” to the software, software testing, compensation for developers, contributions of macros and other inputs for the software.

The lessons for business?

• Be aware that a software license can be granted verbally or through a course of dealing between the licensor and licensee. This results in an “implied” software license.
• Terminating or revoking such a license may be possible if the grant is gratuitous and there is a complete absence of any value flowing back to the licensor. However, consideration can also be implied. In this case, it was pieced together from various sources to make up valid consideration for the grant of the license.
• Any “free” licenses – including licenses between joint-venture partners, or licenses for beta or pre-release versions of software – should be handled carefully to avoid these pitfalls.

Calgary -07:00 MDT

In Pelchat v. Zone 3 Inc., 2013 QCCS 78, a Quebec court decision has addressed the dichotomy between the idea for a TV show, and the “form and expression” of ideas, as embodied in a TV show. In this case, the defendant Zone 3 was sued for a claim of copyright infringement related to its makeover TV show called “Métamorphose”. The lawsuit was brought by Mr. Pelchat, who claimed that his own show “Look” (which aired in the late 1980s) was infringed by Zone 3’s show. Mr. Pelchat claimed his infringed work was a “beauty makeover of a woman on TV through hair, makeup and clothes”.  Copyright law is clear that it will only protect original expressions of an idea, not the idea itself. Thus, there is no infringement where the ideas between two shows are similar, but there is no actual copying of protected original expression.

In this case, the court did review the overall expression of the two shows, the structure, dialogue, sets, characters and other elements of expression. It concluded that Zone 3 did not engage in any copyright infringement.

Thanks to the l’Association du Jeune Barreau de Montréal for its case summary and link to the original judgment.

Contact Field Law’s Entertainment Law experts for advice in this area.

Calgary – 07:00 MDT

Parliament has introduced a new bill (Bill C-56) to amend the Copyright Act and the Trade-marks Act, to combat counterfeit products. The bill, if it becomes law, would add new civil and criminal remedies such as:

• opening up new rights to sue for damages for counterfeits and infringing activity;
• creating new criminal offences for trade-mark counterfeits (which would mirror those currently found in the Copyright Act);
• creating new criminal offences prohibiting the possession or export of infringing copies or counterfeit trade-marked goods, packaging or labels;
• grants new powers for enforcement of IP rights at the border (including detaining goods that are suspected of infringing copyright or trade-marks).

Since amendment of the Trade-marks Act is so rare, the government is also taking the opportunity to expand the scope of what can be registered as a trade-mark and fix a few other procedural problems with the current Act. This new bill is designed to bring Canada into compliance with Anti-Counterfeiting Trade Agreement.

This is one to watch in 2013.

Calgary – 07:00 MST

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Are APIs protected by copyright?

In the long-running litigation (and hey, is there any litigation that isn’t “long-running”?) between Oracle and Google, a US court decided in 2012 that APIs in this case were not eligible for copyright protection. See our earlier post. This meant a complete loss for Oracle in its lawsuit against Google for infringement of the Java APIs used in Google’s Android software.

Copyright protects only original expression. Applied to software code (including API protocols), the law of copyright tells us that certain elements are not protectable by copyright since they lack originality. The US trial level decision in Oracle vs. Google has been appealed and the parties are now filing briefs in the US Federal Court of Appeals (a copy of Oracle’s brief is here). The briefs make fascinating reading for those interested in the finer points of copyright law and the history of the Java programming.

Oracle’s brief opens by sketching a scene: “Ann Droid wants to publish a bestseller. So she sits down with an advance copy of Harry Potter and the Order of the Phoenix  —the fifth book—and proceeds to transcribe. She verbatim copies all the chapter titles—from Chapter 1 (“Dudley Demented”) to Chapter 38 (“The Second War Begins”). She copies verbatim the topic sentences of each paragraph, starting from the first (highly descriptive) one and continuing, in order, to the last, simple one (“Harry nodded.”). She then paraphrases the rest of each paragraph. She rushes the competing version to press before the original under the title: Ann Droid’s Harry Potter 5.0. The knockoff flies off the shelves.”

Does this constitute copyright infringement?

One of the big issues on appeal will be whether the appeals court accepts the notion that copyright infringement can occur without any actual direct copying of code. This is the so-called SSO argument – that the “structure, sequence and organization” of the software can attract copyright protection, regardless of whether specific code is cut-and-paste. As illustrated in the Harry Potter example above.

Stay tuned. This is one to watch in 2013.

Calgary – 07:00 MST

Photo credit: Google, Inc.

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Here is the next case that illustrates the potential pitfalls when dealing with social media:

This recent US copyright decision involving Agence France Presse (AFP) and photographer Daniel Morel dealt with the rights of a news publisher to publish images posted to Twitter.

Mr. Morel is a photojournalist who took a number of images of the 2010 earthquake in Haiti. He then posted those images to Twitter. Those images were picked up by AFP who “licensed” the images on to Getty Images.

When Morel complained, steps were taken to have the images removed from the AFP / Getty system. But through series of mixups (of the kind that would be familiar to anyone dealing with information technology and complex organizations such as AFP and Getty Images), the pictures were not removed and were picked up and published by The Washington Post under their agreement with AFP/Getty.

The court ultimately had to decide whether Mr. Morel – the photographer – had granted a kind of license to AFP by posting his images to Twitter. This required an analysis of the Twitter Terms of Service. The court decided no, the Twitter Terms of Service do not grant such a license. The court stated that “even if some re-uses of content posted on Twitter may be permissible, this does not necessarily require a general license to use this content as AFP has.” Put another way, a copyright owner who posts content to Twitter is clearly giving up some rights to that content – the right, for example, to re-tweet, which is a fundamental part of Twitter and is contemplated (even encouraged) by Twitter’s Terms of Service. However, merely by posting to Twitter, that copyright owner is not giving others an unrestrained right or license to remove the content, copy it and redistribute it commercially.

The court says “…the Twitter TOS were not intended to confer a benefit on the world-at-large to remove content from Twitter and commercially distribute it…” This is an important reminder.

In the final analysis (and that is 58 pages of analysis if you want to read the judgement) AFP and The Washington Post were liable for copyright infringement for use of Morel’s images.

Lessons for business:

• This case confirms that any re-use of content from Twitter – and by extension, other social media streams – should be handled carefully.
• Re-tweets are clearly contemplated as being within the scope of permitted uses, but copying and republishing for commercial purposes clearly is not.
• Many situations will fall somewhere in the middle between those two ends of the spectrum. Before using or re-using content for commercial purposes, take time to review the specific situation, including the applicable social media terms of service. Before posting your own content to Twitter, be aware that the Twitter terms do contemplate certain re-uses (the scope of which is difficult to define precisely). Once it’s posted, it’s hard to stuff the genie back in the bottle

The case is Agence France Presse v. Morel.

Calgary – 07:00 MST

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Social media law was not a topic on offer when I went to law school. Now, it’s a subject that’s hard to avoid for any business that has a consumer-facing social media presence. Here are two recent cases that illustrate the potential pitfalls as this area of law becomes more complex and more interesting:

Last week, HMV’s Twitter feed was hijacked by an employee who live-tweeted employee terminations from the company’s official Twitter account. Perhaps “hijacked” isn’t the right word, since the employee apparently had access to the account as part of her employment duties, though that position likely did not involve posting descriptions of firings as “Mass execution of loyal employees”. The next day the ex-employee (“Poppy Rose”) helpfully tweeted a reminder to the company that “you need to go to ‘settings’ and revoke my account access as an admin“. The lessons for business?

• Many companies are slow to grasp the power of social media. Don’t underestimate the viral nature – both good and bad – of this tool. Though the offending tweets were deleted by the company, this became a national story within a few minutes. From the company’s perspective, it required careful handling to avoid any brand damage.
• This highlights the need for a Social Media Policy for employees, to deal with the legal pitfalls of social media and particularly those employees who are engaged directly in social media sphere on behalf of the company. The ownership and control of corproate social media accounts is a simple but important element of such a policy.

Related Reading: Who Owns Social Media Contacts: Employers or Employees?

Calgary – 07:00 MST

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Megaupload Ltd. is alleged to have disseminated copyright protected movies and music and US prosecutors now have the task of gaining access to the company’s servers in a bid to prove their case. In the fascinating Megaupload saga, a Canadian court has been asked to decide what to do with 32 servers belonging to Megaupload which are located in Canada. The servers are packed with information – “100 laptops” worth of data according to the judgement – and the court was asked by the US government to deliver that data to American prosecutors who are pursuing charges against Megaupload for criminal infringement of copyright, conspiracy to infringe copyright, money laundering and racketeering.

In last week’s decision, Canada (United States of America) v. Equinix Inc.  , 2013 ONSC 193, the court denied this request, indicating that the massive volume of data meant that the scope of the investigation should be narrowed to just that information that is the target of the search, rather than the entire contents of the data trove. However, the judge did not deny that the evidence should be delivered. Evidence to implicate Megaupload likely is contained within those servers, and it is only a matter of time and negotiation to determine the scope of the search, rather than an absolute denial of the request. “Given the undisputed conclusion” the judge wrote, “…that there were reasonable grounds to believe that evidence of the offences would be located on the servers in my view the appropriate balance of the state interest in gathering evidence and privacy interests in information can be struck by an order that the servers be brought before the court …so that the court can make an order refining what is to be sent.”

From a cloud computing law perspective, this case raises several important points:

• Canadian courts will order seizure and search of cloud-computing servers – just like they will with any piece of evidence in Canada – pursuant to a request from US authorities in the course of a criminal investigation;
• Privacy interests will be balanced by the court, since the law is developing a sense of when individuals have an expectation of privacy in the contents of computers or servers;
• However, that privacy right is not absolute, but it will be balanced with the interests of governments to conduct investigations.

We can expect another decision to be released before long, where the contents of the servers are indeed delivered to US prosecutors, with some conditions or limitations as to the scope of the search.

Calgary – 07:00 MST

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As mentioned in our previous post, industrial designs protect the visual features of a product (shape, configuration, pattern or ornament). Functional, utilitarian or useful elements are not eligible for protection. This was illustrated in Bodum USA, Inc. v. Trudeau Corporation, 2012 FC 1128 (CanLII), where the court found that Bodum’s double-walled drinking glass design was not infringed, since the competing product was not substantially similar in light of the many variations of double-walled glasses in the marketplace. The designs would have had to be virtually identical to support a finding of infringement.

A second interesting element to this case is the counterclaim by Trudeau Corp., who sued for a declaration that the Bodum design was invalid due to the prior art on the register. The court in Bodum confirmed that to be registrable, an industrial design must be substantially different from prior art. A simple variation is not enough. For a design to be considered original, there must be some “substantial difference” between the new design and what came before. “A slight change of outline or configuration, or an unsubstantial variation is not sufficient to enable the author to obtain registration.” In this case, the Court reviewed a number of other existing designs for double-walled glasses – one of which was designed in 1897 – and decided that Bodum’s design was not original. To come to this conclusion, the Court set aside the utilitarian functions, the materials used, and colours applied, and looked merely at the visual or ornamental features.

In the end, Bodum’s design did not satisfy the requirement of “substantial originality”, and the registration was expunged.

Calgary – 07:00 MST

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Infringement! Litigation! Legislation! There is never a dull moment in the wonderful world of intellectual property law, and 2013 will be no exception. Here’s our list of what to watch in the coming year:

Copyright. If you keep making the same predictions year after year, eventually one of them will come true, right? For the last several years, we predicted that copyright reform would finally come to Canada. 2012 did not disappoint as the year of copyright, with the release of five SCC decisions and the passing of the copyright modernization legislation that had been long awaited.  We expect that 2013 will provide some opportunities to test the new law in court.

Anti-Spam. As with copyright, many have predicted that Canada’s “new” anti-spam law would come into effect for several years. Yes, Parliament passed the Fighting Internet and Wireless Spam Act and it did receive royal assent way back in December, 2010. However, Canada’s anti-spam legislation is still not in force. Industry Canada released draft revised anti-spam regulations last week, and it would be surprising if we didn’t see final regulations in the first half of 2013.

App Law. We predicted in 2011 that app law would develop as regulations and laws fight to keep pace with the explosion of the app economy which is expanding in both business and personal life, along with cloud computing. 2012 provided a number of important developments in app law, mostly in the US. 2013 should continue to provide clarity in this growing area of law.

Apple and Samsung. The litigation that brought patent infringement back into the public consciousness like no case since RIM vs NTP may be resolved in 2013. Even Judge Koh has made a plea for “global peace.”

Calgary – 13:00 MST