Teresa Scassa - Blog

“Using Copyright Law to Prevent Parallel Importation:  A Comment on Kraft Canada, Inc. v. Euro Excellence, Inc.”, (2007) 85 Canadian Bar Review 409-432

In Kraft Canada, Inc. v. Euro Excellence, Inc., the Federal Court of Appeal ruled that the secondary infringement provisions of the Copyright Act could be used to prevent the parallel importation into Canada of chocolate bars, due to copyrights in the trade-mark logos on the product labels.  The effect of this decision, currently on appeal to the Supreme Court of Canada, is to give trade-mark holders a tool to prevent parallel importation in contexts where trade-mark law has generally been ineffective.  While the use of copyright law to achieve a result in these circumstances is problematic, the author argues that the solution lies in legislative amendment rather than in creative interpretations of the Copyright Act.

Published in Refereed Articles

“The Doctrine of Functionality in Trade-mark Law Post-Kirkbi”, (2007) 21 I.P.J. 87-115.

The doctrine of functionality has long served to prevent the creation of trade-mark monopolies over the functional features of wares. In Kirkbi AG v. Ritvik Holdings Inc., the Supreme Court of Canada emphasized the policy basis for the doctrine which it described as “a logical principle of trade-marks law”.  In this article, the author examines the Kirkbi decision and identifies a number of issues which remain unresolved by the Court’s reasons.  These include the reconciliation of approaches to functionality in earlier court decisions, the role of prior patents, the scope of the doctrine of functionality, issues of utility and ornamentation, and the subject matter to which the doctrine applies.

Published in Refereed Articles

“Intellectual Property and the Licensing of Canadian Government Geospatial Data: An Examination of Geoconnections’ Recommendations for Best Practices and Template Licences”, (2010) 54:3 Canadian Geographer 366-374 (with Elizabeth F. Judge) PDF Available here.

In Canada, Crown copyright permits government to assert control over its works.  These Crown rights have often been justified on the basis that government must assert intellectual property rights so as to be better able to control the accuracy, integrity, and quality of any information that reaches the public through Crown works. In this article, the authors examine GeoConnections’ template agreements for the licensing of government geographic data.  They argue that not only is the basis and scope of claims to intellectual property rights uncertain, the objectives of quality control, data integrity, and accuracy do not appear to motivate the licence terms. The uncertainty as to the legal basis of the intellectual property claims is significant, as licences of this kind may give support to otherwise weak downstream claims by third parties to copyright in data products generated through the use of geographic data provided by the Crown.

Published in Refereed Articles

“Overbalancing:  The Supreme Court of Canada and the Purpose of Canada’s Copyright Act”, (2010) 25:2 Canadian Intellectual Property Review 181-204

This paper examines how this concept of ‘balance’ evolves in decisions of the Supreme Court of Canada, from the landmark decision in Théberge c. Galerie d’Art du Petit Champlain to the most recent decision in Euro-Excellence Inc. v. Kraft Canada. It offers a critique of the notion of “balancing” as developed by the Supreme Court of Canada.  The paper argues that this “balancing” approach is not supported by the language of the Copryight Act, that it is incoherent as a tool for statutory interpretation, and that it is ultimately inconsistent with the role of the judiciary.  The paper argues that rather than being in opposition to one another, the goals of protecting the rights of creators and encouraging access to and dissemination of works are often served by the same measures.  The paper suggests that the deep divisions at the Supreme Court of Canada in Robertson v. Thompson Corp. and in the Euro-Excellence case illustrate the failings of the Court’s “balancing” approach, and it argues for a more nuanced view of the public policy underlying copyright law.

Published in Refereed Articles
Wednesday, 15 June 2005 12:21

Interests in the Balance

“Interests in the Balance”, Book Chapter in Michael Geist, ed., In the Public Interest – The Future of Canadian Copyright Law, Irwin Law, 2005 (pp. 41-65)

In this paper, the author explores the ambiguities and inconsistencies in the Supreme Court of Canada’s latest articulation of the balance to be struck in copyright law. She considers whether the balancing of interests is to be approached by courts based on, or independently of, the balance struck in the legislation. She argues that the identified interests of ‘creators’, ‘users’ and the public should be understood in a textured way, and that the interests of ‘owners’ should neither be forgotten nor conflated with those of creators of works.

Published in Refereed Book Chapters

“Patent Law at the Supreme Court of Canada: A Healthy Balance?”, in Jocelyn Downie & Elaine Gibson, eds., Health Law at the Supreme Court of Canada. Irwin Law Books, 2006, pp. 337-364

In the health care context, the boundaries of private ownership rights over innovation in the fields of biotechnology and pharmaceuticals and the scope of the public domain have important implications for research and development, for cost to both the public purse and to private individuals, and ultimately for access to treatment. An approach which places limits and sets boundaries is therefore often favoured by those concerned about these areas of activity. By contrast, the pharmaceutical industry has emphasized the importance of strong and broad patent rights, arguing that they provide the necessary incentive for continued research and development.

This paper explores these tensions in the context of the decisions of the Supreme Court of Canada. The first section of the paper explores the Court’s recent statements on the purpose of patent law, with a particular focus on statements of purpose in health law related cases. After a consideration of the general statements of purpose made in the cases, the paper examines how these statements influence the interpretation and outcomes in key cases.

            The second section of the paper examines the Court’s approach to interpreting the scope of patents. As the Court has pointed out, a patent is a regulation within the meaning of the Interpretation Act. Thus the interpretation of the scope of the patent granted, also referred to as “claims construction,” is a second level of judicial interpretive activity. The paper considers recent key decisions of the Court in which it details the proper approach to claims construction in light of the stated purposes of patent legislation.

Published in Refereed Book Chapters

“The challenge of trademark law in Canada’s federal and bijural system”, in Ysolde Gendreau, ed., An Emerging Intellectual Property Paradigm: Perspectives from Canada, Queen Mary Studies in Intellectual Property Law, Cheltenham, UK: Edward Elgar, 2008, 3-21

Canada’s constitution divides jurisdiction over the full range of legislative subject matter between federal and provincial governments. While intellectual property subjects have typically fallen within federal jurisdiction, some aspects of intellectual property protection are provincial in nature. This is particularly the case in the area of trademarks. Further, Canada is a mixed jurisdiction. While the three territories and nine of the ten provinces draw on the common law legal tradition, Quebec’s private law is drawn from the French civil law tradition. This federal and bijural nature of Canada’s legal system presents some challenges for trademark law. The challenges cut across a variety of lines. This book chapter explores the issues which arise from the tension between the federal and provincial levels of government and between the co-existing common and civil law traditions. Primary focus is given to the issue of the division of powers. The tension between jurisdiction over registered and unregistered marks is explored. Issues such as the constitutionality of various provisions of the Trade-marks Act, and the Trade-marks Act itself are considered, as well as the interrelationship between provincial legislation governing business names and registered trademarks. The paper also explores the harmonization of principles of “passing off” in the private law of both Quebec and the common law provinces.

Published in Refereed Book Chapters
Thursday, 25 June 2009 11:43

Extension of Intellectual Property Rights

“Extension of Intellectual Property Rights”, Chapter 1, in M. Boyer, M. Trebilcock & D. Vaver, eds., Competition Policy and Intellectual Property, Toronto: Irwin Law, 2009, pp. 17-145

This very long chapter flowed from a report prepared for the Competition Bureau as part of a series of papers exploring the intersection of IP and competition law. In recent years, concerns have been expressed that the traditional balances struck in intellectual property law have been undermined through a range of practices, rules and phenomena that contribute to an extension of intellectual property rights beyond what was originally contemplated by policy-makers. This chapter examines some of the strategies used to extend intellectual property rights under two broad categories. The first is the expansion of intellectual property rights through increasing overlap between areas of protection. The second involves the assertion of weak or uncertain intellectual property rights. In the section on overlapping protection, two issues are considered in detail: the overlap between patents and trade-marks, where trade-mark protection is sought over functional features of articles, and the overlap between copyright and trade-mark. This latter overlap is examined in the context of the use of copyright law to prevent the parallel importation of non-copyright goods, based on rights asserted in trade-mark logos or product wrapper designs. The exercise of weak or uncertain intellectual property rights is examined in the context of reverse-payment settlements in patent disputes between brand name and generic drug companies. These cases, which have proven problematic in the United States, highlight complex issues arising from a combination of factors. The paper provides a detailed exploration of the issues which arise in each example, and explores the possible impact of these practices on innovation and competition.
Published in Refereed Book Chapters

“Faster, Higher, Stronger: The Protection of Olympic and Paralympic Marks Leading up to Vancouver 2010”– edited reprint of refereed article, in Vassil Griginov, ed., The Olympics: A Critical Reader, Routledge, 2010, pp. 344-357

The original (and longer) version of this book chapter appeared in the U.B.C. Law Review in 2008 (listed under refereed publications). The chapter evaluates Canada’s Olympic and Paralympic Marks Act of 2007, with a particular focus on ambush marketing.

Published in Refereed Book Chapters
Thursday, 24 June 2010 11:38

Copyright Reform and Fact-Based Works

“Copyright Reform and Fact-Based Works”, in M. Geist, ed. From "Radical Extremism" to "Balanced Copyright": Canadian Copyright and the Digital Agenda, (Irwin Law, 2010), 571-597. PDF available here.

In recent years we have seen a dramatic growth in the number of websites, databases, tools and applications which use data from a variety of public and private sources to offer innovative information-based services to a wide range of users.  In many cases, the innovators are upstarts – individuals or small companies that see opportunities for new and useful applications. Although developers may rely upon the copyright doctrine that there is no copyright in facts when they create their tools, the state of the law in this area reveals many uncertainties. In an innovation economy, clarity around the status and use of data in new works is crucial; and the public interest is best served by facts remaining in the public domain. This chapter provides an overview of the current state of the law in relation to the protection of fact-based works in copyright law. It then considers the extent to which Bill C-32 clarifies, ignores or makes worse the state of the law in this area.

Published in Refereed Book Chapters
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Canadian Trademark Law

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Canadian Trademark Law 2d Edition

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Electronic Commerce and Internet Law in Canada, 2nd Edition

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Electronic Commerce and Internet Law in Canada

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Intellectual Property for the 21st Century

Intellectual Property Law for the 21st Century:

Interdisciplinary Approaches

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