Teresa Scassa - Blog

“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.

“Information Privacy in Public Space:  Location Data, Data Protection and the Reasonable Expectation of Privacy”, (2009) 7:2 Canadian Journal of Law and Technology 193-220. PDF available here.

The sheer volume of location data that is now being collected by private sector companies in relation to a wide range of products and services poses serious challenges for privacy and data protection law.  This paper considers a central challenge to privacy posed by the collection and compilation of location data  -- the accessibility of this data to law enforcement agents through exceptions to the general principles of consent for disclosure that exist under private sector data protection legislation in Canada.  Recent court interpretations of these exceptions – primarily in the internet context – paint a muddled picture of their relationship to the right to be free from unreasonable search and seizure under the Canadian Charter of Rights and Freedoms.  This paper considers whether the permissive disclosure provisions of the Personal Information Protection and Electronic Documents Act (PIPEDA) and its substantially similar counterparts mean that law enforcement agents have ready access to information about our movements and activities, or whether s. 8 of the Charter plays a role in limiting the circumstances in which disclosure without notice or consent may take place.

“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.

“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.

“The Inadvertent Disclosure of Personal Health Information through Peer-to-peer File Sharing Programs”, in JAMIA 2010 17: 148-158 ( Journal of the American Medical Informatics Association) (with K. El Emam, E. Neri, E. Jonker, M. Sokolova, L. Peyton, & A. Neisa)

There has been a consistent concern about the inadvertent disclosure of personal information on peer-to-peer file sharing networks. Examples of personal health and financial information being exposed have been published. This paper estimates the extent to which personal health information (PHI) is leaking in this way, and compare that to the extent of leakage of personal financial information (PFI). The paper concludes that there is a real risk of PHI leakage on peer-to-peer file sharing networks, although the risk is not as large as for PFI. Custodians of PHI should not install file sharing applications on their computers, and individuals need to be educated about the proper use of file sharing tools to avoid inadvertent disclosure of their, their family’s, their clients’, or patients’ PHI.