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Displaying items by tag: IP

“Nickled and Dimed:  The Dispute over Intellectual Property Rights in the Bluenose II”, (2004) 27 Dalhousie Law Journal 293-320

The Bluenose Schooner forms part of the folk history of Nova Scotia, and is a Canadian icon.  Popular assumptions that its name and image formed part of the public domain were put to the test in 2003 when the Bluenose II Preservation Trust Society brought suit against a Halifax business for infringement of its official marks, trademarks and copyrights relating to the ship and its name.  The litigation garnered local and national media attention, and the provincial government soon became involved in the dispute. In this article, I provide some background to the dispute before moving on to consider the merits of the trademark and copyright claims.  Because the infringement suit was eventually dropped as part of an agreement between the Trust and the Province of Nova Scotia, the legal issues raised by this case remain unresolved.  I argue hat the intellectual property claims of the Trust were largely without merit. I criticize the official marks regime under the Trade-marks Act, and discuss the boundaries between intellectual property and the public domain.

Published in Refereed Articles

“Users’ Rights in the Balance:  Recent Developments in Copyright Law at the Supreme Court of Canada”, (2005) 22 Canadian Intellectual Property Review 133-146

A series of recent decisions on copyright law issues by the Supreme Court of Canada has touched on a wide range of key substantive issues in that area of law.  The result is, at least in theory, a re-configuration of some of the central rights and principles in copyright law.  The decisions come after a fairly lengthy period in which Supreme Court guidance on copyright issues was noticeably absent.  They also come at a time when the digital age is placing increased stresses on copyright law and its underlying principles.  In this paper I will consider four main issues addressed by the Supreme Court in the decisions in Théberge v. Galerie d’art du Petit Champlain, CCH Canadian Ltd. v. Law Society of Upper Canada, and SOCAN v. CAIP.  These are:  the purpose of copyright, the rights of owners of copyright, limits on copyrightable subject matter, and users’ rights. 

Published in Refereed Articles
Wednesday, 22 June 2005 13:52

Copyright in Collective Works

“Copyright in Collective Works”, (2005) 84 Canadian Bar Review 347-364

This paper explores the balance between the layers of copyright in collective works.  Focusing on the publication of collective works in digital formats, the author argues that care needs to be taken in determining whether such publications are reproductions of the original work, or new works.  An analysis to determine whether a collective work has been reproduced must respect the limitations of the definition of a collective work, and the balance that must be struck between the two layers of copyright in such works.

Published in Refereed Articles

“Original Facts:  Skill, Judgment and the Public Domain”, (2006) 51 McGill L.J. 253-278

It has long been said that facts cannot be protected by copyright.  However, copyright jurisprudence has been less than clear about what constitutes a fact, and about the reasons why facts cannot be copyrighted.  Although the Supreme Court of Canada, in its recent decision in CCH Canadian Ltd. v. Law Society of Upper Canada, restated the principle that facts cannot be copyrighted, the court also set a standard for originality that can easily be interpreted so as to offer copyright protection to facts.  In this paper the author explores the concept of “facts”, and the way in which Canada’s standard for originality might be used to extend copyright to facts.  She examines the policy reasons why facts should not be copyrightable, and argues for an interpretive approach that leaves facts in the public domain.

Published in Refereed Articles

“Distinguishing Functional Literary Works from Compilations: Issues in Originality and Infringement Analysis”, (2006) 19 Intellectual Property Journal 253-269

In CCH Canadian v. Law Society of Upper Canada, the Supreme Court of Canada set out the standard for originality in Canadian copyright law.  Originality was a central issue in the recent decision of the Quebec Court of Appeal in Bonnette c. Dominion Blueline Inc.  In this paper, the author examines how the Court of Appeal applied the new standard of originality.  In the course of the analysis, the author establishes the importance of properly distinguishing between functional literary works and compilations both for an analysis of originality and for the infringement analysis.

Published in Refereed Articles

“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
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Canadian Trademark Law

Published in 2015 by Lexis Nexis

Canadian Trademark Law 2d Edition

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Electronic Commerce and Internet Law in Canada, 2nd Edition

Published in 2012 by CCH Canadian Ltd.

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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