Teresa Scassa - Blog

“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.

“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.

“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

“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.

“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.

Electronic Commerce and Internet Law in Canada, CCH Canadian Ltd., 2004 (with Michael Deturbide).

This book is the first (and only) Canadian treatise on e-commerce and internet law. It covers a range of topics which include electronic contracts, online consumer protection, data protection and privacy, internet domain names and trademark law, copyright law and the internet, software and e-business patents, the regulation of online speech, and jurisdiction and the internet. Since it was published in 2004, much has changed in this area of law. We are currently working on a second edition of the book, which we hope will be published in 2012.

 Canadian Trademark Law, LexisNexis (Butterworths) Canada, Inc., 2010.

This book is a treatise on Canadian trademark law. While a primary focus of the book is necessarily the Trade-marks Act, a number of other statutes are considered, as well as the extensive body of common law relating to trademarks. The book aims to provide a solid grounding in the basic principles of trademark law, while at the same time exploring some of the contemporary challenges in this area of law. These challenges are brought about by the international movement towards harmonization of norms and procedures, as well as phenomena such as the internet and electronic commerce, the growing problem of counterfeiting, and the use of trademarks in critical and parodic expression.