At its heart, IP law contains a significant concession. In exchange for the effort of creation and innovation, creators of the IP are entitled to a grant of a monopoly over the creation. This means that the owner has the exclusive right to use the IP in certain ways, and can prevent others from using it without permission. For example, if a company has protection over a particular pharmaceutical drug it created, it has the right to prevent others from making, using, selling, or importing that drug without its permission.

The purpose of granting monopoly rights is to encourage innovation and creativity by providing creators and inventors with an incentive to create new works and ideas. By protecting their creations, IP law allows creators to recoup the costs of their research and development and to earn a profit from their creations. This can lead to tensions between the public, who may demand immediate access to the creation, and the creator, who will wish to exploit the creation for as long as possible.

One way of navigating this delicate tension is that the monopoly rights granted by IP law are not absolute and are subject to certain time limitations and exceptions.

• Trademarks – Trademarks protect distinctive marks, such as logos or symbols, that are used to identify and distinguish goods or services in the marketplace. Trademark owners are granted the exclusive right to use and protect their marks (for 10 years subject to indefinite renewal), preventing others from using identical or similar marks in a way that may cause confusion among consumers.

• Musical Works – section 2 of the Act defines “musical work” as any work of music, regardless of the quality or purpose of the work. Includes any musical compositions, whether they have accompanying words or not. It encompasses melodies, harmonies, and rhythms.

Another requirement for copyrightability is fixation. Fixation refers to the process of embodying or recording a work in a tangible form that can be perceived, reproduced, or communicated.

In practical terms, fixation means that an idea or concept alone is not eligible for copyright protection. It is only when the work expressing the idea is fixed in a tangible form that copyright protection comes into play. For example, a song can be copyrighted once it is recorded or written down, a book is protected once it is written or saved as a file, or a film is eligible for copyright when it is captured and saved on a medium.

Fixation serves several purposes most notably, it allows for the identification of the specific work and provides evidence of the authorship of the work.

Once an author has a copyrightable work, how long does their protection last? The copyright duration is established in section 6 of the Copyright Act which states:

Except as otherwise expressly provided by this Act, the term for which copyright subsists is the life of the author, the remainder of the calendar year in which the author dies, and a period of 70 years following the end of that calendar year.

For anonymous works or works published under a pseudonym, the copyright duration is 75 years following the end of the calendar year in which the work is made. In the case of joint authorship, copyright lasts for the life of the last surviving author, plus an additional 70 years after their death.

The Public Domain

What happens when the duration for protection expires? As mentioned in the example above, there is something called the “public domain”. The public domain refers to a body of works that are no longer protected by copyright or intellectual property laws, or works that were never subject to copyright protection in the first place. These works are freely available for the public to use, copy, adapt, and distribute without obtaining permission or paying royalties to the original creators.

Some very famous works have found their way into the public domain:

• “Anne of Green Gables” by Lucy Maud Montgomery – Lucy Maud Montgomery passed away in 1942 and, as a result, “Anne of Green Gables” is now in the public domain, and anyone can freely reproduce, adapt, or perform the story without seeking permission.

Economic Rights Under the Copyright Act

… copyright, in relation to a work, means the sole right to produce or reproduce the work or any substantial part thereof in any material form whatever, to perform the work or any substantial part thereof in public or, if the work is unpublished, to publish the work or any substantial part thereof, and includes the sole right

Part of the economic exploitation of a work may result in licensing and the receipt of royalties. Licensing refers to the process of granting permission to someone else to use a copyrighted work, while royalties are the payments made to the copyright owner in exchange for that permission.

Licensing agreements are contractual arrangements between the copyright owner (licensor) and the person or entity seeking to use the copyrighted work (licensee). The terms of the agreement outline the scope of the licensed rights, the duration of the license, any restrictions or conditions, and the financial arrangements, including royalties.

Royalties are the financial compensation paid to the copyright owner or rights holder for the authorized use of their copyrighted work. It is a form of payment to ensure that the creator receives fair compensation for the use of their intellectual property. The amount and structure of royalties can vary depending on certain factors, including the nature of the work, the scope of the license, the commercial value of the work, and the bargaining power of the parties involved. Royalties can be paid as a percentage of revenue generated from the use of the work (i.e., sales, ticket sales, broadcasting fees) or as a flat fee.

To facilitate the royalty collection process, there are numerous collecting societies, also known as copyright collectives or collective management organizations. Collecting societies can negotiate licenses with users of copyrighted materials, collect royalties from licensees, and distribute those royalties to the copyright owners. They often operate under tariffs, which are standard rates established for different uses of copyrighted works — this provides a transparent framework for licensing and royalty collection.

These collecting societies, such as the Society of Composers, Authors, and Music Publishers of Canada (SOCAN), help streamline the licensing process.

• Right to Association – the author has the right, under reasonable circumstances, to be associated with their work as its author. They can choose to be identified by their real name or by a pseudonym. Additionally, authors have the right to remain anonymous if they prefer not to disclose their identity publicly.

The bundle of moral rights codified in section 14.1 persist even after a transfer or assignment of economic rights; this means that authors can still enforce their moral rights even if they have sold or licensed their work. In effect, moral rights cannot be assigned however, those rights can be waived by an author. Assuming a waiver of moral rights is effective, it would diminish the author’s claim that their moral rights have been violated.

The Copyright Act provides remedies for the infringement of moral rights, including injunctions, damages, and orders for the correction of the work or the attribution of authorship. One of the more famous cases of moral rights is Théberge v. Galerie d’Art du Petit Champlain Inc., 2002 SCC 34.

We began this chapter by noting, intellectual property attempts to balance the dual interests of the general public and creators. With copyright, it is important to recognize the time, effort, and skill that creators invest in their works and provide them sufficient legal protection. However, the law also recognizes that there should be exceptions to those protections to ensure that copyright does not unduly restrict access to knowledge, creativity, education, research, and other important societal interests.

One the main exceptions to the copyright monopoly is the defence of fair dealing. Fair dealing allows individuals to use copyrighted material without permission from the copyright owner or payment of royalties under certain circumstances. Section 29 of the Copyright Act states:

Fair dealing for the purpose of research, private study, education, parody or satire does not infringe copyright.

The precise limits of those categories for fair dealing are not explicitly defined in the Copyright Act but have been explored through judicial interpretation:

• Criticism and review – fair dealing allows the use of copyrighted material for the purpose of criticism, review, or commentary. This category enables individuals to engage in discussions and express opinions about creative works without infringing copyright.

Each of these categories of use reflect instances where expanded public access may be more “fair” and thus, authors are required to ease up on their monopoly rights over the works.

When precisely will the use of a work be fair? Would the use of an entire textbook for a post-secondary law course be fair? What about playing a short copyrighted video clip? To better assess the limits of fair dealing, the landmark case of CCH Canadian Ltd. v. Law Society of Upper Canada (referred to earlier in this chapter), crafted a series of six factors used in assessing whether fair dealing applies.

The following are the factors used to determine if fair dealing applies:

• Purpose of the Dealing – the court emphasized that the purpose of the dealing should be considered including, whether the dealing is for commercial, research or educational purposes. In CCH, the Law Society’s photocopying was for research and private study purposes, which were deemed to be legitimate purposes under fair dealing.

Copyright protects more comprehensive works like songs, painting, and novels however, what about shorter phrases or slogans? For these types of creations, a new world of intellectual property applies known as trademarks law.

Trademarks are distinctive signs, symbols, or logos used to identify and distinguish goods or services of one company from those of others. They serve as a means of brand identification and protection in the marketplace. Trademarks can include words, names, slogans, logos, colours, sounds, or even product packaging. You will be familiar with many famous trademarks such as:

• granting the owner exclusive rights to use the mark in connection with the specified goods or services;
• providing legal remedies against unauthorized use, including the ability to take legal action against infringement, counterfeit products, or misleading use of similar marks; and
• building and protecting a company’s reputation and goodwill by ensuring quality and consistency associated with the brand.

Many of these benefits are best enforced by registration under the main trademarks statute in Canada, the Trademarks Act, R.S.C., 1985, c. T-13. Once again, this statute is federal legislation because of the constitutional division of powers allocating intellectual property to the federal level of government. Because it is a federal statute, the Trademarks Act applies uniformly throughout all provinces and territories in Canada.

The Trademarks Act establishes a comprehensive framework for the registration and protection of trademarks in Canada. It sets out the criteria for registration of trademarks, the rights and obligations of trademark owners, and the remedies available for infringement or misuse of trademarks. The actual administration of the Trademarks Act and its implementation are carried out by CIPO.

Registered versus Unregistered Marks

Another similarity between copyright protection and trademark protection is that both do not explicitly have to be registered. However, registration of a trademark under the Trademarks Act gives the mark a much greater range of protections and easier enforcement mechanisms versus unregistered marks.

The following are some of the benefits for registering a trademark:

• Presumption of  Ownership – registering grants the owner the legal presumption of ownership and the exclusive right to use the mark. This protection allows the owner to prevent others from using a similar or identical mark in connection with similar goods or services.
• National Protection – a registered trademark provides protection throughout Canada. It helps to establish a stronger legal foundation for defending the mark against potential infringers.
• ® – After registration, the trademark holder can denote it with an “R” enclosed in a circle (®) – indicating the mark is registered and protected.

On the other hand, an unregistered trademark, also known as a common-law trademark, is a mark that has not been formally registered with CIPO but is still used in business. Unregistered trademarks can still receive some level of protection based on common law principles, but they also suffer some serious draw-marks:

Not all trademarks seek to protect the same types of things. Generally, trademarks are categorized into several types, including: ordinary marks and certification marks.

Ordinary marks are the most common type of trademarks and are used to distinguish the goods or services of one entity from those of others. Ordinary marks can be in the form of words, designs, symbols, or a combination thereof. For example, “Tim Hortons” may have an ordinary marks over its name and any slogans, or the stylized word and design combination of the “Roots” logo would be an ordinary mark.

Certification marks are marks used to certify the origin, material, quality, or other characteristics of particular goods or services. Certification marks are owned by an organization that sets specific standards and authorizes others to use the mark if they meet those standards. Very commonly, we see products that have a “Canadian Standards Association” (CSA) mark; this mark certifies that products meet specific safety standards. Another common example of a certification mark is the “Fairtrade Canada” mark which certifies that products meet fair trade standards.

• Descriptive Terms – Descriptive terms directly describe a characteristic or quality of a product or service. They are generally not distinctive enough to be registered as trademarks unless they have acquired distinctiveness through extensive use and recognition. For example, the term “crispy” for potato chips may not be granted trademark protection.

The latter category of “prohibited”” marks largely speaks to section 9(1) of the Trademarks Act which expressly prohibits certain marks from registration. Section 9(1) aims to maintain the integrity of the trademark registration system by preventing the registration of marks that could be considered offensive, misleading, or inappropriate in relation to certain specified categories. While the statutory section is lengthy, there are a few categories of marks which are prohibited.

Firstly, section 9(1) explicitly prohibits the registration of trademarks that includes national flags, armorial bearings (such as coats of arms), official emblems, and any name or portrait of a member of the Royal Family. These restrictions are in place to prevent the misuse or misrepresentation of national symbols or the likenesses of members of the Royal Family for commercial purposes.

Secondly, there is also a prohibition on the registration of trademarks that are considered scandalous, obscene, or immortal. The determination of what constitutes scandalous, obscene, immoral, can be subjective and dependent on the view of societal norms by CIPO. Generally, trademarks that are offensive, vulgar, or contrary to accepted morality are likely to be considered scandalous or obscene and therefore not eligible for registration.

The issues relating to obscenity are challenging for CIPO to navigate and have resulted in inconsistent determinations on what will be rejected for registration. An example of this inconsistency was in CIPO’s rejection of the “Lucky Bastard” mark for “Distilled spirits, alcoholic beverages.” While “Lucky Bastard” was deemed to be “scandalous, obscene, or immoral,” there had been previous registrations granted for trademarks that incorporated the term “bastard,” such as the mark “FAT BASTARD” for wine.

While certain types of trademarks may not be eligible for registration, they can still be used as unregistered trademarks if they meet the requirements under common law (to be discussed later).

How long does an individual or company obtain protection over their marks? This important question is answered by section 46 of the Trademarks Act:

Subject to any other provision of this Act, the registration of a trademark is on the register for an initial period of 10 years beginning on the day of the registration and for subsequent renewal periods of 10 years if, for each renewal, the prescribed renewal fee is paid within the prescribed period.

Accordingly, trademark protection lasts for an initial period of 10 years from the date of registration. During this time, mark holder can enforce the protection of their mark by preventing registration of confusingly similar marks or pursuing enforcement actions against those who are using their marks in an unauthorized way.

Interestingly, trademarks are the only form of intellectual property which can be renewed. When the initial 10-year period of protection nears expiry, trademark holders have the opportunity to renew their trademark registration again, giving them yet another 10-year window of protection. This renewal process can be indefinite allowing mark holders to, in effect, have protection for their branding marks in perpetuity. The major restriction though, is that the mark holder needs to ensure they renew before the expiry date otherwise, they may no longer have statutory protection over the mark.

Trademarks and the Public Domain

Many of these exclusions results from tensions with public policy. While we wish to support invention and grant monopolies to inventors, those monopolies should not take away public access to important general scientific, medical, or business knowledge. Also, there remains societal and public policy concern with granting a monopoly over inventions that facilitate illegal acts.

A significant area of legal and societal debate over the past few decades has been over the patentability of higher lifeforms. One of the most substantial legal cases in this debate was Harvard College v. Canada (Commissioner of Patents), 2002 SCC 76, a decision from the Supreme Court of Canada.

Foundational Law — Harvard College v. Canada (Commissioner of Patents), 2002 SCC 76

The “Harvard Mouse” case involved a patent application filed by Harvard College for a genetically modified mouse, commonly known as the “oncomouse.” The ultimate question before the court was whether the oncomouse met the criteria for patentability under the Patent Act. Harvard argued that the oncomouse, which was a genetically modified life form, was patentable subject matter under the Patent Act.

In its decision, the Supreme Court of Canada determined that the oncomouse did not meet the criteria to be considered an “invention” under the Patent Act. The SCC, though split 5-4, concluded that Parliament did not intend to allow the patenting of higher life forms, as they did not fit into any of the specified categories of “art, process, machine, manufacture, or composition of matter”. Without a clear Parliamentary statement including higher life forms from patentability, the SCC found that the oncomouse, as a higher life-form, was not patentable. More precisely, the court noted:

… only Parliament is in the position to respond to the concerns associated with the patenting of all higher life forms, should it wish to do so, by creating a complex legislative scheme as in the case of crossbred plants or by amending the Patent Act. Conversely, it is beyond the competence of this Court to address in a comprehensive fashion the issues associated with the patentability of higher life forms.

Accordingly, higher lifeforms remain unpatentable in Canada.

Duration of Patent Protection

Once the patent protection period has expired, the patent falls into the public domain. At this point, the exclusive rights granted to the patent holder expire as well, allowing others to freely use, manufacture, sell, or improve upon the invention without obtaining permission or paying license fees.

The loss of patent protection for a company can have significant implications. Once the patented product enters the public domain, competition increases, leading to a decrease in prices as multiple companies offer generic versions. However, as a trade-off, this increased accessibility and affordability can benefit consumers who can now access the product (or similar products) at lower costs.

One of the main industries where generics (derived from lapsed patents) truly benefit the public, is in pharmaceutical drugs. When a pharmaceutical company’s drug loses patent protection, it enters the public domain, allowing other companies to produce and sell generic versions of the drug; this results in wider accessibility for the medication. The original patent holder will certainly experience a decline in market share but is free to seek new patents by developing improvements to the old pharmaceutical.

One notable example of this lapse of patent protection was in the drug molecule known as raloxifene. Raloxifene is used in the treatment of osteoporosis (the development of brittle or fragile bones) and prevention of breast cancer in postmenopausal women.

Eli Lilly, a pharmaceutical company, obtained a Canadian patent for raloxifene under the brand name Evista. The patent was granted in 1993 and expired in 2010, after 17 years of exclusivity. Once the patent expired, other pharmaceutical companies were able to produce and sell generic versions of raloxifene in Canada without needing permission from Eli Lilly. When raloxifene entered the public domain, it became more accessible to patients as generic versions were introduced at lower prices.

Patent Infringement under the Patent Act

According to the Patent Act, a patent owner has the exclusive right to make, construct, use, and sell the patented invention within Canada during the term of the patent. Based on this understanding, a person would be committing patent infringement if they were found:

• Use of Patent – making, constructing, using, or selling a patented invention without the consent of the patent owner.
• Importing Patent – importing or causing to be imported a patented invention for the purpose of selling, using, or constructing it within Canada, without the consent of the patent owner.
• Offering to Sell – offering to sell or rent, or using for the purpose of trade, a patented invention without the consent of the patent owner.
• Inducing Infringement – inducing or procuring another person to commit any of the above-mentioned acts without the consent of the patent owner.

Industrial Designs

One last form of intellectual property worthy of discussion, is industrial designs. Industrial designs protect the visual features of a product, including its shape, configuration, pattern, or ornamentation. As has been the case throughout, industrial designs, as intellectual property, are federally-regulated. In the case of industrial designs, they are governed by the Federal Industrial Design Act, R.S.C., 1985, c. I-9.

Industrial designs are aimed at protecting the aesthetic appeal and commercial value of a product, rather than its functional aspects. The owner of an industrial design enjoys exclusive rights to prevent others from making, selling, or importing articles that embody the claimed description of the registered design. If others copy or significantly imitate the design, the industrial design registration can be enforced.

For example, imagine a designer creates a unique and aesthetically appealing chair design with distinctive patterns. The designer can apply for an industrial design registration to protect the visual features of the chair.