Legal Values: Commercializing IP

Legal issues are crucial to the commercialization of new technologies.  This course will focus on issues related to the creation, development, protection and exploitation of intellectual property rights as a business asset for both high-growth start-ups and established businesses.  We will examine the entire process of creating, capturing, protecting, leveraging and transferring technology and ideas, including internal strategies designed to create a culture of innovation; deciding whether, what, where, and how to obtain IP registrations and the related economics; the development of a commercialization strategy (such as selecting the target market and application for the idea) and business model; drafting and negotiation of related agreements; offensive and defensive IP strategies; assessing competitive IP; negotiating and interpreting IP sensitive contracts ; transactional IP processes, with discussion on emerging markets; and key technology specific legal issues relating to software, digital communications and data processing, mobile devices and social media, financial services and life sciences. The course will also address the financing options available to the high-growth start-up, including crowd-sourcing and other modern financing techniques, as well as a general overview of pertinent tax ad structural topics. Media coverage of current developments and case studies will be introduced to enrich class discussions.  Guest speakers will include leading experts in the field. While students with some background in substantive areas are welcome, no prior experience in these areas is required. Of course it goes without saying that a keen enthusiasm to learn about IP issues and participation in the course are encouraged by the instructors. All IP Osgoode Innovation Clinic students are required to enrol in this course.

Legal Values: Copyright Policy in the Making

The development of digital and network technologies has posed both opportunities and challenges for creators, publishers, and users of intellectual works. For the most part, copyright law has evolved to address these challenges by extending to embrace new media. But
how well do traditional copyright principles and doctrine, developed in the heyday of the printing press, apply in the digital era when works can be created, shared, and transformed more easily than ever before? What considerations should be brought to bear by policymakers as they respond to urgent calls for copyright to “catch up.”

The objective of this seminar is to examine some of the key copyright policy questions currently before Canada’s Federal Government Departments of Innovation, Science and Economic Development (ISED) and Canadian Heritage. The seminar exposes students to the complicated process of crafting public policy and proposing law reform, and is uniquely designed to build on (and perhaps even feed into) ongoing public consultations on amendments to Canada’s Copyright Act. Students will tackle issues such as Technological Neutrality and the Copyright Balance; Authorship and Artificial Intelligence; Reproduction for Informational Analysis (Text & Data Mining); Digital Locks and the Right of Repair; Intermediary Liability and Website-blocking; the Regulation of Digital News Intermediaries; Non-Fungible-Tokens and Digital Art; User-Generated Content and Fair Dealing; Controlled Digital Lending and e-Books; Crown Copyright; and Copyright Term Extension. We will critically examine recent policy reports, bills,
statutory amendments, treaties, and case law, as well as emerging industry and consumer practices, stakeholder demands, and the political dynamics of the copyright lawmaking scene. Copyright policy implicates, in addition to the letter and spirit of Canada’s Copyright Act, issues of constitutional law and fundamental rights, international and comparative law, and socio-legal theory.

Entertainment & Sports Law

This seminar course comprises two components:
1. Entertainment Law
The entertainment law portion of the seminar will focus on matters of essential concern to persons in the entertainment industry and their legal advisors. Upstream, we will examine chain-of-title to underlying rights, acquisition of primary, format and subsidiary rights, and perfecting rights from technical and creative personnel, including copyright and other legal considerations. A discussion of personal service contracts will include an examination of the basic terms and types of agreements between service providers and their engagers. Downstream, we will examine distribution and other exploitation of entertainment properties, and the use of incentives as an instrument of government policy in the development of both an indigenous and non-indigenous entertainment sector in Canada.   We will also review business modelling, financing and related legal considerations in film and television, music recordation and publishing, the literary arts, and in theatre and live performance, including tax implications, international treaties, government regulation and the sources and vehicles of financing.

2. Sports Law
In the sports law portion of the seminar, we will examine the legal relationship between the athlete and his or her engager, including the concept of the standard player contract and individual and collective bargaining/negotiation versus traditional legal concepts of conduct that is otherwise anti-competitive or in restraint of trade.  We will also consider the phenomenon of the “problem athlete”, including the imposition of discipline both at the team employer and league level, and related judicial review.  Lastly, we will examine interference with contractual and economic relationships between athlete and engager, including the concepts of inducing breach of contract and tampering in the sports context.

Directed Reading: IP Innovation Clinic

The IP Innovation Program was established in 2019, to support the work of the IP Innovation Clinic, founded in 2010 by Prof Pina D’Agostino. The IP Innovation Clinic is a year-round, needs-based innovation-to-society intellectual property (IP) legal clinic operated in collaboration with Innovation York and supervising law firms Norton Rose Fulbright Canada LLP, Bereskin & Parr LLP and Own Innovation.  Under the guidance and mentorship of the Clinic Director and supervising lawyers, law students provide one-to-one legal information services (not legal advice) to inventors, entrepreneurs, and start-up companies to assist with the commercialization processes. Through this hands-on practical experience, law students learn about common early-stage IP and business issues facing actors in the innovation ecosystem.

Under the rubric of the IP Innovation Clinic, approximately 15 upper year law students called “senior clinic fellows” (2L and 3L students) will work in the clinic for the academic year, under the supervision of the Clinic Director, lawyers, and the Clinic Supervisor.  Senior clinic fellows spend approximately 6 hours/week throughout the year on client file-related work and clinical projects.  The clinical work includes managing at least two client files, conducting intake meetings, performing prior art searches, reviewing patent specifications, performing freedom-to-operate and clearance searches, reviewing IP licensing transactions, assisting with the preparation and filing of provisional patent applications, drafting memos and conducting legal research. In addition to client file-related work, senior clinic fellows will also work on clinical projects, such as providing IP awareness and education to the clinic clients and the community.  IP awareness and education activities include presentations and/or workshops about the basics of IP law, commercialization, licensing, IP strategy, etc.

In addition to the approximately 78 hours per semester on client file-related work and clinic projects, Senior clinic fellows will attend pre-scheduled, mandatory 2-hour monthly seminars with the Clinic Director (and Clinic Supervisor and sometimes guests and/or participating supervising lawyers) and attend other informal meetings as necessary. The purpose of the seminars will be to deepen the students’ understanding of IP in a practical context, the role of IP in commercialization and IP skills and strategies. Students will also have an opportunity to rotate on presenting and discussing assigned reading materials on select topics to enhance their collective learning and reflection of their clinical work, and wider community legal IP context. Presentations and seminars may take place online via Zoom or other similar platform with mandatory audio and video participation for Senior clinic fellows.

Senior clinic fellows will keep a weekly reflective journal and submit it for review by the Program Director at the end of the term.

Legal Values: Commercializing IP

Navigating legal issues is crucial to the commercialization of new technologies. This course will examine the application of substantive intellectual property (IP) law in the context of IP management for in-house lawyers or IP managers within IP-rich organizations. Through case studies and facilitated discussion, students will apply principles central to IP management, including creation, development, protection, and exploitation of intellectual property rights as a business asset. Guest speakers will supplement the course’s examination of key technology specific issues relating to high technology and sciences.

In particular, this course will examine the process of creating, capturing, protecting, leveraging and transferring technology and ideas, including internal strategies designed to create a culture of innovation; deciding whether, what, where, and how to obtain IP registrations and the related economics; the development of a commercialization strategy (such as selecting the target market and application for the idea) and business model; drafting and negotiating related agreements; offensive and defensive IP strategies; assessing competitive IP; negotiating and interpreting IP sensitive contracts; and transactional IP processes.

While students with background in substantive areas are welcome, no prior experience is required. A keen enthusiasm to learn about IP as an asset and participation in the course is encouraged by the instructors.

Legal Values: Litigating IP Cases

The seminar surveys the process of intellectual property litigation in Canada and gives students an opportunity to acquire and apply practical skills and judgment in enforcing and maximizing the value of copyright, patent, design, and trademark rights. The focus is the Federal Court, where most such cases are litigated. Expert evidence, bifurcation, and remedies in light of the Federal Court Rules are considered in light of their purpose, policy, and practice.

Students will be exposed to all stages of a case from the perspective of the party suing and the party being sued: advising the client, preparing pleadings, briefing witnesses, discovery, drafting written arguments, and judgment writing. The seminar culminates in preparing for and participating in a moot.

Trademarks

This course explores the legal protection of ‘trade identity’ arising from the words, symbols and sounds associated with the source of goods and services.  Students will learn about the importance of trademarks and brands in today’s consumer culture and marketing practices, the link between brands and economic value, and the means for protecting their value.   The federal Trademarks Act is central to the course content.

Topics:  Course topics include the special nature of “intellectual property” compared to other types of protectable property; evidence of “distinctiveness” to establish a trademark, the common law action for “passing off”; the criteria for trademark registration; the statutory and evidentiary basis for opposing an application or expunging a registration; the definitions and evidence for trademark use, infringement and genericide; and the grounds and evidence for succeeding in trademark litigation.  As well as familiarizing students with the substantive law, the course will examine the tensions for policy-makers, with respect to the various interests at stake—from the entrepreneur’s interest in preventing ‘free-riding’, to the competitor’s interest in unrestrained competition, to the societal interest in avoiding consumer confusion, and finally to the national interest in international harmonization of trademark rights.

Objectives: By the end of the course, students will
– Understand the evolution of Trademark law, and the sometimes-controversial justifications for the protection of trademarks
– be familiar with the fundamentals of modern trademark law, including the main provisions of the Canadian Trademarks Act, the common law tort of passing off, and the enduring case precedents.  – Address problems arising in Canadian trademark law relating to ownership, validity, rights, and  infringement—from both sides of prospective disputes.
-Appreciate judicial efforts to interpret and apply the law, and be able to comment critically on case law and evidentiary disputes.

Copyright

This course is a study of the limited statutory monopoly granted to the authors of musical, literary, dramatic and artistic works under the Canadian copyright regime. From art and entertainment to education and information, copyright law affects almost every aspect of our lives. With the shift towards an information economy and the rapid development of digital technologies, copyright is one of the most dynamic, critical and controversial areas of Canadian law and policy. The course will examine the requirements for copyright protection, the kinds of works that qualify for protection, and the scope of the rights granted to the copyright owner. Among the subjects to be explored are: the nature and scope of the owner’s ‘right’ in her work; the meaning of authorship and originality; the transfer and licensing of copyright interests; the dichotomy between protected expression and unprotected ideas; the role of the public interest and the public domain; and the freedom of users to deal with copyrighted works. Through analysis of the Copyright Act and common law jurisprudence, the course offers a comprehensive introduction to copyright law while critically assessing the copyright system in terms of its justifications and its public policy objectives. By the end of the course, students will be familiar with the fundamentals of copyright doctrine, as well as with the theoretical and policy controversies that surround copyright in the modern age.

Emerging Technologies: Law, Policy and Governance

Established technologies like the internet and social and emerging ones like artificial intelligence, machine learning, and robotics, are transforming how we live, work, and interact. These changes raise a host of complex law, policy, ethical, and governance challenges in a range of domestic and global contexts, including internet censorship, the role and regulation of social media platforms, disinformation and online abuse, legal automation, algorithmic discrimination, privacy, surveillance, fintech, and cyber-warfare. Among the kinds of questions pursued in this course: Who is responsible when technology causes harms? Do we have to forego privacy for either technological innovation or security? How best to regulate social media, if at all? What can we do to prevent algorithmic discrimination and other forms of technology-enabled human rights abuse? What is “ethical” AI and how can we incentivize it?

These issues and other significant challenges and controversies in the law, policy, and governance of emerging technologies will be contextualized and brought to life via case-studies and real world scenarios involving issues that are often currently in the news and unfolding in real time outside the classroom in government, industry, and civil society. The course aims to introduce and provide a foundation in law and technology issues — to identify them, understand and think critically about them, and manage them in practice.  

Patents

This course deals with the law of patents in Canada. Patent law is one of the main headings of intellectual property law (along with copyrights and trademarks); trade secrets arise from a combination of contracts, equity and property law. The regime of patents protects inventions by granting inventors a limited monopoly of twenty years in exchange for disclosing the invention to society. The essential justification of the patent system is that it enables and rewards innovation. Arguments may also be made that patents afford a secure means by which inventions may be put to commercial use by investors. The course will examine the statutory basis of patent law in Canada, the judicial construction and interpretation of both primary and subsidiary regulations of Canadian patent law. The course will also locate developments in Canadian patent law in the context of international and regional transformations in the field. In this context, the course will explore contemporary controversies over the expansion of patent rights in biotechnology (from patenting mousetraps to patenting mice), and the shift from copyright protection to patent protection for computer programs. It is expected that at the end course, students would have a solid understanding of Canadian patent law as well as how international developments shape and influence Canadian patent law.