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.
Course or Seminar Category: Intellectual Property Law
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, Clinic Associate 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 IP Innovation Program rubric, students can work in the clinic for the academic year for course credit, under the supervision of the clinic director, lawyers, and the clinic coordinators. Enrolled students can continue their clinic work for the summer term on a volunteer basis.
Enrolled students spend approximately 6 hours/week throughout the year on client file-related work and clinical projects. The clinical work includes managing at least 2 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 preparing and filing provisional patent applications, drafting memos, and conducting legal research. In addition to client file-related work, enrolled students also work on clinical projects, such as providing IP awareness and education to the clinic clients and the community, including presentations and/or workshops about the basics of IP law, commercialization, licensing, IP strategy, etc.
In addition to working approximately 78 hours per semester on client file-related work and clinic projects, enrolled students attend pre-scheduled, mandatory 2-hour monthly seminars with the clinic director (and clinic coordinators and sometimes guests and/or participating supervising lawyers) and attend other informal meetings as necessary. The purpose of the seminars is to deepen the students’ understanding of IP in a practical context, the role of IP in commercialization, and IP skills and strategies. Students can also rotate on presenting and discussing assigned reading materials on select topics to enhance their collective learning and reflect on their clinical work in a wider community legal IP context.
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.
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: 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 litigating intellectual property (e.g. copyrights, patents, industrial designs, and trademarks). While the litigation experience is applicable to all Canadian jurisdictions, the focus of this Court is on the Federal Courts, where most such cases are litigated. Evidence (e.g. fact evidence and expert evidence), motions (e.g. pleadings motions and motions for bifurcation), and remedies (e.g. damages, accounting of profits, and injunctive relief), are considered. 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.
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.
International Aspects of Intellectual Property
The course examines the structure and processes of international protection of intellectual property rights. The course also examines that legal and policy issues surrounding the protection and use of creative and commercial intangibles in an international and globalized environment. The emphasis is upon exploring fundamental principles underlying international intellectual property systems and examining current controversies. The focus of the course will shift in alternate years between patents and biotechnology issues (including discussion of traditional knowledge and genetic resources) and copyright and trademark issues (including discussion of indigenous art and culture). The focus in Winter 2025 is on patents, trademarks, biotechnologies and copyright.
The objectives of the course are: to provide students with an understanding of the international framework for intellectual property protection; to provide a critical exploration of its practical and political implications; and to encourage students to consider the nature and role of intellectual property rights in light of this international dimension.
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.
Copyright
Covering a broad domain of creative works, this copyright law course deals with the theoretical justifications for the protection of the creative works such as literary, artistic, musical and dramatic works, the criteria for their legal protection, the exclusive economic and moral rights attached to the creative works, authorship/ownership of the works, exploitation of the exclusive rights, enforcement of the rights, and limitations/exceptions to the rights under the Canadian copyright regime. In particular, the subject matters protected under the copyright law such as literary, artistic, dramatic and musical works are central to the knowledge produced and consumed for the purposes of education, creative innovation, entertainment and several other activities. Given their importance for utilization and dissemination of the creative works in the creative and entertainment industries, the course will also deal with neighbouring rights: the rights of performers, makers of sound recordings and broadcasters.
Granting authors/owners of the creative works a set of time-bound exclusive statutory rights, the copyright law regime seeks to reward the authors for the their creative efforts and promote public interests through the creation and dissemination of the works to the public at large. In this expanding digital era, the rapid developments of digital technologies including generative artificial intelligence implicate complex, critical and controversial legal and policy questions on the roles of copyright law, theoretical foundations, roles and effective protection of copyright.
Keeping in view the ongoing technological developments such as AI-related works and their implications, the course will thus explore the theoretical frameworks of copyright, its subject matter, criteria for protection, authorship/ownership, exclusive rights, limitations/exceptions, exploitation of the rights (assignment/licenses), and enforcement (infringement and defences) of copyright under Canadian legal regime from national and international perspectives. In so doing, the course will take both national and international perspectives to examine the fundamental public and private interests that underpin the existing copyright system while emphasizing the need to strike an appropriate balance between the interests. Exploring the Copyright Act, cases and relevant international copyright treaties, the course aims to acquaint students with the substantive copyright law, its policy objectives and theoretical justifications, basic principles and doctrines applicable for copyright protection as well as critical and controversial issues related to the justifications, roles and enforcement of copyright law.