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

This seminar is the result of an innovative collaboration between the Federal Government (the Departments of Canadian Heritage and Innovation, Science and Economic Development) and several Canadian law schools (including Osgoode, University of Toronto, Ottawa, McGill, and Universite de Montreal). The seminar exposes law students to the process of crafting public policy and proposing law reform, and is uniquely designed to feed into ongoing public consultations on potential amendments to the Canada’s Copyright Act. Students from each of the participating law schools will research and prepare a policy report on one topic to be selected from several live themes identified in the Heritage and Industry parliamentary reviews and subsequent Consultation Papers. The seminar will culminate in a Grand Oral (to be held in Ottawa or online, TBD) where teams representing each of the participating law schools will present their final Memorandum to Cabinet before a panel of experts and officials (e.g., senior policy analysts, academics, various stakeholders from the industry, and decision makers). This is a unique opportunity for students to hone and showcase their research abilities, policy analysis, and oral presentation skills. Students will have access to a community of professionals and policy specialists in developing and presenting their own views and recommendations on important current issues in Canadian copyright law.

Students will convene in weekly 2-hour seminars over course of the semester. In addition to covering the fundamentals of the selected policy themes, class time will include team preparation of the investigation topic, and hands-on instruction and feedback on drafting and presenting policy briefs. Two joint sessions will be co-taught by Canadian government officials on an introduction to policy development, drafting, and briefing in the context of Canadian copyright 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 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 Program, 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.

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

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. Teaching may be by Zoom.

Trademarks

This course explores the legal protection of ‘trade identity’ afforded by the common law and intellectual property rights over signs that indicate the source of goods or services. The course offers students the opportunity to learn about the laws that protect the logos and brands that make up such an essential feature of today’s consumer culture, modern marketing practices, and the creation of commercial value. The focus is on the federal Trademarks Act and its impact on private rights to regulate trademark use and unfair competitive practices. This will include analysis of newly enacted statutory reforms. Topics to be examined include the common law action for passing off, the criteria for trademark registration, the basis for opposing an application or expunging a registration, trademark distinctiveness, use and infringement.

As well as familiarizing students with the substantive law in the area, the course seeks to assess trademark law from the point of view of its normative justifications and policy objectives. We will inquire into the basis of the rights protected and their appropriate limits, and examine the law in light of the various interests at stake, from the entrepreneur’s interest in preventing ‘free-riding’ to the competitor’s interest in free competition, and from the consumer’s interest in avoiding confusion to the public’s interest in full information and free expression.

Objectives: By the end of the course, students will be familiar with the fundamentals of Canadian trademark law, including the common law tort of passing off and the main provisions of the Trade-marks Act. Students will also be able to explain and critically assess the principles, policies and practicalities that shape this area of law.

As such, students successfully completing this course will be able to:
– Address any problem in Canadian trade-mark law relating to ownership, validity, rights, infringment and defences;
– Identify, understand and explain the key provisions of Canada’s Trade-mark Act and judicial efforts to interpret and apply them;
– Recognize the main policy issues that underlie and animate trade-mark law and, in light of those issues, comment critically on case law and legislation;
– Understand and evaluate various justifications for the protection of trade-marks and other distinctive indicia, and recognize and describe the connection between these justifications and the evolution of the law.

Entertainment & Sports Law

This seminar will cover substantive law issues in the practice of law in the entertainment and sports industries, with a particular focus on applying legal principles to film, television, and digital media production and distribution.  

We will review relevant legal concepts in the areas of contracts, copyright, trade-mark, confidential information, defamation, rights of privacy and personality, tax, insurance, secured lending, labour relations, and media regulation as applied to entertainment and sports contracts.  We will study typical contracts in which these legal concepts are applied, as well as business and legal customs and practices that impact the negotiation process across a spectrum of entertainment and sports industry agreements.  

The intersection of legal concepts with artistic, athletic, political, economic and commercial concerns in these industries will also be studied to better understand the context of legal practice.  This will include an examination of key business risks, evolving production and distribution/exhibition models, shifting media markets, competing paradigms of authorship, and the challenges of describing the public interest.    

In-class client advice simulations will be used to demonstrate the concepts and practice issues that are studied.  This will include simulations dealing with a copyright infringement allegation, book-to-movie adaptation agreement,  breach of privacy claim, endorsement agreement, music license, and television broadcast license.

The course materials will include excerpts of texts and journal articles in this practice area together with relevant legislation and case law.  This seminar will be of particular interest to students considering the practice of entertainment, sports, or media law; those interested in labour relations in a predominantly freelance industry; and/or those interested in intellectual property and how substantive intellectual property legal issues are resolved in commercial practice.

Intellectual Property

This course will provide students a unique opportunity to canvass and understand all areas of IP: copyright, trade-marks, patents, and other important areas such as industrial designs and confidential information, along with closely associated and emerging areas such as privacy. As this course is meant to provide a taster to all of the areas of IP, students wishing to specialize in IP are also open to take more specialized courses in Copyright, Patents, and Trade-marks, as well as the other courses and seminars available in this area. There are no pre-requisites for this course and this course is not a pre-requisite for any of the other IP courses.

The primary goal of this course is to understand the core law and policy of the various IP areas, with an analysis of the jurisprudence and legislation in these areas. Students will analyze IP issues that are currently challenging courts, policy makers and various stakeholder practices in Canada and internationally. As these transformative issues are dynamic and taking place in real time, the course topics may necessarily change from year to year.  Topics for this year will include digital publishing & digital content platforms in broadcasting, counterfeiting, cybersecurity, copyright reform and collective administration reform, disruptive technologies, commercializing intellectual property and Canada’s innovation agenda.

The course will also provide students with a basic understanding of the justificatory and regulatory framework to the IP system, the often overlooked interplay (and overlaps) between the various areas of IP and IP’s relationship to other core areas of the law. While Canada will be the main focus, students will be exposed to the international dimensions of IP and will learn about comparative approaches where relevant.

By the end of the course, students should have:
· gained a basic understanding of the various areas of IP through a doctrinal analysis of the jurisprudence, legislation and current developments.
· demonstrated analytical and critical thinking and writing skills in relation to IP.
· developed a refined interdisciplinary understanding of IP (with respect to its interrelated core areas and with other areas of the law).
· understood IP within a domestic, comparative and international context.
· applied IP policy, theory and objectives to practice in the context of the jurisprudence, legislation and current developments.

Copyright

Copyright claims are ubiquitous, covering everything from angst-filled teenage poetry to impersonal, algorithmic recreations of a Rembrandt masterpiece; from commercially lucrative musical compositions and digital code, to (potentially) priceless vampire fan fiction. This course is designed to introduce students to the universe of rules, theories, policies and controversies that characterize the Canadian copyright system which regulates monopoly interests in musical, literary, dramatic and artistic works. The course will examine questions such as: What is a copyright? When does it vest? How long does it persist? Who can be an author? And, what are the relevant rights and obligations? We will consider the relationship between the private expectation of owning one’s own work, and the public need for knowledge and information, and evaluate the legal and para-legal mechanisms through which this tension is controlled if not resolved.

The majority of the course readings will be drawn from statutory code and judicial decisions. However, since copyright law plays a substantive role in our understanding of ownership, creativity, and cooperation in society, this course will pay substantial attention to the social, moral/political and economic theories that underpin the legal regime. While most cases and readings will be focused on the Canadian legal system, we will, as relevant, consider notable divergences in, and alternatives offered by, other legal systems.

The in-person (/Zoom) classroom meetings, twice a week (2 x 2 hours), will be divided into (i) preliminary lectures (designed to review the rules and theories that students will have already studied before class), and (ii) case-study discussions (designed to rehearse applying the rules and theories on hypothetical fact situations).

Students will be expected to have read the materials listed on the syllabus before class; in-class lectures will be modest and the discussions will place substantial emphasis on problem solving (rather than the more-traditional lecture form of instruction).