Course or Seminar Category: Intellectual Property Law

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.

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.

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, Smart & Biggar 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, clinic associate director, supervising 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, which lead to specific work that can include: performing patent 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, conducting legal research, and other tasks as assigned and approved by the supervising lawyer(s). 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/or associate 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.

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 familiarising 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.

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 course’s end, students would have a solid understanding of Canadian patent law as well as how international developments shape and influence Canadian patent law.

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 in the context of technologies, old and new.

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, particularly the UK and the US.

Students will be expected to have read the prescribed materials listed on the syllabus before coming to class; in-class lectures will be modest and the discussions will place substantial emphasis on collected review and problem solving rather than the more-traditional one-way lecture. Specifically, the in-person classroom meetings, twice a week, will be divided into: (i) 1-hr lectures that are designed to review the rules and theories covered in the readings, and (ii) 1-hr application oriented, case-study discussions that are designed to rehearse applying the rules and theories on hypothetical fact situations).