IIP Class Discussion Topics

Sept 1 General Introduction 

There are different kinds of knowledge: 1) things in books/written down; 2) things we teach in class that
go beyond the written word: 3) things we know but have never written down, passed down from person to
person. There are also physical objects that incorporate our knowledge: 1) a high-tech piece of
machinery; 2) course summaries; 3) whisks of different shapes and sizes; etc.
What kind of things should we protect? Why? How? Most importantly, in a world where wealth, access to
resources, status and ability are unevenly distributed, who benefits and who loses?

Sept 6 Intro to IP
i) There are often various ways to construe objects in terms of their associated rights, either
regarding intellectual property or pure property rights. Consider a player piano, a self-playing
piano that operates the piano’s hammer mechanisms using perforated paper or metallic rolls. A
person places the roll inside the piano and sits on a bench to operate pedals, which pump air to
power the interior pneumatics. As the roll unfurls, air passes through many tiny, carefully placed
holes in the paper roll to activate individual notes on the piano. The ‘player’ does not need to
touch the keys; instead, the piano itself ‘reads’ the roll and plays the notes on its own. Indeed, the
most highly developed example of a player piano was called the reproducing piano, the rolls of
which could repeat a certain pianist's performance 'photographically,' reproducing even the
nuances of dynamics and variations of tempo exactly. 
Does the act of sitting down to ‘play’ the player piano invoke any intellectual property or
property rights? More generally, who are the inventors, artists, and owners?
ii) Nonfungible tokens (NFT) are a type of digital certificate for authenticating asset ownership
using blockchain technology with each NFT having a unique identifier and metadata about the
associated asset that can neither be replaced nor replicated. Consider Nike’s new release of its
first collection of virtual sneakers, called Cryptokicks. Virtual sneaker collectors have since
become eager show off their digital shoes on social media or in NFT exchanges like OpenSea,
some selling for as high as $134,000. Owners are further hoping that they eventually will be able
to modify them as new skins are released, and also wear them in online games and in the
metaverse.
 The above image is an example of a digital sneaker sold by Nike for approximately $130.

What, exactly, do the buyers of the Nike Cryptokicks actually own? To which IP rights might
NFTs be subject?

Sept 8 Trade secrets

Plaintiff company DW carried on business in paintless automotive dent removal in Oakville, Ontario.
When defendants S & L were hired, they attended an eight-week training school operated by DW.
Defendant L claimed that the school merely provided them with DW tools and told to use them to remove
dents. L subsequently began to work for DW in the Windsor area. S worked for DW in Detroit. After
approximately two years, S & L left DW and set up their own paintless dent removal operation in
Windsor. S & L had both signed confidentiality agreements with DW which included a provision that
litigation arising from the agreement would be filed and conducted in Missouri. They also signed
employment agreements containing restrictive covenants providing that upon termination, they would not
engage in paintless dent removal or any other car repair related business anywhere in Canada or the
United States for a period of five years. DW sought injunctions based on the confidentiality agreement
and the alleged use of trade secrets by S & L.
One of the defendants stated that he went to the training school, the students were given sets of DW tools
and told them to use them the best way they could to remove a series of dents. He swears there was
nothing unique about the procedure as he had used basically the same procedure many times during his
previous experience in auto body repair. Further, he says every person basically developed their own
technique using the tools that were provided and S said that DW uses techniques involving types of tools
and reflection boards that are similar to those already used by numerous paintless dent removal
companies throughout North America. These tools are readily available through a number of catalogues
and suppliers. The other tools do not resemble those of DW, but they are all capable of achieving the
same result.
Issue: Does DW have a trade secret warranting protection?

* Sept 13 Patentable subject-matter

Respondent HC applied for a patent on an invention entitled “transgenic animals”.  According to the
application, a cancer-promoting gene (“oncogene”) is injected into fertilized mouse eggs as close as
possible to the one-cell stage.  The eggs are then implanted into a female host mouse and permitted to
develop to term.  After the offspring of the host mouse are delivered, they are tested for the presence of
the oncogene.  Those that contain the oncogene are called “founder” mice.  Founder mice are mated with
mice that have not been genetically altered.  Fifty per cent of the offspring will have all of their cells
affected by the oncogene, making them suitable for animal carcinogenic studies.  In its patent application,
the respondent seeks to protect both the process by which the oncomice are produced and the product of
the process, i.e., the founder mice and the offspring whose cells contain the oncogene.  The process and
product claims extend to all non-human mammals. 
For a higher life form to fit within the definition of “invention”, it must be considered to be either a
“manufacture” or a “composition of matter”. 
Issue:  Should the oncomouse fall within the definition of patentable subject matter in section 2 of the
Patent Act?

* Sept 15 Utility
The subject matter of Safe Gaming System’s 238 Patent involves an expert system with knowledge of
individual users (obtained after an assessment) in any gambling venue (internet; video terminals; and
gaming tables at a brick-and-mortar location) that monitors changes in gambling behaviour. The expert
system regulates what the limits should be for that person (using that individual's susceptibility) and
terminates gambling when those personal limits are met. In sum, the subject matter of the 238 Patent is a
gaming control system for problem gambling. The plaintiff argued that the basic utility was the
monitoring, regulation and termination of gaming of an individual. The defendants argued that the patent
was invalid.
The abstract of the 238 Patent describes this technology as follows:
A gaming control system applicable to all forms of gambling, electronic or otherwise, is
disclosed. The system includes an Internet Web site, with associated control software, which is a
portal that serves as a "safe gaming" interface between online gambling individuals and Internet-
based gambling sites. The system also allows players at physical gaming locations to register with
the system for "safe gaming" at video terminals or at gaming tables. The portal software and
distributed components of the system, track an individual's gaming transactions and provide alerts
to the individual of reaching or exceeding loss limits, time limits, changes in gambling behavior,
and other related services.
The Plaintiff's argument is that the utility is monitoring, regulating, and terminating play of any
individual. The Plaintiff says that sound prediction was established by the Defendants' expert witness, Dr.
Griffiths, who agreed that in 2001 a POSITA could have created a computer system that performed the
basic utility.
Issue: Is SGS’s patent invalid for lack of utility?

Sept 20 Non-obviousness and Novelty

This action involves two well-known skate manufacturers, B and CCM. B obtained a patent for a pattern
for a component of skates called the quarter. Typically, two quarters are placed on each side of the foot
and are sewn together at the back of the foot. B’s Patent (“748 Patent”) related to skates with a quarter
made in one piece rather than two, significantly reducing the weight. It is now suing CCM for
infringement of that patent.
A description of the traditional method for making skate boots and the evolution of that method in the
years preceding the invention at issue is as follows:
Ice skates are comprised of a boot to which a blade and blade holder are attached. In the case of roller
skates, the blade and blade holder are replaced with a carriage and wheels. The main components of the
boot are called the "quarters". There are traditionally two quarters (one on each side of the foot), which
are sewn together at the back of the boot and extend forward on each side of the foot. Together with the
toe cap, tongue and other components, they form what is called the "upper" of the boot. One of the figures
of B’s patent, as annotated by one of B’s experts and showing the quarter outlined in bold, helps visualize
these components:

The components of skate boots are assembled through a process that was initially developed in the shoe
industry and is known as "lasting". Although the process is inherently variable, its main steps are as
follows. The various components of the upper, traditionally made of leather, are cut in the appropriate
pattern and then sewn together. Once those components are assembled, the upper is placed upside down
onto a "last," which is a form that approximates the shape of a foot, and the insole is placed between the
last and the upper. A lasting machine then pulls the edges of the upper, also called the "lasting margin"
and folds them onto the insole. They are then nailed or glued to the insole. Excess material may then be
sanded or ground down, after which the outsole can be fixed to the upper. Counters and overlays may be
added to the upper at different stages of the process. When the boot is completed, a blade holder is riveted
to the sole. In the period ranging approximately from 1970 to 1995, several innovations were introduced
to the skate industry. One of them is the use of injection moulding to manufacture entire skate boots or
skate boot components. When the full skate boot is moulded in one piece, no lasting process is needed.
B’s Patent
B created a successful project in achieving weight reduction while maintaining or improving other
desirable features.
In designing the skate, B wanted to facilitate forward flexion. Among several options, it considered
separating the tendon guard from the remainder of the quarter – what became known as the "articulated
cuff." At trial, B’s representative testified that this led B, almost by chance, to make a prototype in which
the two quarters were joined to form a single component. This was found to provide some additional
rigidity and to make skate construction somewhat easier, as the new, more rigid materials were more
difficult to sew. In addition, the one-piece construction provided aesthetic advantages that, in B’s view,
would emphasize the distinctive features of the skate. The articulated cuff was not retained in the final
design. However, after internal debate at B, it was decided to incorporate the one-piece quarter in the new
skate.
The '748 patent, which forms the basis of B’s action, is entitled "quarter for skate boot." Under the
heading "background of the invention," it describes prior art consisting of two separate quarters sewn
together. It highlights the manufacturing or durability issues associated with the presence of that sewing
line. It also mentions that the tendon guard would overlap with the quarters. Prior art is illustrated by the
following figure:

One of the drawings, which is said to provide a "view of a quarter according to the invention," for the
'748 patent is as follows:

In this action, B asserts claims 1 and 5 (as dependent on claim 1) of the '748 patent. They read as follows:
1. A quarter for a lasted skate boot, said quarter being adapted to encircle the heel and ankle
portions of a wearer's foot, said quarter comprising a quarter medial portion, a quarter lateral
portion and a junction line between said medial and lateral portions, wherein said medial and
lateral portions are integrally connected at said junction line, wherein said medial and lateral
portions extend upwardly along said junction line, and outwardly each side of said junction line
along a narrowing profile adapted to a rear shape of the skate boot when folded in U-shape, and
wherein each of said medial and lateral portions comprises a foxing portion extending
downwardly therefrom.
 5. A quarter as defined in any one of claims 1 to 4, wherein said foxing medial and lateral portions
are adapted for mutual connection with a sewing line.
Issue: Ought B’s patent be deemed invalid as being obviousness?

Sept 22 Claim Construction

The appellant C and the respondent T are two corporations that are competitors in the business of
manufacturing roasted flax seed products. C holds the ‘376 Patent entitled “Methods for Roasting Oil
Seed, and Roasted Oil Seed Products”; at issue in this appeal is the interpretation of Claim 1.
Claim 1 reads:
A method for roasting oil seed, the method consisting of the following steps:
(a) Heating the oil seed in a stream of air for less than 2 minutes, wherein the stream of air has a
temperature of from 146 ℃ to 205 ℃, thereby to provide heated oil seed;
(b) transferring the heated oil seed into an insulated or partially insulated roasting chamber or
tower;
(c) maintaining the heated oil seed in said roasting chamber or tower without addition of further
heat until the roasting process is complete, wherein the temperature of the heated oil seed falls
during a maintaining period; thereby to produce a roasted oil seed in the roasting chamber or
tower;
(d) removing the roasted oil seed from the chamber or tower, for cooling.

T’s argument was that its oil roasting process fell outside Claim 1. T argued that, in the course of the
roasting process, it does not heat the oil seeds in a “stream of air” nor does it maintain the seeds in
an “insulated or partially insulated roasting chamber or tower” within the meaning of Claim 1.
On the other hand, C argued that Claim 1 was not limited to any particular source of heating – here a
stream of air—and that T’s use of infrared radiation infringed Claim 1.
T’s co-owner filed an uncontradicted affidavit discussing T’s use of a Micronizer, the equipment used by
T for heating the oil seed that uses infrared radiation. According to that affidavit, T’s process does not
subject the flax seed to a “stream of air” through the course of the roasting process. 
C pleaded that further investigation was needed to determine whether the auger trough and cooling tower
of the Micronizer, through which the seeds travel once heated, could constitute an “insulated or partially
insulated roasting chamber[s] or tower[s]”. T argued that an “insulated or partially insulated roasting
chamber or tower” was essential both from the language of Claim 1 and the disclosure as the disclosure
made clear that insulated parts are needed to retain the flax seed at a suitable temperature. T’s
uncontradicted affidavit stated that the hoppers and cooling tower of the Micronizer are uninsulated and
that T did not measure the temperature in the cooling tower.
Issue: Based on a purposive construction of claim 1 of the patent, what was the scope of claim 1?

Sept 27 Patent Infringement

This appeal case concerns the principles that should govern the calculation of a plaintiff’s recovery under
an accounting of profits. The trial judge found that company N was liable for infringing company D’s
patent over metallocene linear low-density polyethylene by manufacturing its product, SURPASS, and
selling it in competition to D’s product, ELITE.
The patent is directed primarily to polyethylene used to make “film” products, i.e. sheets of plastic, like
plastic garbage bags and food wrapping. Some film applications do not have demanding strength
requirements, but others do. One solution for these demanding applications was to make thicker “films”
that are stronger. That requires the use of more plastic, however, leading to higher costs and more waste
when the plastic film is disposed of. The claimed invention and D’s commercial embodiment of it
(ELITE) allows for source reduction to make thicker films thinner, but just as strong.
The question of remedy arose. The trial judge permitted D to elect between an accounting of profits
earned as a result of the patent infringement or compensatory damages caused by the patent infringement.
D elected an accounting of profits. Neither the decision to allow D to elect nor the election itself is under
appeal. The appeal and the cross-appeal exclusively concern the remedy of an accounting of profits and,
specifically, the calculation of the amount D is entitled to receive.
N’s first apportionment argument concerns its manufacture of ethylene, a major component of
metallocene linear low-density polyethylene and its SURPASS product that infringed D’s patent. N says
that had it not infringed D’s patent, it would have produced ethylene anyway and would have made
lawful profits from that. It says that it should be credited for these hypothetical profits in the accounting
of profits—or, in other words, there should be apportionment of the profits—because it “would have
earned…ethylene profits even without infringing”.
D argued that if N had not infringed upon its patent, then N would have taken some time after the patent’s
expiry to attain the same level of sales as N enjoyed by infringing. D argued that its patent provided N
with a ‘springboard’ into the market, allowing N to profit from its infringing activity after the expiry of
D’s patent. D claimed that it was entitled to these ‘springboard profits’.
N argues that springboard profits are not available at law.
Issue: To what extent should N owe D recovery for Accounting for Profits?

Sept 29 Exceptions
Company N is the recorded owner of a patent . Company C, a related corporate entity, sells a drug in
Canada with the trademark of GLEEVEC, which is best known as a highly effective drug for the
treatment of chronic myeloid leukemia (CML). The active ingredient in GLEEVEC is imatinib mesylate.
Imatinib and its salt, imatinib mesylate, are compounds included in Company N’s patent.
Company A also is planning to sell a generic version of imatinib and has also taken steps to obtain
regulatory approval for the sale of imatinib. Specifically, it has applied to the Minister of Health for a
Notice of Compliance (NOC) in respect of orally administered 100 mg and 400 mg tablets containing
imatinib, pursuant to the Patented Medicines (Notice of Compliance) Regulations.
 A has acknowledged that it has in its possession certain volumes of bulk imatinib and has used this
material in a number of ways, as discussed below. N does not seek damages with respect to this allegedly
infringing material; however, it does ask for the following:
1. a declaration that A has infringed: Claims 5, 7 and 29; Claim 46, as read with Claims 5, 7 or
29; and Claim 44; and
2. an injunction and delivery up of any infringing material, consisting of all material made to
date that is not explicitly required to be maintained for regulatory purposes. 
In response, A asserts that all of the imatinib material has been or will be used for regulatory or
experimental use; and has not been and will not be used for commercial purposes. As such, it is exempt
from infringement under s. 55.2(1) and (6) of the Patent Act and at common law.
A bears the burden of demonstrating that the imatinib inventory was used for experimental or regulatory
uses and that no portion of the inventory was or will be used commercially. Witnesses testify that A led
substantial and carefully prepared evidence of the volumes of imatinib API product that it had obtained
and the uses to which the material had been put.

Issue: Do the quantities of bulk imatinib in the possession of company A infringe the patent; or,
do these quantities fall with the regulatory or experimental use exemption of s. 55.2 (1) and (6)
of the Patent Act?

Oct 4 Copyright: Ideas vs. Expression

K is a limited company which manufactures and sells tombstones. The defendant partnership is in the
same business. The defendant S purchased a tombstone from G. K alleges that this tombstone is a
reproduction of a design in which K claims copyright.
In 1950 or 1951 one C. E. Ridsdale, a designer employed by K, drew the design upon which the claim is
based. It shows an oblong tombstone of greater length than height. The face has three panels, the centre
panel being a sunken one. In this centre panel there is a lamp and a flame. Above the flame there is a
symbol of the star of David. The top is known in the trade as a peaked top. Such a tombstone as this is
intended for a double grave. This is the reason for the double raised panels with the centre sunken panel.
One side is meant to have the inscription for the male members of the family, the other for the female
members.
The tombstone made by G for S has the characteristics that were just described, with this difference : the
star of David is at the top of the right-hand panel, instead of being over the flame in the centre sunken
panel. The left-hand panel at the top has a carving of a seven-branched candelabra (the Menorah). Twenty
or twenty-five photographs of tombstones from cemeteries in Toronto were filed as exhibits. These show
that tombstones having these characteristics are commonly known and have been so known for a long
time. Nevertheless, the plaintiff claims copyright in its design as an original artistic work.
G claims that the design came from his own mind and was not a copy of any existing tombstone. He
could not expunge from his memory all the characteristics of this type of tombstone which were
previously mentioned. Is K’s tombstone design original or is it a mere arrangement of materials from a
common source in which no copyright can exist?
Issue: Has the plaintiff’s copyright on the tombstone been infringed?
Oct 6 Copyright Criteria
The Plaintiff, Geophysical Services Incorporated, (“GSI”), is a Canadian company that conducted
offshore marine seismic surveys in the Canadian Atlantic and Arctic. It licensed this marine seismic
material (also referred to as “seismic data”) to oil and gas companies mainly for exploration purposes.
Following the expiry of certain confidentiality periods, copies of the seismic material were made
available to the public. GSI claims that it owns the copyright in the seismic material and that copying of
the publicly available material without compensation and without its consent constituted copyright
infringement.
Seismic exploration works, in simplified terms, by the creation of seismic waves through the earth's
surface and assessing how those waves engage various geological formations. Very sophisticated
technology exists to extract meaningful data from this seismic analysis. 
The seismic materials over which GSI claims copyright includes the following:
(i) Raw seismic field data, or raw seismic, magnetic, and gravity data;
(ii) Seismic related navigation data;
(iii) Processed and reprocessed seismic data;
(iv) Selections, arrangement and compilations of raw, processed and reprocessed seismic
data;
(v) Productions and reproductions of seismic data in various forms and media including
physical, electronic, magnetic and digital works;
(vi) Interpretations, derivations and translations of the seismic data; and
(vii) Related seismic data materials.

GSI argues that the seismic material is “original” and qualifies as a “work” in that it is created by the
involvement of human skill and judgment with the aid of computers. It is a literary and/or artistic
“production” in the scientific domain. The seismic material is fixed onto tapes, CDs, digital sticks, or
other formats depending on when it was created, and ultimately displayed as “seismic sections”, long
squiggly lined paper documents (or digital images), which can then be interpreted by professional
geophysicists.
The defendants argued that the seismic material does not satisfy the requirement for copyright because the
works were created by computer programs, not the “skill and judgment” of human authors. They submit
the creation of seismic data is purely a mechanical exercise, the expression of any ideas are limited by
common industry practice, practical considerations, utility and are directed by parties other than the
author; hence, the seismic material is not “original” and cannot be considered a “work” as defined in the
Copyright Act.
Issue:  Can copyright subsist in seismic material of the kind that are the subject matter of GSI’s claims?
* Oct 14 Scope of Copyright
In 1950, Woody Guthrie executed an assignment of his rights in an unpublished "original musical
composition" entitled This Land is Your Land in favour of the plaintiff, L, and, by the same document,
warranted and represented to L that Guthrie was the sole "writer, composer and owner" of the
composition. L authorized the preparation of an adaption of the song This Land is Your Land for use in
Canada; and a group of singers called "The Travellers" prepared the adaptation, which is exactly the same
as the original except that the words "Bonavista to Vancouver" are substituted for "California to the New
York" and the words "Arctic Circle to the Great Lake" are substituted for "red wood forest to the Gulf
Stream" in the chorus, and the words "fir clad forests of our mighty mountains" are substituted for the
words "sparkling sands of her diamond deserts" in the second verse.
A group called “The Brothers-in-Law” took the tune to This Land is Your Land but added their own
lyrics. The defendant, A, was the record company publishing this version of the song. A was willing to
pay a fee for the tune, but not the lyrics as the lyrics used by The Brothers-in-Law was completely
different from either Guthrie’s original lyrics or The Travellers’ lyrics.
A letter written by L, addressed to A, reads:
We hasten to advise you that any usage whatsoever of our above copyrighted composition with
any lyric written without our consent is an absolute and flagrant violation and infringement of our
copyright in the above composition.
Further you are advised that under no circumstances would we permit any lyric other than one
specifically authorized by us and same would be in contradiction of our legal rights. Accordingly,
demand is hereby made upon you to cease and desist from any use whatsoever of our said
composition
A’s reply is as follows:
There is no dispute with you as to the payment of royalties required by Canadian Copyright Law
as regards the tune, but with respect to the lyrics the English courts have taken the stand that a
satire or parody on the lyrics of an existing copyrighted tune does not constitute infringement
provided that the lyrics are rewritten skilfully.
This is not a question of simple modification of a few thoughts or words, but a total rewriting of
lyrics thereby precluding the necessity of authorization by the copyright owner as regards lyrics.
These new lyrics are the creation of another person entirely, totally different from the original.
Therefore, it appears that the copyright owner of a tune to which entirely new lyrics are
introduced, would be entitled to payment of royalties covering the tune portion only after Notice
of Intent to Use has been communicated. It therefore follows that the owner of the copyright of
the new lyrics would be entitled to payment of royalties for the lyric portion.
L sought an order restraining A from selling records using the tune of the composition This Land is Your
Land with words other than L’s until the trial or other disposition of this action. A claims that two
separate copyrights exist within the song – that of the music and that of the lyrics and that this allows
them to use the tune of This Land, paying royalties for the tune, while using the new ‘Canadian’ lyrics.
Issue: Can the lyrics and music of a song be separated into two separate copyrights?
Original Version - https://www.youtube.com/watch?v=wxiMrvDbq3s
Brothers-in-Law Version – https://www.youtube.com/watch?v=u94Mm3we25l

Nov 1 Copyright Infringement

The appellants, M, duplicated two computer programs (Autostart ROM and Applesoft) used by the A in
their Apple II Computer. M did not copy the programs as written in assembly code. Instead, M
reproduced, apparently by mechanical means, the silicon chip on which the programs are embodied.
A computer language is a code for writing a program. A language is said to be "higher" or "lower"
depending upon the ease with which it can be read. A high-level language has symbols and rules that
correspond closely enough to ordinary mathematics and English (or other common language) that it may
be read and understood with relative ease. Examples are languages such as C+, Python, or, for older
programs, Fortran.
A second level of language, which can be referred to as an intermediate level, consists of mnemonics
which correspond more explicitly to the operations the computer must perform. For example, in the
excerpt set out [below], LDY stands for "load index Y with memory", and STA stands for "store
accumulator in memory". This intermediate level is referred to as assembly language.
A third level of language, the lowest, is sometimes referred to as machine language or object code. There
are two versions of machine language relevant for the purposes of this case: a system of hexadecimal
notation and a system of binary notation. Hexadecimal notation is based on a number system having a
base 16, while binary notation is based on a number system having a base two. The hexadecimal system
of notation is merely a shorthand way of writing the binary code.
Binary notation utilizes only the symbols "1" and "0". Hexadecimal notation utilizes the ten numerals "0"
to "9" and the first six letters of the alphabet "A" to "F".
The programs in issue were originally written in assembly language. A section of one of them, recited by
the learned Trial Judge, read:

  LDY #$2F  

  BNE CLRSC2  

  LDY #$27  

  STY V2  

  LDY #$27  

  LDA #$00  

  STA COLOUR  

  JSR VLINE  
The program was then converted to machine language. In the instant case, hexadecimal notation was
chosen. The hexadecimal format of the above excerpt is :
   A0 2F    

  D0 02    

  A0 27    

  84 2D    

  A9 00    

  85 30    

  20 28

It is the binary form of machine language that the computer "understands". The string of ones and zeros
can be represented in the computer as the two states "electrically on" and "electrically off" (or high and
low voltage levels). In order for a program to be used by a computer it must, then, be converted into a
series of "electrically on" and "electrically off", states, an electrical code which corresponds to the binary
notation of the program. This can be accomplished in a variety of ways since a program once written can
be embodied in a variety of material forms.
The evidence was that conceptually the internal memory of the computer could be thought of as a series
of mail-boxes (pigeon holes) arranged in a rectangular array into which information in the form of bytes
is stored (eight ones and zeros per box). At the electrical level, the computer memory is an integrated
circuit which is capable of holding, because of its circuitry, a pattern of high and low voltage states. As
the trial judge described:
The internal memory of the computer is of two types, RAM and ROM. RAM (random access
memory) is volatile. When the power is turned off whatever has been placed in RAM is erased ....
ROM (read only memory), on the other hand, is permanent in nature and whatever is stored
therein is not erased when the power is turned off. This follows from the fact that while the eight
transistors in RAM have the property of switching on or off (i.e., of representing either a one or a
zero depending upon what program or data is loaded into it), the transistors of the memory cells
of the ROM chips have been "blown" and thus permanently structured to carry only one set of
instructions. Thus ROM can be "read" only; it cannot have information written into it as is the
case with RAM. The chips in issue are ROM chips.
When a programmer or a computer manufacturer wishes to have a program embodied in ROM,
he or she sends a copy of the program in machine language (hexadecimal or binary) to a ROM
manufacturer. The manufacturer of the Apple II ROMs also required that it be submitted in at
least two different input media (e.g., punched paper tape and a floppy disk) to facilitate
verification. A pattern is then etched into the memory cells of the chip by a photo-lithographic
process. The pattern created in the ROM chip corresponds to the binary pattern of the written
program. Thus, the chip is structured so that it can replicate the program or part thereof in its
electrical code form as required whenever an electric current is passed through the appropriate
[mailbox] of the ROM.
After dealing, with other computer components and rejecting the argument that the programs in issue
were merely specifications for a machine part, the Trial Judge found that the program retains its character
as such in the computer. It can be "read out" of the ROM as and when required. A "disassembler"
program is often used for this purpose. Thus, the hexadecimal code version of the programs Autostart
ROM and Applesoft can easily be displayed on the screen of the monitor or produced in a print-out
version by "reading" such directly from the respective chips. In addition, this hexadecimal form of the
program can be converted subsequently to its original source code assembly language version without
great difficulty.
Issues:
1) Is a machine language, whether binary or hexadecimal, a "translation" of assembly language within
paragraph 3(1)(a) of the Copyright Act?
2) Are the programs embodied in the chips reproductions of the written computer programs within the
meaning of subsection 3(1) of the Copyright Act and moreover, does 3(1) imply that a reproduction ought
to be in humanly readable form?

Nov 3 Fair Dealing/Moral Rights

Shephard Fairey created the Hope poster during President Obama’s first run for President in 2008 and this
design quickly became a symbol for Obama’s campaign; the poster was technically independent of the
campaign but did have the campaign’s approval.
In January 2009, the photograph on which Fairey allegedly based his poster design was revealed by the
Associated Press as one shot by AP freelancer Mannie Garcia. AP then demanded compensation for its
use in Fairey’s work. Fairey responded with the defense of fair use, claiming his work didn’t reduce the
value of the original photograph.
Arguably, it’s unlikely that Garcia’s photograph could have ever reached the level of fame it did, if not
for Fairey’s poster. Indeed, Garcia himself declared that he was “so proud of the photograph and that
Fairey did what he did artistically with it, and the effect it has had,” but still took issue that Fairey took
the image without permission and without credit for its original source.
Issue: Did Fairey’s poster infringe on AP’s copyright?
Nov 8 Passing Off
The LEGO toy business was founded in 1932.  In 1949, K produced its first toy building blocks.  Those
blocks were derived from a British product, the Kiddicraft blocks, which used a system of interlocking
blocks.  K bought the patents covering the Kiddicraft system a few years later.  K then introduced
significant improvements to the blocks.  It added tubes underneath the blocks that coupled with the studs
on top.  This clever locking system increased the friction between the bricks and enhanced their “clutch
power”, although children could still easily disassemble them.  The current LEGO block was thus
designed and marketed some 50 years ago.  The same pattern of studs on the top of the block with tubes
underneath remains in use.  The only change was the addition of the mark “LEGO” on the top of each
stud in tiny script.  K managed to keep patent protection of its technology in place for many years.  But,
in Canada, as elsewhere, patent protection came to an end.  In Canada, the last patent expired in 1988.  By
that time, the quality and originality of its products had earned LEGO bricks a well-deserved reputation
amongst parents and children.  LEGO toys acquired generations of devoted clients and users in Canada as
in many other countries.
After the expiry of K’s patents, clouds gathered on the horizon.  New competitors appeared and attempted
to market similar if not identical products.  The most aggressive was the respondent, a Montreal toy
manufacturer now known as R.  R had begun manufacturing toys in the 1960s.  Later, in the 1980s, it
developed and marketed a line of large-size building blocks.  Finally, after the expiry of the last LEGO
patents in Canada, it decided to use the traditional LEGO technology. It brought to market a line of small
blocks, identical in size to LEGO blocks, which used the same geometrical pattern of stubs on top
coupled with tubes underneath.  They were sold under the name “MICRO MEGA BLOKS”.  R sold its
new line in Canada and exported them to several other countries.  Over the last 10 years, it has become a
significant global competitor to K.
While K never applied for a trademark, K alleged that the marketing by R of its MICRO and MINI lines
of small bricks using the same pattern caused confusion with its unregistered trade-mark.  It claimed relief
under s. 7(b) of the Trade-marks Act and under the common law doctrine of passing off.
Issue: Has R violated section 7(b) of the Trademarks Act and/or has R committed the common law tort of
passing off?
Nov 10 Trademarks and Use
At the request of company S (the Requesting Party), the Registrar of Trademarks issued a notice under
section 45 of the Trademarks Act to company T (the Owner), the registered owner of the trademark
CANADIAN GOLD & Design, asking whether the mark had been used in Canada. The Mark is shown
below and includes the following colour claim:
Colour is claimed as a feature of the trade-mark. The maple leaf and the
words SMOOTH CANADIAN TASTE as reproduced on the right-
hand side of the trade-mark are red in colour. The dark horizontal
lines, the word GOLD and the shadowing adjacent the vertical
rendition of the word CANADIAN and the words 20 CLASS "A"
CIGARETTES are gold in colour. The vertical rendition of the word
CANADIAN is blue in colour. The background material
which constitutes the balance of the mark is pale yellow in colour.
The Mark is registered in association with the goods “Tobacco Products”.
The Mark was registered on February 9, 1996, with the following disclaimer: “The right to the
exclusive use of all the reading matter except the word GOLD is disclaimed apart from the trade-mark”.
The notice sent by the Registrar of Trademarks required T to furnish evidence showing that it
had used the Mark in Canada, at any time between February 16, 2015, and February 16, 2018, in
association with the goods specified in the registration. If the Mark had not been so used, the Owner was
required to furnish evidence providing the date when the Mark was last in use and the reasons for the
absence of use since that date.
A is a manager at T and in her affidavit, she explained that T is a wholly-owned subsidiary of ITCan and
that a license agreement exists and did exist during the relevant period such that T had direct control over
the quality and character of goods sold in association with the Mark by ITCan during the relevant period.
She further states that, during the relevant period, ITCan sold CANADIAN GOLD-brand cigarettes in
Canada through cigarette retailers such as grocery stores, convenience stores, bars, and gas stations.
In support, she attached as Exhibit A
to her affidavit six photographs of
cigarette packaging, which she stated
is representative of the “1700 packages
of the CANADIAN GOLD cigarettes
sold in Canada” in 2017, i.e., during
the relevant period.  The front, side
and top panels of the packaging are
shown in the image to the right:

The packaging used the following elements on each of the non-warning elements displayed on the front
panel of the packaging: the word CANADIAN is blue with gold shadowing; the word GOLD is gold; the
number 20 is red; the words CIGARETTES KING SIZE are gold; and the square coat of arms is red and
gold.
A explains that the depiction of the Mark in the exhibited photographs differs from the Mark as registered
due to a mandated health warning under Canadian law.  She attests that Canadian regulations require a
health warning to be displayed on 75% of the two largest sides of each tobacco product package.  She
attests that these requirements came into effect in 2011, and that from 2000 to 2011, there was a
requirement that the health warning be displayed on at least 50% of the display area and that “it was
necessary for the words “CANADIAN” and “GOLD” to be re-oriented on the package in the manner
shown … so that they fit within the remaining 25% of the display area available for trademarks.” A
characterizes this as a “minor adjustment”, asserting that “it is readily apparent to purchasers of the
CANADIAN GOLD tobacco products (i.e. retailers and adult smokers) that the brand and source of the
product remains the same”.

Issue: Can S succeed in proving use of its registered mark?

Nov 15 Confusion and Dilution
Dixie Lee (Maritimes) Ltd. (the Opponent) is the licensee of the DIXIE LEE & Design trade-marks in
Eastern Canada and sells DIXIE LEE franchised restaurants offering both sit down and take-out food
services and provides support to franchisees with respect to training, product, packaging and advertising.
The Opponent has 40 franchises.
Dixie's Pizza-Fried Chicken-Fish Inc. (the Applicant) applied-for the trade-mark DIXIE'S PIZZA-
FRIED-CHICKEN-FISH & Design set out below (the Mark) in 2014:

DIXIE LEE holds the following mark:

Issue: Is there reasonable likelihood of confusion between the applied-for mark and the existing
registered DIXIE LEE & Design mark?

Nov 17 Traditional Knowledge and Culture

"Mbube" (Zulu for "lion") was written by Solomon Linda, a South African Zulu singer, who
worked for the Gallo Record Company in Johannesburg as a cleaner and record packer. He spent
his weekends performing with the Evening Birds, a musical ensemble, and at Gallo Records,
Linda and his fellow musicians recorded "Mbube" in 1939, which incorporated a call-response
pattern common among many Sub-Saharan African ethnic groups, including the Zulu. Solomon
Linda's recording eventually sold over 100,000 copies in Africa. In 1948, when the Black
community had few negotiating rights under apartheid, Linda sold the worldwide copyrights to
the song to a South African recording company for less than $2. Linda himself died in poverty in
1962. 
In 1949, Alan Lomax, then working as folk music director for Decca Records, brought Solomon
Linda's 78-rpm phonograph recording to the attention of his friend Pete Seeger of the folk group
The Weavers. In November 1951, after having performed the song for at least a year in their
concerts, The Weavers recorded an adapted version with brass and string orchestra and chorus
and released it as a song titled "Wimoweh", a mishearing of the original song's chorus of
"Uyimbube" (which translates to "You are a lion" in Zulu); this version contained the chanting
chorus "Wimoweh" as well as Linda's improvised melodic line. The Weavers credited the song
as "Traditional", with arrangement by "Paul Campbell", later found to be a pseudonym used by
the Weavers in order to claim royalties. Eventually the Weavers mainlined Linda’s melody onto
the pop charts.
Nine years later, the New York group the Tokens wanted to morph “Wimoweh” into a pop song
with fresh lyrics and songwriters were commissioned to write new words for what eventually
became the number one hit “The Lion Sleeps Tonight”. The song has earned an estimated $15
million since it was written in 1939 and later recorded by at least 150 artists. It is also featured in
the Walt Disney film “The Lion King” as well in the stage version. The New Jersey-based
Abilene Music holds the copyright to The Lion Sleeps Tonight which it in turn licensed it to the
Walt Disney Corporation for “The Lion King”.
Linda’s family launched a lawsuit in 2006 against Disney/Abilene Music in order to claim
royalties on behalf of Solomon Linda, the original composer. The case was eventually settled out
of court for an undisclosed amount.
Issue: Do Disney, the Tokens, and/or Pete Seeger owe any legal duty to Linda? Should they?
What needs to be done, if anything, to address any wrong?
Listen here to the original song Mbube - https://www.youtube.com/watch?v=mrrQT4WkbNE

Nov 22International IP Law: Patents

The UK High Court recently rejected an appeal on AI inventorship by an AI system known as “Dabus”.
DABUS stands for ‘device for the autonomous bootstrapping of unified sentience’. The judgment states
that an artificial intelligence system cannot be an inventor, upholding a decision by the UKIPO; while
they had accepted Dabus as devising the inventions, they determined that the two patents did not meet the
criteria for patentability based on Dabus not being a ‘natural person’.
In January 2020, the EPO also refused two patent applications on the grounds that the application listed
Dabus, and not a human, as the inventor. The decision is based on Article 81 and Rule 19(1) of the
European Patent Convention. Other jurisdictions that have refused the applications are Australia,
Germany, and the United States. While South Africa did grant the application, it operates on a depository
system: the patent office only checks for basic formal requirements and South Africa’s Patent Act
1978 does provide several grounds for patent revocation.

Issue: What is the effect of different jurisdictions coming to different conclusions on AI

inventors? Should this be addressed in an international instrument?
Nov 24International IP Law: Copyright and Trade Agreements
While it is well established that the use of tobacco leads to highly negative health consequences, tobacco
remains part of legitimate trade between nations, and livelihoods in countries that export tobacco are still
heavily dependent on trade of this product. Intervention regarding governmental health policy and
regulation remains a hotly debated issue between tobacco companies and countries trying to promote
healthy lifestyles. In 2011, Australia enacted legislation known as the Tobacco Plain Packaging Act that
aimed at reducing the use of and exposure to tobacco products; in essence, the legislation demanded that
that brand images, display logos and promotional text be removed from cigarette packages such that the
typically attractive colors, eye-catching and engaging designs that experts claimed made smoking more
appealing were removed from the equation.
The Agreement on Trade-Related Aspects of Intellectual Property Rights (TRIPs) aims to harmonise
some aspects of trademark law across countries, and as such contains obligations to:
 provide for the registration of trademarks on a non-discriminatory basis (although a WTO
member may decline to register offensive or misleading trademarks) (article 15)
 provide trademark owners with rights to prevent third parties from using their trademarks (article
16)

Cigarette companies brought several claims before a World Trade Organization (WTO) panel based on
various issues of intellectual property law, and on whether Australia’s measure was unnecessarily trade
restrictive.

On appeal, Honduras and the Dominican Republic challenged the panel’s assertion that plain packaging
did not affect the rights of trademark holders under article 16.1 of TRIPs as well as their finding that plain
packaging did not ‘unjustifiably encumbered by special requirements’ the ‘use of trademarks in the
course of trade’ under article 20 of TRIPS.

Issue – Does the Australian plain packaging legislation comply with the core provisions on trademark
protection enshrined in TRIPs?