E-TIPS® Newsletter’s “2018: Year in Review”

Thank you for your readership over the last year and welcome to what is sure to be an exciting 2019!  In this year’s first issue of the E-TIPS® Newsletter, we will recap our most noteworthy reports from 2018 covering developments in IP and IT law, under the following categories: (1) “Legislative, Treaty and Policy Developments”, (2) “Supreme Court of Canada Matters”, (3) “Patents”, (4) “Trademarks”,  (5) “Copyright”, (6) “Privacy”, (7) “IT/Telecommunications” and (8) “Regulatory”.

This issue of E-TIPS® Newsletter’s “2018: Year in Review” is brought to you by Jennifer R. Davison and Jae Morris. Remember, all of our past coverage – over 16 years’ worth – is accessible in our archive.

1.  Legislative, Treaty and Policy Developments

United States-Mexico-Canada Agreement (USMCA) Signed

On September 30, 2018, Canada signed the United States-Mexico-Canada Agreement (USMCA). Chapter 20 of the USMCA imposes a number of obligations on parties relating to intellectual property.

Among these, the USMCA requires parties to provide copyright protection for at least the life of the author plus 70 years.  Currently, Canadian law only provides copyright protection for the life of the author plus 50 years.

The USMCA also requires parties to adjust the term of a patent to compensate for unreasonable delays in issuance of a patent and make patents available for any invention in all fields of technology. Parties may exclude from patentability, inventions such as diagnostic, therapeutic and surgical methods, and animals and plants. 

In addition, the USMCA requires parties to provide a term of data protection for biologics of 10 years.

For our full report, click here and here.

Bill C-86 Makes Significant Changes to Canadian Intellectual Property Legislation

In December 2018, the federal government introduced its omnibus Budget Implementation Act, 2018, No 2, as Bill C-86, which, in addition to implementing this year's budget provisions, also contains many intellectual property related amendments. These amendments include changes to Patent Act that establish minimum requirements for patent demand letters. For our full report, click here.

Canadian Intellectual Property Office and European Patent Office Extend Patent Prosecution Highway

In January 2018, the Canadian Intellectual Property Office (CIPO) extended its Patent Prosecution Highway (PPH) pilot agreement with the European Patent Office (EPO) for three years, until January 5, 2021.  The PPH program between CIPO and the EPO serves to fast-track patent applications in one country when a patent has been granted in the other. For our full report, click here.

2.  Supreme Court of Canada Matters

Supreme Court of Canada Applies “Real and Substantial Connection” Test in Cyber Libel Case

In June 2018, the Supreme Court of Canada (SCC) released its judgment in Haaretz v Goldhar, 2018 SCC 28, a significant decision considering conflict of laws rules in the context of an Internet defamation case. The decision applied, and substantially elaborated on, the SCC’s two-step “real and substantial connection” test it had previously enumerated in Club Resorts Ltd v Van Breda. For our full report, click here.

Supreme Court of Canada Rules that ISPs Can Recover Reasonable Costs for Identifying Copyright Infringers

In September 2018, the SCC released its decision in Rogers Communications Inc v Voltage Pictures, 2018 SCC 38, clarifying the scope of the “notice and notice” regime under the Copyright Act.  The decision concluded that Internet service providers (ISPs) are entitled to recover their reasonable costs for identifying copyright infringers in response to a Norwich order from a copyright owner. For our full report, click here.

3.  Patents

Dead Patent Applications Cannot be Revived

In February 2018, the Federal Court of Appeal of Canada (FCA) released its decision in University of Alberta v Canada (Attorney General), 2018 FCA 36, finding that the Commissioner of Patents has no discretion to reinstate a patent application that is “dead” as a matter of law. The Federal Court of Appeal reached its finding in affirming the Federal Court’s decision dismissing the Appellants’ application for judicial review since there was no decision to review. For our full report, click here.

Patenting Computer Implemented Inventions Continues to be a Challenge

In 2018, computer-implemented inventions continued to face challenges to patent protection in both Canada and the US.  We illustrated this point with our coverage of various decisions addressing computer implemented inventions such as: a graphical user interface, a haptic feedback device, a method for detecting body temperature, a business intelligence system, and a video on demand content navigation system in our E-TIPS® Newsletters.

4.  Trademarks

Official Mark Status is Not a Defence to Trademark Infringement

In October, the Federal Court of Canada ruled, in Quality Program Services Inc v Her Majesty the Queen in Right of Ontario as Represented by the Minister of Energy, 2018 FC 971, that an official mark is not an absolute defence to infringement. In a dispute over the EMPOWER ME mark, the Court concluded that Ontario’s official mark status did not prevent continued use of a registered trademark, nor did it provide Ontario with absolute protection against trademark infringement. For our full report, click here.

Courts Continue to Struggle with Concept of Keyword Metatags

In May 2018, the United States Court of Appeals for the Ninth Circuit, in Adidas America, Inc v Skechers USA, Inc, No. 16-35204 (9th Cir. 2018), affirmed an injunction against Skechers enjoining it from selling shoes that allegedly infringe and dilute Adidas’s Stan Smith trade dress and Three-Stripe mark. Skechers made use of Adidas’s marks in its keyword metatags, thereby promoting its own competing products by using Adidas’s trademarks. This decision illustrates inconsistencies in how Courts continue to deal with the use of keyword metatags. For our full report, click here.

EU Court of Justice Rules that Red Sole Trademark Is Not a Shape Mark

In June 2018, The Court of Justice of the European Union (CJEU) ruled in Louboutin v. Van Haren, C-163/16, that a mark consisting of colour applied to a shape can be a trademark. In a Reference from a lower court, the CJEU was asked to interpret Article 3(1)(e)(iii) of Directive 2008/95/EC of the European Parliament and of the Council of 22 October 2008, which prohibits a mark that consists exclusively of a shape. The CJEU ruled that a trademark registration for the colour red applied to the sole of a shoe is not a shape mark because it does not primarily consist of a shape. For our full report, click here.

5.  Copyright

Federal Court Awards Photographer $80,000 in Copyright and Moral Rights Claim

In March 2018, The Federal Court of Canada held in Andrew Collett v. Northland Art Company Ltd, 2018 FC 269, that Northland Art Company Canada Inc and Bremner Fine Art Inc infringed Andrew Collett’s copyright and moral rights by reproducing Mr Collett’s artwork “Spirit of Our Land”. The Court ordered a permanent injunction against all future use, sale, and reproduction by the defendants of the plaintiff’s works. The defendants were also ordered to pay $45,000 in statutory damages, $10,000 for infringement of moral rights, and $25,000 in punitive damages for purposes of retribution, deterrence and denunciation. For our full report, click here.

US Copyright Law Applies to Foreign Originating Content

In March 2018, the United States Court of Appeals for the District of Columbia Circuit in Spanski Enterprises, Inc v Telewizja Polska, SA,  No 17-7051, affirmed a lower court decision holding a foreign broadcaster liable for copyright infringement for allowing viewers in the US to stream copyrighted content. In affirming the lower court’s ruling, the Court of Appeals confirmed the extraterritorial application of the US Copyright Act.  For our full report, click here.

Copyright Owners Need More Than an IP Address to Establish Copyright Infringement

In August 2018, the US Court of Appeals for the Ninth Circuit issued its decision in Cobbler Nevada LLC v Gonzales, No. 17-35041, holding that the bare allegation that the defendant is the registered subscriber of an Internet Protocol (IP) address associated with infringing activity is insufficient to establish copyright infringement. This decision affirms that an individual is not liable for copyright infringement for failing to police his or her Internet service.  For our full report, click here.

6.  Privacy

PIPEDA’s Breach of Notification Safeguards Came Into Force

In November 2018, the Personal Information Protection and Electronic Documents Act (PIPEDA)’s amendments establishing mandatory breach reporting obligations came into effect. These amendments require organizations to report certain breaches of security safeguards to the Commissioner’s office and to notify those affected.  For our full report, click here.

Privacy Commissioner of Canada Investigates Facebook

In March 2018, Privacy Commissioner of Canada announced that his office launched a formal investigation into allegations of improper data sharing by Facebook with Cambridge Analytica. Cambridge Analytica had improperly obtained information from approximately 50 million Facebook users in 2014 and used this information for political purposes. For our full report, click here. 

Federal Court to Determine Whether PIPEDA Applies to Search Engine Services

In October, 2018, the Office of the Privacy Commissioner of Canada announced that it is seeking the Federal Court’s clarification on whether Google’s search engine is subject to the Personal Information Protection and Electronic Documents Act (PIPEDA). For our full report, click here.

US Passes Cloud Act

Also in March 2018, the US passed the Clarifying Lawful Overseas Use of Data Act, also known as the “Cloud Act”. The Cloud Act compels technology companies to disclose the contents of electronic communications regardless of whether that information is stored within, or outside of, the US, upon the request of law enforcement.  For our full report, click here.

7.  IT/Telecommunications

CRTC Issues its First Penalties under CASL’s Anti-Malware Provisions

In July 2018, the Canadian Radio-Telecommunications Commission (CRTC) issued its first Notices of Violation under Canada’s anti-spam law (CASL).  The CRTC investigated two closely connected companies and discovered that the companies were spreading malware through their online advertisements. This advertising practice was found to contravene Section 8 of CASL.  For our full report, click here.

Federal Court of Appeal finds CRTC’s Regulation of Affiliation Agreements as Ultra Vires

In October 2018 the Federal Court of Appeal, in Bell Canada v 7265921 Canada Ltd, 2018 FCA 174, found that the CRTC’s regulation of affiliation agreements between content creators and broadcasters exceeded the CRTC’s jurisdiction under the Broadcasting Act. For our full report, click here.

Australian Court holds Google Accountable for Defamatory Search Engine Results

In June 2018, the High Court of Australia in Trkulja v. Google LLC, [2018] HCA 25, held that Google was liable for defamation as a result of publishing search engine results that linked the plaintiff with the Melbourne criminal underworld.  This decision demonstrates an increasing willingness of the courts to hold Google accountable in their role as one of the Internet’s gatekeepers. For our full report, click here.

8.  Regulatory

Senate Passes Marijuana Legislation

In June 2018, the Canadian Senate voted to pass the Cannabis Act, An Act respecting cannabis and to amend the Controlled Drugs and Substances Act, the Criminal Code and other Acts, by a vote of 52-29.  The Cannabis Act permits the sale, possession and use of recreational cannabis, but only when sold by a province, or, in some cases, when grown by the user. In October 2018, the Cannabis Act and Cannabis Regulations officially came into force permitting the sale, possession, and use of recreational cannabis. For our full report, click here.

Cannabis and Natural Health Products

In July 2018, the Cannabis Regulations were published in the Canada Gazette Part II (Vol. 152, No. 14) defining cannabis as not being a natural health product, thereby closing many doors for innovative and non-“herbal” cannabis-containing NHPs in the short term. For our full report, click here.