Teresa Scassa - Blog

“Originality and Utilitarian Works:  The Uneasy Relationship between Copyright Law and Unfair Competition”, (2004) 1 University of Ottawa Technology Law Journal 51-74 PDF Available here

Courts have struggled with articulating the standard for “originality” in copyright law.  Some judges have leaned towards a “sweat of the brow” theory that rewards authors for their investment of labour in creating a work.  Others, most notably, the U.S. Supreme Court in the landmark decision of Feist Publications Inc. v. Rural Telephone Service Co. Inc., have held out for a standard which requires some “spark” or modicum of creativity. In this article, I examine the concept of “originality” in light of the shifting purposes of copyright law in Canada, and the historical relationship of utilitarian works to copyright law.  Works such as directories and factual compilations owe their value not to their contents, which are often in the public domain, but to the effort that has gone into collecting those contents.  The scope of protection of such “utilitarian works” to be offered under copyright law has generated controversy in case law and commentary.  By examining the treatment of the concept of “originality” in recent Canadian cases dealing with utilitarian works, the author explores the uneasy relationship between unfair competition law and copyright law in Canada.  I argue that the proliferation of utilitarian works protected by copyright, and in particular, information products, has rendered a threshold for originality extremely problematic.  I argue that the problem lies in the tension between copyright and unfair competition, primarily in relation to utilitarian works, and I conclude that copyright is an inapt vehicle for resolving issues of competition in the information economy.

“Recalibrating Copyright Law?:  A Comment on the Supreme Court of Canada’s Decision in CCH Canadian Ltd. v. Law Society of Upper Canada”, (2004) 3 Canadian Journal of Law and Technology 89-100 PDF Available here

The Supreme Court of Canada’s unanimous decision in CCH Canadian Ltd. et. al. v. Law Society of Upper Canada  has had  major implications for the development of copyright law in Canada.  In this comment, I critically examine the decision of the court, and its implications for the law around originality, fair dealing, and authorization.

“Nickled and Dimed:  The Dispute over Intellectual Property Rights in the Bluenose II”, (2004) 27 Dalhousie Law Journal 293-320

The Bluenose Schooner forms part of the folk history of Nova Scotia, and is a Canadian icon.  Popular assumptions that its name and image formed part of the public domain were put to the test in 2003 when the Bluenose II Preservation Trust Society brought suit against a Halifax business for infringement of its official marks, trademarks and copyrights relating to the ship and its name.  The litigation garnered local and national media attention, and the provincial government soon became involved in the dispute. In this article, I provide some background to the dispute before moving on to consider the merits of the trademark and copyright claims.  Because the infringement suit was eventually dropped as part of an agreement between the Trust and the Province of Nova Scotia, the legal issues raised by this case remain unresolved.  I argue hat the intellectual property claims of the Trust were largely without merit. I criticize the official marks regime under the Trade-marks Act, and discuss the boundaries between intellectual property and the public domain.

“Users’ Rights in the Balance:  Recent Developments in Copyright Law at the Supreme Court of Canada”, (2005) 22 Canadian Intellectual Property Review 133-146

A series of recent decisions on copyright law issues by the Supreme Court of Canada has touched on a wide range of key substantive issues in that area of law.  The result is, at least in theory, a re-configuration of some of the central rights and principles in copyright law.  The decisions come after a fairly lengthy period in which Supreme Court guidance on copyright issues was noticeably absent.  They also come at a time when the digital age is placing increased stresses on copyright law and its underlying principles.  In this paper I will consider four main issues addressed by the Supreme Court in the decisions in Théberge v. Galerie d’art du Petit Champlain, CCH Canadian Ltd. v. Law Society of Upper Canada, and SOCAN v. CAIP.  These are:  the purpose of copyright, the rights of owners of copyright, limits on copyrightable subject matter, and users’ rights. 

“Copyright in Collective Works”, (2005) 84 Canadian Bar Review 347-364

This paper explores the balance between the layers of copyright in collective works.  Focusing on the publication of collective works in digital formats, the author argues that care needs to be taken in determining whether such publications are reproductions of the original work, or new works.  An analysis to determine whether a collective work has been reproduced must respect the limitations of the definition of a collective work, and the balance that must be struck between the two layers of copyright in such works.