Teresa Scassa - Blog

Teresa Scassa

Teresa Scassa

"Intellectual Property on the Cyber-Picketline:  A Comment on British Columbia Automobile Assn v. Office and Professional Employees' International Union, Local 378", (2002) 39 Alberta Law Review 934-962

This paper is a lengthy and critical comment on the decision of the British Columbia Supreme Court, British Columbia Automobile Assn v. Office and Professional Employees' International Union, Local 378.. The case remains an important decision on issues of passing off, trademark and copyright infringement relating to websites, domain names and meta tags.  In this paper I explore these issues, all of which may commonly arise in situations of alleged competition between websites.  The case thus provides a context for exploring legitimate and unlawful uses of domain names and meta tags, copyright infringement, and web site design, and touches on the role of s. 22 of the Trade-marks Act.  Because BCAA also occurs in the context of a labour dispute, it raises further issues about intellectual property rights and freedom of expression.  In this context, I examine the balance being struck between monopolistic intellectual property rights and the fundamental right of freedom of expression.

“A Mouse is a Mouse is a Mouse:  A Comment on the Supreme Court of Canada’s Decision on the Harvard Mouse Patent”, (2003) 3 Oxford University Commonwealth Law Journal 105-118

On December 5, 2002, the Supreme Court of Canada handed down its long awaited decision in President and Fellows of Harvard College v. Canada (Commissioner of Patents). Known as the Harvard Mouse case, it had its genesis in the Canadian Patent Commissioner’s decision to deny a patent over a genetically engineered creature known as the “oncomouse”.  The mouse, which has been patented in the United States, numerous European countries, and Japan, brought to the forefront in Canada the issue of whether a higher life form could be the subject of a patent.  After dividing opinions below, the issue also split the Supreme Court of Canada, resulting in a somewhat surprising 5-4 ruling that the definition of “invention” in the Patent Act  did not extend to include a higher life form such as the oncomouse.  The split is a profound one.  While the majority of the Court reflects what can almost be characterized as a precautionary approach to patenting higher life forms, the dissenting justices emphasize the economic and global imperatives of interpreting Canada’s patent legislation consistently with that of other Western nations, so as to recognize patents over virtually all forms of innovation. This paper is a comment on the decision in the case.

“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. 

Wednesday, 22 June 2005 13:52

Copyright in Collective Works

“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.

“Original Facts:  Skill, Judgment and the Public Domain”, (2006) 51 McGill L.J. 253-278

It has long been said that facts cannot be protected by copyright.  However, copyright jurisprudence has been less than clear about what constitutes a fact, and about the reasons why facts cannot be copyrighted.  Although the Supreme Court of Canada, in its recent decision in CCH Canadian Ltd. v. Law Society of Upper Canada, restated the principle that facts cannot be copyrighted, the court also set a standard for originality that can easily be interpreted so as to offer copyright protection to facts.  In this paper the author explores the concept of “facts”, and the way in which Canada’s standard for originality might be used to extend copyright to facts.  She examines the policy reasons why facts should not be copyrightable, and argues for an interpretive approach that leaves facts in the public domain.

“Consumer Privacy and Radio Frequency Identification Technology” (with Theodore Chiasson, Michael Deturbide and Anne Uteck, (2005-2006) 37 University of Ottawa Law Review 215-248

Radio Frequency ID tags are poised to replace the UPC barcode as a mechanism for inventory control in the wholesale and retail contexts.  Yet the tiny chips offer a range of potential uses that go beyond the bar code.  In this paper we define RFID technology and its applications.  We explore the privacy implications of this technology and consider recent attempts in the U.S. and European Union to grapple with the privacy issues raised by the deployment of RFIDs at the retail level.  We then consider the extent to which Canada’s Personal Information Protection and Electronic Documents Act  will apply to RFID technology, before making recommendations for initiatives to proactively address the privacy issues that RFIDs will raise.

“Distinguishing Functional Literary Works from Compilations: Issues in Originality and Infringement Analysis”, (2006) 19 Intellectual Property Journal 253-269

In CCH Canadian v. Law Society of Upper Canada, the Supreme Court of Canada set out the standard for originality in Canadian copyright law.  Originality was a central issue in the recent decision of the Quebec Court of Appeal in Bonnette c. Dominion Blueline Inc.  In this paper, the author examines how the Court of Appeal applied the new standard of originality.  In the course of the analysis, the author establishes the importance of properly distinguishing between functional literary works and compilations both for an analysis of originality and for the infringement analysis.

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