Teresa Scassa - Blog

“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.

“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.

“Using Copyright Law to Prevent Parallel Importation:  A Comment on Kraft Canada, Inc. v. Euro Excellence, Inc.”, (2007) 85 Canadian Bar Review 409-432

In Kraft Canada, Inc. v. Euro Excellence, Inc., the Federal Court of Appeal ruled that the secondary infringement provisions of the Copyright Act could be used to prevent the parallel importation into Canada of chocolate bars, due to copyrights in the trade-mark logos on the product labels.  The effect of this decision, currently on appeal to the Supreme Court of Canada, is to give trade-mark holders a tool to prevent parallel importation in contexts where trade-mark law has generally been ineffective.  While the use of copyright law to achieve a result in these circumstances is problematic, the author argues that the solution lies in legislative amendment rather than in creative interpretations of the Copyright Act.

“Global Reach, Local Grasp: Constructing Extraterritorial Jurisdiction in the Age of Globalization” (2007) 6 Canadian Journal of Law and Technology 29-60. (With Stephen Coughlan, Robert Currie and Hugh Kindred) PDF Available here.

The reach of national law is often greater than its grasp. Canada, like other countries, has effective legal power over its territory and all within it. However, one consequence of the current process of globalization, for good or ill, is that Canadian interests are no longer contained exclusively within Canadian borders. Canada thus finds it increasingly necessary to consider asserting its legal jurisdiction beyond its frontiers. In this we consider issues of jurisdiction, distinguishing between territorial and extraterritorial jurisdiction, and defining and discussing legislative/prescriptive jurisdiction, executive/enforcement jurisdiction, investigative jurisdiction and judicial/adjudicative jurisdiction. We discuss the mechanics of extraterritorial action, and  the means by which extraterritorial action is taken.  We also consider the policy justifications which have primarily motivated Canada to act extraterritorially in the past. In the second part of the paper, we consider whether the lessons of the past are applicable to the future. Primarily we will do this by pursuing four “case studies” of areas of law which raise new and challenging issues. These include i) the internet; ii) personal data protection, iii) human rights and iv) competition in the marketplace.

“The Doctrine of Functionality in Trade-mark Law Post-Kirkbi”, (2007) 21 I.P.J. 87-115.

The doctrine of functionality has long served to prevent the creation of trade-mark monopolies over the functional features of wares. In Kirkbi AG v. Ritvik Holdings Inc., the Supreme Court of Canada emphasized the policy basis for the doctrine which it described as “a logical principle of trade-marks law”.  In this article, the author examines the Kirkbi decision and identifies a number of issues which remain unresolved by the Court’s reasons.  These include the reconciliation of approaches to functionality in earlier court decisions, the role of prior patents, the scope of the doctrine of functionality, issues of utility and ornamentation, and the subject matter to which the doctrine applies.

“Information Privacy in Public Space:  Location Data, Data Protection and the Reasonable Expectation of Privacy”, (2009) 7:2 Canadian Journal of Law and Technology 193-220. PDF available here.

The sheer volume of location data that is now being collected by private sector companies in relation to a wide range of products and services poses serious challenges for privacy and data protection law.  This paper considers a central challenge to privacy posed by the collection and compilation of location data  -- the accessibility of this data to law enforcement agents through exceptions to the general principles of consent for disclosure that exist under private sector data protection legislation in Canada.  Recent court interpretations of these exceptions – primarily in the internet context – paint a muddled picture of their relationship to the right to be free from unreasonable search and seizure under the Canadian Charter of Rights and Freedoms.  This paper considers whether the permissive disclosure provisions of the Personal Information Protection and Electronic Documents Act (PIPEDA) and its substantially similar counterparts mean that law enforcement agents have ready access to information about our movements and activities, or whether s. 8 of the Charter plays a role in limiting the circumstances in which disclosure without notice or consent may take place.

“Intellectual Property and the Licensing of Canadian Government Geospatial Data: An Examination of Geoconnections’ Recommendations for Best Practices and Template Licences”, (2010) 54:3 Canadian Geographer 366-374 (with Elizabeth F. Judge) PDF Available here.

In Canada, Crown copyright permits government to assert control over its works.  These Crown rights have often been justified on the basis that government must assert intellectual property rights so as to be better able to control the accuracy, integrity, and quality of any information that reaches the public through Crown works. In this article, the authors examine GeoConnections’ template agreements for the licensing of government geographic data.  They argue that not only is the basis and scope of claims to intellectual property rights uncertain, the objectives of quality control, data integrity, and accuracy do not appear to motivate the licence terms. The uncertainty as to the legal basis of the intellectual property claims is significant, as licences of this kind may give support to otherwise weak downstream claims by third parties to copyright in data products generated through the use of geographic data provided by the Crown.