The Price of Privacy: Canada’s Top Court Rules, ISPs must disclose the identity of illegal downloaders at a “reasonable” cost

By Scott Miller and Laura Crimi, October 29th, 2018

The Supreme Court of Canada sided with Rogers Communications in a recent 9-0 decision ruling that requires companies seeking to pursue copyright violators to remunerate internet service providers (ISPs) for looking up names of subscribers suspected of illegal activity.[1]

The Internet has long protected the identity of users participating in file sharing networks facilitating the rapid sharing of copyrighted content. The Government of Canada enacted the “notice and notice” regime as part of the Copyright Modernization Act in 2012 to deter online copyright infringement while balancing the rights of interested parties. Under the “notice and notice” regime, a rights owner is able to forward notice of alleged infringement to an ISP, the ISP is then obliged to forward the notice of infringement to the alleged wrongdoer. The “notice and notice” regime is “the first step in a process by which rights holders can go after those they allege are infringing… Then the rights holder can use that when they decide to take the alleged infringer to court.”[2] An ISP is not required to disclose the identity of a user who has received a notice of infringement under the “notice and notice” regime. ISPs are only required to disclose the identity of an individual who has received notice of infringement from a rights holder under a Court granted Norwich order, an extraordinary remedy that enables a rights holder to discover the identity of infringers from an internet intermediary like an ISP.

The recent ruling of Canada’s top Court in Rogers Communications Inc. v Voltage Pictures creates a new precedent allowing ISPs to charge rights holders for the costs associated with pursuing copyright violators in compliance with a Norwich order.

Voltage Pictures, the production studio behind I Feel Pretty and Oscar winning films including Dallas Buyers Club and The Hurt Locker, first brought the matter to trial in the Federal Court in 2014.[3] Voltage put forward a reverse class action and moved to compel Rogers Communications to provide the personal information of alleged infringers at no cost.[4] Rogers was originally ordered by the Federal Court to disclose the identity of the alleged infringer to Voltage and Voltage was ordered to pay Rogers $100 per hour, plus HST, for the time spent assembling the information. The decision was appealed to the Federal Court of Appeal, where it was found that Rogers was entitled to reasonable costs of the actual act of disclosure but the remainder of associated costs incurred by Rogers in compliance with a Norwich order was not recoverable.

As a result the recent Supreme Court decision, ISPs can now charge a “reasonable amount” for the efforts associated with looking up subscribers suspected of illegal activity under a Norwich order. However, the steps untaken by an ISP to comply with a Norwich order that overlap with an ISP’s obligations under the “notice and notice” regime may not be recoverable. The determination for what constitutes a “reasonable cost” was sent back to the lower court for a final decision. As a result of this Supreme Court decision, the amount of costs associated with identifying internet users suspected of illegal activity may impact the way in which rights holders pursue infringers. The traditional method of suing many internet users for copyright infringement at once may become cost prohibitive for rights holders like movie production studios upon the determination of what an ISP can reasonably charge for compliance with a Norwich Order.

Humanized Antibodies: CIPO Picks Up the Pace

By Claire Palmer and Jessica Sudbury, September 15t^h, 2016

Keeping pace with science and technology that evolves at lightning speed is a challenge for any government institution. The Canadian Intellectual Property Office (CIPO) has a lot of catching up to do, but is not out of the race just yet. Arcane patent office examination practices grounded in habit can never justifiably replace a proper fact-driven determination of patentability. Commissioner’s Decision 1398 (CD 1398, issued on May 5, 2016)[1] reminds us that CIPO is not completely asleep behind the wheel and shows that the applicant who fights to the bitter end can win it all.

At issue in CD 1398 were a set of dependent claims (5, 10, 15 and 20) in patent application 2,451,493 (published on January 3, 2003)[2] over a genus of humanized murine monoclonal antibodies directed against a human glypican-3 epitope. The epitope sequence was adequately disclosed; however the application did not disclose the corresponding complementarity determining regions (CDRs) for the humanized embodiments, nor any evidence that such humanized embodiments were actually made from the process described. In the Final Action issued by the Examiner on February 4, 2014, these dependent claims were found to be incompliant with section 84 of the Patent Rules for lack of support in the description, and that the specification was in violation of subsection 27(3) of the Patent Act for lack of adequate enablement.

The Examiner largely grounded rejection of these claims based on a previous decision issued by the Commissioner concerning humanized antibodies (CD 1296, Re: Sloan-Kettering Institute for Cancer Research),[3] finding that it created a bright-line rule requiring disclosure of CDR amino acid sequences to fulfill support requirements in the absence of evidence pointing to an actual carrying-out of the invention in the application. This, despite the fact that adequate support for generic monoclonal antibodies has generally been found upon disclosure of a fully characterized antigen capable of binding the antibody claimed (e.g., see the CD 1302 Immunex decision and MOPOP directive 17.08.01b).[4]

Since the CD 1296 Sloan-Kettering decision was issued in 2009, similar reasoning has been repeatedly applied to justify rejections of similarly-supported claims over humanized antibodies by CIPO examiners in disregard of submitted evidence. The Patent Appeal Board noticed this problem when it recommended an upholding of the dependent claims for the humanized genus of anti-glypican-3 antibodies to the Commissioner in CD 1398.

The Board identified several problems with the Examiner’s line of reasoning in the 2014 Final Action. First, it commented that no specific guidance concerning humanized antibodies existed at the time in Canadian jurisprudence (paragraph 23). Secondly, the Board noted that “the enablement requirement of paragraph 27(3)(b) of the Patent Act entails fact-specific determinations that take into account the common general knowledge (CGK) and the ordinary skills possessed by the person of ordinary skill in the art (POSITA) at the publication date of the patent application,” and that the relevant CGK had significantly evolved over the 11 years since (paragraph 35). Nonetheless, the evidence put before the Board was convincing to establish that antibody humanization techniques were “routine” in 2003 (paragraph 42). Thus, the relevant POSITA would have been adequately enabled to carry out the invention as described at the publication date (paragraph 44). Finally, the Board reasoned that the CD 1296 Sloan-Kettering decision “cannot impose a rigid rule” applicable to variable factual situations and that it had limited applicability to the present case (paragraph 39). Accordingly, the Board did not find that disclosure of the CDRs for humanized antibodies was a requirement to comply with the Patent Act.

While the institutional checks and balances on display in the CD 1398 decision may bring comfort to some, the decision may also serve as a reminder to others that baseless CIPO examination practices can present a serious obstacle to inventors seeking otherwise justified ownership rights over rapidly-developing technology. Pushing through these barriers with a well-supported patent application can clearly be worth the trouble and expense, however. Examiners should always bear in mind that the relevant CGK “undergoes continuous evolution and growth” (CD 1398, paragraph 36) and that only the CGK that was available to the relevant POSITA at the publication date can be considered in light of Patent Act requirements. An evidence-driven analysis of application claims in in light of the CGK at time of filing would catch a situation where the relevant POSITA had become practiced enough in brand-new technologies to not require inventiveness in carrying out an invention as described. Considerations, such as the current relevant CGK or previous Commissioner decisions analyzing similar patent applications, have no justifiable bearing on an examiner’s assessment of a patent application.

Thankfully, it appears that CIPO retains self-awareness and recognizes when it is stuck in a rut spinning its wheels. While consistency in examination practices may lead to increased certainty over time to the benefit of the public, our innovation institutions cannot carry out mandates without leaving room for flexibility and growth in internal procedures. Further, unlike courts, tribunals in Canada are not bound by stare decisis. Therefore, CIPO is not held to apply any body of rules except those found within case law, the Patent Act or the Patent Rules. Previous Commissioner’s Decisions are not determinative, and the public is entitled to decisions issued by CIPO that are assessed according to the relevant factual matrix in disregard of existing examination practices. Hopefully, the CD 1398 decision reflects a new lasting habit embarked on by CIPO to continually oversee and make internal adjustments to ensure it stands a fighting chance of keeping pace with our swift innovators.

Benefits of Registering a Trademark in Canada

By Carrie Kerr, October 17t^h, 2016

Are you trying to decide whether to register your trademark in Canada?

Although the application process at the Canadian Intellectual Property Office (CIPO) can be unfamiliar and may be daunting, the time, money and effort you put in to formally register your mark is always worth it in the end.

Here are some of the reasons why you should consider it:

From Coast-to-Coast...

A Canadian Trademark Registration provides you with the exclusive right to use your trademark across Canada in association with the goods and services covered by your registration. Provided that you are actually using your trademark, registering it will protect you throughout Canada, even if your business only operates in a limited geographical area.

This benefit of trademark registration is unlike common law trademark rights. In Canada, as soon as you start using your trademark you begin acquiring what is called “common law” rights to your trademark. This means you are generally entitled to the exclusive use of your trademark in the geographical area in Canada where your mark has gained a reputation.    

By registering your trademark, you would enjoy this exclusive use across the entire country.

...South of the Border...

Owning a registered trademark in Canada can help you get a foot in the door in the United States, even if you have yet to enter the U.S. marketplace.

If you are currently using your trademark in Canada in association with the goods and services covered by your registration, you can rely on that use and registration as a basis for filing in the United States. Once allowed by the United States Patent and Trademark Office (USPTO), your U.S. application can then proceed to registration without having to submit any specimens of use to the USPTO. Without this corresponding Canadian Trademark Registration, you would need to submit evidence to the USPTO showing that you have begun using your mark in the United States before your application could register.

However, you will eventually need to start using your mark in the United States in order to keep your trademark rights in the U.S., specimens of use need to be filed five years after registration; otherwise, you may risk losing your registration.

...and Beyond

When you first file your trademark application in Canada, it sets off a timer of sorts.

Under the Paris Convention, an international intellectual property treaty, if you file a trademark application in Canada and within six months file an application in another member country, your foreign application can claim “priority” back to the earlier-filed Canadian application.

Essentially, the effective filing date in that foreign country will be the date you filed your application in Canada. This might give you an upper hand, in a case of a conflicting mark, as you can claim the earlier Canadian filing date for your registered rights to the trademark in a foreign country.

So Should You Register Your Trademark?

Registering a trademark in Canada is an investment. There is no doubt that the process takes time and money, however, you will find that it is a valuable asset, one that can help assert your rights in Canada, the United States and in other foreign countries.

If you have any questions about Canadian trademarks or are ready to start a trademark application, please do not hesitate to contact us. We are always happy to help.