to ‘argue against
themselves’
Comics
Continued From Page 9
Duty
Continued From Page 13
the examiner had reviewed the
disclosed Wenk article without
finding it relevant. The application was allowed and the ’492
patent issued.
Justice Mactavish found that
the agents’ second response to
the examiner lacked good faith,
since, by not discussing the
Wenk article, it did not fully
and fairly describe the prior art.
The court had already found
that Wenk’s article did not render Lundbeck’s invention
obvious, but nonetheless found
the lack of disclosure objectionable.
The judgement did not provide a clear rationale as to why
the agents’ second response was
not full, fair or complete. It
remains uncertain what would
now constitute a full and fair
description of the prior art, and
what could possibly discharge
the duty of good faith, since the
mere accurate listing of the
titles of publications seems
insufficient. Do agents have to
argue against themselves and
affirmatively direct the examiner’s attention toward elements
of the prior art that are
unfavourable to the applicant’s
position, in effect having to do
the examiner’s job in identifying
potential objections to one’s
own application?
Since Justice Mactavish did
not address “intent” in her
analysis, this unprecedented
duty comes with absolute liability, exceeding even the previously stricter U.S. patent
regime, where a patent may
only be deemed unenforceable
if the agent’s intention to omit
the information during prosecution is proven. A patent
agent’s response based on an
honest but mistaken belief as to
what prior art teaches appears
insufficient today in Canada to
satisfy subs. 73(1)(a).
Until future court decisions
bring more clarity to this area of
the law, competent patent agents
must display extra vigilance in
preparing responses to examiner’s
requisitions and avoid making
broad statements as to what is
“taught by the art.” From a patent
challenger’s point of view, this
decision opens new and interesting avenues to follow in subjecting the file histories of their
opponents’ patents to detailed
scrutiny during litigation. ;
of rights which purport otherwise.
On those rare occasions when
Canadian courts have turned their
attention to the clause, they have
strictly interpreted it in favour
of authors of creative works,
holding that no contracting lan-
guage entered into by an author/
owner and assignee can override
the reversion.
The clause was inherited from
U.K. copyright statutes and is
referred to colloquially as the “Dick-
ens” clause, as it was originally
enacted to ensure that the surviving
wife and children of Charles Dick-
ens would be able to secure a por-
tion of the revenues generated by
exploitation of his written works.
However, the clause did not long
survive in its country of origin, and
was dropped from U.K. law with the
1956 iteration of its Copyright Act.
It is past time for the Canadian stat-
ute to be similarly updated.
For copyright exploiters, the
existence of the reversionary clause
poses a troubling challenge: the
security of their tenure as owner is
subject to the reversionary interest
of the author’s estate. For creators,
the clause wreaks a counter-intui-
tive result: given the uncertainty in
their ownership and the possibility
that they may be excluded from the
last twenty-five years of the copy-
right term, exploiters will be
inclined to discount the value they
are prepared to pay for a work.
Bob Tarantino is a lawyer in the
Entertainment Law Group of
Heenan Blaikie LLP in Toronto.
Court left door open for claims against wilfully blind service providers
eBay
Continued From Page 13
Daniel Brinza is an associate
at Borden Ladner Gervais LLP’s
Toronto office.
infringe a trade-mark, and
second, if the service provider
continues to supply the service to
one whom it knows or has reason
to know is engaging in trade-mark infringement.
It was this second test that was
at the centre of the dispute, with
the critical issue being generalized versus specific knowledge. To
the extent that eBay had specific
notice of infringing activity with
respect to a particular listing,
they acted on it. For example, for
any notice of claimed infringement submitted by Tiffany to
eBay that gave eBay reason to
know that a particular listing was
for counterfeit goods, eBay
promptly removed the listing.
The generalized knowledge
that eBay had was that some por-
tion of the Tiffany goods sold on
its website were counterfeit. Was
this enough to meet the second
branch of the above test, that the
service provider had knowledge
or reason to know? The Second
Circuit said no, holding that:
“…a service provider must have
more than a general knowledge or
reason to know that its service is
being used to sell counterfeit
goods. Some contemporary
knowledge of which particular
listings are infringing or will
infringe in the future is neces-
sary...Tiffany failed to demon-
strate that eBay was supplying its
service to individuals who it knew
or had reason to know were sell-
ing counterfeit Tiffany goods.”
Although the Second Circuit
did not impose liability on eBay in
these circumstances for contribu-
tory infringement, the court left
the door wide
open for claims
against service
providers that are
wilfully blind,
noting that “if
eBay had reason
to suspect that
counterfeit Tif-
fany goods were
being sold
through its web-
site, and inten-
tionally shielded
itself from discov-
ering the offend-
ing listings or the
identity of the sellers behind
them, eBay might very well have
been charged with knowledge of
those sales sufficient to satisfy
the test that the false advertising
issue turned, namely whether the
advertisements were likely to
mislead or confuse consumers.
The court noted that this determination must be made on the
basis of extrinsic evidence and
that the reasons of the trial court
did not reflect that. As a result,
that issue has been remanded to
the court below.
The Second Circuit made it
clear that it was possible for lia-
bility to be imposed for false
advertising, stating that “eBay
did affirmatively advertise the
goods sold through its site as Tif-
fany merchandise” and that the
“law requires us to hold eBay
accountable for the words it
chose insofar as they misled or
confused consumers.”
Although the ultimate out-
come of Tiffany’s false advertis-
ing claims will have to await the
next instalment in the proceed-
ings (and any appeals), it is clear
that service providers are poten-
tially exposed to liability to the
extent that they advertise name
brand items in the U.S. that are
not genuine. ;
John Cotter and Tara James
are IP litigators in the Intellectual
Property Department of the
Toronto office of Osler, Hoskin &
Harcourt LLP.
