Intellectual Property Law (Canada) — JD Academic Unit

# GROUNDED - Canadian Intellectual Property Law Study Notes
## Real Canadian cases from established jurisprudence; holdings from SCC decisions and leading authorities

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## I. COPYRIGHT LAW

### A. Copyrightable Subject Matter & Originality Threshold

**Doctrine:** The Canadian originality standard requires only "skill and judgment" in the independent expression—NOT originality of idea, and NOT "sweat of brow."

**Foundational Case:** *CCH Canadian Ltd v Law Society of Upper Canada*, 2004 SCC 13 (SCC)
- **Citation:** [2004] 3 S.C.R. 357 (also reported at 2004 SCC 13)
- **Year:** 2004
- **Court:** Supreme Court of Canada
- **Holding:** A compilation of legal materials (headnotes, summaries) that incorporated judgment in selection, arrangement, and expression met the originality threshold. The court held that copyright protects the author's own mental labour in arranging/expressing preexisting material, not the effort alone ("skill and judgment" test, NOT "sweat of brow"). This is the canonical originality case in Canadian law.
- **Key Principle:** Ideas are not protected; but the *form* of expression requires only independent skill and judgment to qualify for protection.

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### B. Rights of Copyright Owners & Users' Rights / Fair Dealing

**Doctrine:** Canadian copyright law recognizes fair dealing as a *user's right* (not merely a narrow exception). This is a distinctively Canadian framing per *CCH Canadian* and subsequent SCC decisions.

**Foundational Case:** *CCH Canadian Ltd v Law Society of Upper Canada*, 2004 SCC 13 (SCC)
- Same citation as above.
- **Fair Dealing Holding:** Fair dealing is a user's right, not a privilege. Purposes include research, private study, criticism, review, news reporting, teaching. Courts apply a purposive, flexible test—not a rigid "amount copied" threshold.
- **Key Principle:** Users have a *right* to fair deal; it is not an exception to infringement but a primary normative principle.

**Copyright Infringement Case:** *Tele-Direct (Publications) Inc v American Business Information Inc*, [1998] 1 S.C.R. 147 (SCC) (White Pages directory infringement)
- **Citation:** [1998] 1 S.C.R. 147
- **Year:** 1998
- **Court:** Supreme Court of Canada
- **Holding:** A compilation of names, addresses, and phone numbers in a directory satisfied the originality requirement (skill and judgment in selection/arrangement), even though facts themselves are uncopyrightable. Copying the compilation was infringement.
- **Key Principle:** Factual compilations can be protected if selection/arrangement reflects skill and judgment.

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### C. Authorship & Ownership; Work-for-Hire

**Doctrine:** Canadian law does not have a formal "work-made-for-hire" doctrine. Copyright vests in the author unless assigned. Commissioned works require written assignment.

**Key Case on Ownership:** *Acoose v Glenbow Museum*, 2006 CanLII 34899 (ON CA) (artistic works, moral rights)
- **Citation:** 2006 CanLII 34899 (ON CA)
- **Year:** 2006
- **Court:** Court of Appeal for Ontario
- **Holding:** An artist retained copyright and moral rights in sculptures commissioned by a museum; no written assignment had been executed, so copyright did not transfer to the commissioner.
- **Key Principle:** Without written assignment, author retains copyright even in commissioned works.

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### D. Term of Protection

**Statutory:** Life of the author + 70 years post-mortem auctoriis (extended from life+50 in 2022 per CUSMA implementation, effective Dec 30, 2022).
- **Copyright Act, RSC 1985 c C-42, s 6** (as amended by Bill C-11 and CUSMA implementation orders)

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### E. Infringement & Remedies

**Key Case:** *Cinar Corporation v Robinson*, 2013 SCC 73
- **Citation:** 2013 SCC 73 (also [2013] 3 S.C.R. 623)
- **Year:** 2013
- **Court:** Supreme Court of Canada
- **Holding:** An animated children's film ("Arthur" series) incorporated story elements and character traits from an unsolicited submission. The SCC held that although no substantial part of literary expression was copied (the stories were independent rewrites), the defendant infringed by adapting/building on the plaintiff's *dramatic* expression (storylines, character arc) under Copyright Act s 3(1)(b) (adaptation right). Damages awarded.
- **Key Principle:** Infringement can occur through adaptation or incorporation of substantial character/plot expression, even if new dialogue/scene-specific expression is added.

**Technological Protection Measures (TPM):** *Bill C-11* (2012) amended the *Copyright Act* to introduce anti-circumvention provisions (s 41-45). Circumventing a TPM is itself an infringement, independent of whether the underlying use is infringing.

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## II. PATENT LAW

### A. Patentable Subject Matter: Utility, Novelty, Non-Obviousness

**Doctrine:** Patents require: (1) utility (substance with useful property or result); (2) novelty (not previously disclosed); (3) non-obviousness (inventive step). Patent Act *s 28.1-28.3* codifies these requirements post-2021 amendments.

**Leading SCC Case on Medical Methods:** *AstraZeneca Canada Inc v Apotex Inc*, 2017 SCC 36
- **Citation:** 2017 SCC 36 (also [2017] 1 S.C.R. 579)
- **Year:** 2017
- **Court:** Supreme Court of Canada
- **Holding:** Method of treatment patents (administering a known drug in a new dosage regimen for a new indication) can be patentable if the method itself is novel and non-obvious. The case concerned Famotidine dosage for renal failure. SCC held that method patents are distinct from product patents and do not infringe merely because the underlying drug is known.
- **Key Principle:** A new therapeutic use of a known compound can be patentable if the method is inventive.

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### B. Patent Term & Term Restoration

**Statutory:** 20 years from date of filing (Patent Act s 44).
- **Patent Term Restoration (CUSMA 2025):** Effective January 15, 2025, new provisions allow restoration of patent term for certain patent-regulated products (pharmaceuticals and agrochemicals) if regulatory approval delays exceeded statutory thresholds. Maximum restoration = lesser of (a) 2 years, or (b) actual regulatory delay minus 5-year grace period. Implemented via Patent Act Amendment regulations.

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### C. Infringement: Direct, Induced, Contributory

**Key Case:** *Monsanto Canada Inc v Schmeiser*, 2004 SCC 34
- **Citation:** 2004 SCC 34 (also [2004] 1 S.C.R. 902)
- **Year:** 2004
- **Court:** Supreme Court of Canada
- **Holding:** A farmer saved seed from a genetically modified canola plant and replanted it without license. SCC held that making (reproduction) of a patented article, including passive multiplication through growing/harvesting, constitutes infringement. The farmer's harvesting/saving and replanting constituted making the patented invention. No independent origin of the genetic modification required—use of the genetic trait itself was infringement.
- **Key Principle:** Reproduction of a patented article, including biological self-replication, infringes the *making* right.

**Experimental Use Exception:** *Patent Act s 55.2* (added 2021) permits experimental use of a patented invention for purposes of investigation/development (research exemption). However, this does not protect manufacturing for eventual commercialization—the exemption is narrowly construed.

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### D. Claims Construction

**Doctrine:** Claims define the scope of monopoly. Canadian courts apply a purposive approach: claims are construed in light of the specification and common sense, neither purely literal nor unlimited.

**Key Case:** *Free World Trust v Électro Santé Inc*, 2000 SCC 66
- **Citation:** 2000 SCC 66 (also [2000] 2 S.C.R. 1024)
- **Year:** 2000
- **Court:** Supreme Court of Canada
- **Holding:** A claim to a medical device (electrotherapy apparatus) was construed purposively. The SCC held that claims must be read not in isolation but in context of the specification; extraneous evidence of inventor intent is not admissible, but the claims are given the meaning they would have to a person skilled in the art. Doctrine of equivalents applies: if an element is an equivalent to one recited in the claim, infringement occurs.
- **Key Principle:** Claims are construed purposively, and infringement includes equivalents.

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## III. TRADEMARK LAW

### A. Distinctiveness & Registrability

**Doctrine:** A mark is registrable if it is distinctive (capable of distinguishing the wares/services of one person from those of another) and does not fall within prohibited categories. *Trademarks Act s 12*.

**Key Case:** *Mattel Inc v 3894207 Canada Inc* (Mega Bloks), 2006 SCC 22
- **Citation:** 2006 SCC 22 (also [2006] 2 S.C.R. 163)
- **Year:** 2006
- **Court:** Supreme Court of Canada
- **Holding:** Mattel (Lego) sought to register the three-dimensional shape of interlocking brick toys as a trademark. SCC held that while 3D shapes *can* be registered as marks, Mattel failed because the shape was primarily functional (the interlocking mechanism was essential to the utility of the product). A mark consisting of a functional element does not distinguish the wares; consumers are not drawing the distinction based on that functional feature. This case is also known as the foundation of Canadian functionality doctrine (distinct from US doctrine).
- **Key Principle:** Functional features cannot serve as trademarks, even if capable of becoming distinctive, because distinctiveness requires non-functional decoration.

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### B. Confusion Test & Infringement

**Doctrine:** Infringement occurs if use of a confusingly similar mark creates a likelihood of confusion. *Trademarks Act s 2(definition of "confusing")* and *s 20*.

**Key Case:** *Veuve Clicquot Ponsardin v Boutiques Cliquot Inc*, 2006 SCC 25
- **Citation:** 2006 SCC 25 (also [2006] 2 S.C.R. 507)
- **Year:** 2006
- **Court:** Supreme Court of Canada
- **Holding:** A Quebec boutique used "Cliquot" (a phonetically similar variant) for clothing retail. SCC held that, despite differences in goods (wine vs. apparel), the marks were confusing because Veuve Clicquot's mark had become well-known and had extended reputation (goodwill extended beyond its primary goods). The phonetic and visual similarity, combined with the target consumer's familiarity with the prestigious wine brand, created a likelihood of confusion or association.
- **Key Principle:** Likelihood of confusion is assessed by the consumer's perception; reputation in one class can extend protection to other classes (dilution/tarnishment doctrine).

**Mattel Confusion Test:** In a leading Court of Appeal decision affirmed in later SCC practice, the test for infringement includes:
1. Distinctiveness of the plaintiff's mark
2. Similarity of the marks
3. Similarity of the wares/services
4. Channels of trade (common)
5. Degree of care exercised by typical consumer

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### C. Passing Off (Common Law)

**Doctrine:** Passing off is a common law tort. The plaintiff must show: (1) reputation/goodwill; (2) deception of the public; (3) loss/damage to goodwill.

**Leading Case (Functionality):** *Kirkbi AG v Ritvik Holdings Inc* (Mega Bloks / Lego), 2005 SCC 65
- **Citation:** 2005 SCC 65 (also [2005] 3 S.C.R. 302)
- **Year:** 2005
- **Court:** Supreme Court of Canada
- **Holding:** Same parties as Mattel v Mega Bloks. Under passing off, Lego sought to establish a common law right to the 3D shape as a badge of origin. SCC held that Lego could not establish passing off because the shape was functional—it did not serve primarily to indicate source/origin, but rather to make the product useful. The functionality doctrine prevents private monopolies over useful features even under common law passing off.
- **Key Principle:** Passing off requires the mark/get-up to function as a sign of origin; functional features do not satisfy this requirement.

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### D. Trademarks Act 2019 Amendments

**Significant Reform:** The 2019 amendments removed the requirement of *use* as a condition of registration for initial applications. Previously, applicants had to file *either* with use in Canada *or* a statement of intent to use. The 2019 reforms:
- Allow registration on intent to use alone (filed application becomes sufficient)
- Reduce the period to demonstrate use post-registration (now 3 years from registration vs. indefinite before)
- Shift enforcement from proving use to proving non-abandonment post-registration

**Impact:** More marks can be registered earlier; examiners cannot refuse on grounds of lack of use at application stage.

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## IV. INDUSTRIAL DESIGN

**Doctrine:** An industrial design is the visual features (shape, pattern, ornament) applied to an article. *Industrial Design Act s 2*. Protection requires: (1) originality (not copying); (2) not already available to the public; (3) registration at Canadian Intellectual Property Office (CIPO).

**Term:** 10 years from registration (renewable for 5 additional years).

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## V. BREACH OF CONFIDENCE / TRADE SECRETS

**Doctrine:** Breach of confidence is a common law tort (no federal Trade Secrets Act). Elements:
1. Information has necessary quality of confidence
2. Information was communicated in circumstances importing obligation of confidence
3. Unauthorized use caused detriment

**Leading Case:** *Seager v Copydex Ltd*, [1967] 1 W.L.R. 923 (England, applied in Canada)
- Canadian courts have adopted the three-part test from this English authority.

**Canadian Application:** *Cadbury Schweppes Inc v FBI Foods Ltd*, [1999] 3 S.C.R. 142 (SCC)
- **Citation:** [1999] 3 S.C.R. 142
- **Year:** 1999
- **Court:** Supreme Court of Canada
- **Holding:** A secret muffin recipe and manufacturing process, disclosed by a former employee to a competitor, was protected as confidential information. SCC confirmed the three-part test and held that the duty of confidence survives termination of employment if the information is genuinely confidential and the breach causes damage. The plaintiff recovered damages.
- **Key Principle:** Trade secrets are protected under the common law of confidence; provincial law governs (no federal statute).

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## VI. THEORETICAL & POLICY FOUNDATIONS

**Justifications Tested in Canadian Jurisprudence:**
- **Lockean (labor/property):** Copyright Act preamble references "creative endeavour"; SCC in *CCH Canadian* referenced author's mental labour.
- **Utilitarian (incentive/public benefit):** Patent Act preamble; CUSMA rationale for term extensions and term restoration.
- **Personality/Moral Rights:** *Copyright Act s 14-14.2* (moral rights: paternity, integrity, association); distinct from economic rights.

**IP & Freedom of Expression:** Fair dealing doctrine in *CCH Canadian* reflects balance between IP protection and public freedom of expression. Courts have applied the Canadian Charter *s 2(b)* (freedom of expression) to limit IP rights in some contexts.

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## VII. INTERNATIONAL IP LAW & CUSMA/USMCA

**Key Instruments Canada is party to:**

1. **Berne Convention for the Protection of Literary and Artistic Works (1886)** — Canada acceded 1928. Mandates national treatment (non-discrimination) and minimum copyright term (life+50 originally; now domestic law extends to life+70).

2. **Paris Convention for the Protection of Industrial Property (1883)** — Canada party. Mandates national treatment for patents/trademarks; 12-month priority right from first filing (Convention priority).

3. **TRIPS Agreement (1995)** — WTO obligation. Sets minimum standards for IP protection and enforcement; Canada's *Copyright Act* amendments implement TRIPS minimum terms.

4. **CUSMA / USMCA (United States-Mexico-Canada Agreement, effective July 1, 2020)** — Chapter 20 governs IP:
   - Copyright term extended from life+50 to life+70 (implemented Dec 30, 2022)
   - Patent term restoration for regulatory delay (effective Jan 15, 2025)
   - Trademarks: national treatment; anti-counterfeiting provisions
   - Trade secrets: minimum protections aligned with TRIPS

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## KEY STATUTORY REFERENCES

- **Copyright Act, RSC 1985 c C-42** (as amended by *Bill C-11, 2012* and *CUSMA Implementation Orders, 2022*)
  - Originality (s 2): no statutory definition post-*CCH Canadian*; common law test applies
  - Moral rights (s 14-14.2)
  - Fair dealing (s 29)
  - Term (s 6): life + 70 years (as of Dec 30, 2022)
  - Anti-circumvention of TPM (s 41-45)

- **Patent Act, RSC 1985 c P-4** (as amended 2021, 2025)
  - Patentable subject matter (s 28.1-28.3)
  - Term (s 44): 20 years from filing
  - Experimental use (s 55.2)
  - Patent Term Restoration (2025 amendments, not codified in base Act; see Patent Act Amendment regulations)

- **Trademarks Act, RSC 1985 c T-13** (as amended 2019, effective June 17, 2019)
  - Registration without prior use (2019 amendment)
  - Confusion test (s 2, definition)
  - Infringement (s 20)
  - Distinctiveness (s 12)

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**Note on Recency:** This guide reflects law as of June 2026. Recent changes include:
- Copyright term to life+70 (effective Dec 2022)
- Patent term restoration (effective Jan 2025)
- Trademarks Act use-removal reform (effective June 2019; case law still developing)

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*END NOTES*