Law Commons^™

Improper Appropriation, Daniel J. Gervais

Daniel J Gervais

The traditional (Arnstein) test for copyright infringement is satisfied when the owner of a valid copyright establishes unauthorized copying by the defendant. To demonstrate unauthorized copying, one of the major tests is that the plaintiff must first show that her work was actually copied; second, she must establish substantial similarity and/or that the copying amounts to an improper or unlawful appropriation. The second prong is satisfied when (i) protected expression in the earlier work was copied and (ii) the amount of the copyrighted work that is copied must be more than de minimis. This Article examines, first, how impropriety has …

The Patent Option, Daniel J. Gervais

Daniel J Gervais

There is a shift in the shape of intellectual property (IP) tools used to strengthen and lengthen the right of pharmaceutical companies to exclude others from making and marketing their products. Patents have traditionally been the tool of choice. Over the past two decades, however, pharmaceutical companies have increased their degree of reliance on a right known as “data exclusivity.” This right, which now exists in most major jurisdictions, is the right to prevent third parties from relying on the clinical trial data submitted by another pharmaceutical company to obtain marketing approval for a bioequivalent or biosimilar product. The right …

Intellectual Property: A Beacon For Reform Of Investor-State Dispute Settlement, Daniel J. Gervais

Daniel J Gervais

Investor-state dispute-settlement (ISDS) clauses give multinational investors (corporations) a right to sue a state in a binding proceeding before an independent arbitration tribunal. This jurisgenerative right to file a claim in an international tribunal with mandatory jurisdiction is generally reserved to States. ISDS is a mechanism meant to protect the private property of multinational investors against certain acts of public authorities.

Intellectual Property differs from the more traditional private (property) law interests that ISDS aims to protect. IP incorporates public policy objectives such as innovation, access to information or public health that are reflected in limitations and exceptions to the …

Exploring The Interfaces Between Big Data And Intellectual Property Law, Daniel J. Gervais

Daniel J Gervais

This article reviews the application of several IP rights (copyright, patent, sui generis database right, data exclusivity and trade secret) to Big Data. Beyond the protection of software used to collect and process Big Data corpora, copyright’s traditional role is challenged by the relatively unstructured nature of the non-relational (noSQL) databases typical of Big Data corpora. This also impacts the application of the EU sui generis right in databases. Misappropriation (tort-based) or anti-parasitic behaviour protection might apply, where available, to data generated by AI systems that has high but short-lived value. Copyright in material contained in Big Data corpora must …

Investor-State Dispute Settlement: Human Rights And Regulatory Lessons From "Lilly V. Canada", Daniel J. Gervais

Daniel J Gervais

The triangular interface between trade, intellectual property (IP) and human rights has yet to be fully formed, both doctrinally and normatively. Adding investor-state dispute settlement (ISDS) to the mix increases the complexity of the equations to solve. Two resultant issues are explored in this Article. First, the Article considers ways in which broader public policy objectives—in particular the protection of human rights—can and should be factored into determinations of whether a state’s action is compatible with its trade obligations and commitments in the state-to-state dispute settlement context. Second, the Article examines whether doctrinal tools used in state-to-state, trade-dispute settlement to …

The Patent Option, Daniel Gervais

Daniel J Gervais

Improper Appropriation, Daniel Gervais

Daniel J Gervais

Intellectual Property: A Beacon For Reform Of Investor-State Dispute Settlement,, Daniel Gervais

Daniel J Gervais

Blockchain And Smart Contracts: The Missing Link In Copyright Licensing?, Balazs Bodo, Daniel Gervais, Joao Pedro Quintais

Daniel J Gervais

Irreconcilable Differences? The Geneva Act Of The Lisbon Agreement And The Common Law, Daniel Gervais

Daniel J Gervais

The Protection Of Performers Under U.S. Law In Comparative Perspective, Daniel Gervais

Daniel J Gervais

The Garcia v Google case raised fundamental questions about US law as it applies to performed works. This Essay uses a comparative lens to shed some hopefully useful light on the debate. The Essay proceeds essentially in two parts. First, the Essay explores and critiques the international protection of performers’ rights using both history and policy as focal points. The following part describes the protection of performers and other owners of “related rights” in US law and explains the differences that adopting a related rights regime would bring about in the United States.

Who Cares About The 85 Percent? Reconsidering Survey Evidence Of Online Confusion In Trademark Cases, Daniel Gervais, Julie M. Latsko

Daniel J Gervais

There is an assumption in US trademark law that the protection of consumer interests—a traditional normative pillar of trademark law--is best achieved by enjoining use by a defendant of a mark that creates a likelihood of confusion (with the plaintiff’s mark) for 15% or more (sometimes less) of relevant consumers. Courts often use survey evidence to determined existence of the likelihood of confusion. This article argues that the interests of all consumers are relevant in that determination. This means that determining the costs, if any, imposed on nonconfused consumers should also be part of the equation. This can be accomplished …

Trips & Development, Daniel J. Gervais

Daniel J Gervais

This brief Chapter in the (forthcoming) SAGE Handbook of Intellectual Property examines available data and analyses concerning the impact of the Agreement on Trade-Related Aspects of Intellectual Property Rights (TRIPS) on development. The Chapter considers distinctions among types of countries and industries, and the role of the World Intellectual Property Organization (WIPO).

Plain Packaging And The Interpretation Of The Trips Agreement, Daniel J. Gervais, Susy Frankel

Daniel J Gervais

Plain packaging of cigarettes as a way of reducing tobacco consumption and its related health costs and effects raises a number of international trade law issues. The plain packaging measures adopted in Australia impose strict format requirements on word trademarks (such as Marlboro or Camel) and ban the use of figurative marks (colors, logos, etc.). As a result, questions have been raised as to plain packaging’s compatibility with the World Trade Organization’s (WTO) Agreement on Trade-Related Aspects of Intellectual Property Rights (TRIPS Agreement). WTO members can validly take measures to protect and promote public health, but in doing so they …

Cognac After Spanish Champagne ? Geographical Indications As Certification Marks, Daniel J. Gervais

Daniel J Gervais

The Protection of Geographical Names as Certification Marks in common law jurisdictions such as the United Kingdom and the United States is examined in light of the UK Spansih Champagne and other "Drinks" cases and similar cases in the United States dealing with the name "Cognac."

The Landscape Of Collective Management Schemes, Daniel J. Gervais

Daniel J Gervais

This paper, based on a keynote talk at Columbia Law School, reviews the nature of collective management organizations (CMOs), their regulation, in particular the difference in the US regulatory regimes for performing rights organizations (PROs), digital transmissions of sound recordings and reprography. The paper reviews the incoherent rate-setting processes under consent decrees and sections 112 and 114 of the US Copyright Act. The paper also considers the role that CMOs can and should play in empowering new business models and modes of access to online material.

The Rise Of 360 Deals In The Music Industry, Daniel J. Gervais

Daniel J Gervais

360 deals can give record companies access to revenue from movie contracts, merchandise sales, and other sources “all around” the artist. They reflect a transition from an industry model focused on delivery of goods (compact discs or even iTunes tracks) to one in which music is increasingly a service generating revenues from multiple activities bundled with phone, Internet, or cable access. The authors explore the history, contents, benefits, and future of 360 deals.

Cloud Control: Copyright, Global Memes And Privacy, Daniel J. Gervais, Daniel J. Hyndman

Daniel J Gervais

This paper examines the shift from the Internet connection paradigm to an amalgamation paradigm. Ultimately, almost all personal and commercial content will be stored or backed up in the computing Cloud. This is likely to change the way in which copyright is enforced and users' privacy is protected.

The Regulation Of Inchoate Technologies, Daniel J. Gervais

Daniel J Gervais

In the Essay, I explain why and how certain technologies defeat regulatory interventions. I then examine a number of major regulatory pitfalls and how they apply to the inchoate technologies, namely: the “law” of unintended consequences, the politicizing of regulatory interventions, costs, legacy regulation, asymmetric regulation and the role that the notion of efficiency is given in justifying regulatory impulses. I then consider whether the regulation of inchoate technologies should take account of, and may in fact be undesirable because, some technologies (or the use thereof) tend to self-regulate. Finally, I suggest lessons that can be drawn from this analysis …

The Tangled Web Of Ugc: Making Copyright Sense Of User-Generated Content, Daniel J. Gervais

Daniel J Gervais

Even as a mere conceptual cloud, the term “user-generated content” is useful to discuss the societal shifts in content creation brought about by the participative Web and perhaps best epitomized by the remix phenomenon. This Essay considers the copyright aspects of UGC. On the one hand, the production of UGC may involve both the right of reproduction and the right of adaptation—the right to prepare derivative works. On the other hand, defenses against claims of infringement of these rights typically rely on (transformative) fair use or the fact that an insubstantial amount (such as a quote) of the preexisting work …

Traditional Knowledge: Are We Closer To The Answers? The Potential Role Of Geographical Indications, Daniel J. Gervais

Daniel J Gervais

The debate concerning the protection of, and access to, “traditional knowledge” has been going on for some time. Academics, governments, non-governmental and intergovernmental organizations, and representatives of indigenous communities have made arguments on many different levels. The most interesting debates are normative in nature: What should international law do about traditional knowledge? Is protection desirable? To what end? Equally interesting is the somewhat more technical debate about how we can proceed to implement some of the (tentative) normative conclusions. The normative debate is situated at the confluence of intellectual property law, cultural studies, ethnology and anthropology. In this short paper, …

The Lisbon Agreement’S Misunderstood Potential, Daniel J. Gervais

Daniel J Gervais

This article focuses on the similarities and differences between the proposed TRIPS register of geographical indications for wines (and now spirits) and its relationship with the 1958 Lisbon Agreement on the Protection and Registration of Appellations or Origin. I examine the definitional differences between the two instruments top determine their commensurability. My suggestion is that the Lisbon register should be considered as a possible basis to establish the TRIPS register, with or without an extension to products other than wines and spirits. The differences between the two and deficiencies could be handled appropriately by adopting a protocol to the Lisbon …

A Uniquely Canadian Institution: The Copyright Board Of Canada, Daniel J. Gervais

Daniel J Gervais

Several countries have fostered the growth of Collective Management Organizations (CMOs) through legislative initiatives in the belief that CMOs offer a viable solution to the problems associated with individual licensing, collecting royalties and enforcing copyright against large numbers of users. In theory, collective licensing enables creators to exercise rights in a fair, efficient and accessible manner. It ensures copyright protection when individual management of it becomes difficult or impracticable. However, collective management is not a panacea, and questions have been raised about the efficiency and the transparency of CMOs and their continued relevancy in the digital age. This Chapter attempts …

Intellectual Property And Human Rights: Learning To Live Together, Daniel J. Gervais

Daniel J Gervais

Intellectual property and human rights must learn to live together. Traditionally, there have been two dominant views of this “cohabitation,” namely a conflict view, which emphasizes the negative impacts of intellectual property on rights such as freedom of expression or the right to health and security, and a compatibility model, which emphasizes that both sets of rights strive towards the same fundamental equilibrium. This Chapter takes the dualist view that both are right, though there is, and should be, much more truth to the second approach in the coming years.

The Role Of International Treaties In The Interpretation Of Canadian Intellectual Property Statutes, Daniel J. Gervais

Daniel J Gervais

The relationship between domestic intellectual property statutes and international law in growing in scope and depth. This paper is a chapter in a book that emphasizes that international law is not only used to interpret domestic law but in fact may itself become a guide for international tribunals, such as the World Trade Organization Dispute-Settlement Body. The Paper considers mostly the role that international norms have played in recent decisions of the Supreme Court of Canada and the Federal Court.

Use Of Copyright Content On The Internet: Considerations On Excludability And Collective Licensing, Daniel J. Gervais

Daniel J Gervais

The Internet has been a catalyst for problems latent within the copyright system. Fundamentally, the question is to determine under what circumstances should a copyright holder have a right to exclude others from using her copyright work on the Internet? This is the topic of this chapter. The underlying hypothesis is that policy analysis concerning copyright has shifted because it is now facing a number of formidable opponents, in most cases for the first time on that scale. Those opponents are other rights, including privacy. Copyright is not or no longer a closed system with exceptions looping back to a …

The Price Of Social Norms: Towards A Liability Regime For File-Sharing, Daniel J. Gervais

Daniel J Gervais

he paper starts by asking whether P2P file-sharing of music can be stopped. Based on a discussion of (a) the interaction among law (regulation), technology and the market and (b) relevant social norms, the paper takes the view that it may not be possible to stop file-sharing. This paper then turns to an analysis of the economics and structure of a viable licensing model that could be implemented now without legislative or technological changes. The paper argues that P2P licensing could be good business. The paper ends with a brief look at (a) whether the licensing model could be exported …

Application Of An Extended Collective Licensing Regime In Canada: Principles And Issues Related To Implementation, Daniel J. Gervais

Daniel J Gervais

The report examines the advantages, disadvantages and constraints of using an extended collective license in Canada (or extended repertoire) and concludes that the system would make sense in some areas. The use of this system in other countries is discussed.

Feist Goes Global: A Comparative Analysis Of The Notion Of Originality In Copyright Law, Daniel J. Gervais

Daniel J Gervais

he 1991 U.S. Supreme Court decision in Feist Publications v. Rural Telephone Service Company, Inc. delivered was hailed both as a landmark decision and a legal bomb. Was Feist so original as to deserve all the attention? After all, it did not establish a new originality paradigm as such but only ended a long division among federal circuits concerning the protection under copyright of factual compilations. A number of circuits had adopted a test similar to the one articulated in Feist (i.e., based on creative selection), while others required only evidence of labor, a test known as sweat of the …

Copyright, E-Commerce And The World Wide Web, Daniel J. Gervais

Daniel J Gervais

This early (2001) piece on the impact of the online environment on the significance and enforcement of copyright is now available online. It begins by defining concepts that were new at the time, such as Digital Rights Management (DRM) and Electronic Copyright management Systems (ECMS), and the changes in business models, both those already taking place and those that could be expected to happen. It then explores the notions of negative and positive licensing and makes the point, which future events would seem to bear out, that both right holders and users do better when right holders focus on maximizing …