JIPLP readers and writers: now we are 200!

This evening the JIPLP readers and writers LinkedIn Group, which you can check out here, has just welcomed its 200th member. The group is a carefully monitored and moderated forum for sharing thoughts and ideas about what sort of content the journal should have, as well as ethical and practical issues. We're thrilled that this group has grown so quickly and we're delighted to be able to take note of its activities.

Current live discussion topics include the following:
  • * The pros and cons of making draft articles available in full when they have an acute degree of topical interest;
  • * Whether the book review section should also review IP on the social media, such as weblogs and Twitter accounts;
  • * The pricing of IP journals;
  • * The degree of factual detail that articles and case notes should contain;
  • * Articles on comparative law -- how useful are they?
  • * Breadth of coverage and the problem of articles on issues that are tangential to mainstream IP;
  • * Publication ethics;
  • * Whether IP practitioners should be encouraged to write about cases in which they were involved -- or barred from doing so;
  • * How interactive should a modern IP journal be?
If you'd like to apply to join this group, or are already a member and would to like to comment on one or more of these issues, please feel confident to do so. JIPLP is only as good as you can make it!

Reminder: JIPLP also has a Twitter account, @JIPLP, which has getting on for 500 followers. This is another way of keeping in touch with the journal's continuing dialogue with the IP community.

Supreme Court of Canada rules on substantial copying

Author: Emir Crowne and Kiratjot Tiwana (University of Windsor, Faculty of Law)

Cinar Corporation v Robinson, 2013 SCC 73, 23 December 2013

Journal of Intellectual Property Law & Practice (2014) doi: 10.1093/jiplp/jpu009, first published online: February 17, 2014

The Supreme Court of Canada unanimously confirmed that a substantial part of the respondent's work had been copied by the appellants.

Legal context

Section 3(1) of Canada's Copyright Act, RSC 1985, c C-42 gives the owner of a work the ‘sole right to produce or reproduce the work or any substantial part thereof in any material form whatever, to perform the work or any substantial part thereof in public or, if the work is unpublished, to publish the work or any substantial part thereof …’.


In 1985 Robinson's work was registered with Canada's Intellectual Property Office. The registration identified Robinson as the owner of The Adventures of Robinson Curiosity (‘Curiosity’) and Les productions Nilem Inc (‘Nilem’) as the owner of the rights to the work. Robinson was the sole director and shareholder of the corporation Nilem. From 1985 until 1987 Robinson and Nilem worked on getting support for the production of the project.

In 1986 Cinar Corporation was hired to promote the project in the United States and to provide general advice. Robinson gave directors of Cinar, Ronald Weinberg and his late wife Micheline Charest, copies of his work. Nothing came of their efforts to find support in the United States.

In 1987 Robinson partnered with another company (Les Productions SDA Ltée) to produce the work into a television show. Through the partnership two more corporations were formed, Curious Island Productions Inc and Curious Island Enterprises Inc. After this partnership was developed, Robinson and SDA attended a convention in France where they presented Curiosity to a creator of children's shows, Cristophe Izard. However, after the project failed to attract support and stalled, the two new corporations were dissolved in 1990.

In 1995 Robinson watched a children's television show called Robinson Sucroë (‘Sucroë’) and saw several striking similarities to his work Curiosity. He launched an action for copyright infringement against the appellants.

At trial (2009 QCCS 3793), Justice Auclair found for the creators of the work. Noting that Curiosity ‘was an original work protected by copyright, that the creators of Sucroë had copied Curiosity, and that the features reproduced in Sucroë represented a substantial part of Curiosity’ (2013 SCC 73, para 11). The Court of Appeal upheld the trial judge's decision for the most part (2011 QCCA 1361). Variations were only made with respect to the personal liability of one of the parties and the overall quantum of damages originally awarded.


The Chief Justice, writing for a unanimous Court, held that a substantial part of the respondents' work had been infringed. The Court noted that ‘substantial part’ was a flexible notion that was qualitative in nature. At paras 26 and 55 the Chief Justice said:
A substantial part of a work is a flexible notion. It is a matter of fact and degree. ‘Whether a part is substantial must be decided by its quality rather than its quantity’: Ladbroke (Football), Ltd. v William Hill (Football), Ltd [1964] 1 All E.R. 465 (H.L.), at p. 481, per Lord Pearce. What constitutes a substantial part is determined in relation to the originality of the work that warrants the protection of the Copyright Act. As a general proposition, a substantial part of a work is a part of the work that represents a substantial portion of the author's skill and judgment expressed therein ….
Finally, the works at issue had both patent and latent similarities. Or, as Dr. Perraton explained it, they shared ‘perceptible’ and ‘intelligible’ similarities. ‘Perceptible’ similarities are those that can be directly observed, whereas ‘intelligible’ similarities—such as atmosphere, dynamics, motifs, and structure—affect a viewer's experience of the work indirectly. Expert evidence was necessary to assist the trial judge in distilling and comparing the ‘intelligible’ aspects of the works at issue, which he would not otherwise appreciate. Consequently, the trial judge did not err in admitting the expert evidence of Dr. Perraton. (2013 SCC 73)

Practical significance

Substantial taking requires a careful balancing. An author's skill and judgment must be balanced the need for a robust public domain. The Chief Justice herself noted:
The need to strike an appropriate balance between giving protection to the skill and judgment exercised by authors in the expression of their ideas, on the one hand, and leaving ideas and elements from the public domain free for all to draw upon, on the other, forms the background against which the arguments of the parties must be considered. (2013 SCC 73, para 28)
The Court embraced the trial judge's ‘holistic’ approach in determining the nature and quality of the taking (ibid, para 33). The Court also doubted whether a wholesale incorporation of the American ‘abstraction-filtration-comparison’ approach into Canadian law was appropriate. At paras 33–35 the Court stated:
The trial judge found that the Cinar appellants copied a number of features from Robinson's Curiosity, including the visual appearance of the main protagonist, the personality traits of the main protagonist and of other characters, visual aspects of the setting, and recurring scenographic elements. He concluded that, considered as a whole, the copied features constituted a substantial part of Robinson's work.

The Cinar appellants argue that instead of applying a holistic approach, the trial judge should have applied a three-step approach requiring him to (1) determine what elements of Curiosity were original, within the meaning of the Copyright Act; (2) exclude non-protectable features of Robinson's work (such as ideas, elements drawn from the public domain, and generic elements commonplace in children's television shows); and (3) compare what remains of Curiosity after this ‘weeding-out’ process to Sucroë, and determine whether a substantial part of Curiosity was reproduced.

The approach proposed by the Cinar appellants is similar to the ‘abstraction-filtration-comparison’ approach used to assess substantiality in the context of computer software infringement in the United States: see Computer Associates International, Inc. v. Altai, Inc., 982 F.2d 693 (2nd Cir. 1992) … It has been discussed, though not formally adopted, in Canadian jurisprudence: Delrina Corp., at paras. 43–47. I do not exclude the possibility that such an approach might be useful in deciding whether a substantial part of some works, for example computer programs, has been copied. But many types of works do not lend themselves to a reductive analysis. Canadian courts have generally adopted a qualitative and holistic approach to assessing substantiality. ‘The character of the works will be looked at, and the court will in all cases look, not at isolated passages, but at the two works as a whole to see whether the use by the defendant has unduly interfered with the plaintiff's right’: J.S. McKeown, Fox on Canadian Law of Copyright and Industrial Designs (loose-leaf), at p. 21–16.4 (emphasis added).
Indeed, Curiosity may have sparked this litigation, but the Court left no doubt as to the principles to be applied. ‘Substantial taking’ is a holistic endeavour. Qualitative aspects of the plaintiff's work must be compared against the defendant's work. Those aspects may include ‘perceptible’ similarities that can be directly observed' and ‘intelligible’ similarities (such as themes, structure and atmosphere).

JIPLP-GRUR Int. partnership survey: can we borrow a little of your time?

Readers will know that JIPLP is partnering with the German Association for the Protection of Intellectual Property (GRUR) to exchange content between JIPLP and GRUR Int. (if you don't know about this, click here for details).  This partnership has been running for rather more than a year and has already borne fruit.

We would greatly appreciate a little feedback from our readers. Accordingly we would be grateful if you could take a little time to participate in a brief online JIPLP/GRUR Partnership Survey, which you can access here. The closing date for taking part in the survey is 28 February 2014.

Australian High Court rules on patentability of methods of medical treatment

Author: Eddy D. Ventose (Faculty of Law, University of the West Indies, Cave Hill Campus, Barbados)

Apotex Property Limited v Sanofi-Aventis Australia Property Limited [2013] HCR 50, 4 December 2013

Journal of Intellectual Property Law & Practice (2014)doi: 10.1093/jiplp/jpu008, first published online: February 17, 2014

The High Court of Australia, which had previously skirted around the issue of patenting methods of medical treatment, has finally decided that such methods are patentable under the section 18(1)(a) of the 1990 Patents Act.

Legal context

Although the formula for preparation and the composition of the drug Leflunomide, which is used for the treatment of psoriatic and rheumatoid arthritis, was the subject of an expired Australian patent, a method of using Leflunomide was still subject to an existing patent. This patent claimed a method of preventing or treating a skin disorder, psoriasis, where the treatment involved administering the patient an effective amount of the pharmaceutical composition containing as an active ingredient a compound of the formula I (ie Leflunomide) or II (which will be outlined below).

In 2008, Apotex obtained registration of generic versions of Leflunomide with the intention of supplying the products and offering them for sale in Australia as treatment for psoriatic arthritis and rheumatoid arthritis. Sanofi-Aventis, the registered owner of the patent at issue, sued Apotex for infringement of its patent for a method of using a known drug to prevent or treat psoriasis. At trial, the judge allowed the claim for infringement, and the subsequent appeal to the Full Court was dismissed. Apotex appealed to the High Court, which granted special leave on the basis that the Full Court had erred in finding that the claim of the patent claimed a manner of manufacture within the meaning of s 18(1) of the 1990 Act. Section 18(1)(a) provides one of the conditions necessary for an invention to be patentable, namely, that it ‘[be] a manner of manufacture within the meaning of section 6 of the Statute of Monopolies’.

Facts and analysis

Previous Australian authorities

The court first considered the early United Kingdom cases on the meaning of ‘manner of manufacture’ as it relates to methods of medical treatment, namely, C & W's Application (1914) 31 RPC 235 and Schering AG's Application [1971] 1 WLR 1715. Chief Justice French claimed that obiter dicta and passing references to the patentability of medical treatments had been made in four decisions by the High Court of Australia, but in none of them had the question of patentability been determined. The first was Maeder v Busch (1938) 59 CLR 684, which concerned ‘a process for forming permanent waves in hair’, where the High Court made a distinction between the motive and purpose of the operator. These views, French CJ held, were inconclusive and obiter. The next decision was NRDC (1959) 102 CLR 252, which concerned a method for using a herbicide on crops, where the High Court held that the application of the criterion ‘manner of manufacture’ to a method or process was not constrained by requiring the method or process to be linked to a narrowly defined understanding of a ‘vendible product’. French CJ noted that the High Court in NRDC speculated, in parentheses, that the exclusion of methods of surgery and other processes for treating the human body could well lie outside the conception of invention ‘because the whole subject is conceived as essentially non-economic’.

The third decision was Joos v Commissioner of Patents (1972) 126 CLR 611 where the patent was for a process for the treatment of parts of the human body, namely, human hair and nails. There, doubts were expressed concerning the statement made in NRDC relating to the exclusion of methods of medical treatment from patent protection on the basis that they were essentially non-economic. Advanced Building Systems Pty Ltd v Ramset Fasteners (Aust) Pty Ltd (1998) 194 CLR 171; [1998] HCA 19 was the fourth decision, and it reiterated the approach of the High Court in NRDC. The view of the High Court in Joos was taken a step further by the Full Court of the Federal Court in Rescare Ltd v Anaesthetic Supplies Pty Ltd (1994) 50 FCR 1 where it was stated, obiter, that there was no reason in principle why a method of treatment of the human body was any less a manner of manufacture than a method for ridding crops of weeds as in NRDC. Bristol-Myers Squibb Co v FH Faulding & Co Ltd (2000) 97 FCR 524 followed Rescare, noting there was ‘the insurmountable problem, from a public policy viewpoint, of drawing a logical distinction which would justify allowing patentability for a product for treating the human body, but deny patentability for a method of treatment’.

The judgments

According to French CJ the primary question was whether methods of medical treatment of human beings, including surgery and the administration of therapeutic drugs, could be the subject of patents: in other words, whether a method of medical treatment of human beings was capable of being a patentable invention. French CJ noted that the history of the exclusion of medical treatments from patentability did not disclose a stable, logical or normative foundation and seemed to depend upon rather nice distinctions for its maintenance. He argued that there was a logical and normative tension between the patentability of pharmaceutical products and the exclusion from patentability of methods of medical treatment. In his view, there was a difficulty in drawing a boundary between medical and cosmetic procedures, since the latter might include procedures having both medical and cosmetic benefits: for example, lap band surgery. French CJ claimed that the endeavour to achieve coherence in this area fell more readily within the institutional competence of the courts than the endeavour to strike some balance between competing public and private interests.

French CJ continued that the field of intellectual property law as a whole was notoriously one in which public interests and private interests compete with one another, and noted that it might be in public interest to use the grant of monopoly to encourage technical innovation. A competing public interest might lie in ensuring unconstrained access by medical practitioners and their patients to new medical methods and processes. The interests of inventors and investors in inventions, and the interests of members of the public whose lives could be improved or saved by the use of innovative medical treatments, might be in tension with each other and with aspects of the public interest.

French CJ accepted that to decide that the concept of ‘manner of new manufacture’ did not logically exclude methods of medical treatment from patentability, did not engage with those larger questions, although it might have significant consequences for public policy. In his opinion, this was a case in which such considerations were best left to the legislature: the application of the rubric ‘manner of new manufacture’ in a logically and normatively coherent way was not served by excluding from its scope methods of medical treatment of human beings. French CJ concluded that methods of medical treatment could fall within the scope of a manner of new manufacture within the meaning of s 6 of the Statute and therefore within s 18(1)(a) of the 1990 Act.

Crennan and Kiefel JJ, concurring, held that, assuming that all other requirements for patentability were met, a method (or process) of medical treatment of the human body which was capable of satisfying the NRDC test, namely that it was a contribution to a useful art having economic utility, could be a ‘manner of manufacture’, and therefore a patentable invention within the meaning of s 18(1)(a) of the 1990 Act. This result, they argued, was based on the following reasons: first, in the context of patent law, the expression ‘essentially non-economic’ derived its meaning from the long-understood requirement that the subject matter of a patent (whether a product, or a method or process) must have some useful application, that is, must be capable of being practically applied in commerce or industry. Secondly, the 1990 Act contained no specific exclusion from patentability of methods of medical treatment of the human body, nor could any be implied. Thirdly, there was no normative distinction to be drawn from the provisions of the 1990 Act between methods of treatment of the human body which were cosmetic and those which were medical. Fourthly, and critically, the subject matter of a claim for a new product suitable for therapeutic use, claimed alone (a product claim) or coupled with method claims (combined product/method claims), and the subject matter of a claim for a hitherto unknown method of treatment using a (known) product having prior therapeutic uses (a method claim), could not be distinguished in terms of economics or ethics. Fifthly, a method claim in respect of a hitherto unknown therapeutic use of a (known) substance or compound satisfied the general principle laid down in NRDC—it belonged to a useful art, effected an artificially created improvement in something and could have economic utility. Sixthly, the practice of the Australian Patent Office, following Joos (which practice was in evidence in Rescare, and about which no negative evidence was led in this case), was consonant with Article 27(1) of the Agreement on Trade Related Aspects of Intellectual Property Rights (TRIPs). Seventhly, the obiter dicta in NRDC, upon which Apotex relied, conveyed some hesitation about ‘putting aside’ methods of treatment of the human body.

Gageler J also wrote briefly to agree with Crennan and Kiefel JJ, adding an eighth reason why medical treatment methods were patentable, namely, the decision of Federal Court in Bristol-Myers Squibb had since been regarded as representing orthodoxy in Australian patent law, and to change it after 13 years would (a) risk disappointing commercial expectations legitimately formed and acted upon; (b) undermine the legislative assumption made seven years ago; and (c) render the current legislative definition in part redundant.

Hayne J penned a vigorous dissent, claiming that the issue was whether the method of prevention or treatment of a human disease claimed in the patent in suit was a patentable invention. He claimed that no decision of the High Court determined that a method of prevention or treatment of human disease was a proper subject for the grant of a patent. After examining the leading UK and Australian authorities, which had dealt with the issue, Hayne J held that a method of preventing or treating human disease was a process that was not a proper subject for the grant of a patent.

Practical significance

The clear implication of this decision of the High Court of Australia was that methods of medical treatment are patentable in Australian patent law. While the claim was a method of administering the drug to the patient, such claim has been held not to amount to a method of medical treatment in the United Kingdom (Actavis UK Limited v Merck & Co Inc [2008] EWCA 444; [2008] RPC 26). However, the High Court has seemingly held that all such methods of medical treatment, namely methods of treatment by surgery and by therapy as well as diagnostic methods, are patentable under the 1990 Patents Act. Similarly, patent protection for dosage regimes, which are now permitted under the European Patent Convention (G 2/08 ABBOTT RESPIRATORY/Dosage regime [2010] 10 OJEPO 456), have now been sanctioned in Australia as a result of the decision of the High Court in Apotex. While there is much litigation in Europe and the UK in relation to the parameters of the exclusion for methods of medical treatment, this will not occupy the time of the courts in Australia. Rather, much like the Supreme Court of the United States in Mayo Collaborative Services v Prometheus Labs 132 S Ct 1289; 182 L Ed 2d 321 (2012), the High Court of Australia might soon have to answer the question of whether genetic diagnostic methods are patentable.

Through the looking glass?

The Editorial that opens the March issue of JIPLP -- which is now published in full online (contents here) -- is written by Editorial Board member Julia Montero. Julia, a solicitor, is ‎Director, Digital & Commercial Legal Affairs, with Warner Music International Services. Julia's Editorial is published in full, below:
Through the looking glass?

As in Lewis Carroll's "Through the Looking
Glass, so too in contemporary copyright,
competing interests must be balanced
The EU Commission issued the Public Consultation on copyright in December last year, consisting of 80 questions and with a short eight-week response period. The breadth of scope involved not only the usual digital copyright suspects such as territoriality, limitations and exceptions, but also contract law, freedom of expression and data protection. Several of the questions raised chime with references currently (as at the time of writing) before the Court of Justice of the European Union (“CJEU”), notably the much-discussed cases of Svensson, MeltWater and BestWater, which raise fundamental longstanding questions about the application of copyright norms to the digital environment.

It was an ambitious questionnaire for interested parties to respond to, and again provided cause to reflect upon the skills required of IP practitioners seeking success in 2014 of whatever denomination, and whether or not acting for IP owners.

On the one hand, the IP world in particular continues to wrestle with the commercial challenges and legal complexities arising from a combination of a digital “foreshortened future” (think augmented reality, 3D printers, Google Glass), a shrinking geographical world, and, at least from an EU perspective, the lengthy timeframes that can be involved in obtaining preliminary rulings from the CJEU on key issues affecting commercial businesses. The editor has noted elsewhere the time taken to obtain a preliminary CJEU ruling on the interpretation of the EU Database Directive in relation to a business model involving a dedicated meta search engine (Innoweb BV v Wegener ICT). Whilst, on the other hand, the provision of legal services is increasingly commoditised, budgets are limited, there is growing use of online and alternative outsourcing tools as well as the use of Wikipedia to conduct legal research increases.

It might also be suggested that we increasingly operate through the digital “looking glass,” where not only can black be passionately presented as white and white as black, but there are infinite shades of grey. This has been seen in recent times in some of the debate in 2012 around the Anti-Counterfeiting Trade Agreement and last year's backlash against the bicycle brand Specialized when seeking to enforce its trade marks, by way of a couple of examples.

That is not to imply a gloomy assessment: far from it. We may live and work in complex and uncertain times, but the opportunity for collaboration, learning from other jurisdictions and even other disciplines should ultimately be a good thing for intellectual property law whatever your particular perspective. The study on the application of the 2001 Copyright Directive published by DG MARKT at the end of last year referred to a general trend in copyright law, mostly since the development of digital technologies, for the courts to take into account arguments outside of copyright in copyright debates, albeit that such an approach raises questions as to the application of the Berne three-step test. It is suggested that there are parallels between the skills required of the contemporary IP practitioner (technical legal knowledge naturally being taken as read), and the role of contemporary intellectual property in a society facing fast paced change, including being sufficiently flexible to accommodate technological shifts without being unnecessarily technology specific whether in terms of providing advice on a particularly thorny new fact scenario presented by a client or when assessing work productivity tools and resources.

Against this backdrop it is essential for the modern practitioner to have trusted and timely legal resources within the toolkit, to keep abreast of the latest news in intellectual property on an international basis and to do so in a way which is sympathetic to the sense of email overload that many of us feel. The multiple platforms and channels for accessing the Journal of Intellectual Property Law & Practice in the manner most convenient to the reader, which now includes a Linked In forum, Twitter, and of course, mobile blog are to be welcomed, along with the inclusion of alternative and social media based legal content resources within the scope of peer reviews. The value of such tools to the modern practitioner at a moment in time when simply learning by rote or quoting legislation verbatim in client advice no longer cuts it (if it ever did) are significant. Alice would approve.

March JIPLP now available online -- and here's what it contains

Though we are not quite half way through February, the March 2014 issue of JIPLP is already available in full to our online subscribers.  The contents are listed below, but you can also check out the contents of whichever happens to be the current issue via the JIPLP website here.  Now for the usual reminders:
  • * even non-subscribers can purchase limited-time access to articles published in JIPLP without needing to take out a subscription
  • * the print version will be dispatched in due course and you will be reminded via our Twitter account @JIPLP as to when you should have yours on your desk
  • * the Editorial will be posted in full, on this weblog, in a short time from now.

Guest Editorial

Current Intelligence


From GRUR Int.

IP in Review