Extension of Intellectual Property Rights
| Author | Teresa Scassa |
| Pages | 17-145 |
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chapter 1
Extension of Intellectual Property Rights
Teresa Scassa1
A. INTRODUCTION
e Supreme Court of Canada has recently stated that patent and
copyright laws reflect a balance of interests between creators or in-
novators and society more generally. More specifically, the interests
of society in innovation or creative endeavor are served by providing
incentives, in the form of limited monopolies, to innovators. In trade-
mark law, the balance is somewhat different. Potentially perpetual
rights in trade-marks are given in pa rt to protect t he reputation and
goodwill developed by businesses as the sou rce of particular goods or
services, and in part to protect consumers who should not be confused
or misled as to the source of the wares or services they consume.
Canada Research Chair in Information Law, University of Ottawa. I would like to
thank Marcel Boyer, France Chevalier, Marc Duhamel, Alan Gunderson, Randall
Hofley, Michael Trebilcock, David Vaver, and Denis Wong for their thoughtfu l
comments on an earlier d raft. anks a lso to David Mollica for his resea rch
assista nce. A portion of thi s paper in a revised form was publi shed as “e Doc-
trine of Function ality in Trade-mark Law Post-Kirkbi” () I.P.J. .
éberge v. Galerie d’Art du Petit Champ lain inc., [] S.C.R. ,
SCC [éberge]; Kirkbi A.G. v. Ritvik Holdings Inc., [] S.C.R. ,
SCC [Kirkbi]; Apotex Inc. v. Wellcome Foundation Ltd ., [] S.C.R. ,
SCC [Apotex].
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In recent years, concerns have been expressed that the traditional
balances struck in intellectual property law have been undermined
through a range of practices, rules, and phenomena that contribute to
an extension of intellectual property rights beyond what was origin-
ally contemplated in the “bargain” with society. Others argue that the
shifts are consistent with preserving t he public policy object ives of in-
tell ectua l prope rty le gislat ion, pa rticu larly in the c ontext o f digit izati on
and g lobalization. is paper will explore some of the strategies used
to ex tend intellectual property rights and will consider the actual or
potential impact of such strategies on innovation and competition.
In this paper, the theme of extension of intellectual property rights
is explored within t wo broad categories. e first is the expansion of
intellectual property rights through increasing overlap between areas
of protection. Over time, overlaps have arisen between copyright and
trade-mark law, trade-mark and patent law, and patent and copyright
law. It has also been argued that t he additional protection for Digital
Rights Management s ystems anticipated i n upcoming copyrig ht law
reform will also significantly expand the traditional scope of copyright
protection. e extension of intellectual property rights through over-
lapping protection is largely a funct ion of the way in which the law
has been interpreted and applied over time. A lthough there are many
possible examples of overlapping rights, two overlaps are considered
in detail in this paper. One is t he overlap between patents a nd trade-
marks, where trade-mark protection is sought over functional features
of articles. e other is the overlap between copyright and trade-mark.
e example considered here is the use of copyright law to prevent the
parallel importation of non-copyright goods, based on rights asserted
in trade-mark logos or product wrapper designs.
In the case of the overlap between patent and trade-mark rights,
the courts have developed a doctrine of functionality that seeks to pre-
See for example, Teresa Scassa, “Orig inality and Util itarian Works: e Uneasy
Relationship between C opyright Law and Unfair Comp etition” (–)
University of Ott awa Law & Technology Journ al ; Wendy J. Gordon, “On
Owning In formation: Intellectua l Property and the Restitutiona ry Impulse”
() Va. L. Rev. at –; J.H. Reichman and Pa mela Samuelson,
“Intellectua l Property Rights in D ata?” () Vand. L. Rev. .
See for example, Barr y Sookman, “‘TPMs’ a Perfect Stor m for Consumers:
Replies to Professor Geist ” () C.J.L.T. .
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vent, as a matter of public policy, the overextension of patent rights
through trade-mark law. One issue, therefore, is whether this doctrine
is sufficiently effective and flexible to sati sfactorily address the issues
that m ight arise. With the copyright/trade-mark overlap, the courts
have, over time, developed two parallel regimes under which design
trade-marks can be protected. Here, judicial interpretation has cre-
ated the problem and may be less able to offer a solution if indeed a
solution is required.
A second main area for consideration is the expansion of intellec-
tual property protection by means of t he deliberate exercise of weak,
uncertain, or unfounded intellectual property claims. is activity
can occur in a broad range of contexts and has become a matter of in-
creasing concern. In such cases, the extension of intellectual propert y
rights arises through deliberate action of parties, yet there are also de-
ficiencies in the legal regimes that contribute to the ability of parties to
extend their rights in this manner. Some of these deficiencies include
uncertainty as to the scope of protection or the scope of legal defences,
and systemic shortcomings in the gra nting of rights.
e problem of the exploitation of weak or u ncertain intellectual
property rights is of very significant dimensions and is much too wide-
ranging to properly address in this paper. While a number of circum-
stances where such issues arise are identified and briefly discussed, the
focus of consideration in this paper is on the issue of reverse payment
settlements in patent disputes bet ween brand name and generic drug
companies. ese cases, which have proven problematic in the United
States, highlight complex issues arising from a combination of factors.
One such factor is a generic drug approval policy that favours the ear-
liest possible entry of generic drug s into the marketplace and which,
as a result, alters the traditional dynamics between patent holders and
potential patent infringers. Underlying this altered dynamic is the
complicating factor that the patents at issue might well be invalid. e
uncertain strength of the u nderlying patent rig hts contributes to the
difficulty in a ssessing the legality of reverse payment settlements.
Within both broad categories of the extension of intellectual
property rights (overlapping protection and the assert ion of weak or
uncertain rights), competition law concerns may arise. Intellectual
property rights create monopolies. ese monopolies are, as a mat-
ter of public policy, considered legitimate and the simple exercise of
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