Intellectual Property: An Overview

• Author: David Vaver
• Pages: 1-54

1

CHA PTER 1

INTELLECTUAL

PROPERTY:

AN OVERVIEW

A. INTRODUCTION

What is intellectual property (IP) law? It starts from the premise that

ideas are free as t he air — a common resource for all to use as they can

and wish. It then proceeds system atically to undermine that principle.

Some trace the desi re to privatize the fruits of t he mind back to

time immemorial, but the common l aw genera lly recognized no such

right1 and legislation was needed to create it.2 The regulation of patents

protecting industrial inventions, the oldest form of IP, goes back to a

1 Courts did, however, develop doctrines to protect trade-ma rks and business

goodwill, and to prevent the mis appropriation of conf‌idential information and

trade secret s: see L. Bently, C. Ng, & G. D’Agostino, “Emerging Divergence s in

the Common Law of Inte llectual Property,” in C. Ng, L. Bently, & G. D’Agostino,

eds., The Common Law of Intellectual Property: Essays in Honour of Professor David

Vave r (Oxford: Ha rt, 2010) [Ng, Common Law] at 4.

2 Jefferys v. Boosey (1854), 4 H.L.C. 815 at 966–69 & 977–78, denying common

law right to prevent cop ying of inventions or published works of a rt or literature

[Jeffer ys]; Apotex Inc. v. Sanof‌i-Synthelabo Canada In c., [2008] 3 S.C.R. 265 at

[12], approving Commissione r of Patents v. Farbwerke Hoechst AG, [1964] S.C.R.

49 at 57 (“[t]here is no inherent common l aw right to a patent”); H.B. Abrams,

“The Historic Foundat ions of American Copyr ight Law: Exploding the My th of

Common Law Copy right” 29 Wayne L. Rev. 1119 (1983) and R. Deazley, “The

Myth of Copyr ight at Common Law” (2003) 62 Cambridge L.J. 106, explain ing

Donaldson v. Beckett (1774), 2 Bro. Parl. Cas. 129 (H.L.); M.D. Howe, ed., Holmes-

Pollock Letters (Cambridge, Ma ss.: Harvard University P ress, 1946) at 53 (“[t]he

INTELLECTUA L PROPERTY LAW2

Venetian decree of 1474 (or the English Statut e of Monop olies of 1624, de -

pending on one’s taste and chauvinism), but the practice of encouraging

new enterprise by granting monopolies m ay be even older. Copyr ight

started as a response to the protectionist bent of the early eighteenth

century London book trade, t hen reeling from the demi se of its role as

the Crown’s censor of books. France repackaged this protectionist urge

more attractively a s a basic human right after the Revolution of 1789. In

that guise, copyright expanded to cover the whole gamut of the creative

arts and beyond, into the murk y world of ta x tables, lottery numbers,

computer programs, electronic databases, websites, and e-mails. Indus -

trial design protection came out of late-eighteent h-century England to

give the tex tile t rade le ad time again st foreig n compet ition. Tr ade mar ks

were used by ancient merchants to identify their goods, and later by

guild craftsmen as guarantees of quality. Modern trade-mark law is,

however, a product of the Industrial Revolution, when judges started

protecting business names and symbols. Such steps led to systems of

national trade-mark reg istration in the second half of the nineteenth

century. More recently, semi-conductor chip makers and seed compan-

ies persuaded the re levant author ities that integr ated circuit topograph-

ies and new plant varieties need a nd deserve protection as well.

The drive for ever more protection and control is relentless. And why

not? Every business dreams of ways to put off competitors and copycats.

Everyone would like the life of a re ntier who gets a cut of what others

make without working for it. Sporting bodies want control over who

repor ts what an d where about t heir act ivities, not just for t he money but

also to keep the image of the sport from being sullied by what the play-

ers get up to on and off the f‌ield.3 And the control-seekers sometimes

win their game. Olympic associations in particular have obtained über-

trade-mark legislation that gives them control over who can use Olym-

pic symbols and the word “Olympic,” and for how much.4 Such moves

supplant the “hands-off ” position the law usual ly takes:

notion that [copyri ght] could exist at Common law or be worked out by it seem s

to me an imbecil ity”) [Howe].

3 D. Carvajal, “Spor ts groups clash with me dia over pictures” New York Times (16

December 2007). Past legal c laims have failed: Krouse v. Chrysler Ca nada Ltd.

(1973), 1 O.R. (2d) 225 (C.A.) [Krouse]; National Hocke y League v. Pepsi-Cola

Canada Ltd. (1995), 122 D.L.R. (4th) 412 at 418 (B.C.C.A.); Victoria Park Racing

& Recreation Grounds Co. Ltd . v. Taylor (1937), 58 C.L.R. 479 (Austl. H.C.); Na-

tional Basketb all Assn. v. Motorola Inc., 105 F.3d 841 (2d Cir. 1997).

4 Olympic and Paralympic Marks Act, S.C. 2007, c. 25.

Intellectua l Property: An Overv iew 3

There is no tort of copying. There is no tort of t aking a man’s market

or customers. Neither the market nor the customers are [a business’s]

to own. There is no tort of maki ng use of another’s goodwil l as such.

There is no tort of competition.5

The counter-argument has always been that, without protection,

people would not let the public have the benef‌it of t he good ideas they

had, through fear of competition from imitators. Those who sowed had

to be protected from those who wanted to reap without sowing. The

Bible could be used to support that sentiment, although little empir-

ical data did. Most people are content to reap only partially from what

they sow. Like Robert Burns’s farmer, they do not mind the occasional

mouse supping on their crop: “I’ll get a blessing wi’ the lave/An’ never

miss it.”6 Or, as an American judge said more expansively:

As a general matter, the law sometimes protects investors from t he

“free riding” of others; and sometimes it does not . . . . [T]he man

who clears a swamp, the developer of a neighborhoo d, the academ ic

scientist, the school teacher, and millions of others, each day create

“value” (over a nd above what t hey are paid) that the l aw permits

others to receive without charge. Just how, when and where the law

should protect investments in “intangible” benef‌it s or goods is a mat-

ter that legislators ty pically debate, embodying the results in spe cif‌ic

statutes, or that common law courts, carefully weighing relevant

competing interest s, gradually work out over time.7

Even before Confederation, Canada’s settlers took the need to pro-

tect IP as a self-evident tr uth. Today’s copyright, patent, t rade-mark,

and industrial design l aws are direct descendants of laws traci ng back

before 1867. Upper Canada passed a trade-mark law in 1860, antici-

pating Britain’s by f‌ifteen years, but Canadian statutes were mostly

modelled on earlier British and, occasionally, American laws. Although

recent Canadian revisions have moved away from their foreign fore-

bears in form, they are typical of those e stablished by other major na-

tions in substance.

This outcome is no accident. The l ate nineteenth century saw t he

creation of two major international multilateral treaties on IP. The Paris

5 Hodgkinson Corby Ltd. v. Wards Mobility Servi ces Ltd., [1994] 1 W.L.R. 1564 at

1569 (Ch.).

6 Robert Burn s, To a Mouse on Turning up in her Nest with the Plough, November

1785 .

7 WCVB-TV v. Boston Athletic Associati on, 926 F.2d 42 at 45 (1st Cir. 1991) [WCVB-

TV] [emphasis in origi nal].