Law Times

Law Times • September 23, 2013 Page 11 FOCUS Lawyers divided on Trans-Pacific trade talks Some worry deal could 'dramatically reshape' Canada's IP legislation BY CHARLOTTE SANTRY Law Times S ecretive trade talks are underway that some lawyers fear could "dramatically reshape" Canadian intellectual property legislation. Taking part in an online discussion two weeks ago, University of Ottawa law professor Michael Geist raised concerns about the Trans-Pacific Partnership talks. The talks involve 11 other countries: Australia, Brunei Darussalam, Chile, Japan, Malaysia, Mexico, New Zealand, Peru, Singapore, the United States, and Vietnam. During the web chat organized by Canadian Journalists for Free Expression, Geist said the talks could "dramatically reshape Canadian law in a wide range of areas." One of the affected areas could be Canada's notice-and-notice approach that gives copyright holders powers to raise allegations of infringement with web sites and their subscribers. Unlike a notice-and-takedown approach, an Internet service provider doesn't have to remove the allegedly copyrighted work to avoid liability. Instead, it notifies its client of the alleged infringements and helps the two parties to resolve the issue. Implementing this regime could become mandatory for countries that sign on to a trade deal, Geist noted leaked drafts of the intellectual property discussions suggest. Geist branded the notice-andtake-down approach a "draconian" scheme, saying it "could stifle free speech and result in the removal of content without the need for any proof of infringement." However, McCarthy Tétrault LLP partner Barry Sookman says notice and take down is common across Europe as well as the United States. If people feel a provider has removed their work from a site unfairly, they can send a notice and potentially have it restored. "It's a completely fair system," he says, arguing the regime has helped sites like YouTube, which notifies rights holders when someone has uploaded a work. As a result, rights holders can decide whether to have a video taken down or take a share of any revenues. "Everybody's benefiting," says Sookman. Geist also used the web chat to highlight the potential effects of the trade deal on copyright terms. His blog at michaelgeist.ca has raised the prospect of reduced public access to literary works by authors scheduled to come into the public domain before 2033. In Canada, works are subject to copyright for the life of the author plus 50 years, but some of those involved in the trade talks hope to extend the timeline by 20 years. The International Intellectual Property Alliance produced written testimony for an Aug. 1, 2013, hearing of the U.S. Congress committee on foreign affairs. The testimony noted that "most major economies" have extended copyright terms to reflect "longer lifespans and the need to maintain incentives for investment in the conservation and dissemination of older works." It lists Canada as one of three "important outliers." Sookman dismisses the concerns. He points out that Beatles songs, for example, are available for the public to enjoy despite the fact that Paul McCartney is still alive. "The public does have access to the works. The issue is whether the public should have access to the works for free," he says. Widespread piracy has made it "very difficult" for individuals to reap the economic benefits of works during their lifetimes and extending the term would "help estates to continue to generate some revenue for longer," he adds. The United States is also pushing, through the trade talks, for countries to extend the life of patents. Groups like Doctors Without Borders argue the move would restrict access to affordable, life-saving drugs in developing countries. Nathaniel Lipkus, a lawyer at Gilbert's LLP Lawyers and chairman of the Intellectual Property Institute of Canada's intellectual property trade policy committee, says the trade talks could also have a "potentially big impact" on drug patents in Canada. For example, a patent could get an extension if the patent office or Health Canada took too long to respond to a pharmaceutical company's request. This extension of exclusivity isn't currently part of Canadian law, says Lipkus. Another way in which the trade talks could change Canadian law, according to Geist, relates to the current $5,000 damages cap for all non-commercial infringements. He said in the web chat that the trade talks would "require Canada to drop the non-commercial cap and restore statutory damages that could climb into the millions of dollars for individual Canadians." Ratifying a treaty doesn't automatically result in a legislative change, says Sookman, explaining that changes to the law will still have to go through Parliament. But Lipkus admits the public may not get to fully debate some controversial areas. "They're agreeing to things that would never be politically palatable if they were presented as a bill in Parliament," he says. The secrecy around trade talks makes him uncomfortable, but there are often "enormous benefits" to gain from participating in them, he adds. Ministers of the participating countries will hold their own meetings on Oct. 3, 4, and 6 followed by a summit on Oct. 8. But Lipkus is skeptical as to Ratifying a treaty doesn't automatically result in a legislative change, says Barry Sookman. whether the discussions will lead to concrete change. A lot of trade talks "seem to go nowhere," he notes, pointing to Canada's recent discussions with the European Union. On the other hand, the government has signaled it wants to bring Canada in line with its international peers when it comes to intellectual property. There's little doubt that the need to keep trade partners happy played a part in the anticounterfeiting bill that would have amended the Copyright Act and the Trademarks Act by adding new civil and criminal remedies. The prorogation of Parliament means the bill may never see the light of day, although the government could pass a motion to reinstate it and resume the debate later on. Just before Parliament adjourned for the summer recess in June, the government published its response to a report by the House of Commons standing committee on industry, science, and technology. The report contained 21 recommendations, including: that Canada should ratify the Patent Law Treaty, the Madrid protocol and the Singapore treaty for trademarks, and the Hague agreement for industrial designs. The government's 17-page response highlights the "growth opportunities offered by foreign markets" and says there's a need to "align Canada's IP system with its international counterparts." Separately, there's also a commitment to "consider the merits and means" of protecting confidential information between owners and agents. Currently, such communications aren't protected from disclosure in litigation in Canada unless they fall under solicitorclient privilege. "Some are concerned that this may place Canadian innovators at a disadvantage in litigation in other jurisdictions, such as in the U.S., where confidential communications with domestic IP agents are protected but not necessarily those outside of that jurisdiction," the response acknowledged. In 1998, the national intellectual property law section of the Canadian Bar Association developed a discussion paper on the issue of the extension of privilege to patent and trademark agents. Lawyers have differing views on the issue, according to a CBA paper published in June. Rob MacDonald, a partner at Gowling Lafleur Henderson LLP, says he had, until seeing the government's reaction, believed the matter had "fallen off the radar." He sees the government's See Official, page 12 "The vitality of thought is in adventure. Ideas won't keep. Something must be done about them." Alfred North Whitehead (1861–1947) This is where we come in. Intellectual Property and Information Technology Law 150 York Street, Suite 400, Toronto, Canada M5H 3S5 Tel 416.941.9440     Fax 416.941.9443     E-mail info@dww.com twitter.com/DWW_IPandITlaw Practical. Experience. www.lawtimesnews.com Untitled-2 1 www.dww.com 13-09-17 8:47 AM

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