Intellectual Property Law

The respondent composed a song and registered it with a performing rights society.

The appellant television broadcaster broadcasted performances of the song using a prerecorded tape without obtaining the respondent's permission to make the recording, although it paid the required performing rights fees.

The Supreme Court of Canada held that the right to broadcast a performance under the Copyright Act does not include the incidental right to make an ephemeral recording to facilitate the broadcast.

The Court found that the right to perform and the right to record are distinct statutory rights, and the broadcaster's performing rights licence did not imply consent to make the prerecording.

The respondent held a registered copyright in two operating system programs for its computers.

The appellants copied the programs, which were embedded in silicon chips, and sold clone computers.

The appellants admitted the written assembly language versions were copyrightable but argued the silicon chips were not.

The Supreme Court of Canada held that the programs embedded in the silicon chip are a reproduction of the programs in assembly language and are protected by copyright under s. 3(1) of the Copyright Act.

The appeal was dismissed.

The appellant sought a patent for a new soybean variety developed through artificial cross-breeding.

The Commissioner of Patents and the Federal Court of Appeal rejected the application.

On appeal to the Supreme Court of Canada, the Court held that the appellant failed to meet the disclosure requirements under s. 36(1) of the Patent Act.

The specification did not adequately describe the steps involved in the cross-breeding process to allow a person skilled in the art to reproduce the invention.

The Court further held that merely depositing a sample of the seeds did not satisfy the statutory disclosure requirement.

The appeal was dismissed.

The appellant, an unauthorized dealer, sold genuine Seiko watches lawfully acquired from outside the authorized Canadian distribution network.

The respondent, the authorized Canadian distributor, obtained a permanent injunction at trial preventing the appellant from advertising or selling Seiko watches in Canada, arguing that the sale of the watches without the authorized warranty and point-of-sale service constituted passing off.

The Supreme Court of Canada allowed the appeal and struck out the injunction, holding that neither the classic nor the extended tort of passing off applies where a vendor sells identical, lawfully acquired goods under their original trademark, provided there is no misrepresentation to the public.

The appellants obtained an injunction against the respondent in a patent infringement action.

The trial judge delivered written reasons for decision on December 11, 1980, but the formal judgment was not signed until December 18, 1980.

The respondent allegedly continued to sell the infringing product during this period.

The appellants sought a contempt order, which was dismissed by the lower courts on the basis that the injunction was not effective until the formal judgment was signed.

The Supreme Court of Canada allowed the appeal, holding that while the judgment itself takes effect upon signing, flouting the clear prohibitions in the reasons for decision before the formal judgment is signed can constitute contempt by interfering with the orderly administration of justice.

The appellant applied for a patent on chemical compositions comprising chemical compounds mixed with an adjuvant, discovering their usefulness as plant growth regulators.

The Commissioner of Patents rejected the application, which was upheld by the Federal Court of Appeal.

The Supreme Court of Canada allowed the appeal, holding that the discovery of a new use for an old compound is patentable as a 'new and useful art' under section 2 of the Patent Act.

The Court found that mixing the compounds with appropriate adjuvants was necessary to embody the idea in practical form, and the composition claims did not violate section 36 or section 41 of the Act.

The appellants infringed a patent held by Congoleum, who had granted a non-exclusive licence to the respondent Domco.

The appellants settled with Congoleum but not with Domco.

The Supreme Court of Canada held that a non-exclusive licensee is a 'person claiming under' the patentee within the meaning of s. 57(1) of the Patent Act.

Therefore, the licensee has a statutory right of action for damages sustained by reason of the infringement, which the patentee cannot extinguish by settling with the infringer.

The appellant manufactured and sold desk trays under the name Starmark.

The respondents manufactured and sold identical trays made of lighter material.

The appellant brought an action for passing-off, which was dismissed at trial and on appeal.

The Supreme Court of Canada dismissed the appeal, upholding the concurrent findings of fact that the appellant's trays had not acquired a secondary meaning or reputation in the market, and finding that the trial judge had not imposed an improper burden of proof on the appellant.

The appellant, owner of two patents for waferboard and wafers, sued the respondent for patent infringement.

The respondent challenged the validity of the patents on several grounds, including failure to comply with the disclosure requirements of s. 36(1) of the Patent Act, anticipation, and double patenting.

The Supreme Court of Canada allowed the appeal, holding that the patents were valid and infringed.

The Court clarified that s. 36(1) requires the specification to adequately describe the invention for a person skilled in the art, not the general public, and does not require a distinct indication of the invention's utility.

The Supreme Court of Canada dismissed the appeal from the Federal Court of Appeal without written reasons.