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Supreme Court Nominee Could Have Big Impact on IP

Appeared in the Toronto Star on February 27, 2006 as Rothstein’s Said A Lot About Tech Law

When Prime Minister Stephen Harper’ s nominee to fill a vacancy on the Supreme Court of Canada, Mr. Justice Marshall Rothstein, appears before a House of Commons committee today, intellectual property law issues are unlikely to figure prominently in its discussions.  That would be a mistake, however, since Justice Rothstein’ s lengthy record on patent, copyright, and trademark matters suggests that he may very well challenge the status quo at Canada’ s highest court.

In recent years Justice Rothstein has emerged as a prominent jurist on intellectual property cases at the Federal Court of Appeal.  His best-known decision is the Harvard Mouse case, which addressed the question of whether higher life forms, in this case the "oncomouse", could be patented.  Justice Rothstein ruled that it could, concluding that there was nothing in the definition of “invention” under the Patent Act to preclude such patents.

Justice Rothstein has also presided over leading copyright and trademark cases.  He wrote a concurring opinion in Law Society of Upper Canada v. CCH Canadian, a copyright case that focused on the photocopying of legal decisions.  He sided with the majority in a high-profile trademark battle between Lego and Montreal-based Mega Blocks.

While the Supreme Court has not always upheld Justice Rothstein – it narrowly overturned his Harvard Mouse decision – his experience suggests that he will play a prominent role on future intellectual property cases.  In fact, his track record extends beyond his federal court decisions to his opinions expressed in a series of public speeches analyzing intellectual property.  

Those speeches, perhaps more than the decisions themselves, reveal a candid judge who is uncomfortable with incorporating policy into the legal decision making process, who is willing to examine intellectual property laws of other jurisdictions, and who recognizes the limits of intellectual property law.

Justice Rothstein has been particularly outspoken about the Harvard Mouse decision. In a July 2003 speech at Oxford University, he criticized the Supreme Court’ s majority decision, which he characterized as featuring a "hesitancy in writing style" which he attributed to the view that “they seem uncomfortable with the result of patenting the oncomouse and they are trying to find reasons to avoid that result."  (In hand written notes added to the original text, Rothstein acknowledged that the critique might seem indiscrete but his "inclination to be indiscrete increases in direct proportion to the distance from Canada.")

In another speech a year earlier at the University of Victoria, Justice Rothstein assessed the arguments against his opinion favouring the patenting higher life forms, including fears that patenting encourages the development of genetically modified animals, that we should not commercialize life forms, and that it is not ethically responsible for a court to treat life forms in the same manner as inanimate objects.

In response, Justice Rothstein revealed a judicial philosophy that could impact future intellectual property law cases.  While acknowledging the broad moral and social implications of the case, he argued that these are policy issues "for Parliament and not the Court."

Although he is surely correct from a statutory perspective, establishing a clear separation between law and policy on issues involving the patenting of higher life forms or striking the appropriate copyright balance is difficult.  Indeed in recent years the Supreme Court of Canada has embraced these policy issues and in the process charted a course that has attracted the admiration of experts worldwide.

Justice Rothstein used the same University of Victoria speech to reflect on the role of global intellectual property laws.  He indicated that the patent laws of other jurisdictions (many others had already approved the patenting of the Harvard Mouse) did not factor in his decision, though he opined that "there is a rationale for. . . uniformity where there is no statutory reason against it." In other words, so long as the law does not preclude it, harmonizing Canadian law with the approaches of other countries may be desirable.

Given the complexity of intellectual property law, mirroring the laws of other jurisdictions is not as simple as it might seem, however.  For example, while U.S. copyright law features some provisions supported by advocates of stronger copyright laws such as Digital Millennium Copyright Act, it also includes protections for fair use and educational exemptions that are favoured by user interests.

Justice Rothstein has also commented on the limits of intellectual property law.  In a September 2003 speech to a patent law association in Oregon, he discussed the Lego trademark case in which the toy-maker sought to use trademark law to extend protection over its famous building blocks after its patent rights had expired.  

Foreshadowing future reasoning from the Supreme Court of Canada, Justice Rothstein concluded that "I don’ t think that intellectual property rights are to be interpreted that way.  Patents are granted for a limited time. It would defeat that limitation to be able to convert patent protection for a limited period to trademark protection in perpetuity."

With intellectual property and technology-related cases appearing regularly on the Supreme Court’ s docket, the appointment of Justice Marshall Rothstein promises to have a significant impact on the future direction of law and technology in Canada.

Michael Geist holds the Canada Research Chair in Internet and E-commerce Law at the University of Ottawa, Faculty of Law. He can reached at or online at

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