Supreme Court Nominee Could Have Big Impact on IP

My weekly Law Bytes column (Toronto Star version, homepage version) examines new Canadian Supreme Court nominee Mr. Justice Marshall Rothstein, whose lengthy record on patent, copyright, and trademark matters suggests that he may very well challenge the status quo at Canada' s highest court. The column uncovers several speeches by Justice Rothstein that 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, who appears before a House of Commons committee today, 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. 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."

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.

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."


  1. Harold Jarche says:

    Enforcement focuses on copyright?
    I recently heard an unsubstantiated rumour that the RCMP are under direction to take on no new files unless they have to, and to focus on two areas only – security & copyright. Scary if it’s true.

  2. Russell McOrmond says:

    Thank you!
    Thank you for this article. When I heard that a commons committee would be interviewing this new supreme court nominee, my first question related to his past on PCT law.

    I think we have a problem when we have laws such as patent law where neither the courts nor parliament are interested in modernization. Our patent law is so vague as to be open to any interpretation, and there are extremists in the “anything under the sun” (whether made or discovered by man) camp that are pushing their interpretation.

    We need to have courts which bring economic analysis into decisions, recognizing that if the purpose of a law is to provide incentives for creativity and innovation, then judgements which chill creativity and innovation can’t be an appropriate interpretation.