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IP Osgoode Speaks Series featuring "IP and the Big Picture" by Justice Henry Carr

Date: 11-Sep-2018
Time: 12:30 PM - 02:30 PM
Location: Osgoode Hall Law School (Room 2027)

IP Osgoode Speaks Series featuring Mr. Justice Henry Carr

Tuesday, September 11, 2018

12-30 – 2:30 PM

Osgoode Hall Law School, Room 2027


To attend Justice Carr’s presentation please RSVP at

www.iposgoode.ca/rsvp by September 7 (use Event Code: Carr).



IP and the Big Picture


Intellectual property practitioners have great specialist expertise. However, just as no man is an island, no area of law can be viewed in isolation. It is important for judges and advocates to search for principles beyond their own areas of expertise.


This talk is intended to be light-hearted and to provoke debate. Mr Justice Henry Carr will recount some of his experiences, as a QC and then a judge, of the subjects under discussion. The theme, however, is serious. Justice Carr will argue for the benefits of cross-fertilisation between intellectual property and the general law. A comparison of approaches between the UK and Canada will be made as each jurisdiction has much to learn from the other.


Justice Carr will consider the following topics:


Passing off – is reputation enough or are local customers a pre-requisite?

A comparison will be made between the approach of the UK Supreme Court in Starbucks HK Ltd and another v British Sky Broadcasting plc and others [2015] UKSC 31; and the decisions of Canadian Courts in Orcin Exterminating Co Inc v Pestco Co of Canada Ltd (1985), 10 O.A.C. 14 (CA) and Sadhu Singh Hamdard Trust v. Navsun Holdings Ltd., 2016 FCA 69. The requirement for goodwill, as distinct from reputation, originated from local tax legislation; see IRC v Muller and Co’s Margarine [1901] AC 217. Is this a sensible model in the context of passing off, or has cross-fertilisation gone too far?


Patents – claim scope and the doctrine of equivalents

Comparison will be made between the decision of the UK Supreme Court in Eli Lilly and Company v Actavis UK Limited and others [2017] UKSC 48 and the judgment of the Supreme Court of Canada in Whirlpool Corp v Camco Inc, [2000] 2 S.C.R. 1067. Henry will compare the Actavis decision with the approach to rectification of contracts for common mistake. Reference will be made to FSHC Group Holdings v. Barclays Bank plc [2018] EWHC 1558 (Ch). In Actavis, was the court really trying to correct a mistake in the claims of a patent, which would be obvious to a skilled person? Is this a good idea?


Copyright and fair dealing

The UK courts initially took a broad view in interpreting what is meant by ‘fair’;  Hubbard v Vospar [1972] 2 Q.B. 84 at 94. This was applied by the Supreme Court of Canada in CCH Canadian Ltd v Law Society of Upper Canada, [2004] SCC 13.This approach was also followed in Pro Sieben v Carlton TV [1999 1 WLR 605 However in the cases of Ashdown v Telegraph Group, [2001] EWCA Civ 1142 and Newspaper Licensing Agency Ltd v Meltwater Holdings BV 2010] EWHC 3099 (Ch), the courts drew back from this liberal approach. This, it will be argued, fails to achieve an appropriate balance between user rights and the rights of copyright owners. A comparison will be made with the US fair use exception and the problems of uncertainty which that creates. Perhaps the time has come for a new legislative exception which focuses on the features of fair use and fair dealing which promote copyright’s purpose as a property right which enables and encourages creativity.


Final injunctive relief

In Coventry v Lawrence [2014] UKSC 13 (a case concerning the tort of nuisance) the Supreme Court may be seen to have departed from the familiar approach of  AL Smith LJ in Shelfer v City of London Electric Lighting Co [1895] 1 Ch 287. Lord Neuberger said that (i) an almost mechanical application of A L Smith LJ's four tests, and (ii) an approach which involves damages being awarded in lieu of an injunction only in “very exceptional circumstances”, are each wrong in principle, and give rise to a serious risk of going wrong in practice. He considered that the court's power to award damages in lieu of an injunction involves a classic exercise of discretion, which should not, as a matter of principle, be fettered. As a matter of practical fairness, each case is likely to be so fact-sensitive that any firm guidance is likely to do more harm than good.


Intellectual property rights are frequently expressed as ‘exclusive rights’. The refusal of an injunction on discretionary grounds could be regarded as the grant of a compulsory licence in circumstances not provided for by the legislation. Would the Coventry v Lawrence approach be applied in Canada? What about final injunctive relief in FRAND cases, where the Defendant has been holding out against the grant of a licence?


Mr. Justice Henry Carr

Chancery Division of the High Court of England & Wales


Sir Henry Carr studied jurisprudence at Hertford College Oxford and obtained an LLM from the University of British Columbia for a thesis on legal protection of computer programs.  He was called to the bar in 1982 and took silk in 1998.  He specialised in all aspects of intellectual property law.  He was appointed as a Deputy High Court Judge in 2007 and was chairman of the Intellectual Property Bar Association from 2012 until his appointment to the High Court Bench, Chancery Division, in October 2015.


To attend Justice Carr’s presentation please RSVP at www.iposgoode.ca/rsvp by September 7 (use Event Code: Carr).

IP and the Big Picture.pdf