Adrin Shojaie[1]
Student Writer, Windsor Law LTEC Lab
JD Candidate, 2021

 

Introduction

In February 2019, Liberal MPP Michael Coteau introduced Bill 72 to require electronic manufacturers to provide consumers and third party repair shops the necessary resources to repair electronic products that function at least in part because of electronics in or attached to them.[2] The bill, a product of the greater right to repair movement seen throughout Canada, the United States, and abroad, was swiftly defeated upon its third reading. Nevertheless, the bill has re-sparked the conversation around the right to repair in Canada.  An analysis of the debate surrounding the right to repair as well as the underlying legal structures that impede it, might provide further insight into the tension that exists between the property rights of consumers in electronic devices and the intellectual property rights of suppliers thereto.

The Debate

The right to repair movement emerged as a response to technology companies’ common practise of controlling repair functions of their products. Through a variety of measures, such as restrictive contract terms, confidential repair manuals, and void warranties for unauthorized third party repairs, the longevity and fate of consumers’ electronic products is to a large extent in their product manufacturers’ hands.

Proponents of right to repair legislation often cite the economic strain that repair monopolies place on consumers as the main reason for such legislation. The lack of competition in the electronic repair market gives companies the opportunity to choose what repairs they offer and how much they charge. Consequently, some companies price repairs at exorbitant rates to incent consumers to purchase new products rather than to repair an old one. Furthermore, some groups have been vocal about the adverse environmental implications of incentivising the disposal of electronic products over repairs.[3]

Meanwhile, those against right to repair legislation, mainly industry groups and some politicians, rely on a different set of reasons to express why such legislation would be harmful.

One concern held by some electronic product manufactures is that divulging information regarding their products’ features will make devices less secure and more susceptible to hacking. Right to repair legislation, at least that which was proposed in Ontario, would require companies to provide consumers with access to documents, replacement parts, and software for their products upon request. Those who oppose right to repair legislation contend that releasing such information, like how to disable security features of devices, would compromise the security of all devices.

The public debate over the right to repair is based to a large extent on practical considerations in support of and against the proposed changes. However, a deeper analysis of the underlying issues being addressed by the right to repair movement reveals the complex legal implications of the debate.

The Meaning of Ownership

At the centre of the dispute regarding the right to repair lies a different understanding of the term “ownership”, and the bundle of rights consumers are afforded upon the purchase of electronic products.

In their advocacy for consumer interests, proponents of the right to repair often seek to define “ownership” with a set of rights that provide consumers full control to utilize and modify their purchased products as they see fit.  With the increasing shift from analog to digital products, the nature of ownership and its associated bundle of rights have changed significantly. The issue partially lies in the assumption by consumers that their purchases constitute ownership of products, rather than licences to use them. While consumers generally own the physical product they purchase, they do not own the embedded software which is licensed to them through their acceptance of End User Licence Agreements (EULA). The rise of EULAs may also restrict subsequent transfers for products as is often the case with computer software licences, where the terms of the agreement deny consumers a property right to the product and as a result the ability to sell it. As Aaron Perzanowski and Jason Schultz note, the increased use of these EULAs present particular challenges to consumers, since so long as it is not explicitly contradictory to legislation, the limits of their ownership rights over products are governed to a large extent by the provisions of private contracts.[4]

The trend towards EULAs and licencing is one of the leading ways in which manufacturers maintain their monopolies on repairs. John Deere, a major target of the right to repair movement, utilizes software in their tractors to regulate a vast range of functions.[5] The company licenses its software to consumers and blocks access to make alterations to the machinery. As a result, consumers must travel to the nearest authorized John Deere dealer for repairs or alterations, sometimes at great personal cost.

The limitations of consumer rights by technology companies’ use of EULAs highlight a tension between these companies’ exclusive intangible intellectual property rights embedded in physical devices, and consumers’ legitimate rights and interests to the physical devices. Freedom of contract is an important legal doctrine which gives contracting parties greater certainty that their private agreements will be upheld. Of course, there are limits to this freedom, most notably, contracts may not contravene public policy and cannot obligate parties to conduct unlawful acts. Moreover, the extent to which contract rights may trump personal property rights raises issues surrounding the validity of restrictive covenants on property and possible issues of misrepresentations through suppliers’ reference to “ownership” and “sale” when this is inconsistent with the effects of the contract.[6] Ultimately, the resolution of the ambiguity on the delineations of those competing rights may lie in a government’s choice to take legislative action for new consumer protection measures that restrict the ability of companies to prevent consumers from independently repairing their products.

Copyright Law Obstacles to the Right to Repair

Canadian copyright legislation and jurisprudence largely supports the ability of electronic manufacturers to restrict repair of their products. The Copyright Modernization Act (2012) introduced new provisions to protect copyright material by prohibiting the circumvention of technological protection measures (TPM), also referred to as digital locks, that control consumers’ access to copyright material.[7] While technology does exist to bypass these locks, the Copyright Act expressly prohibits such action, even if the copyright material is being utilized for fair dealing purposes. The strict nature of these statutory restrictionshas been upheld by the Federal Court in Nintendo of America Inc v King, where the court dealt with the TPM provisions for the first time. In its decision, the Federal Court confirmed that there is no need for an actual copyright infringement to find a party liable for the circumvention of TPM (restricting access to the copyright work) pursuant to the Copyright Act.[8]

The Standing Committee on Industry, Science and Technology recently published its report on the ongoing statutory review of the Copyright Act.[9] Thi
s Committee made recommendations regarding TPMs that may lead to the loosening of restrictions. In its report, the Committee recommended modernization of copyright policy by assessing the role of TPMs within copyright law to “facilitate the maintenance, repair or adaptation of a lawfully-acquired device for non-infringing purposes.[10]

The implementation of this recommendation through legislative amendments would be an advancement for the right to repair, although it is currently unclear whether such action will be taken. If the Canadian government takes this recommendation into serious consideration, there would be inevitable pressures from industry groups to oppose such changes. The loosening of restrictions on TPM circumvention would be a sign of progress for right to repair advocates but only to the extent that it could not be overridden by contract.

Beyond the provisions relating to TPMs, the Copyright Act also presents a barrier to right to repair legislation by granting copyright holders exclusive reproduction rights over their works and freedom to decide the extent to which they want to license their copyright work. Bill 72 would have forced manufacturers of electronic products to provide to third parties the proprietary software needed to diagnose and repair their products. As a result, copyright holders’ exclusive rights under the Copyright Act would be restricted if they are required to license their software.

As a result, the Standing Committee’s recommendations, if implemented, would more likely be a first step to a longer process of reform that may lead to the change that right to repair advocates hope for. The restrictions created by the Copyright Act show the shortcomings of provincial right to repair legislation, since at least some of the legal aspects that uphold manufacturers monopoly on repairs are a result of federal legislation.

Patent Law and the Limited Right to Repair

Canadian patent law affords consumers the right to repair their products so long as it does not amount to reconstruction.[11] However, where the line between repair and reconstruction should be drawn remains unclear and demands further clarification.

In MacLennan v Produits Gilbert Inc,[12] the Federal Court of Appeal assessed a claim against the corporate defendant for replacement teeth it produced for the plaintiff’s patented chainsaw technology. The chainsaw was unique in design because it allowed the individual teeth to break off, and subsequently be replaced by a user, if one of the teeth hit hard an object such as rocks, thereby protecting its central disc from damage. The patent protected the tooth and the tooth holder, together, as one entity. Although it was the combination of the tooth and the tooth holder that was patented, the court found that the essence of the invention was that the teeth would detach, so replacing them amounted to reconstruction.[13] The Federal Court of Appeal was able to distinguish between repair and reconstruction by recognizing that in “repairing” the patented invention, the defendant was producing its own teeth rather than repairing the broken ones. However, this case provides limited insight to distinguish between repair and reconstruction for future cases as a unique analysis of each device and repair in question will be necessary to make such a determination.

Furthermore, even with greater clarity between what is ‘repair’ and what is ‘reconstruction’, the ability to repair patented devices remains difficult with the increasing use of patented components within them. Consumers may lack access to the individual parts that are necessary to repair their products. This issue is exacerbated by the fact that if third-parties manufactured those particular patented components without a licence, it would amount to patent infringement. So, while the courts have recognized a right to repair in the patent context, uncertainty remains as to how consumers can go about exercising that right.

Implication of Right to Repair Legislation on Patent Law

Right to repair legislation, like Ontario’s Bill 72, creates a framework to allow consumers to access the necessary parts they need to repair their products. However, when these necessary parts are patented themselves, the proposed legislation is difficult to reconcile with Canadian patent holders’ privileges and may mark a departure in the exclusive rights presently afforded to patent holders.  Furthermore, Bill 72 failed to explain how the proposed repair regime would operate and it failed to address the bill’s encroachment on federal powers over patents and copyright.

Section 42 of the Patent Act[14] grants patent holders the exclusive right, privilege, and liberty of making, using, and selling their patented inventions.[15]  Forcing manufacturers to provide third party repair shops with patented parts, or to grant to third parties licences to perform acts on the devices that are within the exclusive domain of patent holders conflicts with the privileges granted to patentees under section 42.

However, the apparent limitation of a patent holder’s rights may be legitimate through the provisions of the Patent Act itself. Section 65 recognizes that when exclusive rights are abused, restrictions on those rights are permitted. One such abuse is when the refusal to grant a licence prejudices “the trade of any person or class of persons trading in Canada or the establishment of any new trade or industry” and it is in the public interest for a licence to be granted.[16] As such, the question becomes whether manufacturers’ current practises reach the threshold of an abuse contrary to the public interest as to warrant the overriding of their exclusive rights. Of course, regardless of whether such a threshold is met, the federal government may still alter the current framework of the Patent Act to make right to repair legislation law.

Conclusion

The debate surrounding the right to repair shows the changing nature of ownership in the digital age, where companies contract with consumers as a means of maintaining control over their products and embedded intellectual property. Furthermore, the conflict of right to repair legislation with Canadian intellectual property law highlights the barriers to change. Firstly, legislative action at the provincial level that mandates companies to provide third party repair shops with proprietary parts and software will be likely to face legal challenges as it would encroach on the federal Copyright Act and Patent Act. Secondly, attempts to create change at the federal level would face staunch opposition due to the significant economic and legal impact of reducing the control intellectual property rights confer to suppliers of electronic products. Similar opposition was expressed by Bill Walker, Ontario’s Minister of Government and Consumer Services, who stated that right to repair legislation would make electronics harder to access as businesses may not bring their products to the province, thereby driving away innovation and jobs. Whether this concern would materialize is a separate matter.[17] While it remains to be seen if the right to repair will gain momentum at the federal level, it is evident that any form of right to repair efforts will raise a host of interconnected legal considerations that would impact Canada and its provinces’ current state of property, contract, and intellectual property law.


[1] Thank you to Dr. Pascale Chapdelaine, Prof. Wissam Aoun,
and Kevin Szeto for their valuable contributions to this blog. Any errors are
my own.

[2] Bill 72, An Act to amend the
Consumer Protection Act, 2002 respecting the repair of electronic products,
1st
Sess, 42nd Leg, Ontario, 2019, cl 54.1.

[3]Leah Chan Grinvald & Ofer Tur-Sinai, “Intellectual Property Law
and the Right to Repair” (2019) 88 Fordham L Rev (Forthcoming), online: SSNN <https://papers.ssrn.com/sol3/papers.cfm?abstract_id=3317623> at 21.

[4] Aaron Perzanowski & Jason Schultz, The End of Ownership: Personal Property in
the Digital Economy
(Cambridge, Massachusetts: The MIT Press, 2016) at 21.

[5] Ibid at 194.

[6]
Ibid at 120.

[7] Bill C-11, An Act to
amend the Copyright Act,
1st Sess, 41st Parl, 2012, cl 41.1(1) (as passed
by the House of Commons 18 June 2012); Copyright
Act, RSC 1985, c C-42, s 41.

[8] Nintendo of America Inc v King, 2017
FC 246 at para 137.

[9]
House of Commons, Statutory Review of the Copyright Act (June 2019) (Chair: Dan
Ruimy).

[10] Ibid at 72.

[11] Tesh Dagne & Gosia Piasecka, “The Right
to Repair Doctrine and the Use of 3D Printing Technology in Canadian Patent
Law” (2016) 14:2 CJLT 263 at 275­–276.

[12] MacLennan v Produits Gilbert Inc, 2008 FCA 35.  

[13] Ibid at
para 17.

[14]
Patent Act, RSC 1985, c P-4.

[15]  Ibid, s 42.

[16]
Patent Act, supra note 11 at s 65.

[17]
Lisa Xing, “Why a non-profit is pressing for ‘right to repair’ legislation in
Canada” (22 May 2019) online: CBC <https://perma.cc/H2GK-Q63>