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I am doing some writing for a chapter in a to-be-published collection to which I hope to contribute. I can't spill too many of the proverbial beans about the contents of the chapter. I can share, however, one point that I am exploring, namely whether there is any place for the notion of "legal fictions" in IP law. Let's consider the following definition of "legal fiction", taken from an article published over 20 years by Professor Eben Moglen of Columbia University (and one of the high priests of the free software movement). Writing in "In Legal Fictions and Common Law Legal Theory Some Historical Reflections" (Tel-Aviv University Studies in Law 1989) here, Moglen stated as follows:

"A legal fiction is a proposition about the substance or procedure of the legal system, purporting to be a principle or rule material to the determination of cases, which rests in whole or in part on factual premises known to be inaccurate at the time of the fiction's invocation. Each fiction, qua fiction, may be said to have a subject matter, comprised of the premise or premises counterfactually maintained. Fictions may have as their subject matter the parties' status or prior transactions in the case before the court; or the existence or relationship of third parties, places, or things not before the court; or they may assert facts about the tribunal, or about the history of the law itself. ... In addition to its subject matter, the fiction as fiction may be said to have the additional attribute of technique, or the device by which the counterfactual is declared. The simplest technique is assertion: the truth of the subject matter is announced without more, or having been asserted by a party is adopted by the court without scrutiny." 

Breaking down the elements of Moglen's definition, we have the following:

1. A rule or principle material in the determination of a case;
2. Subject matter that is known to be inaccurate (i.e., maintaining a counterfactual proposition as being true).
3. A mere assertion, otherwise unproven, about the truth of the counterfactual. 

As for the purpose of legal fictions, several Canadian judicial pronouncements are instructive:

1. "A legal fiction ... is an assumption of a possible thing as a fact, which is not literally true, for the advancement of justice, and which the law will not allow to be disproved, as far as concerns the purpose for which the assumption is made." Justice Lennox, Stoner v. Skene (44 Ontario Law Reports, , 1918).
2. "[l]egal fiction is an assertion accepted as true (though probably fictitious) to achieve a useful purpose, especially in legal matters." Staufen v. BC 2001 BCSC 779. 

Or, in more down to earth language, a legal fiction is a "dirty little factual secret" used to achieve some presumed useful purpose or goal. Keeping in mind that Moglen fashioned his definition in the context of the common law, I wonder whether we can identify any legal fictions in the IP world. The trick here is to find some IP counterfactual; the technique of assertion seems to follow rather easily.

Let me float one IP candidate for a legal fiction, a trade mark co-existence agreement. Such agreements are entered into to resolve an actual or potential conflict between two competing marks. The problem is that such agrements typically declare there is no confusion, or even likelihood of confusion, even if the underlying premise giving rise to the agreement is the existence of confusion. As for a valuable social purpose, I suppose that one can make an argument that such settlements, unless they are a camouflaged vehicle for anticompetitive behaviour, are desirable, especially when the alternative is continued contentious proceedings in either the courts or before the trade mark registry.

Right or wrong? Thoughts anyone? Other IP legal fictions anyone?

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