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Intellectual Property in Canada (ipblog.ca)

Intellectual property law, copyright, trademarks and Internet law in Canada.
By Richard P.W. Stobbe

Post Frequency: 0.4/day

Last Entry: November 16, 2009 at 15:58:31

Launching applaw.ca: App Law in Canada

Posted on November 16, 2009
We’re launching applaw.ca.? Businessweek’s recent article “Inside the App Economy“ shows that mobile applications are evolving from a geek-niche to a powerful industry sector. Not convinced? Consider the case of Zynga, a US app developer that has gone from zero to $100 million in revenues in just 2 years...

eBay Terms Upheld

Posted on November 10, 2009
In a recent US lawsuit Tricome v. eBay, Inc., 2009 WL 3365873 (E.D.Pa. Oct 19, 2009), a user sued eBay in Pennsylvania and eBay invoked the “forum selection clause” in its online agreement. That clause specifies that disputes under the agreement have to be brought in California, eBay’s home turf...

IP in the News

Posted on November 06, 2009
There is no shortage of intellectual property stories in the media. What used to be a “special interest” story is now mainstream news. Here are a few recent stories worth noting: The Globe and Mail® has posted a podcast on How to protect your intellectual property from the Canadian entrepreneurs at i4i who locked horns with Microsoft...

Internationalized Domain Names

Posted on November 02, 2009
ICANN announced on Friday that it has approved - in principle - the creation of domain names made up of non-Latin characters. The protocols that run today’s internet recognize domain names and internet addresses made up of numbers and A-to-Z Latin characters...

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Business Method Patents: Debate Continues

Posted on October 27, 2009
The battle over patentability of software and business-methods is continuing in both Canada and the US. In the US, the Bilski case and its “machine-or-transformation” test is currently undergoing review at the Supreme Court level. Earlier this month the Free Software Foundation (FSF) and Red Hat each submitted amicus curiae briefs in support of the proposition that [...

Executives Depart with Secrets and IP

Posted on October 20, 2009
Four key employees of a software company resign and start up a competing venture. The former employer stumbles. The new company aggressively targets the customers of the former employer, and develops into a successful and profitable business, twice the size of the former employer...

The Great Olympic Sweater Debate

Posted on October 19, 2009
Aside from disputes over beer labels, you can’t get much more Canadian than this one. When the Bay unveiled its line-up of Olympic gear last week, the knit sweater (pictured at left) attracted the attention of the Cowichan Band Council, who cried foul ...

Video Games & Free Speech

Posted on October 19, 2009
Can a video game portray a character that looks like you, without your permission? There have been a number of disputes over the right of video-game publishers to use a person’s likeness - for example, the dispute over Kurt Cobain’s avatar in Guitar Hero 5, or the recent lawsuit over whether the images of certain professional boxers can be used [...

Damages for Copyright Infringement

Posted on October 19, 2009
Where an infringer carries on with the infringing activity after the copyright owner has sent notice, damages can be higher. This is the finding of a Federal Court judge in Microsoft Corporation v. 1276916 Ontario Ltd. (2009 FC 849)(Sept. 17, 2009). In that case, Smart Buy, a computer retailer in Ontario, was selling PCs loaded with pirated [...

Update: Changes to Canada?s Bankruptcy Laws

Posted on September 23, 2009
As we posted in IT Outsourcing during the ?Climb Out? and IP Licenses and Bankruptcy, Canada’s bankruptcy laws have historically permitted certain contracts - including intellectual property licenses - to be “disclaimed” in the course of the bankruptcy of the licensor...

Is a Website Operator Liable for User Comments?

Posted on September 21, 2009
Two recent decisions tackle this issue: In the US decision of Cornelius v. DeLuca, 2009 WL 2568044 (E.D. Mo. Aug. 18, 2009), bodybuilding.com (an online retailer of fitness and bodybuilding products), was sued over the content of certain comments posted to the bodybuilding...

E-Commerce & Online Terms

Posted on September 17, 2009
Blockbuster operates an online movie rental service in the US, which is subject to a user agreement. In the recent US decision in Harris v. Blockbuster Inc., 2009 WL 1011732 (N.D. Tex. April 15, 2009), Blockbuster tried to deflect a customer’s lawsuit by using a standard mandatory arbitration clause in the user agreement...

Should Canada Fast Track CleanTech Patents?

Posted on September 14, 2009
In some countries (notably, the UK and South Korea, and now Australia) cleantech inventions are being earmarked to receive expedited examination in the patent office (See for example: Green Channel for Patent Applications (UK), and this announcement about changes at the Korean IP Office, plus this post about Australia’s plans)...

Battle of the Beer Brands

Posted on September 11, 2009
Putting a lime in your beer is nothing new. But branding it apparently is. US brewing giant Anheuser-Busch Companies Inc. and Canadian Brick Brewing Co. Ltd. are locked in an intellectual property dispute over their labels for lime-flavoured beer. The makers of “Bud Light Lime” complain that Brick’s “Red Baron Lime” is an infringement of copyright and [...

IT Outsourcing during the ?Climb Out?

Posted on September 08, 2009
The importance of IT outsourcing - as a way to reduce costs and manage risks - has been brought into sharp focus during the economic downturn. The recession may have bottomed, but by all accounts the “climb out” will be long and slow. Here are a few pointers to consider for the negotiation and management of [...

CleanTech Funding in Canada

Posted on September 02, 2009
Starting today, Sustainable Development Technology Canada (SDTC) is accepting applications from Canadian companies for funding of clean technologies. Statements of Interest (SOI) are being accepted from today until October 21st for preliminary screening in the fields of Energy Exploration & Production, Power Generation, Energy Efficiency, Transportation, Agriculture, Forestry and Mining and Waste Management...

Employees & Technology

Posted on August 31, 2009
Two recent cases illustrate the limits of employee rights in connection with their use of technology related to the workplace. Although these are extreme examples, they reinforce some basic rules about employee “Acceptable Use” policies, and employee use of technology: Employee Blog: In the case of Alberta Union of Provincial Employees v...

TWEET Trade-mark in Canada

Posted on August 26, 2009
Recent news articles have shown that Twitter Inc. has run into problems with its US trade-mark application for TWEET. Others have beaten them to the trademarks office with applications for marks such as TWEETMARKS, COTWEET and TWEETPHOTO, which have been cited by the US trademarks office as being confusing with TWEET...

iPod Apps: Make Music, Not War

Posted on August 24, 2009
Recent news articles from Newsweek and cnet report that the US military has deployed the iPod Touch and iPhone in the battlefield, as a user-friendly, multifunction device to assist soldiers with communication, translation, intelligence-gathering, logistics and training...

Online Defamation Update: Cohen v. Google

Posted on August 20, 2009
Online defamation has always been about two issues: there’s the legal question of whether the online comments are “defamatory” according to the standard legal tests, but before you get to that stage, you need to know who is writing the defamatory comments...

Canadian P2P Copyright Battle Continues

Posted on August 18, 2009
IsoHunt, a British Columbia-based service that indexes BitTorrents for peer-to-peer file sharing, attempted a pre-emptive strike against the Canadian Recording Industry Association (see our previous post), by asking the Court to declare that its activities were legal under Canadian copyright law...

Canadian Company Shuts Down Microsoft Word

Posted on August 13, 2009
A small Canadian company, Infrastructures for Information Inc. (i4i), won a significant damage award earlier this year in its patent infringement fight wth Microsoft. The lawsuit claimed that MS Word 2003 and Word 2007 contained custom XML tagging features that infringed the Canadian company’s patent...

Book Titles Can?t be Trade-marked

Posted on August 12, 2009
In what appears to be a case of first impression in Canada, a Federal Court has confirmed that the title of a literary work cannot function as a registered trade-mark in Canada. This is consistent with the law in the US, but the issue has apparently never come before a court in Canada until earlier [...

Apps: The Legal Side

Posted on August 10, 2009
Applications for mobile devices are in their infancy (think of Hollywood in the 1930s). Apple’s App Store is one year old, barely out of diapers, and in that time customers have downloaded more than 1.5 billion applications. More than 65,000 apps populate the store, and the number of developers is growing by the month...

More Google AdWords

Posted on August 07, 2009
Another day, another lawsuit against Google (Rosetta Stone Ltd. v. Google, Inc., 1:09-cv-00736-GBL-JFA (E.D. Va. complaint filed July 10, 2009)). This lawsuit comes in the wake of recent changes made by Google to its AdWords policy. These changes relaxed the rules relating to the use of trade-marks and permitted the use of trade-marks in ad [...

Canadian Copyright Reform Update

Posted on August 04, 2009
The Canadian government has launched another attempt at reforming the Canadian Copyright Act, to bring it in line with the digital age. The last major overhaul of the legislation occured more than 10 years ago, and since then several attempts to introduce revised legislation were stymied, either by public opposition, or more often, intervening elections (Canada [...

Michael Jackson?s Patent & Trademarks

Posted on July 31, 2009
This month the US Patent and Trademark Office opened an exhibit of Michael Jackson’s patents and trade-marks which is scheduled to run through the summer of 2009. One of Mr. Jackson’s more famous intellectual property assets - besides his songs and brands - is his patented “Method and means for creating anti-gravity illusion” (Michael J...

Employer Access to Employee Gripe Site

Posted on July 30, 2009
In the good old days, the boss overheard you complain at the pub after work. Now, employees have more sophisticated methods of dishing the dirt. And employers must walk a careful line when navigating the issue of employee privacy. In Pietrylo v. Hillstone Restaurant Group, Docket No...

Trade-mark Protection: LEE vs L.E.I.

Posted on July 22, 2009
L.E.I. for jeans is arguably confusing with both LEVI’S and LEE, making it a perfect candidate for a trade-mark battle. Lee Canada went to bat to defend its LEE brand in the face of an application for the mark L.E.I. (stylized) for use in association with jeans...

Google AdWords Update

Posted on June 23, 2009
There have been a rash of new lawsuits against Google?s AdWords program including 2 major class-action claims: FPX, LLC v. Google, Inc., 2:2009cv00142 (E.D. Tex. complaint filed May 11, 2009) (Class action); Soaring Helmet Corp. v. Bill Me Inc., 2:2009cv00789 (W...

Update: Business Method Patents

Posted on June 12, 2009
In both Canada and the US, the business method patent is, at the moment, on the run (see our previous post: Business Method Patents Under Review). Business method and software patents have been the subject of fierce debate in the intellectual property community...

Non-Competition & Injunctions

Posted on June 10, 2009
When you buy a business, it is common for the seller to agree to non-competition restrictions. In other words, the seller agrees not to compete against you for a certain period of time afterwards. These clauses are standard, but can be tricky to enforce, as shown in the recent decision in Belron Canada Incorporated v...

Whisky Trade-mark Appeal

Posted on June 08, 2009
In our previous post on The Whisky Caper: Scotch Whisky Association vs. Glenora Distillers, we noted that a Canadian distiller won the right to use the word GLEN in its trade-mark for Canadian whisky, against the objections of the Scotch Whisky Association...

Green With Envy: Trade-marking Colours in Canada

Posted on June 05, 2009
Want to trade-mark the colour green? Just ask the makers of painter’s tape for some pointers. They applied (several times) to register the colour GREEN as a trade-mark for their well-known green painter’s tape, based on use in Canada since 1993...

Canadian iPhone App Dispute

Posted on June 04, 2009
A Montreal company has been hit with a cease-and-desist letter over its launch of an iPhone app that helps users find the city’s “Bixi bikes”. Bixi is the public-use bicycle system in downtown Montreal. Bixi (contrary to some reports) is not a registered trade-mark, though an application for registration has been filed...

Law & Technology: The Facebook Factor

Posted on June 02, 2009
Call it the “Facebook Factor”. The way people use the internet and social media is colliding with litigation in ways that couldn’t have been foreseen even a few years ago: In a recent Nova Scotia case, a judge considered evidence of a plaintiff’s Facebook page in a personal injury lawsuit, and the evidence contradicted the plaintiff’s claim; In [...

Article on Internet Law

Posted on May 29, 2009
Maclean’s magazine (macleans.ca) interviewed Richard Stobbe, lawyer with Brownlee?s Technology & IP Group, for an article on defamation and internet law. The article takes a look at the “dark side” of anonymity on the internet and the state of the law in Canada...

The Risks of Rebranding

Posted on May 26, 2009
Rebranding is supposed to provoke a response, right? Consumer interest? Marketing awards? A trade-mark lawsuit? Brick Brewing Co., an independent Ontario brewery, recently rebranded their Red Baron beer, updating the look with a new label, to the right...

iPhone App Dispute

Posted on May 21, 2009
In the (now notorious) Colorado case of InfoMedia, Inc. v. Air-O-Matic Inc. (Court Case Number: 1:09-cv-00302-ZLW), two makers of rival iPhone applications are in a trade-mark battle over the use of the phrase “Pull My Finger” in association with an application for the mobile device...

ipblog.ca on your BlackBerry or iPhone

Posted on May 19, 2009
ipblog.ca is available on your web browser from your BlackBerry or iPhone. Bookmark the site for updates, articles and business tips on Canadian intellectual property law, trade-marks and internet law in the palm of your hand. Calgary - 10:00 MST

Barbie Clobbers Bratz: Intellectual Property Decision

Posted on May 14, 2009
In the long-running IP battle between Mattel Inc., the makers of Barbie dolls, and MGA Entertainment Inc., the makers of rival Bratz dolls, a California federal court has issued a decision this week that appears to put a nail in the Bratz coffin. The court dismissed MGA’s application to reduce the $100 million damage award granted to Mattel [...

It Takes a (PC) Village? for Copyright Infringement

Posted on May 12, 2009
It was another long battle for Microsoft, this time against a retail chain in Toronto trading under the banner “PC Village”. In April, a Federal Court judge in Microsoft Corporation v. PC Village Co. Ltd. (2009 FC 401) awarded damages of $10,000 per copyright violation for a total of $150,000; plus $50,000 in punitive damages against all defendants jointly and severally; [...

Canadian ?Reverse Hijacking? Decision

Posted on May 05, 2009
Two Canadian domain name decisions: In the saga of the domain name forsale.ca, another chapter has been written. This domain name was the subject of an earlier battle between Globe Media and the then-owner, Dawn Internet (Globe Media International Corporation v...

Canadian Copyright Class Action

Posted on April 30, 2009
A Quebec Superior Court judge has approved a class action in the case of Electronic-Rights Defence Committee ERDC c. Southam Inc. 2009 QCCS 1473 (search for ERDC in Superior Court judgements), a copyright case dealing with the inclusion of freelance articles in online databases, which could prove to be as important as the 2006 Supreme [...

SCC Upholds Internet Defamation Decision

Posted on April 28, 2009
Last Friday, the Supreme Court of Canada upheld the decision in Fromm v. Warman, to award $30,000 in damages for internet defamation. The judgment of the Court of Appeal for Ontario, 2008 ONCA 842, handed down in December, 2008 [Link to Court of Appeal Decision] was upheld...

Proposed Canadian Anti-Spam Law

Posted on April 27, 2009
On Friday, the federal government introduced long-overdue draft anti-spam legislation, the Electronic Commerce Protection Act. The law would allow civil lawsuits against spammers, and is designed to target email spam, as well as spam directed to cellphones and mobile devices...

Canadian Company Wins Round in Patent Battle

Posted on April 22, 2009
A year ago we posted a Patent Infringement Update on this case; earlier this month the USPTO rejected all 57 claims in a course-management software patent that US-based Blackboard Inc. used to successfully sue its Canadian competitor, Desire2Learn. The most recent rejection relates to claims added during the re-examination process [copies of the documents are posted here]...

Google AdWords and Trade-marks

Posted on April 14, 2009
A US appeals court has permitted an attack against Google’s (in)famous AdWords program by allowing a trade-mark infringement lawsuit to proceed. The lawsuit was brought against Google by Rescuecom Corp., a computer service and support company. Rescuecom alleged that Google?s AdWords program (its practice of selling the Rescuecom trade-mark to other advertisers, thereby triggering the appearance of a [...

Olympic Lawsuits

Posted on April 08, 2009
VANOC, the organizer of the 2010 Olympics, has launched another lawsuit in the lead-up to the 2010 Winter Games, this time to block ticket scalping. The suit filed in March against Coast2Coast Tickets alleges trade-mark violations in the effort to curb unauthorized ticket resales...

IP Licenses and Bankruptcy

Posted on March 30, 2009
What happens when a licensor becomes insolvent? When Body Blue Inc., a Canadian consumer products company, stumbled financially, a receiver was appointed in Canada under the Bankruptcy and Insolvency Act. In its attempt to restructure the company and satisfy creditors, the receiver sold the company?s assets in May, 2006 for $7 million to a competitor consumer products [...

Departing Employees & Trade Secrets

Posted on March 11, 2009
A recent survey shows that departing employees are leaving the office with more than the photos of their kids - they’re walking off with trade secrets and confidential company information. A majority of the survey respondents said they burned confidential information onto a CD or DVD, around 40% dragged it to a USB drive or [...

?Netbook? and Generic Trade-marks

Posted on February 25, 2009
American computer giant Dell Inc. has launched a challenge against Canadian computer maker Psion Teklogix Inc. and its ownership of the trade-mark NETBOOK. Psion registered the mark NETBOOK in both Canada and the US in 2000 (based on its original application filed in 1996), and now Dell is challenging that registration...

US Clickwrap Decision

Posted on February 23, 2009
UPS has a label-printing and shipment-tracking software program that is installed on a customer’s computer. So what happens when the UPS technician (rather than the customer’s own employee) installs the software, scrolls past the license agreement, and clicks “I accept”? This situation was reviewed in the recent case of Via Viente Taiwan, L...

Facebook?s About Face

Posted on February 19, 2009
A few weeks ago, Facebook attempted to revise its Terms of Service - the online contract that governs the relationship with Facebook users. Revising a contract can be tricky at the best of times, let alone an online contract with 175 million users from around the world...

Canadian Trade-marks Opposition Procedure

Posted on February 18, 2009
The Canadian Intellectual Property Office has announced that the Trade-marks Opposition Board will be changing its practice, effective March 31, 2009, pursuant to the new Practice in Trade-mark Opposition Proceedings. Here’s a summary of the changes: The new practice will simplify the procedure and time-lines for granting extensions of time, and will clarify when extensions of time can [...

Transborder Privacy Guidelines

Posted on February 17, 2009
In January, the federal Privacy Commissioner released Guidelines for Processing Personal Data Across Borders (PDF Copy of Guidelines). These guidelines set out the Commissioner’s view of how the Federal Personal Information Protection and Electronic Documents Act (PIPEDA) will be applied to transfers of personal information across borders...

Government of Canada & Open Source

Posted on February 10, 2009
The Government has issued a Request For Information on open source software to assist it in developing guidelines related to the “planning, acquisition, use and disposal of No Charge Licensed Software (NCLS).” The term NCLS is apparently intended to include all forms of software which is available without charge - from “true” open source software, freeware, [...

Trade-mark Tempest in a Teacup

Posted on February 07, 2009
In a recent story that made national newspapers here, it was suggested that McGill University’s new advertising campaign had somehow stepped on the toes of American Larry Smith, editor of an online magazine. Mr. Smith raised an allegation that somehow the idea of a six-word summary was protectable under intellectual property laws - trade-marks, or copyright, [...

US Patent Jurisdiction Decision

Posted on February 02, 2009
The Eastern District of Texas has gained notoriety as a magnet for patent lawsuits. Plaintiffs will commence lawsuits there with the hope that pro-patent-owner juries will be convinced to decide the case in favour of the patent owner and award significant damages...

The Whisky Caper: Scotch Whisky Association vs. Glenora Distillers

Posted on January 26, 2009
Some people take their whisky seriously. The Scottish Whisky Association takes the topic very seriously. They were concerned that the use of the word “Glen”, in connection with a Canadian whisky, would mislead consumers into thinking the drink was from Scotland...

Open Source Update: Cisco Sued & New Ruling in Jacobsen vs Katzer

Posted on January 23, 2009
In December, the Free Software Foundation (FSF) launched a lawsuit alleging that Cisco has breached the terms of the GNU GPL and LGPL (the General Public License and Lesser General Public License), thereby infringing copyright in the licensed programs...

E-Commerce & Internet Jurisdiction

Posted on January 20, 2009
Lawyers are often criticized for arguing over semi-colons and prepositions. Here is one case where the word “of” and “in” were debated up to the Ninth Circuit Court of Appeal. In the recent decision in Doe 1 v. AOL LLC, 2009 WL 103657 (9th Cir...

IP & Internet Law in 2009

Posted on January 05, 2009
To follow-up on our post last year [IP and Internet Law in 2008 ], here are a few issues to watch in ‘09: US Patent Reform Although the US Patent Reform Act of 2007 stalled in the US Senate in 2008, it is expected to be brought back onto the government agenda in 2009 as part of the Obama administration’s [...

Copyright Infringer Hit with Fine

Posted on December 10, 2008
It’s clear that Microsoft has been monitoring an infringer who made headlines last year when he was hit with a substantial damage award for selling pirated Microsoft software. At the time Mr. Cerrelli, the director of the corporate defendant, was personally liable due to his direct involvement and knowledge of the copyright infringement...

Chinese IP Enforcement

Posted on December 03, 2008
Many Canadian companies are hoping that sales to China’s growing consumer class will help cushion the blow of the US economic downturn. Any penetration into the Chinese market will inevitably involve brand battles for consumer products. Take this recent example, where a Chinese distiller was fined for infringing the famous Johnnie Walker Black Label brand...

Email Communications As Contracts

Posted on November 21, 2008
Can an exchange of email form a contract? To create an enforceable contract, the parties have to intend to be bound by their agreement at the moment the contract is formed. This can happen in different ways, including via email. In the recent decision in Basis Technology Corporation v...

First Conviction Under Anti-Camcording Law

Posted on November 16, 2008
Alberta has produced what appears to be Canada’s first anti-camcording conviction. Revisions to the criminal code, which target movie piracy in theatres, were used to obtain a conviction against a Calgary man who was banned from movie theatres for a year and fined $1,500...

SCC Decision on Selection Patents

Posted on November 11, 2008
In the battles between generic and brand-name pharmaceutical companies, this decision can be considered a major clarification of the law. Last week the Supreme Court of Canada (SCC) released its decision in Apotex Inc. v. Sanofi-Synthelabo Canada Inc...

The Obama Trade-mark Surge

Posted on November 05, 2008
It was announced last night that Barack Obama will become the next US President. Entrepreneurial Americans across the nation are taking the opportunity to file trade-mark applications inspired by the President-elect. Here are a few of the more interesting ones filed in the USPTO in the last year: BROCCOLI OBAMA ? filed for “A vegetable recipe” OBAMALLAMA - [...

Generic Domain Names in Canada

Posted on November 01, 2008
When are domain names so descriptive or generic that they can’t function as a trade-mark? A Montreal lawyer registered and used the domain name canadavisa.com for immigration law services. He then challenged the owner of canadavisa.ca claiming that the use of the dot-ca domain name for similar services would constitute bad faith contrary to the dispute resolution policy...

Defamation Update: Hyperlink Is Not Publication

Posted on October 28, 2008
We have previously commented on the series of defamation lawsuits commenced by Wayne Crookes. These lawsuits are resulting in court judgements which have established some guidance in this emerging area. The latest decision, Crookes v. Wikimedia Foundation Inc...

US Decision Hits Canadian Company with ?Google Damages?

Posted on October 16, 2008
It is very common for Canadian companies to expand their customer base into the US, and it is also common for Canadians to encounter difficulties when they discover that they have the same brand name as a US competitor. Trade-mark law permits the same trade-mark to owned by different companies in different countries...

Amended Industrial Design Regulations

Posted on October 09, 2008
The Canadian Intellectual Property Office has introduced amendments to the Industrial Design Regulations which are effective October 5, 2008. The changes allow for greater flexibility in submitting design applications with respect to the colour and size of images, and permit the filing of colour drawings and photographs...

Patent Decision: Lapse of Rights

Posted on October 08, 2008
DBC Marine Safety Systems Ltd. invented an inflatable reversible life raft and applied for a patent (No. 2,233,846). During the course of any patent application, it is common for the Patent Office to send an examiner’s letter to the applicant, requesting further information or amendments to comply with the Patent Act...

Privacy Decisions: Biometric Data

Posted on October 01, 2008
What do nursing homes and nightclubs have in common? In these 2 decisions, they both collect biometric data on their employees. Biometric data can be anything that records “measurable characteristics” of an individual - from thumbprints to voice-prints to DNA...

Canadian Do-Not-Call List In Effect

Posted on September 29, 2008
The Canadian Do-Not-Call List (DNCL) goes into effect tomorrow. The CRTC (Canadian Radio-television & Telecommunications Commission) is coordinating the DNCL and starting September 30, Canadian consumers can register their telephone numbers on the DNCL for free...

Our Trademark Anthem

Posted on September 26, 2008
With glowing hearts, we protect our brand. VANOC, the organizer of the 2010 Olympics, has unveiled the new Olympic motto “WITH GLOWING HEARTS“. Of course, some will criticise the choice because it lifts a line from the Canadian national anthem...

Copyright: How much is too much?

Posted on September 16, 2008
Lawyers are often asked how much copying will constitute copyright infringement. Of course, every good lawyer will answer “It depends.” The recent Harry Potter case illustrates this issue: Author J.K. Rowling claimed that a plan to publish a lexicon (essentially an alphabetized reference listing Harry Potter characters, names and other information) would be a violation of copyright in [...

Green Shift: The Politics of Brands

Posted on September 09, 2008
When the Liberal Party decided to brand their environmental policy earlier this year, they picked the name “Green Shift” …and walked right into a trade-mark lawsuit. The mark GREEN SHIFT was already in use by a Toronto environmental consulting company...

Election Stalls Copyright Reform

Posted on September 08, 2008
With the announcement yesterday that Parliament is dissolved, and Canada is heading into a Federal election set for October 14th, the government’s copyright reform bill (Bill C-61) dies on the order paper. Canadians will have to wait until the dust settles after the election to see what will happen to the copyright debate...

Olympics and the Trade-Mark Police

Posted on August 22, 2008
In China, the birthplace of countless knock-offs and counterfeits, the task of policing Olympic marks must be daunting indeed. The trade-marks police must strive to be faster, higher, stronger than the offenders. French retailer Carrefour was recently rebuked for the use of Olympic emblems in its Nanjing retail location...

Online Privacy: YouTube, Google and Canadian Users

Posted on August 13, 2008
In the current copyright battle between Viacom and Google, the users (including you, if you’ve ever watched a YouTube video) are caught in the cross-fire. Viacom and other broadcasters launched a lawsuit against Google last year, alleging $1-billion in damages...

Domain Name News

Posted on August 05, 2008
A few notes from the internet and domain name world: CIRA’s revised WHOIS policy has been criticized by Michael Geist and others for its “backdoor access for special interests”. I have to disagree with Prof. Geist on this one. The ability of trade-mark owners to be able to defend against cybersquatters and trade-mark infringement is a [...

Retail Therapy for Brand Owners: Counterfeit Goods & Director Liability

Posted on August 01, 2008
The U.S. Customs and Border Protection Office recently announced that the value of counterfeit and pirated products seized at the border had increased in 2008, up to $113.2 million. Of course, that’s just the stuff they seized, and countless other counterfeits and knock-offs are flowing in...

Sticks & Stones: Online Defamation & Privacy Decision

Posted on July 22, 2008
What happens when a resident of B.C. posts defamatory comments on a usenet group about a resident of Australia? In this case, two men were engaged in a protracted and ugly name-calling session in the usenet group ?alt.suicide.holiday?, described as a discussion forum for persons who were feeling depressed and suicidal...

File-Sharing: A Questionable Win for Recording Industry

Posted on July 17, 2008
The Quebec Torrent case (past stories here and here ) appears to have ended with the recording industry claiming victory. Last week a Quebec court issued a permanent injunction against the operators of the P2P site, effectively shutting down the site and turning off the exchange of music files, television shows and other content...

Online Copyright Liability

Posted on July 02, 2008
For IP lawyers, these are interesting times. It isn’t often that proposed intellectual property legislation makes front-page news and in Canada, the debate over Bill C-61 has been front and centre. There is ample coverage of the proposed law in the media across the country since the bill was introduced last month...

Domain Name Update

Posted on June 27, 2008
There is a news story circulating that internet regulators are permitting domain names with an infinite variety of extensions - so users would not be limited to dot-com, dot-ca or the other 21 extensions which are currently approved. The piece I heard made it sound as if internet users could wake up tomorrow and start typing in their own [...

Domain Name & Defamation Case

Posted on June 26, 2008
A disgruntled ex-employee registers the dot-com version of the employer’s dot-ca domain name. Then, just before leaving on vacation out of the country, the ex-employee directs the dot-com domain name to a gay porn site. The employer sues for damages...

Canada?s Brands

Posted on June 16, 2008
A ranking of Canada’s top brands puts Research In Motion out in front, with its newly-introduced Blackberry Bold (left). The BlackBerry brand is pegged at a value of $5.6-billion, well ahead of the Canadian financial institutions such as RBC and TD Canada Trust that topped the list in years past...

Proposed Canadian Copyright Law Introduced

Posted on June 12, 2008
Today the Government finally introduced its long-awaited Copyright Reform bill - (Bill C-61 ). Of course over the coming days, media and bloggers will be dissecting it. But the immediate summary appears to be that the efforts to balance user rights (things like private copying, format and time-shifting) are restricted by anti-DRM circumvention provisions...

Broadcaster?s use of Flickr Photos

Posted on May 15, 2008
When can a TV broadcaster - or any news organization - use Flickr photos? Flickr is a popular photo-sharing site. People use it to share photos of every description. The site hosts millions of images. So when can a news organization download and publish a “newsworthy” picture from Flickr or Facebook, or from any photo-sharing site? After all, the Copyright Act (Section [...

Online Defamation Update: Doctrine of ?presumed publication?

Posted on May 12, 2008
This is the story of online defamation allegations levelled against Yahoo, Google, Wikipedia, MySpace and others by a B.C. man who says he was defamed by certain online postings. We have been following this defamation case since it was initiated (See:earlier post )...

Old Fashioned Trade-mark Infringement

Posted on May 08, 2008
I guess this falls under the category of “online law” - the proceedings of the Old Bailey (London’s Central Criminal Court) dating back to the year 1674 are now online. Here are a few excerpts from trade-mark criminal cases from the 1800s...

Copyright Law: Two to Watch

Posted on May 01, 2008
First, there has been much debate about when the Tory government in Ottawa will table their revised copyright bill. In late 2007, draft legislation was pulled amid an unusual groundswell of opposition. Now, there is renewed speculation that the bill will be introduced before Parliament breaks for the summer (assuming there is no election in the [...

Update: eBay and the Taxman

Posted on April 29, 2008
In a story we posted last year, eBay lost when the Canada Revenue Agency compelled disclosure of its records - specifically, records showing how much money was earned in Canada by so-called “PowerSellers”. The Federal Court of Appeal (eBay Canada Limited vs...

Technology in Alberta

Posted on April 24, 2008
As a plug for the local technology industry, we report that the Government of Alberta has just announced a few economic measures aimed at tech companies: Starting January 1, 2009, companies will be able to take advantage of a refundable tax credit worth 10% of eligible expenditures on scientific research and experimental development up to $4 million [...

Crash-and-Burn Case Study

Posted on April 23, 2008
This story is reminiscent of the dot-com days, when tech companies hit the wall at two hundred miles an hour. One day they’re flush with cash, enjoying the new marble floors and capuccino machines; the next, the doors are closed and everyone is laid off...

Trade-mark and Metatag Litigation

Posted on April 18, 2008
A recent US Court of Appeal decision (North American Medical Corp. v. Axiom Worldwide, Inc., 2008 WL 918411, 11th Circuit Court of Appeals, April 7, 2008) deals with meta-tags and trade-mark infringement. In a nutshell, the court agreed that the use of a competitor’s trade-marks in metatags constitutes infringement...

Dot-Ca Update

Posted on April 18, 2008
A new decision and a new policy: In a recent decision (Enterprise Rent-A-Car Company v. David Bedford ), Enterprise won handily in its dispute over the bank of names registered by Mr. Bedford, a BC domainer. The dozen domain names (enterpriseautorental...

Canadian Comment: Apple Sued Over Ad Copy

Posted on April 18, 2008
Million of colours or millions of dollars in damages? Apple’s lawyers must be wondering whether people have too much time on their hands. A recent California lawsuit alleges that Apple’s ad copy for its iMac computers is misleading because it incorrectly boasts “millions of colours”...

Patent Infringement Update

Posted on April 18, 2008
We posted last month about a Canadian company that lost a patent infringement suit in Texas to competitor Blackboard Inc. The Canadians lost another round a few weeks later when the judge barred them from selling the infringing products in the US. In a recent reversal of fortune, the U...

Domain Name Scams

Posted on March 27, 2008
In our earlier post we wrote about the domain kiting and domain tasting. Other common tricks, such as Network Solutions’ practice of “front-running” (using customer search strings to pre-emptively register domain names before customers can get them), reflect the growing competitiveness in the domain name industry...

Liability of Online Service Providers: Chicago Lawyers vs. Craigslist

Posted on March 19, 2008
In Canada, what is the liability of online service providers – so-called “interactive computer services” — including Craigslist, Yahoo Groups or Facebook? The US Court of Appeals decison last week in the case of Chicago Lawyers’ Committee for Civil Rights Under Law v...

Intellectual Property Injunctions in Canada

Posted on March 17, 2008
You win some, you lose some. An injunction is essentially a court order which prevents a company from doing something, such as using a trade-mark or a patent. It can be a very useful tool in intellectual property litigation. However, as we’ve reviewed in other cases, the test in Canada for obtaining - and maintaining - an [...

Update: Generic Trade-marks

Posted on March 12, 2008
To update our earlier post , the owner of the trade-mark CHEAP TICKETS lost at the Federal Court of Appeal in the decision in Cheaptickets and Travel Inc. v. Emall.ca Inc. et al., 2008 FCA 50. The expungement order was upheld. The court agreed with Emall that the marks were generic and “clearly descriptive” when used in [...

Infringement of Rights in Photograph

Posted on March 05, 2008
A photographer is hired to do some work on an ad campaign. If the photographer’s bill is never paid, and the photographs are used, is it copyright infringement? The Copyright Act makes it clear that copyright would belong to the person who ordered the photographs...

Welcome to Texas: Keep Your Powder Dry

Posted on March 03, 2008
A promising Canadian company is hit with a dubious software patent owned by a US competitor. The Canadian company is based in Ontario; the US patent-holder is headquartered in Washington, DC. But the lawsuit takes place in the infamous Eastern District of Texas: the plaintiff-friendly outback of patent infringement litigation...

Business Method Patents Under Review

Posted on February 28, 2008
The US Federal Circuit Court of Appeals has decided to review a number of issues that go to the heart of business-method patents in the In re Bilski case. Essentially Bilski has claimed a method for managing risk. The claim is not tied to any software or “machine”; it is merely a mental process of [...

Industrial Design in Canada

Posted on February 25, 2008
The Canadian Intellectual Property Office has released some updated tools to assist practicitioners in drafting and filing industrial design applications, including sample drawings. In Canada, industrial design protects the shape, pattern or ornamentation of a product - anything from the shape and pattern on a common metal spoon, to the design of an in-line skate, to the [...

Copyright Infringement in Canada

Posted on February 18, 2008
The story of Montrealer Gérémi Adam, who is an alleged copyright pirate, has attracted more attention after the man dropped out of sight on the date of a scheduled court appearance last month. He did appear in court yesterday to answer the charges and to plead not guilty...

MySpace Nabs UK Domain

Posted on February 11, 2008
The domain name < myspace.co.uk > was registered in August 1997, fully six years before MySpace, the now-famous social-networking site, was even founded in 2003. In a recent decision (MySpace, Inc. vs. Total Web Solutions Ltd.) under the dot-uk domain name rules, MySpace has won a dispute that appears to break new ground...

Canadian Trade-mark Battles

Posted on February 08, 2008
If we were to rank intellectual property battles over Canadian culture, last month’s dispute in PEI over the use of the trade-marks surrounding Anne of Green Gables might beat out last year’s domain name fight over Hockey Night in Canada ...

Look Out Apple, Here Comes Meizu

Posted on February 04, 2008
There was a time when the words “Made in Japan” were synonymous with cheap, low quality trinkets. Today those words are the hallmark of high-quality electronics. The words “Made in China” are on the same path. From an intellectual property and trade-mark perspective, there are cheap knock-offs - like Mickey-Mouse t-shirts and pirated DVDs...

Fast-Track Canadian Patents

Posted on February 02, 2008
The Canadian Intellectual Property Office has announced its participation in the Canada-U.S. Patent Prosecution Highway (PPH) pilot project. This experimental program, which has been in the works for some time, is designed to help fast-track patent examination in both Canada and the U...

Business + Technology: Resources

Posted on January 31, 2008
Some of the common issues facing Canadian businesses today are: ensuring compliance with e-commerce laws, handling employee surveillance issues and protecting brands online. The following links relate to online contracting and e-commerce in Alberta, as well as employee surveillance issues and online brand strategies for Canadian business: E-Commerce: Alberta Internet Sales Contract Regulation E-Commerce & [...

Trade-mark Injunction Update

Posted on January 31, 2008
Our earlier post reviewed one of the decisions in the ongoing trade-mark dispute between Cross-Canada Auto Body and Hyundai, the Korean car manufacturer. This is a dispute over the distribution of Hyundai auto parts. Hyundai’s injunction application recently failed on appeal (Hyundai Motor America v...

iPhone Patent Infringement Suit

Posted on January 31, 2008
It was only a matter of time before someone took a run at Apple’s famous iPhone and it is reported that Minerva Industries, Inc. launched a patent infringement lawsuit against Apple on Tuesday, mere hours after the unknown company was told that its US patent issued (Patent No...

Virtual Rights Protection

Posted on January 31, 2008
There are virtual lawyers, virtual commerce, virtual brands. So logically someone has finally opened what purports to be the Second Life Patent and Trademark Office saying: “We allow you to register, protect, and add value to your Second Life creations to protect your intellectual property rights...

E-Commerce Update

Posted on January 31, 2008
In what might be a high-water mark for online vendors, a decision of the US Third Circuit Court of Appeals in Schwartz v. Comcast Corporation has upheld the terms of a subscription agreement even in the absence of any proof that the customer actually knew of, let alone assented to the terms...

US Patent Reform

Posted on January 31, 2008
An interesting article in the NY Times gives an update on the US patent reform process and the battle lines that are drawn between large technology companies such as Intel, Microsoft, IBM and Apple, who are looking for ways to take away leverage from small-time patent holders, and the pharmaceutical industry which traditionally relies on robust patent protection...

Intellectual Property Control

Posted on January 31, 2008
There is growing debate (and some misinformation) about the control by private interests over the very essence of language and thought in our society. For example, some of the analysis over the Olympic and Paralympic Marks Act (which came into force in December, 2007) has suggested that anyone uttering the number “2010″ in the same breath [...

The Politics of Domain Names

Posted on January 31, 2008
Alberta Premier Ed Stelmach is in good company: he joins Julia Roberts, Kevin Spacey and Mick Jagger, not to mention lesser celebrities such as one-time federal MPs Don Boudria and David McGuinty. This club can boast of the price that comes with celebrity in an internet age, since they’ve all had their personal names registered [...

IP and Internet Law in 2008

Posted on January 31, 2008
Four intellectual property topics to watch in the new year: Canadian Copyright Changes The government’s announcement of new copyright legislation has generated considerable debate in Canada in the last few weeks - when copyright reform hits the front page of the Globe and Mail, then you know something is up...

Open Source Resources

Posted on January 31, 2008
There seems to be a run on BusyBox litigation this fall and the lawyers at the Software Freedom Law Center (SFLC) have been busy; last week they filed another copyright infringement lawsuit against Verizon Communications, Inc., alleging violation of the GNU General Public License (GPL)...

Article on IP Rights

Posted on December 31, 1969
The Montreal Gazette interviewed Richard Stobbe, lawyer with Brownlee’s Technology & IP Group, for an article on intellectual property rights in the internet context. The article also provides an interesting perspective on developments in IP rights in other countries...

Microsoft: Open For Business?

Posted on December 31, 1969
Microsoft announced today that it is embracing certain interoperability principles in connection with its bread-and-butter products such as Windows Vista including the .NET Framework, Windows Server 2008, SQL Server 2008 and Office 2007. This means making technical specifications and information available to make it easier for third-party software to operate with Microsoft’s products...