My article Coming to terms with online copyright is published in the November 25, 2011 issue of the Lawyers Weekly. It reviews a recent decision of the B.C. Supreme Court in Century 21 Canada Ltd. Partnership v. Rogers Communications Inc. , [2011] B.C.J. No. 1679. The decision reviews the current state of the law in Canada on the topics of online contracting and copyright, and even the question of whether unauthorized access to a website constitutes trespass.

Calgary – 07:00 MST

 

 

 

   

For more, see mimiandeunice.com Calgary – 07:00 MST 

 

A simmering IP infringement case between Oracle and Google raises some fascinating copyright issues for software: what scope of protection is given to functional elements in an SDK (software development kit) or an API (application programming interface)? The case of ORACLE AMERICA, INC. v. GOOGLE INC. (Case No. 3:10-cv-03561-WHA) is in pre-trial contortions, with the trial currently slated for 2012. None of this has been decided in court, it merely focusses attention on a very narrow issue of copyright protection for certain elements of software code (there is a patent infringement claim on the table as well).  Oracle alleges that Google infringed copyright in Java code when it built the Android software platform. Specifically, Oracle complains that Google copied design specifications of some 37 APIs for Java libraries, as well as Java source code, object code and comments in 12 software files. In its defence, Google claims that the APIs are purely functional elements and are not eligible for copyright protection. Will this threaten Android ? Likely not. Google has articulated a compelling argument that there is no copyright in the Java APIs (see here (PDF)), but if the court disagrees and finds either copyright or patent infringement, it will merely trigger a damages calculations, and millions of dollars in royalty payments, not a death-knell for Android.

In Canada, the law is clear (see Delrina Corporation v. Triolet Systems Inc., a 2002 Ontario Court of Appeal decision) computer programming that is dictated by the operating system or reflects common programming practices is not original expression and will not receive copyright protection.  In the meantime, we will watch the Oracle vs. Google case to see if it goes to trial before the parties can reach settlement.

Further Reading including Google and Oracle Trial Briefs.

Calgary – 07:00 MST

 

Their December 1st Launch Party is just a few weeks away: Get tickets here. It’s an annual event for enterprising Calgary technology companies to spend a moment in the spotlight and get support and recognition from the tech community.

Calgary – 07:00

 

I attended and spoke at the 3rd Cloud Computing conference today, and here are a few points to take-home:

• Pay attention to governing law clauses (which law applies) and dispute resolution procedures (how do we resolve disputes), particularly for cloud service providers whose customers are worldwide;
• Limitations of liability in the context of the “public cloud” are critical. These clauses can be upheld if drafted clearly and carefully, but they will be struck down if they are unclear, or if there are overriding public policy reasons. 
• If you are a cloud-service user, and your use of cloud services involves the hosting of personal information (for example, information of your own end-customers), consider this: if one of those customers withdraws consent to the use of his or her personal information, do you have a protocol in place to track that withdrawal back through the cloud service provider, to the host who may be holding the data?

 

For a copy of my paper, please email me.

Calgary – 12:30 MDT

 

 

 You’re in good company. Even the late Steve Jobs had his complaints about this. In a biography of the Apple founder, Mr. Jobs complains that Android was “grand theft”, and he vowed to fight back. Is Android a rip-off of the iPhone? It certainly followed Apple.  The iPhone was launched in 2007, Android was launched in October, 2008. Apple introduced its App Store in July, 2008. Android Market came out a few months later. Even though it entered the marketplace later, by 2010, Android captured 44% of all mobile app downloads in Q2 2011, passing Apple’s 31% stake (see CNET report) The numbers are hard to crunch (remember, iOS is on multiple hardware devices made by one manufacturer, and Android sits on over 40 smartphones made by six manufacturers), and Apple’s system comes out on top by some measures, but by August 2011, some estimates put Android at a leading 48% of the smartphone market share.

So there is no doubt that Android has stormed from behind as a credible alternative to Apple’s ecosystem, but does that make it a “stolen idea”? Not from the perspective of intellectual property law, since there is no protection in the overall idea of a mobile platform that can run third-party apps. The real question is whether Google copied iOS code (there’s been no suggestion of that), used Apple’s trade-marks (nope), or infringed any of Apple’s patents (see this story for one of the many Apple vs. Android patent fights). 

In any event, there is a fine line between infringement and inspiration. Legend has it that Mr. Jobs was “inspired” by the mouse he originally saw at a Xerox research facility. Neither did Mr. Jobs invent the MP3 player or the idea of a mobile device running third-party apps. My Palm Treo was doing that years before the iPhone was launched.

Calgary – 07:00 MDT

 

A reminder: next week on November 1 & 2, 2011, the 3rd Cloud Computing Law conference will be held in Calgary, hosted by Federated Press. Richard Stobbe will be presenting on the topic of risk-allocation in cloud-based services such as iCloud and other enterprise cloud computing contracts, including warranties, indemnification and limitation of liability clauses.  

IT lawyers and in-house counsel from top companies will review:

• the risks & legal pitfalls of cloud computing
• legal and compliance issues 
• the implications of virtual storage on legal jurisdiction questions
• key issues that need to be addressed when negotiating and drafting a cloud computing agreement  

For registration details: Cloud Computing Law Conference (Calgary) 

Readers of ipblog.ca are eligible for a 15% discount – use this code when registering: CCL1111/PR 

Calgary – 07:00 MDT

 

iOS devices generate a trove of personal information. Do app-developers have access to the personal information of iOS device users? This is the basis of a complaint launched by a US group, as a nationwide class action lawsuit against Apple and a number of iOS app developers. The claim suffered a setback in September when a US judge dismissed the suit (see the PDF; the dismissal makes for interesting reading), with leave to amend.

There are more than 200 million iOS devices in play around the planet, several hundred thousand available apps, and reams of personal info generated by users: address book entries, cell phone numbers, file systems, geolocation data, subscriber identity numbers, keyboard cache, photographs, SIM card numbers, and unique device identifiers.  Who has access to this info, and for what purpose, are questions that have cast a cloud over Apple’s popular ecosystem. 

This story is one that will likely come back through an amended complaint.

Calgary – 07:00 MDT

 

In Louis Vuitton Malletier SA v. Akanoc Solutions, Inc., No. 10-15909 (9th Cir. Sept. 12, 2011) the US Ninth Circuit Court of Appeals found that “providing direct infringers with server space” qualifies as a material contribution for contributory copyright infringement of copyright. In Canada, we have the concept of a “authorizing infringement”, but generally, a person does not authorize infringement by authorizing the mere use of equipment (such as server space) that could be used to infringe copyright (according to the Supreme Court in the CCH case).  “Authorize” means to approve, permit and encourage the infringement. However, a court in Canada may find that copyright infringement is “authorized” in circumstances where there is something less than less than direct and positive approval and encouragement, for example, if there is some level of control over the infringing actions. This concept dates back to early cases  from the 1920s (Falcon’s case) and 1940s where “certain mechanical contrivances” (transcription turntables) were used to copy musical recordings, and became the subject of copyright infringement claims.

Calgary – 07:00 MDT   

 

Here’s an update to our earlier post (Copyright in Art … Part 2) about the case of photographer Patrick Cariou and appropriation artist Richard Prince. Earlier this year, a US District Court sided with Cariou in his copyright claim against Prince, based on Prince’s use of Cariou’s photographs of Rastafarians. The court dismissed the fair use defence since Prince’s copying was substantial compared with the “slight transformative value”. The New York Times reports that decision has now been granted an appeal (Court Allows Richard Prince to Appeal Copyright Decision) by the US Second Circuit Court of Appeals. The outcome will be closely watched by artists.

Calgary – 07:00 MDT

 

An app developer in Vancouver has been threatened with a take-down notice by CBC, in connection with his radio-streaming app sold through the Mac App Store.  The CBC has complained of copyright and trade-mark infringement, and Apple has reportedly threatened to pull the app if the developer and the CBC cannot come to an agreement. The dispute raises the classic issues of what constitutes copyright infringement: is an app, a photocopier, or an MP3 player, or a car radio for that matter, a tool which facilitates copyright infringement by allowing the copyright-protected works to be copied without the consent of the owner? Canadian law says …. it depends. In the CCH case , the Supreme Court of Canada reviewed the question of when someone is liable for facilitating or “authorizing” infringement. The court was clear that “authorization” means to approve of the infringement, and concluded “a person does not authorize copyright infringement by authorizing the mere use of equipment (such as photocopiers) that could be used to infringe copyright.”  The mere act of providing the means of infringement is not an act of infringement.

Calgary – 07:00 MDT

 

The Federal Tories have made it clear that they intend to re-introduce their copyright reform bill (the bill formerly known as Bill C-32) this fall, with new legislation possible by Christmas. They may want to re-think that timeline and ask Santa to wait on the shiny new copyright law. The Supreme Court of Canada is scheduled to weigh in on the subject, with a record five copyright cases scheduled in early December. While the issues in these five appeals will not span all of copyright law, the interpretation and analysis of copyright will undoubtedly impact the proposed legislation.

Calgary – 07:00 MDT

 

Save the date: On November 1 & 2, 2011, the 3rd Cloud Computing Law conference will be held in Calgary, hosted by Federated Press.

Richard Stobbe will be presenting on the topic of risk-allocation in cloud-based services such as iCloud and other enterprise cloud computing contracts, including warranties, indemnification and limitation of liability clauses.  

IT lawyers and in-house counsel from top companies will review:

• the risks & legal pitfalls of cloud computing
• legal and compliance issues 
• the implications of virtual storage on legal jurisdiction questions
• key issues that need to be addressed when negotiating and drafting a cloud computing agreement  

For registration details: Cloud Computing Law Conference (Calgary) 

Readers of ipblog.ca are eligible for a 15% discount – use this code when registering: CCL1111/PR

Calgary – 07:00 MDT

 

Are you a Canadian app-developer? One of the most common concerns I hear from my app-developer clients is this: how do you comply with laws around the world when your app is published on the App Store? Not an easy question to answer as these stories show. Here are a few updates from the wonderful world of app-related disputes and litigation:

• This story notes the importance of reviewing app-related privacy issues: a recent US Federal Trade Commission (FTC) settlement with app-developer W3 Innovations shows that the FTC will be scrutinizing the mobile app market for privacy violations, particularly violation of children’s privacy.  In the US, the Children’s Online Privacy Protection Act (COPPA) is specific privacy legislation that does not have an equivalent in Canada.
• The Lodsys patent infringement attack against iOS app developers has expanded to target Android developers and (reportedly at least one) BlackBerry app developer (updates here), as well as established game developers, including EA and Atari. Apple has sought to intervene in the case, to argue that their license agreement with Lodsys should shield iOS developers from patent infringement. Google may feel compelled to go to bat for Android developers. Which means Lodsys is locking horns with Apple, Google, RIM and EA.  

Related Reading: When an iPhone App Infringes a Patent 

Calgary – 07:00 MDT

 

Courts have often struggled with how to characterize a domain name using traditional legal concepts. On one level it’s just a “bundle of rights”  – a registration that provides the registrant with rights to exclude others from the use of the domain name, and point the domain name to a certain IP address on the internet.  The question of whether this intangible bundle is “property” has not been settled by any Canadian appeal court, until now.

In Tucows.Com Co. v. Lojas Renner S.A., 2011 ONCA 548, the court had to decide if the domain name renner.com was intangible personal property “located in Ontario”. This was an important issue in the case, since a finding that the domain name was property located in Ontario would permit the court to take jurisdiction and the lawsuit to proceed. The court decided that there is an emerging consensus among other courts that domain names are a form of property, and found that domain names, for the purposes of Ontario law, can be considered intangible personal property. 

Calgary – 07:00 MDT

Check out this interesting summary of Art Law concepts: Art Law TV, a series of videos which explores copyright and other legal issues faced by artists, presented through the lens of artistic practice.

Calgary – 07:00

 

In a new series, we review the basics of Canadian trade-mark, copyright and patent law.

• Canadian Copyright: The Canadian Copyright Act gives authors the right to control their creative works, such as books and pictures. Under copyright law, the concept of “author” is understood broadly and includes software programmers, photographers, musicians, mobile-app developers, animators, graphic designers, artists, dancers, writers, cinematographers, painters and poets. Original creative works are protected automatically under the Copyright Act, which gives authors the right to make copies for the term of copyright. Copyright generally lasts for 50 years after the death of the author.  It is an infringement of copyright to makes unauthorized copies of a work that is protected by copyright. One important point to remember is that copyright law does not protect ideas or concepts, but protects the expression of the idea – as expressed in written or fixed form, such as a book, a sound recording, a photo or a painting.
• Best Practices:
• Notation - A standard copyright notation is “© ABC Company Inc. 2011, all rights reserved.” A notation of this type is not required by the Copyright Act but it is recommended on copyright protected works.
• Register Copyright – Registration is relatively easy and inexpensive, and provides the owner with proof of ownership of copyright . In Canada, you are not required to submit a copy of the work with your application for registration.
• Public Domain – Just because something is publicly available on the internet does not mean that it’s in the “public domain” for copyright purposes. The concept of “public domain” refers to the expiry of copyright protection. So, for example, the original works of Shakespeare or an 18th century painting can be said to be in the public domain since the term of copyright has lapsed.
• Copyright in Software: Software, even open source software, is subject to copyright. The owner of the software could be the author of the code, or a company employing the author. To protect the intellectual property rights in software of any kind – whether it’s sold on a disc at the retail level, or is downloadable, whether an operating system or a mobile app - the owner should use proper copyright notations and implement a well-drafted license agreement. An end-user software license is a contract between the owner and the user that deals with topics such as ownership, use restrictions, warranties, liability, tech support, and related terms.
• Copyright Outside Canada: Under the Copyright Act and international copyright conventions, Canadians enjoy copyright protection in countries who are parties to treaties such as the Berne Convention, Universal Copyright Convention and the Rome Convention. Even with this legal framework in place, enforcement of copyright is challenging in the context of the internet, since infringement can occur easily and anonymously in multiple jurisdictions on multiple servers. Specialized assistance is usually required in combatting copyright infringement outside Canada.  

For more information and assistance with your copyright and software licensing needs, visit Field’s Intellectual Property & Technology Group. 

Calgary – 07:00 MDT

 

In a new series, we review the basics of Canadian trade-mark, copyright and patent law.

• Canadian Trade-marks: Trade-marks protect the rights to brand names, such as a word, logo or design. A trade-mark is used in the marketplace to identify products of one company, and distinguish these products from others in the marketplace. Trade-marks can be extremely valuable assets of a company, and represent the company’s reputation with consumers. If mishandled or left unprotected, trade-mark rights can be eroded or lost. In Canada, trade-marks can be registered through the Canadian Intellectual Property Office, and a Trade-mark Agent can assist with screening searches and registration services.
• Best Practices:
• Registration – Seek registration for your core brands. This extends your rights to that mark, in connection with your products, across Canada. Unregistered marks do not enjoy the same scope of protection.
• Screening Searches – Make better business decisions with better information. Searches are critical, particularly before launching a new brand. This helps assess risk and provides insight about potential competitors in the marketplace.
• Notation –  Mark your brands with the â„¢ symbol or the ® symbol for registered marks. Consider establishing brand guidelines for your organization.
• Licensing – Marks used within a large corporate group, or between a parent company and its subsidiaries, licensees or franchisees, should be properly licensed. Otherwise, a company risks losing its rights to unlicensed marks.
• Trade-marks on the Internet: Trade-mark policing and enforcement is challenging in the context of the internet, since infringement can easily occur in any jurisdiction, and from any server. Establish a strategy that’s suitable and cost-effective in your industry, coordinating with your domain names and your national and international brand portfolio.
• Trade-marks Outside Canada: If you have or are seeking customers outside Canada, then get advice on trade-mark protection in those markets, whether in the US, China, the EU, or developing markets in South America. Trade-mark rights are governed country-by-country, so remember that trade-mark rights in Canada will not provide any protection in the US or elsewhere. Prioritize your brands and markets and seek assistance from professionals who can help establish a strategy for brand protection beyond Canada’s borders.

For more information and assistance with your trade-mark needs visit Field’s Intellectual Property & Technology Group. 

Calgary – 07:00 MDT

 

If the health of an industry is measured by the litigation it spawns, then the app and gaming economy is going strong:

• Copyright: Fantasy Flight Publishing has sued a European app-developer, Puffin Software, for alleged infringement of copyright in a medieval-themed game (Fantasy Flight Publishing, Inc. v. Puffin Software et al. U.S. District Court, District of Minnesota Case No. 11-cv-01928, Filed July 15, 2011). Fantasy Flight claims that Puffin’s iPad title “Viking Lords” is an infringement of copyright in the board game BattleLore owned by Fantasy Flight. In the claim, Puffin allegedly approached Fantasy Flight to pitch an iPad version of BattleLore, and when there was no uptake, Puffin decided to go ahead and publish the game under its own title.  The case will involve an analysis of the elements of each game, and a breakdown of functional and original elements, as in the Sony case (below).
• Patent: App-developer Zynga has been sued in Segan LLC v. Zyna Inc. for alleged infringement of Segan’s U.S. Patent No. 7,054,928, which was issued for a system for accessing “enhancement content” on the internet. The claim alleges that Zynga titles such as FarmVille, PetVille, and FrontierVille infringe the patent.
• Copyright: In Dath v. Sony Computer Entertainment America Inc., the US Ninth Circuit Court of Appeals upheld the lower-court decision in a copyright infringement case involving the Sony PS2 and PSP title “God of War”. The plaintiffs alleged that Sony infringed copyright in their written works about war between Sparta and Athens. The plaintiffs could not show actual copying, so they had to rely on the US concept of access and substantial similarity. Remember, copyright does not protect ideas, but merely the form and expression of ideas. In this case, there was no substantial similarity of expression of ideas. In this analysis, the court reviewed elements of expression such as plot, themes, dialogue, mood, settings and characters, and concluded that the works were not similar and no infringement occurred. 

Calgary – 07:00 MDT

 

Can you get a trade-mark for .doc, .pdf or other file extensions? To follow up on our earlier post (Can File Extensions be Trade-marked?), in the US, the answer is “No”, as the makers of AutoCAD software discovered in 2009, when they tried to enforce a trade-mark for the file extension .dwg (referring to “drawing”), which is the file format for the AutoCAD software product. There, the Court made it clear that file extensions are functional and thus cannot be enforced as trade-marks. Autodesk has also failed to obtain a registration for the mark DWG at the USPTO because DWG is descriptive of software which assists in the creation of drawings which use a .dwg file extension. So far, their application to register DWG has been denied for these reasons. 

In Canada, the answer is apparently “Yes” since Autodesk has obtained a registered trade-mark for the mark DWG for use in association with “Computer programs and software in the field of computer aided design and instruction manuals sold as a unit.”  Canadian law generally accords with US law on the subject of descriptiveness and functionality.  In the Supreme Court’s famous decision in Kirkbi AG v. Ritvik Holdings Inc., 2005 SCC 65 (CanLII), (the Lego case), the Court was clear that Lego building blocks are not protectable as trade-marks in Canada, on the grounds that the shape of the blocks is purely functional in nature, and the Trade-marks Act is clear that descriptive marks are not registrable. Why this analysis does not apply to file extensions is not clear, but any attempt by Autodesk to assert a trade-mark infringement claim against a functional or descriptive use of .dwg as a file extension would likely run into that defence.