A television production company noticed that audio-clips from its popular TV show were being used in a new iPhone app called “Chopper Soundboard”. (Follow-up story here) While this was an Australian company, the issue is also a common one in both Canada and the US, as owners of copyright content notice that iPhone and iPad developers will “borrow” content – images, video, audio – for use in their apps.

For the copyright owner, the practical question is usually resolved when the app is removed from the iTunes store. A relatively easy remedy, but one that does not address the copyright issues.

The main legal question – which has not yet been settled in court – is who has responsibility for the infringement?  Copyright owners have launched litigation against Apple (for example, the Australian production company Jigsaw Entertainment has made noises about a lawsuit against Apple; photographer Louie Psihoyos has sued Apple in the US for copyright infringement arising out of an iPhone app), and largely left the developers out of their cross-hairs.  However, the Agreement that developers sign with Apple is clear that developers take on the liability in the event their app infringes someone else’s copyright.

Developers: Be aware of the scope of your liability with Apple, and review the agreements with your own customers. Take care when collecting content for your app. Original or properly-licensed content will reduce risks of future copyright issues.

Copyright owners: If content is being used without authorization, get advice on the options you have for remedies under the Copyright Act.

Calgary – 11:30 MT

 

ipblog.ca will be taking a break over the summer. We’ll be back in the Fall to pick up developments such as:

• Canadian Copyright Reform (with Parliament breaking for the summer, there will be no further Parliamentary debate on Bill C-32 until September);
• The US Supreme Court’s decision in the Bilski case (relating to patentability of business methods and software);
• Changes to the Canadian rules in assessing patentability for “computer-implemented inventions”;
• The Canadian Intellectual Property Office’s plans to expedite the examination of so-called “green technology” patent applications;
• Developments in licensing, trade-marks, internet law and trade-secret law.

Have a good summer. 

Calgary – 09:00 MT

The Electronic Frontier Foundation has published an interesting article on Apple’s iPhone Developer Program License Agreement under the (strange) heading “All Your Apps Are Belong to Apple“ which is garbled from both a grammatical and legal perspective.  The Developer Agreement has some zingers in it, to be sure, but it certainly doesn’t claim any ownership over developers’ apps.

If you are a developer, you own your apps. (Section 3.1 of Schedule 1: “…Apple shall not acquire any ownership interest in or to any of the Licensed Applications or Licensed Applications Information, and title, risk of loss, responsibility for, and control over the Licensed Applications shall, at all times, remain with You.”)

Calgary – 08:00 MT

The iP3 Forum in Toronto on June 21, 2010 provides an arena to discuss the potential of Apple’s Touch Platform. A business track provides analysis and insights on how to leverage the Platform’s market potential. The technical stream gets into the details of designing and app development.

I will be speaking on the subject of “App Law: The Legal Side of Mobile Apps” including a review of the law of iP3 Apps, copyright issues, trade-mark issues, intellectual property ownership,  and a review of app licensing.  I also look at tips for mitigating risk under app development agreements, and an update on the latest in app lawsuits.

For registration details, see: This Link  

Calgary – 08:00 MT

 

 

The Canadian government has introduced the next version of its long-awaited and much-debated copyright reform bill (Bill C-32, the Copyright Modernization Act). Here are a few interesting highlights:

• Format & Time Shifting: (Sections 29.22 and 29.23) The new law would allow consumers to “format shift” music from commercial CDs to hard-drives, iPods or other devices. It would also permit “time shifting” of TV programs. However, this right does not override the anti-circumvention restrictions. Put another way, if you have to crack a digital lock in order to make the shift, then you can’t legally shift. 
• Back-Ups:  (Section 29.24) The proposed law allows users to make backup copies, but again, this right is subject to the anti-circumvention restrictions. It’s hard to find a commercial DVD now that doesn’t have digital locks, which means that in practical terms, any back-ups of personal DVDs would have to break a lock, would violate the anti-circumvention restrictions, and would thus be prohibited under the new law.
• Software Interoperability: (Sections 30.61 and 41.12) Interestingly, the anti-circumvention rules do not apply if you want to circumvent a digital lock on software, “for the sole purpose of obtaining information that would allow the person to make the program and any other computer program interoperable”.  This need not be for personal use… so does this mean that competitors can legally hack each other’s code for the sake of interoperability?
• The YouTube Exception: (Section 29.21) There is an interesting exception for “Non-commercial User-generated Content”. Basically, if you construct a mash-up using bits of copyright-protected material, then this kind of creation will not infringe copyright, as long as it is for personal use and doesn’t have a “substantial adverse effect, financial or otherwise, on the exploitation or potential exploitation of the existing work”.   
• ISP Liability? (Section 27(2.3)) This new section might be called the Anti-Napster provision since it makes clear that copyright will be infringed by anyone who provides an Internet service that is designed “primarily to enable acts of copyright infringement”.  This raises the question of the liability of Internet Service Providers, though some language has been sprinkled in to provide comfort to ISPs. 

Before it becomes law, it must pass through Parliament and withstand any lobbying efforts by industry and consumers.

Calgary – 14:30 MT

Can you get a trade-mark for .doc, .pdf or other file extensions?  The makers of AutoCAD software are pursuing trade-mark protection over the file extension .dwg (referring to “drawing”), which is the file format for the AutoCAD software product. In the US case Autodesk, Inc. v. Dassault Systemes Solidworks Corp., 2009 WL 5218009 (N.D. Cal. December 31, 2009), the Court has made it clear that file extensions are functional and thus cannot be protected as trade-marks.

What about in Canada? Autodesk is also pursuing trade-mark protection for the DWG mark in Canada, and the application has been allowed.  No Canadian decisions have considered the specific question of claiming trade-mark rights over a file extension.  However, Canadian law accords with US law on the topic of functionality.  In the Supreme Court’s famous decision in Kirkbi AG v. Ritvik Holdings Inc., 2005 SCC 65 (CanLII), (the Lego case), the Court denied trade-mark protection for the shape of Lego building blocks on the grounds that the shape of the blocks is purely functional in nature, and thus cannot be protected as a trade-mark.

Calgary – 08:00 MT

 

You may have seen our recent post on the subject of Apple’s robust trade-secret protection program. Apple grabbed headlines again when a prototype iPhone made its way into the hands of a blogger at Gizmodo, who promptly posted a review of it. It didn’t take long for Apple to flex its trade-secret enforcement tools.  The “Rapid Enforcement Allied Computer Team” (a uniquely Californian computer-crime task force) descended on the blogger and reportedly seized a number of items including a laptop, hard-drive and other personal effects.  The message is unmistakeable: technology companies will go to extraordinary lengths to protect trade-secrets.

Could this happen in Canada?  Search warrants are typically used where a criminal investigation is under way.  In civil cases, a technology company could use an “Anton Piller Order”, which is a form of civil search warrant enabling representatives of a plaintiff to search the defendant’s premises and seize relevant documents and other evidence pertinent to the lawsuit.  It comes from a trade-secret lawsuit from the 1970’s, where a technology company convinced the court to permit a search-and-seizure at the defendant’s premises.  Such an order can only be granted where:

• there is a strong case for the plaintiff and the potential for “very serious” damage to the plaintiff;
• there is convincing evidence that the defendant has “incriminating documents or things”; and
• there is a real possibility that the defendant might destroy the incriminating evidence.

These orders can be set aside, as in this recent Federal Court case involving a copyright infringement claim: Vinod Chopra Films Private Limited v. John Doe, 2010 FC 387 (CanLII).

Calgary – 08:00 MST

 

Regardless of what you are distributing – shrink-wrapped CDs, online applications or smartphone apps – software licensing takes on an added layer of complexity when open source software issues are part of the mix.  The law in the US has been clarified thanks to the Jacobsen v. Katzer case, which was finally dismissed last month after the parties reached a settlement. As part of the settlement, a permanent injunction was entered, stipulating that Katzer must refrain from “reproducing …modifying … or distributing” the open source material.  (See our previous post: Open Source Update: Cisco Sued & New Ruling in Jacobsen vs Katzer).

To avoid GPL violations, make sure you get good advice on an OSS policy for your organization, and avoid the fate of Best Buy, Samsung, Westinghouse, and JVC – all of whom were named in a copyright infringement lawsuit filed by the Software Freedom Law Center (SFLC) in December 2009.

Richard Stobbe will be speaking at a conference in Calgary on April 9 on the subject of Open Source Licensing: Copyright & Beyond

Calgary – 09:00 MST

Former basketball star Ed O’Bannon and former quarterback Sam Keller have now joined forces in a multimillion-dollar federal class action lawsuit that is proceeding in the US against the National Collegiate Athletic Association (NCAA). The lawsuit has been joined by 15 former NCAA basketball and football athletes.  Collegiate sports is big business in the US and the NCAA generates significant revenues from merchandising and licensing. The NCAA’s defence is that athletes like O’Bannon waived all their commercials rights when they signed a form authorizing the NCAA to use their images for promotional activities.  The lawsuit alleges that the NCAA is improperly profiting by using athletes’ images in video games such as the Electronic Arts title NCAA Basketball ’09. 

If you are considering using any personality or likeness in a video game or smartphone app, ensure you get proper legal advice on well-drafted written authorizations.

Link to: Consolidated Class Action Complaint (PDF) 

Related Reading: Video Games & Free Speech  

Calgary – 07:00 MST

A game developer incorporates martial arts moves into a new video game. Is the choreography of those moves protectable by copyright?   The answer is, apparently, yes. 

The 1997 decision in Ahn v. Midway Manufacturing Co., 965 F. Supp. 1134 (N.D. Ill. 1997) decided that under US law, certain martial arts routines fell within the subject matter of copyright.  In that case, a software developer hired dancers to create moves which were later incorporated into the well-known game “Mortal Kombat”. A dispute arose about the ownership of the routines, but the dancers had assigned their rights to the software developer under a written contract, so they could not maintain a claim for joint ownership.  The 2005 US decision in Open Source Yoga Unity v. Choudhury, 2005 WL 756558 (N.D. Cal. Apr. 1, 2005) suggests that yoga moves can be eligible for copyright protection.

Does this apply in Canada as well?  Yes, in Pastor v. Chen, 2002 BCPC 169 (CanLII), the court reviewed a dispute about dance routines, and decided that the “uniquely choreographed moves and dance styles” were properly covered by copyright.  Game developers should take care to get advice whenever incorporating choreographed elements into their applications.  And the next time you’re on the dance floor, just be sure not to infringe the copyright in anyone’s new dance moves.

Calgary – 09:00 MST

 

The Apple rumour mill – which usually spins at an alarming rate even on a slow day – has been at risk of popping a gasket over the past few months with speculation over Apple’s latest product release: a tablet-like device which is expected to do to the handheld tablet category what the iPod did for MP3s.  The iPad product was released today.

The new product was described in great detail by those who had no idea what it looked like, what it was called or what functionality or interface it might have. This attests to two things: the marketing power of consumer expectations, and the strength of Apple’s trade secret and intellectual-property protection program.  Several years ago Apple sued a journalist who posted information about one of Apple’s forthcoming software products (in O’Grady v. Superior Court, 139 Cal.App.4th 1423 (Cal.App. 2006)). Apple sought an order forcing the journalist to disclose his sources. In the most recent round of speculation, the company’s lawyers fired a letter at a Silicon Valley gossip site when the site offered a $100,000 bounty for any photos of the tablet. Ultimately Apple lost its legal battle with the journalist, but the practical message was clear: that it takes its confidential information very seriously.

Calgary – 07:00 MST 

With a few weeks to go before the Winter Olympics, VANOC’s anxiety about official marks (what you might call “brand-wringing”) continues.  The list of protected terms was expanded in December (curiously, this order managed to pass before Parliament was shut down) to include the mascots like Quatchi, at right, and various other symbols of the events. 

Companies of all stripes – from small retailers of cheap knock-off T-shirts, to independent app-developers, to major financial institutions – are scrutinized by VANOC to see if their efforts run afoul of the rules.  It has become clear that the Olympic and Paralympic Marks Act has cut both ways.  VANOC has a powerful enforcement tool to use against infringers and pretenders.  On the other hand, the legislation is like a handbook for companies who are not official sponsors to determine exactly where the line is. For example, Scotiabank’s recent “Show Your Colours” campaign, and the new “International Collection” by Roots, both make use of carefully crafted, non-infringing design elements that evoke the excitement and energy of the Games, while scrupulously avoiding any offense under the Act. 

VANOC’s anxiety is understandable – sponsors have paid handsomely and expect protection.  But you can’t provide a handbook, then complain when people read it and follow it. 

Related reading: Ambush Marketing: The Names That Cannot Be Spoken… (Part 1)

Calgary – 09:00 MST

A mobile app is just like any other software application and should be properly licensed to end-users.  Even for free versions, the app developer is not giving it away, but merely making a copy available to the user under certain conditions. 

Recent updates to the iTunes Store software have made it possible for app developers to make full-text end-user license agreements (EULA) available to purchasers. Not many app sellers take advantage of this, though sophsticated game developers such as Electronic Arts have lost no time in using the improved tools to post full versions of their EULAs.  Developers who sell their apps through other channels – such as titles in Blackberry App World – will have to tailor their EULAs to each channel.

Developers should get advice on licensing their apps to protect their intellectual property rights. The default end-user license that is embedded in Apple’s SDK Agreement is generic and limited and developers should consider the benefits of inserting their own tailor-made license.

Calgary – 09:35 MST

Apple launches a cellphone. Nokia releases a laptop. Apple buys an online advertising division and Google moves aggressively into software and hardware. With the release today of Google’s nexus one phone, which positions itself as an iPhone competitor, the ongoing battle for the smartphone market heats up another few degrees. 

Nokia and Apple are already locked in patent litigation with each claiming the other has infringed its portfolio of patents.  Nokia raised the stakes when it broadened its legal attack to include all of Apple’s popular iMac desktops as well as the iPhone.  Meanwhile, with the release of Google’s branded nexus one phone (manufactured by HTC), the search-engine titan elbows into the cellphone market with its own Android-based device. Android apps will compete head-to-head with iPhone apps. In the midst of all this market positioning, intellectual property litigation is one more tool; it is reminiscent of the battle in the late 1980s when Motorola effectively declared war on upstart Nokia and used patent infringement as its main weapon. It also recalls the use of copyright in the turf wars between Apple and Microsoft in the 1990s. 

The lessons for business? Don’t ignore the value of intellectual property protection as both an offensive and defensive tool.  If you don’t know where to start, then obtain an intellectual property audit and come up with a budget and a list of priorities.

Calgary – 15:35 MST

Way back in 1998 – almost prehistoric when it comes to technology – a US inventor registered a design patent for “Computer display with an iPhone window” in a prescient move that saw a device with email, telephone, internet services all arranged by handy icons in a rectangular screen called an “iPhone”.  Sound familiar?  Check it out.

The inventor, Joseph Giordano, sold the invention to InfoGear Technology Corp., which was acquired by Cisco in 2000, and Cisco famously locked horns with Apple in January 2007 when Apple’s iPhone was launched.  The rest, of course, is history.  The good news is that if someone on your gift list is clamouring for an iPhone, you can always get them one of these if you can’t afford the latest 3GS.

Calgary – 09:00 MST

 

 

 

Earlier this year, iPhone app developer Zynga Game Network Inc. sued rival game-maker Playdom Inc. and a number of ex-employees in California state court. Among the causes of action were: misappropriation of trade secrets, breach of contract, breach of the duty of loyalty, tortious interference with contracts and unfair competition. Zynga alleges that Playdom hired away four key employees who allegedly took with them key information and planning documents when they left Zynga, including “The Zynga Playbook”, a document which would contain valuable trade secret information in the fiercely competitive app industry. The court granted an initial request for a temporary restraining order against Playdom and the other defendants. Those defendants are prohibited from destroying any of the files allegedly misappropriated. (To see the court documents, link here.)

Under Canadian law, the misappropriation of trade secrets has been scrutinized in several high-profile cases, including the RBC v. Merrill Lynch case, where virtually all of the investment advisors at an RBC branch joined competitor Merrill Lynch.  The law is clear that departing employees owe a duty of “good faith” to their employer, and can also owe a  “fiduciary” duty – a special category which applies to employees such as senior managers, executives, directors and officers.  In the RBC case, the departing employees were not fiduciaries, and had the legal right to leave RBC and to compete with their former employer. But note that employees owing a fiduciary duty will be held to a higher standard.

The lessons for business? Ensure your standard employment agreements contain appropriate non-competition and confidentiality clauses to prevent unfair competition and improper use of confidential information.
Calgary – 14:00 MST

In a story that reads like a law-school exam, a company with a German trade-mark took a California man to arbitration to try and win the domain name project.me, which is registered under the rules for the country code top-level domain for Montenegro.  iPhone app developer Project.me (the German company) recently lost at arbitration before the World Intellectual Property Office Arbitration and Mediation Centre.  The decision project.me GmbH v. Alan Lin Case No. DME2009-0008 is noteworthy for several reasons:

1. The German company failed primarily because the domain name in question was applied for before the company was incorporated or the trade-mark was applied for. The California registrant who initially registered the domain name couldn’t have registered it to take advantage of the German company’s brand, since the German company didn’t exist at the time.

2. Domain name arbitration decisions typically ignore the suffix (.com, .ca or in this case .me) but this decision notes that “a determination of identicalness and similarity of a .me domain name may in appropriate cases be based on a consideration of the domain name as a whole – that is, of the domain name including the “.me” suffix.”  Future domain name disputes may take this reasoning into account.

3. This case illustrates the international nature of intellectual property disputes and shows why it’s important to get advice on trade-marks, branding, and domain name strategies.

Calgary – 11:00 MST

We’re launching applaw.ca.â„¢

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. Canadian app developers are also ringing up sales through the iTunes store.  Fortunes are being made 99¢ at a time. As more platforms, smartphones and mobile devices come on-stream - including BlackBerry, Palm, Android, Google, Yahoo, Facebook - the industry will continue to grow.

This brings us to the emerging body of “app law” that is being articulated by the courts, as developers jostle for position in the marketplace. Richard Stobbe will be presenting to the Vancouver iPhone Forum on November 24th on the subject of app law and intellectual property issues in Canada.  Bookmark applaw.caâ„¢ on your iPhone, BlackBerry, Palm or other mobile device for continuing updates in this field.

Calgary – 09:45 MST

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 in a video game. 

In a recent US case (Brown v. Electronic Arts Inc., Case No. 2:09-cv-01598 (US District Court, Central Cal.)), retired football player Jim Brown sued Vancouver-based EA over its use of his likeness in the popular Madden NFL game. This isn’t the first lawsuit over the use of football players’ images – last year, a group of players successfully sued the National Football League Players Association for claims arising out of royalty rates for the use of players’ images in EA games.  In the Brown decision however, the court rejected Brown’s complaint. 

In the US, video games are a form of protected expression qualifying for a free-speech defense, and EA made a successful free speech defense to this claim. 

The case turned in part on the fact that the character in the game was one of thousands of “virtual athletes”.  This particular character may have outwardly resembled Brown to football fans (they would have recognized his jersey number and designation as a running back), but Brown’s name was not used in the game or in advertising. If EA had made any of these mistakes – using his name or likeness in advertising – then they likely would have been tripped up by Brown’s Lanham Act complaint. This claim is based on the idea that an advertiser can’t falsely claim that a celebrity has somehow sponsored or endorsed their product.  EA did not attempt to signify that Brown endorsed the games, so EA did not get tackled by the Lanham Act claim.

Calgary – 13:45 MST

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. Sorry, guys, but you’ll have to read the fine-print. The iPod Touch software license clearly says:

“The iPod Touch Software and Services are not intended or suitable for use in situations or environments where the failure or time delays of, or errors or inaccuracies in, the content data or information provided by the iPod Touch Software or Services could lead to death, personal injury or severe physical or environmental damage, including without limitation the operation of nuclear facilities, aircraft navigation or communication systems, air traffic control, life support or weapons systems.”

And you thought the Apple lawyers were just being over-zealous when they drafted that clause.

Calgary – 09:45 MST