Who owns the IP rights to a Twitter account?  We associate such accounts with social media tools such as Facebook, which are deeply personal in nature. But is it really any different from any online account that you would use in the course of employment, such as a workplace subscription to a data library, or a collaboration tool such as Salesforce.com? An employer based in South Carolina puts their ex-employee’s Twitter account into this category, (Link to Article) claiming that when he left the job, the employee should have left behind the login, the Twitter account, and the account’s 17,000 followers.  In its lawsuit against the former employee (Update: Phonedog v. Kravitz – Amended Complaint), Phonedog has valued the account at $340,000 ($2.50 per follower per month).  

In Eagle v. Morgan the defendant employer claims that a former employee misappropriated (among other things) a LinkedIn account and its connections.

The law is not clear in this interesting area, which overlaps with IP law, employment law, and the law of trade secrets. One of the problems with a trade secrets claim is that Twitter followers and LinkedIn connections are not secret, and it’s questionable whether competitors could derive any value from knowing the information even if it was secret. Followers and connections are just that, they aren’t paying customers. US litigation should provide some clarity on these issues as this emerges more regularly. To date, there do not appear to be any Canadian cases that consider this point.

Related Reading: Who Owns Social Media Contacts: Employers or Employees?

Calgary – 07:00 MST

 

Richard Stobbe was interviewed by The Lawyers Weekly for Luigi Benetton’s article reviewing some of the top tech cases from 2011 (link to the article)

Calgary – 07:00 MST

 

Lawsuits! Infringement! Litigation! Ah, there’s never a dull moment in the wonderful world of intellectual property law, and 2012 will be no exception. Here’s our list of what to watch in the coming year:

Copyright, Copyright, Copyright: For several years running, we have predicted that copyright reform will come to Canada. It might actually happen in 2012. There is good reason for optimism this time: First, the Supreme Court of Canada heard a clutch of copyright cases in December 2011, and their decision is expected in the first half of 2012. Second, the Harper government is promising/threatening (depending on your point of view) to pass Bill C-11, the current iteration of the Copyright Reform Bill. Change will come, one way or another.

Online Terms & Cloud Computing: In one sense, “cloud computing” is just another name for a trend that has been developing for a decade. In another sense, it really does capture a new way of doing business for many IT services. We predict that the law will develop in this area in both Canada and the US, as online terms and cloud-computing contracts are tested in court. Here’s one example of a pending decision: Sony faces a class action in the US over its online terms for the PlayStation Network.

Anti-Spam Law: In 2011, we rashly stated that Canada made “headway” in the anti-spam department, with the passing of the Fighting Internet and Wireless Spam Act. Canada’s anti-spam legislation did receive royal assent on December 15, 2010. However, the law is still not yet in force. Draft regulations are being debated and negotiated, and even if they do come into force in 2012, they will almost certainly be subject to a grace period which will delay implementation until late 2012, or maybe even 2013.

New CDRP Rules: In 2011, CIRA updated the rules governing dot-ca domain name disputes. Watch for our review of the changes, and the first decisions that have been released under the new rules. 

Calgary – 07:00 MST

 

Copyright complaints against apps are now common, and this one frames the issues nicely: In Shanti Deva Korpi v. Apple Inc. , 1:11-cv-00906- LY (U.S. District Court) a photographer who posts her photos to Flikr, has filed a lawsuit against Apple, claiming that two iOS apps – one of which was entitled “Unofficial Guide to Hipstamatic” – engaged in a practice of scraping and republishing her photos, without authorization or attribution. According to the claim, this is a violation of copyright.

In Canada, the recent decision of the B.C. Supreme Court in Century 21 Canada Ltd. Partnership v. Rogers Communications Inc., deals directly with this issue (see my commentary Coming to terms with online copyright published in the November 25, 2011 issue of the Lawyers Weekly). The B.C. case is not an app-related dispute, but the court makes it clear that copyright will be enforceable in situations where content (including images) is scraped off the internet, and is then repackaged and republished without authorization.

Calgary – 07:00 MST

 

The Stop Online Piracy Act is a controversial U.S. bill now working its way through Congress. The proposed law is designed (in part) to knock-out foreign websites that are suspected of infringing intellectual property rights. By targetting foreign “rogue” websites and establishing new causes of action against website operators for copyright or trademark infringement, the legislation has raised concerns about ISP liability, and about  how it impacts the operation of the domain name system. SOPA permits the U.S. Attorney General to take action against a “foreign infringing site” such as a Canadian site, and obtain a court injunction against the site. Once an injunction is issued, the A.G. can serve a copy on a number of intermediaries, who must then take action within 5 days.

• ISPs can be ordered to block access to the site by preventing DNS resolution.
• Search engines can be ordered to block the site from search results. 
• Payment networks such as PayPal can be ordered to suspend transactions between the site and U.S. customers.
• Even ad networks can be ordered to stop serving ads on the site.

We will be monitoring the progress of this proposed IP law in the US.

Related Reading: Summary of SOPA, Concerns and Implications (PDF)

Calgary – 07:00 MST  

 

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

 

 

 

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

 

Here are two recent U.S. software decisions to note. Both decisions strengthen the hand of software vendors:

1. In a follow-up to our earlier post (Software License Upheld), the Ninth Circuit Court of Appeals decision in Vernor v. Autodesk Inc. has been denied leave to appeal, meaning the US Supreme Court has elected not to review the decision. This case dealt with resales by Vernor of used copies of AutoCAD software. Vernor claimed the resales were permitted under the “first sale doctrine”. The decision stands for the proposition that a software license is an important exception to the “first sale” defence. This is because the court found that Autodesk had not sold copies but merely licensed copies of the copyrighted work. 
2. In another Ninth Circuit decision ( Apple Inc. v. Psystar Corp., 9th Cir. Cal. Sept. 28, 2011), a small computer reseller operated a business re-selling Mac OS X pre-installed into non-Apple computers.  Apple complained that this was an infringement of copyright and a breach of the Mac OS X license agreement. Specifically, Apple’s software license agreement requires Mac OS X users to run their copies only on Apple computers. Psystar raised the defence that this was restrictive and constituted “copyright misuse”. The court sided with Apple, pointing out that to demonstrate “copyright misuse”, the license agreement would have to restrict creativity or restrict competition. In this case, the Mac OS X license agreement did neither. Apple’s license does not restrict a competitor’s ability to develop its own software, nor does it prohibit customers from using non-Apple components with Apple computers. Instead, Apple’s license merely restricts the use of Apple’s own software to its own hardware.

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   

 

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

 

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

• Canadian Patents: Patents protect inventions, such as a process, machine, manufactured article, or composition of matter, or any new and useful improvement to an existing invention. Patents provide the patent owner with the right to exclude others from making, selling, or using the patented invention for a period of 20 years from the date of filing. In exchange, the patent owner must fully disclose the invention. To be patentable, the invention must be new (in other words, be the first in the world); it must be useful (functional and operative); and it must be non-obvious (in other words, it shows “inventive ingenuity” and is not obvious to someone skilled in that area).  Abstract ideas, a mathematical formula or algorithm, or scientific principles are not patentable.
• Best Practices:
• Non-Dislosure: Any public disclosure of the invention prior to filing can result in loss of patentability. Canada has a 12 month grace period, permitting the filing of a Canadian patent application within one year of disclosure, but this grace period is not available in most countries.
• Patent Searching:  A patentability search is recommended before the patent application is prepared. The search and opinion will confirm the patentability of the invention, and can provide insight to a patent agent on how to craft the patent application.
• Provisional Patent: In the US, inventors can file what is known as a “provisional patent application”, and while there is no exact equivalent in Canada, it is possible in Canada to file a simplified form of a patent application, which is often used as a way to quickly secure a filing date. Some inventors fall into the trap of thinking “I’ve got a provisional patent” since an application of this type has been filed. But a provisional will never be examined and will never issue as a patent. Think of this as an incomplete application, since that’s what it is. The provisional or incomplete application must be followed up with a complete application within 12 months in the US, and within 15 months in Canada, after which the patent rights will be lost.  
• Use a registered patent agent: Even the Canadian Intellectual Property Office warns of unauthorized and incompetent advisors who are not qualified to prosecute patent applications before the patent office. 
• Patents Outside Canada:  Patent rights are granted country-by-country, so an issued patent in Canada is not enforceable in the United States, for example, without obtaining patent rights in that country.  A patent application must be filed in each country. Canadian inventors can apply for foreign patents from within Canada through the Patent Cooperation Treaty (PCT), which provides a standardized international filing system. Through the PCT, a Canadian company can access the application process for 142 PCT member countries.
• Design Patent: See Industrial Design.

For more information and assistance with your patent and intellectual property needs, visit Field’s Intellectual Property & Technology Group. 

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

 

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