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

 

As a follow-up to our earlier post (Domain Name Update: .xxx Blocking Process), this is a reminder that on Wednesday, September 7, 2011, the “Sunrise B” period will commence to permit the owners of registered trade-marks to block their marks from becoming part of a .XXX domain name. The opt-out process blocks eligible trade-marks at the .XXX registry so these trade-marks cannot be registered by others.  As an example, Microsoft might make use of this procedure to block the registration of “microsoft.xxx” as a domain name. This Sunrise period runs for 52 days until Friday, October 28, 2011. By that date, trade-mark owners must submit their Reservation Request under the Sunrise B procedure.

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

 

In our earlier posts [Amazon Business Method Case to be Appealed] we reveiwed the case of the (infamous) Amazon 1-click patent, a case which is currently on appeal. The appeal was heard in Toronto this summer and a decision may come down in late 2011. In light of the Federal Court decision in Amazon.com Inc. v. Commissioner of Patents 2010 FC 1011 , the Canadian Intellectual Property Office (CIPO) has revised its practices. New practice guidelines are now in effect, replacing the contrary guidance in the MOPOP…. until the Federal Court of Appeal hands down its own decision. Stay tuned.

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

 

 

The Canadian Internet Registration Authority (CIRA) has announced a new CDRP Policy and Rules, which will take effect August 22, 2011. Under the new dispute resolution procedure, the online filing system has been streamlined and some concepts have been updated to bring them in line with the UDRP. Among the other changes are:

1. Test for what is “Confusingly Similar” The Policy uses a test of “narrow resemblance” to determine whether one domain name is confusingly similar to a trade-mark. This moves the test away from Canadian trademark law concepts, and implements a uniform standard to be used by all arbitrators.
2. “Commercial Gain” is now a factor to determine “bad faith”.
3. Generic Domain Names. Previously, panelists had imposed a requirement to use generic domain names in order to establish a legitimate interest. This has been removed.

CIRA’s summary of the changes can be found here  

Related Reading: Domain Names in Canada: Don’t Mess with the UFC

Calgary – 07:00 MDT

 

In a recent US decision (Murphy v. Millenium Radio, 2011 WL 2315128 (June 14, 2011)), the Third Circuit Court of Appeals decided that removing the name of a photographer from a photo constitutes a violation of the DMCA. In this case, a photographer took pictures of two local radio personalities for publication in a magazine. The photo was later scanned and uploaded by the radio station, but in the scanning process, the photographer’s name was cropped out, without the artist’s authorization. The court found that this breached § 1202 of the DMCA which deals with “Integrity of copyright management information”.

In Canada, this would be covered by Section 14.1 of the Copyright Act, which addresses “moral rights”. Under this heading, an author or creator of a work has the right to be associated with the work as its author by name, or under a pseudonym, or the right to remain anonymous. Tampering with the right of a photographer to be associated with the work would infringe moral rights in Canada.

Calgary – 07:00 MDT

 

In Louis Vuitton Malletier S.A. et al. and Singga Enterprises (Canada) Inc., the Federal Court sent a strong message to counterfeiters. This is a case of infringement of copyright and trade-mark rights, arising from the sale of counterfeit copies of Louis Vuitton and Burberry handbags through online sales and operations in Vancouver, Calgary and Edmonton. The Trade-marks Act provides for an award of damages or profits in relation to the sale of infringing goods. The Copyright Act provides for an award of both damages and profits from the sale of infringing goods, or statutory damages between $500 to $20,000 per infringed work. In this case, the Federal Court awarded Louis Vuitton and Burberry a total of over $2.4 million in damages against the defendants, catching both the corporate and personal defendants in the award.  

Related Reading: Retail Therapy for Brand Owners: Counterfeit Goods & Director Liability 

Calgary – 07:00 MDT

 

What constitutes “use” of a trade-mark in Canada? Under Canadian trade-mark law, a trade-mark is deemed to be used in association with services if it is used or displayed in the performance or advertising of those services. 

The Federal Court of Canada decision in TSA Stores Inc. v. Registrar of Trade-marks (2011 FC 273) adopts a liberal definition of “use”. 

TSA owns the registered mark THE SPORTS AUTHORITY in association with retail-store services in Canada. It operated six stores in Canada, but the stores were closed in 2000. It tried to maintain the validity of its mark by relying on display of the mark on a website that was accessible from Canada. In this case, TSA was able to show “use” of the mark through the operation of an information website through which US online sales were possible, but which did not permit Canadian sales. The court reasoned that “services” is a broad term and as long as some consumers or purchasers receive a benefit from an activity, then it qualifies as a “service” for the purpose of showing use of a mark. In other words, for services, use of a mark need not involve any sales or advertising, and could be established by any incidental activity by which some members of the Canadian consuming public receive a benefit.

What happens if we couple this with the decision in Masterpiece. Does this mean that any website on the internet which is accessible in Canada from which some Canadians derive some benefit, may establish trade-mark “use” in Canada? And is such use sufficient to invalidate a registered mark in Canada if it pre-dated the date-of-first-use of the registered mark?  Arguably, this would only apply in the case of services, but it certainly appears to lower the bar to establishing use in Canada and makes it difficult for trade-mark owners to assess the risks when filing a trade-mark application. This seems to raise more questions that it settles, and further clarity is required from the courts on this question.

Calgary – 07:00 MT

 

A patent owner, VS Technologies LLC, claims that Twitter has infringed its patent, and the company sued Twitter in the State of Virginia.

When Twitter users sign-on, they agree to certain Terms of Service. These Terms of Service specify that any claims by a user must be litigated in California. The inventor of the patent signed-on as a Twitter user, so Twitter claimed that the patent infringement suit should be moved from Virginia to Twitter’s home jurisdiction of California, based on the forum selection clause in the Terms of Service.

A recent US decision VS Technologies LLC v. Twitter Inc. has blocked this transfer request, reasoning that these Terms of Service do not govern patent infringement claims, that VS Technologies never assented to the Terms of Service, and that the patent owner is not seeking to enforce the Terms of Service. The court also made it clear that it did not want to establish a precedent that would apply to all social networking patent infringement claims.  

Business lessons? Online service-providers, social-networking sites and cloud-computing services should take note that forum-selection clauses do not necessarily provide blanket coverage. Forum-selection clauses have been upheld for other purposes – for example, if the claim arises in connection with a complaint over some part of the service itself – but this type of clause should not be relied upon as a defence against patent claims.

Calgary – 07:00 MT

 

Canadian trade-mark owners can register their marks in the United States, through the USPTO . It’s important to remember that, as a Canadian business, registration of your mark in Canada does not afford any protection or trade-mark rights in the US, so a separate US application must be filed.  After application and registration of your mark, a declaration is required at the 5-year mark. This is known as a Section 8 & 15 combined declaration, which requires the trade-mark owner to file specimens to show that the mark has been used in the US. Here’s a tip: When preparing your initial trade-mark application and designing packaging and labelling for the products, it’s important to keep in mind the eventual requirement to file specimens of use, to ensure that the specimens of the mark-as-used will show use of the mark-as-registered.

Consider the case of the TTAB decision in In re E.A. Sween Company, where the applicant registered the mark DELI EXPRESS SAN LUIS for sweet rolls (shown at left). However, the specimen of use showed use of the DELI EXPRESS mark as a visually distinct mark in red, in the top left corner of the package label, and the words SAN LUIS to the right, separated spatially in such a way that the TTAB concluded that the two marks conveyed “two separate commercial impressions.” Thus, the applicant’s drawing of the mark as registered was not considered a “substantially exact representation” of the mark as used in commerce.

Contact Field Law for assistance with screening, filing and registering US trade-marks.

Calgary – 07:00 MDT 

 

 

 

Apple Inc. has a well-known family of iMarks registered in Canada, the US and around the world, including iTunes, iMac, iPhone, iPod and iPad. In Canada, it has even applied to register the iPad screen as a trade-mark under Application No. 1488599 (the IPAD TRADE DRESS ICON SCREEN Design) as well as the iPhone graphic (shown at right), under Application No. 1481515.

• The latest addition to the family is the iCloud mark. In the US, a company called iCloud Communications has sued Apple for alleged trade-mark infringement in the US District Court in Arizona. (See a copy of the Complaint Here). iCloud Communications claims use since 2005, though it does not have any registered marks. Prior to launching its new iCloud service, Apple bought the domain name icloud.com from Xcerion AB, a Swedish cloud-computing company, and there’s a pretty good bet that Apple has also acquired Xcerion’s registered US mark for ICLOUD which claims a priority date of November 29, 2007, for use with information management software.  Though the registration is still in the name of Xcerion, an Apple inhouse lawyer is named as the attorney of record. This strategic acquisition would allow Apple to rely on the earlier use claimed by this mark.
• In a recent Canadian case, Apple was the earlier user – in this case, it used its family of registered iTunes marks to oppose the application for the mark TUNECARDZ by Digi Media Cardz Inc., a BC company, for use with collectible cards allowing the card owner to download music. In the decision released by the Trade-marks Opposition Board (TMOB) (Apple Inc. v Digi Media Cardz Inc., 2011 TMOB 72 ), Apple prevailed by showing confusion between TUNECARDZ and its registered Canadian marks ITUNES and ITUNES MUSIC CARD for music downloads.

Apple has a long history of fighting strategic trade-mark battles, including for its core brand APPLE, starting in 1978, against Apple Records), against Cisco for its now-iconic iPhone trade-mark , and against Fujitsu, for the iPad trade-mark. Lessons for business? In many of these cases, the mark was already owned by someone else when Apple decided it was going to be an Apple brand.  This history is, in many ways, a reflection of the company’s approach to business: they did not invent tablet computing, smartphones, online music sales or the MP3 player. They simply stepped in, elbowed the early movers aside, and took over the top position. 

Calgary – 07:00 MT

 

Here’s something that we’re likely to see more of: the app patent dispute. Mobile apps are regularly mixed up in copyright or trade-mark complaints, trade secret disputes (occasionally), and privacy issues (often). In Lodsys LLC. V. Combay Inc. et al., an allegation of patent infringement has been levelled at a group of iPhone, iPad and Android app developers, including the publishers of the popular titles “Twitterific”, “Quickoffice” and “Mega Poker Online Texas Holdem”. According to the complaint, the targeted apps infringe a method patent owned by Lodsys, entitled “Methods and systems for gathering information from units of a commodity across a network” (US Patent #772,078). One defence to such an allegation is that the patent is licensed by the alleged infringer, and that’s where Apple comes in. Apple has reportedly intervened to raise the defence that the use by the app developers is covered by a license that Apple previously negotiated with the patent owner.  Another defence is that the patent in question is invalid and another company in an unrelated lawsuit is challenging the validity of Lodsys’s patent portfolio.

Calgary – 07:00 MT

 

Canadian trade-mark owners take note: The .XXX top-level domain is a new sponsored TLD designed for the adult entertainment industry. It is expected to launch in 2011. Trade-mark owners can make use of a blocking procedure to ensure that their trade-marks are not reflected in .XXX domain names. The opt-out process blocks names at the .XXX registry so these names cannot be registered by others. This will be available to trade-mark owners for a fee during the “Sunrise B” period. This period will commence in September 2011 for a period of 30 days. As an example, Microsoft might make use of this procedure to block the registration of “microsoft.xxx” as a domain name. For further details see: xxxempt.com and see this related article IPRota White Paper on xxx Launch.

Contact the Field trade-mark team for assistance on taking advantage of the blocking process. 

Calgary – 07:00 MDT 

 

Our update on Canadian copyright law now should be updated, as the Tory majority government is set to take the reins of power in Parliament.  The Conservatives made it clear in their campaign that they would, if given a majority, reintroduce and pass the bill formerly known as Bill C-32, An Act to amend the Copyright Act  (which will have a new number in the next Parliament). The bill’s digital-lock provisions remain contentious, and it is unclear how this will be addressed or amended, if at all, by the Harper government.  Parliament will resume June 2.  The traditional summer recess also usually starts in June.  So Parliament will not likely get much done before September.

On a related note, leave to appeal was granted by the Supreme Court of Canada in the case of Province of Alberta as represented by the Minister of Education, et al. v. Canadian Copyright Licensing Agency operating as “Access Copyright” (SCC #33888 – appeal from the Federal Court of Appeal; link to decision: 2010 FCA 198) This case deals with non-infringing use of copyrighted material for the purposes of “fair dealing“. This means the SCC will hear two “fair dealing” cases this term: the decision in SOCAN v. Bell Canada is also on the court’s docket; that case deals with the interpretation of the word “research” and whether 30-second song previews qualify as “fair dealing“.
Calgary – 07:00 MDT

 

When a popular iPad app aggregates news articles and re-packages them for reading on the iPad, is it copyright infringement?

The Washington Post and a dozen other media companies would say yes.  Zite, the Canadian app developer, argues the content is aggregated in much the same way that Google and other search engines crawl and index web content. Is there a difference between the two?  This is reminiscent of the early days of internet copyright disputes (in 1997), when the Washington Post and other media companies sued Total News Inc. for aggregating and framing news articles on the Total News webpage. The Washington Post had the same complaint as they now have with the Zite app: namely, that ads are removed or obstructed in the process, and the media company’s ad revenue is threatened. 

Other US lawsuits have established that certain types of framing, such as the reproduction of thumbnail images, can be excused as “fair use”. Google successfully raised this defence in the US decision in Perfect 10, Inc. v. Amazon.com, Inc. [PDF] based on the “transformative” nature of the copying. 

Calgary – 07:00 MDT

 

A recent app dispute between the Globe and Mail newspaper, and Spreed Inc., a Toronto-based app developer, highlights the risks with outsourcing app development, for both companies and developers.  Spreed developed an iPhone app news reader for the Globe, which was popular enough to pull in 700,000 readers. For whatever reason, the Globe later decided to develop its own app inhouse.

When the Globe’s inhouse app was launched, Spreed issued a software update to the users of Spreed’s Globe and Mail app. Updates provide bug fixes, upgrades to a new iOS, or new functionality – at least that’s what users expect. However, in this case, the update peeled off the Globe and Mail user-interface, and transformed the app into something new called “Free Press News” – a generic news reader no longer associated with the Globe and Mail.  Why can Spreed do this? Because, according to them, they own the code.  Lessons for business?

• Get advice. If you’ve hired an independent app developer, then check your contract: who owns the code? This becomes critical when the relationship breaks down – in this case between the content-provider and the app developer.
• App ownership is important in other situations including: privacy (who has access to what information during and after the contract?), and transfer of IP rights (let’s say you sell your company and want to transfer all the intellectual property – including your popular iPhone or Blackberry app. You can’t transfer the code if you don’t own it).

Calgary – 07:00 MDT

 

My article Software Licensing in the Cloud  [PDF copy] is published in the May 6th edition of The Lawyers Weekly, which addresses the legal issues arising in the use of “cloud computing” services: including data handling, jurisdictional issues, warranties and service levels, customization and subcontracting, and licensing models.

Contact me at the Intellectual Property and Technology Group at Field LLP for advice on your cloud computing licenses.

Calgary – 07:00 MDT

 

It is a long established principle that, under Canadian law, a mark must be used in the form it is registered. For example, Apple couldn’t remove the “bite” out of its famous Apple logo, or for example, add an extra bite. This could result in loss of rights in the original mark. However, Canadian trade-mark law does permit some variation to occur, as long as the differences are unimportant and the dominant features of the mark are maintained. A recent decision has raised questions about what constitutes use of the mark as registered. In the Trade-Marks Opposition Board (TMOB) case Bigras v. BMO Nesbitt Burns Corporation Limited, 2010 TMOB 174, Bank of Montreal has lost its registration of the trade-mark SIGMA ACCOUNT because it published a brochure with the word SIGMA followed by the symbol ®. Elsewhere on the brochure, the words “BMO Nesbitt Burns Sigma Account ®” appeared, but the TMOB decided that consumers were misled when the symbol ® was placed immediately after SIGMA in the core of the brochure, and by a footnote stating that SIGMA is a registered trade-mark. Lessons for business?

• Seemingly small details – such as placement of the ® symbol, footnotes, or the font size of the trade-mark - can be critical in a situation like this.
• Brand guidelines can help ensure consistent use of your brand across the business – in marketing, advertising, social media and packaging.
• Seek advice to ensure that your core brands are protected, and that use of the marks matches registration of the marks.

Calgary – 07:00 MDT