Planning on outsourcing your company’s email to Gmail? Or maybe you’re outsourcing your data storage to a server in the US? Recent changes to Alberta’s Personal Information Protection Act (PIPA) stipulate that organizations must notify people when they will be transferring personal information to a service provider outside of Canada. Take the example of the University of Alberta’s recent plan to use Google as an email provider (though as public body the university falls under FOIP, not PIPA). Such a change involves the hosting of personal information outside of Canada.  In the case of online transactions, which necessarily route credit-card clearing services through the US for approval purposes, there appears to be an exception.

The other major changes include breach reporting and notification obligations, which are a first in Canada. This means that, if a privacy breach occurs and it creates “a real risk of significant harm” to an individual, the organization must make a report to the Privacy Commissioner. 

The changes became law on May 1, 2010.  Information about the amendments and how they work is available at: www.oipc.ab.ca.

Calgary – 08:00 MST

What does an international treaty have to do with ripping songs to your iPod?  You may not have heard much about the Anti-Counterfeiting Trade Agreement (ACTA), but this international treaty may have significant impacts on the domestic copyright reform process in Canada. ACTA is an international round of trade negotiations that addresses counterfeiting, which in turn deals directly with copyright infringement. The draft text of the agreement was released last week. 

Copyright infringement – what it means, when it occurs, who is responsible, and what penalties should be levied – is central to the anticipated reform of Canada’s Copyright Act.  The government has again hinted that it will introduce a copyright reform bill  in this session of Parliament.  The related debate about iPod levies should also be addressed in the reform process.   

There is little doubt that ACTA will play an important role in influencing domestic copyright policy. In this environment of international pressures, intense lobbying, proposed levies, and heightened public awareness of copyright issues, the government will have a hard time pleasing everyone as it navigates this intellectual property minefield.  Even if proposed legislation is introduced this spring, the bill will die if there is a fall election. 

Federal elections? That’s one little detail that ACTA need not worry about, and the treaty is expected to be finalized by the end of 2010.

Calgary – 08:00 MST

If someone engages in online defamation, online copyright infringement or any number of other illegal acts on the internet, the first question is who is actually committing the act in question? One of the main issues facing litigants in Canada is the identity of anonymous actors who are shielded by mysterious usernames, aliases or cryptic email addresses. 

In a recent decision in Nova Scotia, a judge ordered Google and a local paper to disclose the identity of individuals who are alleged to have posted defamatory statements on a local website.  The judge declared: “The court doesn’t condone the conduct of anonymous Internet users who make defamatory comments. They, like other people, have to be accountable for their actions.” The decision flies in the face of other Canadian court decisions where judges have erred on the side of caution by protecting the identity of online users.

In an online defamation case on the other side of the country, the BC Court of Appeal decision in Crookes v. Newton (see our previous post) is heading to the Supreme Court of Canada (SCC).  Leave to appeal was granted earlier this month and the decsion of the SCC should clarify this area of law, particularly the extent of liability for hyperlinks to defamatory content. 

Calgary – 08:00 MST

Google generates serious revenue ($20 billion+) from its AdWords program and “Keyword Suggestion Tool”. Yahoo! has its equivalent Sponsored Search service, and so does Microsoft through Bing Search Advertising.

All of these internet advertising services allow advertisiers to buy “keywords” to appear in online ads within sponsored search results.  Advertisers can buy words, phrases, or even a competitor’s trade-mark to ensure that their ads appear in the sponsored results. This practice is common… and so is the frustration of brand owners when they Google their own brand and then see competitor’s ads popping up.  If you’re one of those brand owners, what can you do about it?  If Rescuecom’s experience is anything to go by, then the answer might be … if you can’t beat ’em, join ’em.

Rescuecom’s attempt to sue the mighty Google (Rescuecom Corp. v. Google, Inc., 562 F.3d) achieved some success – a US appeal court determined that Rescuecom could proceed with its trade-mark infringement lawsuit based on the sale of Rescuecom as a “keyword”.  But Google (predictably) fought back tooth-and-nail, and Rescuecom recently dropped its suit altogether.  Now, it is Rescuecom that is in trouble for its own AdWords use of a competitor’s mark: Best Buy’s “geek squad”.   Rescuecom is trying to convince the court that its use of a competitor’s mark in AdWords is legitimate.   Everyone else is buying up their own brands as keywords, to prevent competitors from getting there first.

Meanwhile, Google continues to cash cheques.

Related Reading: a list of current AdWords Lawsuits

Calgary – 10:00 MST

In late 2009, ICANN (the Internet Corporation for Assigned Names and Numbers) announced plans to implement internationalized country-code top-level domain names (ccTLDs) using non-Latin characters. See our previous post: Internationalized Domain Names.

Four ccTLD requests are moving along the process and are now ready for the final step in the process, the application for string delegation. The four countries and the corresponding internationalized ccTLDs are:

Canadian trade-mark owners who have a brand presence in these jurisdictions are advised to monitor developments to ensure that their domain name and trade-mark protection strategies are harmonized when the new top-level domains become active.  Contact us for advice on trade-mark and domain name strategies.

Related reading: IDN ccTLD Fast Track Process.

Calgary – 10:00 MST

Does a US judge have jurisdiction over a website operated in Canada?  The answer is found in a recent US court decision involving a Canadian website operator  (Columbia Pictures Industries Inc. v. Fung ). 

In that case, the Motion Pictures Association of America sued Gary Fung, operator of IsoHunt (a popular BitTorrent site). Mr. Fung’s web sites were all hosted in Canada but the US court had no trouble establishing it could extend its ruling to cover Mr. Fung and his activities. The MPAA convinced the court that infringement had taken place within the US.  From there, it wasn’t a leap to tag Mr. Fung with liability under the US theories of “inducement, material contribution, and vicarious infringement”, even though Mr. Fung’s conduct occurred outside the US.

The court said that “United States copyright law does not require that both parties be located in the United States. … Plaintiffs need only show that United States users either uploaded or downloaded copyrighted works; Plaintiffs need not show that a particular file was both uploaded and downloaded entirely within the United States.”

Last year, Mr. Fung, through his company isoHunt Web Technologies Inc., attempted to launch a pre-emptive strike against the recording industry by seeking a declaration that its operations did not violate the Copyright Act.  No final ruling has been issued in that case.

Related Reading: Canadian P2P Copyright Battle Continues

 

Calgary – 09:00 MST

 

Copyright protects a range of creative works – photographs, images, software, books and music, to name a few.  And copyright law is considered to be “territorial” – this means that Canadian copyright law deals with protection and enforcement within Canada.  So what happens when works are published online, or transferred across borders?  Do the traditional territorial concepts break down in an environment where borders are technologically nonexistent?

Two recent cases illustrate how the law adapts to these issues: 

1. In Moberg v. 33T LLC et al., 2009 WL 3182606 (D. N.J. Oct. 6, 2009), a US court considered the publication of images online in Germany. The case turned on a technicality of whether a work published on a website in Germany (or anywhere outside the US) should be considered for legal purposes to have been simultaneously published in the US. The court decided that the images were not “United States works” leaving the author free to make a copyright infringement claim in the US, without first registering copyright in the US.  This helps clarify the rights of Canadian authors who may wish to sue in the US, even though copyright in their works is not registered there.
2. The Canadian decision in Thumbnail Creative Group Inc. v. Blu, 2009 BCSC 1833 (CanLII) dealt with a transfer of images across the Canada / US border. In this case, a BC company alleged that certain Canadian defendants provided images to the US defendants in violation of the author’s copyright and moral rights.  The court analyzed the situation and found that if copyright infringement occurred anywhere, it was in the US, not Canada. Since Canadian copyright law is territorial, it cannot be infringed by any act which occurs outside Canada. The court dismissed the claim, indicating that a US court was more appropriate to decide the matter.

Calgary – 14:00 MST 

Even Google can’t win them all.  In a recent domain name arbitration decision, Google Inc. v 207 Media, a small Canadian company has prevailed against a challenge by almighty Google Inc.  Google objected to the registration of the domain name GROOVLE.COM, claiming that it was too close to Google’s own famous brand name.  In a domain name arbitration, a complainant must prove 3 things:

(1)   the domain name is identical or confusingly similar to the complainant’s trademark ;
(2)   the person who registered the domain name has no rights or legitimate interests in respect of the domain name; and
(3)   the domain name has been registered and is being used in bad faith.

In this case, the arbitrator decided that Google failed on the first count. GROOVLE was found to be not confusingly similar to Google’s trade-mark. This follows an earlier decision where Google challenged the domain name FROOGLES.COM and lost (Google, Inc. v. Wolfe, FA 275419 (Nat. Arb. Forum, July 18, 2004)).

The real dispute was not so much the similarity of the names (Google has better things to do than chase every single misspelled variation of its domain name).  It was rather the use by Groovle of Google’s Custom Search Engine program.  This program permits users to embed a Google search box into their own site; Groovle took this one step further and permitted users to essentially customize their own search page, using Google’s engine, but displaying Groovle’s brand.

Calgary 10:00 MST

2009 was a fascinating year in the world of intellectual property and internet law. Here are a few issues to watch in 2010:

Olympic Marks:  The next few months will focus attention on the uses and abuses of both Olympic marks, as well as the Olympic and Paralympic Marks Act. 

Canadian Copyright Reform and Anti-Spam Law: The Canadian copyright reform process has stalled yet again. The government undertook a public consultation process in the fall but any prospect of movement on this issue has again died in the wake of Parliament’s prorogation.  This also applies to proposed anti-spam legislation that died on the order paper. Political pundits are speculating about a fall 2010 election, and if that happens, we won’t see any developments in copyright reform or anti-spam laws until 2011 at the earliest.

US Patent Reform: As we predicted in IP & Internet Law in 2009, a proposed patent reform bill was introduced early in 2009, but since then, the patent reform process in the US is stalled. House and Senate bills are inching through Congress.

The Development of App Law: The surprise of 2009 was the rapid development of app law – the law of mobile applications. This trend can be expected to continue as legal disputes help clarify the law in this growing area.

Copyright Class Action: Though this lawsuit was commenced in 2008, it has the potential to become headline news in 2010 if it proceeds through the courts – it’s the ghost of Chet Baker vs the Recording Industry in a copyright claim for unpaid royalties (see: Canadian Copyright Class Action… Against the Recording Industry).

Business Method Patents: In both Canada and the US, the patentability of business methods is being contested, and a decision in the Bilski case (in the US), as well as an appeal of the rejection of the Amazon 1-click patent (in Canada) should come in 2010.  We can finally expect to get some clarity in this area.

Calgary – 11:45 MST

 

An organization has collected a wealth of online data including names, addresses, prices, photos, specifications, geo-location data, text, links and more.  Can you access their system, scrape the data and then repackage it for your own business?

In this case, the answer is no. An Ontario court has again shut down a data-mining operation in Toronto, where real estate broker Fraser Beach attempted to scrape and redisplay MLS data. The court dismissed Mr. Beach’s request to open up the MLS data.

The latest decision follows a similar battle in 2007, where an Ontario company (operated by the same realtor) asked the court to compel MLS to share its data. In Realtysellers (Ontario) Limited v. Toronto Real Estate Board, 2007 CanLII 50283 (ON S.C.), the court turned down this request, citing the MLS “Authorized User Agreement” which prohibits the kind of wholesale, unrestricted data mining that was the cause of the dispute.  The terms of the user agreement were instrumental in the court’s decision in both cases.

Get advice on how to protect your online data through the use of copyright and properly drafted online access agreements.

Calgary – 10:45 MST

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

The court decided that the clause was not shocking or unreasonable, the user had a choice of other service providers and was not forced into this agreement, and eBay did not use any “high pressure tactics” to get the user to agree. The court also recognized that eBay, as an international business, has a legitimate interest in controlling where it will litigate disputes. 

In Canada, there is also a growing line of cases establishing that “forum selection clauses” will be upheld. For example, see: Wembley Marketing Ltd. v. Itex Corporation, 2008 CanLII 67425 (ON S.C.), a recent Ontario decision.  This provides additional comfort for online retailers, licensors and service providers that such clauses in online user agreements will be upheld when they are well-drafted.

Calgary – 11:30 MST

ICANN announced on Friday that it has approved – in principle – the creation of domain names made up of non-Latin characters. The protocols that run today’s internet recognize domain names and internet addresses made up of numbers and A-to-Z Latin characters. ICANN’s “Fast Track Process” will launch on November 16, 2009, permitting countries to apply for non-Latin domain names: think Korean, Chinese, Arabic and Hindi. Once the technical wrinkles are ironed-out (and web-browsers catch up), the new internationalized domain names will be implemented, and registries will start accepting registrations.

For Canadian businesses, this development is worth watching, as it presents an opportunity to carve out a local presence in overseas markets.  

Calgary – 10:45 MST

Three recent decisions tackle this issue: 

In the US decision of Cornelius v. DeLuca, 2009 WL 2568044 (E.D. Mo. Aug. 18, 2009), bodybuilding.com (an online retailer of fitness and bodybuilding products), was sued over the content of certain comments posted to the bodybuilding.com website. The plaintiffs complained that the comments were designed to harm the plaintiffs’ business. This decision considered whether the operator of bodybuilding.com should be liable for those user comments.  In the US, there is a standard defence for website operators (Section 230 of the Communications Decency Act), but that defence can be punctured if the operator was in a “conspiracy” relationship with the persons posting the comments.  The court found no such conspiracy and so the website operator was found to be not liable, and the claim was dismissed.  

In Canada, in the decision this month in Warman v. Lemire 2009 CHRT 26, a Human Rights Tribunal found that a site operator should not be liable for comments if the operator had no notice or knowledge of the comments.  This is a “hate speech” case, not a corporate defamation case as in the Cornelius v. DeLuca decision above. Also, it’s worth noting that this comes from a Human Rights Tribunal, not a Canadian court. The decision maker said: “I do not see how liability for hate messages posted by anonymous or pseudonymous third parties should be ‘attributed’ to a message board operator if it has not been established that he or she has notice or knowledge of these postings.” Several comments and articles were reviewed, and in one of the cases, the impugned article was posted or uploaded by the administrator or webmaster.  In that instance the operator was found to be responsible.  However, the operator escaped punishment on constitutional grounds.  The decision is expected to be appealed.

The BC Court of Appeal’s decision last week in Crookes v. Newton 2009 BCCA 392 considered liability for hyperlinks. In that decision (one of many generated by Mr. Crookes’ lawsuits), the Court of Appeal agreed that Mr. Newton was not liable for hyperlinks to defamatory content. The Court reasoned that “reference to an article containing defamatory content without repetition of the comment itself should not be found to be a republication of such defamatory content”.  In other words, if someone merely hyperlinks to a defamatory site, that alone does not make that person a “publisher” of the material found at the hyperlinked site.  This will help clarify the liability of website hosts or operators, since user comments which merely link to defamatory or other offending material, will not attract liability.

Calgary – 09:15 MST

Updated Sept. 22 16:42 MST

Blockbuster operates an online movie rental service in the US, which is subject to a user agreement.  In the recent US decision in Harris v. Blockbuster Inc., 2009 WL 1011732 (N.D. Tex. April 15, 2009), Blockbuster tried to deflect a customer’s lawsuit by using a standard mandatory arbitration clause in the user agreement. If the arbitration clause was valid, then the lawsuit would be dismissed and the complaint would be diverted from court to arbitration. Blockbuster’s user agreement indicated that Blockbuster could: “…at any time, and at its sole discretion, modify these Terms and Conditions of Use, including without limitation the Privacy Policy, with or without notice…”

The Court reasoned that the arbitration clause was “illusory” because Blockbuster could, under its amendment clause, make unilateral changes to the arbitration terms, even after a complaint was made. 

Lessons for business?

• For online terms, make sure your amendment clause is not completely arbitrary. Amendments should only be permitted with reasonable notice.
• When notice of amendments is given, ensure that changes are brought to the attention of users. In some cases it might be appropriate to email copies or mail hard copies of the amended terms to users.
• Obtain advice on a “saving provision”, which could have preserved Blockbuster’s mandatory arbitration clause.

Calgary – 10:45 MST

Two recent cases illustrate the limits of employee rights in connection with their use of technology related to the workplace. Although these are extreme examples, they reinforce some basic rules about employee “Acceptable Use” policies, and employee use of technology:

• Employee Blog: In the case of Alberta Union of Provincial Employees v. Alberta QB 2009 ABQB 208 (Nielsen, J.) the court dealt with a union employee who was dismissed on the basis of blog-postings which were critical and contemptous of fellow employees and management.  While the case was sent back to the labour arbitrator because of procedural irregularities (the employer failed to follow the collective agreement in the course of disciplining the employee), it is important to note that the decision to dismiss the employee was not overturned by the court. In short, there are circumstances where an employee can be dismissed for cause due to blog-postings that expose fellow workers to contempt and riducule.
• Reasonable Expectation of Privacy: In the case of R. v. Cole, 2009 CanLII 20699 (ON S.C.), an Ontario high-school teacher was charged with possession of child-pornography, on the basis of images found in a hidden file on a laptop assigned to him, but owned by his employer.  He complained that he had a right to privacy over the contents of the laptop, and therefore the search of his hard-drive was an unreasonable invasion of privacy. The court rejected this argument, saying that by agreeing to the School Board’s “Acceptable Use Agreement“, the accused clearly knew that the data and information on the laptop were not private.  The terms of the Acceptable Use policy were important in establishing the limits of the employee’s right to privacy.

Lessons for business?

1. Employee privacy issues have to be handled carefully and with sound legal advice in accordance with workplace policies;
2. Dismissing an employee based on the contents of a public blog, Facebook page or other online posting is not a trivial matter and must be undertaken after careful consideration of the employer’s procedures and the nature of the online comments;
3. If you don’t have an acceptable use policy, then you should consider having one prepared for your employees. 

Related reading: Employer Access to Employee Gripe Site

Calgary 11:45 MST

Recent news articles have shown that Twitter Inc. has run into problems with its US trade-mark application for TWEET.  Others have beaten them to the trademarks office with applications for marks such as  TWEETMARKS,  COTWEET and TWEETPHOTO, which have been cited by the US trademarks office as being confusing with TWEET. In Canada, Twitter filed their application on June 10th, and it appears a potentially competing mark TWEETBUCKS was filed two days before on June 8th. (The registered mark HOME TWEET HOME for bird houses, owned by an Alberta entrepreneur, likely won’t be a problem for Twitter.) Curiously, Twitter’s application for TWEET is based on “proposed use in Canada”, though the service has been embraced by Canadians for several years.

Lessons for business?

• Don’t wait to protect strategic brands, in both your home jurisdiction and important foreign markets. This shows the risks of waiting too long.
• A successful core service such as Twitter will, in very short order, spawn innumerable spin-off products and services. While these spin-offs can benefit and drive traffic to the core service, they can also threaten the identity of the brand. So in time, Twitter and Tweet may suffer from “genericide” – the effect of such widespread penetration and use that the term morphs from a specific identifiable brand into a generic word.

Calgary – 10:00 MST

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

That’s often where the inquiry starts and stops. Since online anonymity is so hard to pierce, the identity of the poster of defamatory comments is never known, and the person who is defamed has no-one to sue for defamation.  A court order on Monday has shed some light on the process of getting over that anonymity hurdle.  In the case of Cohen v. Google Inc., Index No. 100012/09 (N.Y. Co. August 17, 2009) (Madden, J., J.S.C.) (related story), a Canadian model has obtained an order compelling Google to disclose the identity of the author of the alleged defamatory comments.  “Pre-complaint disclosure” is not new, but this case has attracted attention because of the elements: a New York model, Google, and blogging.

In Canada, similar orders have been made in online defamation cases. In a 2009 decision in the case of Warman v. Fournier, the Ontario Superior Court of Justice ordered the disclosure of all personal information, including name, email and IP address, of eight anonymous posters in a defamation case.

Calgary – 14:00 MST

IsoHunt, a British Columbia-based service that indexes BitTorrents for peer-to-peer file sharing, attempted a pre-emptive strike against the Canadian Recording Industry Association (see our previous post), by asking the Court to declare that its activities were legal under Canadian copyright law.  Isohunt lost that bid in March, when a BC Court decided that the issues were too complex to be dealt with summarily, and that a full trial would be required. 

IsoHunt appealed that decision, and in late July, the BC Court of Appeal dismissed isoHunt’s appeal.  This means that the matter is unresolved, and will go ahead to a full trial – something that favours the recording industry, since the issues will be more complex and legal costs will escalate.  The stakes are high for both sides, and the resulting decision (if it does go through to trial) could be a landmark case for Canadian copyright law.

Related reading: isoHunt’s original petition (PDF courtesy of Torrent Freak).

Calgary – 09:45 MST

Another day, another lawsuit against Google (Rosetta Stone Ltd. v. Google, Inc., 1:09-cv-00736-GBL-JFA (E.D. Va. complaint filed July 10, 2009)). This lawsuit comes in the wake of recent changes made by Google to its AdWords policy. These changes relaxed the rules relating to the use of trade-marks and permitted the use of trade-marks in ad text in the U.S. even without approval from the trade-mark owner.  Not surprisingly, a recent study shows that, after the recent changes, there was an increase in the number of advertisers who sponsored or used trade-marks in their ad copy text. In other words, the use of trade-marks as sponsored keywords appears to be increasing with the new AdWords policy.

Calgary – 09:30 MST

The Canadian government has launched another attempt at reforming the Canadian Copyright Act, to bring it in line with the digital age. The last major overhaul of the legislation occured more than 10 years ago, and since then several attempts to introduce revised legislation were stymied, either by public opposition, or more often, intervening elections (Canada has held federal elections in 2000, 2004, 2006 and 2008, and commentators are watching for another in the fall of 2009). The current public consultation process runs from July 20 to September 13, 2009.  It is hoped that this process will permit Canadians to weigh-in (again) on copyright issues such as user rights, ISP-liability, file-sharing, piracy and downloading. The process also serves a useful political function: it permits the government to neutralize the copyright issue in the event of a snap fall election.

Calgary – 13:30 MST