For IP lawyers, these are interesting times. It isn’t often that proposed intellectual property legislation makes front-page news and in Canada, the debate over Bill C-61 has been front and centre. There is ample coverage of the proposed law in the media across the country since the bill was introduced last month.  

You might think that all the debate is purely academic: sure, if you download a CD to your iPod and then give the CD away to your brother-in-law, a record company can claim infringement …in theory, but would they really bother?  (If you don’t believe that this is infringement under the proposed law, see here: Section 29.22(4) )

The answer is this, if the law contains a useful tool, copyright owners will use it.  To see how the new tools might be used, we can look to the US, where the DMCA notice-and-takedown system permits copyright owners to send notices of alleged infringement, and demand that the infringing content be removed.  In one recent US case, the notices were filed by Associated Press against independent bloggers for paraphrasing AP news stories in discussion forums.  The message was clear: don’t cut-and-paste or paraphrase any part of our news stories, or we’ll come after you for infringement.   “Fair use” or “fair dealing” exceptions should provide a defence to infringement claims, but of course the boundaries of that concept are open to interpretation.  AP later backed-down and promised certain “guidelines” on how to refer to AP news. 

In the meantime, the take-home message is this: when the US DMCA was introduced, its drafters might never have imagined that a news organization would send take-down notices for online references to its news stories – but the tool was available in the toolbox, and it was used.  Whatever is in Bill C-61 will also be used, sooner or later. 

Calgary – 11:45 MST 

A disgruntled ex-employee registers the dot-com version of the employer’s dot-ca domain name.  Then, just before leaving on vacation out of the country, the ex-employee directs the dot-com domain name to a gay porn site.  The employer sues for damages.

In a recent judgement (Inform Cycle Ltd. v. Draper, 2008 ABQB 369), the Court has awarded damages against the ex-employee for passing-off and defamation, to the tune of $15,000.00.  The case is interesting for a few reasons: first, it is one of the few decisions dealing with both online corporate defamation (defamation of business reputation on the internet) and domain name issues.  And it is interesting for the summary way in which the Court concluded that damages were appropriate.

In the B.C. case of Crookes v. Yahoo, the Court disposed of an online defamation claim by reasoning that there was no evidence that the alleged defamatory material was accessed by someone in B.C.  “Publication is an essential element for an action in defamation,” said the judge. “In this case … [t]here is no evidence anyone read the material in British Columbia.”

Contrast that with the analysis in the Inform Cycle case: “There is no record of the number of people who were forwarded to the gay pornographic website…the people referred to the ‘.com’ site over that 16 day period were people who had made an error by choosing ‘.com’ instead of ‘.ca’. We do not know how many people made that error. We do not know how many actually thought that the referral to the porn site was deliberate rather than a computer or internet glitch. We do not know if anyone, or how many, actually believed that Inform was involved in the porn site or business.” (emphasis added) Despite those apparent gaps in the evidence, the Court had no problem concluding that defamation had occurred, and that damages were appropriate.  The difference might be explained (at least partly) by the fact that the alleged defamatory comments in the Crookes case were made in a members-only discussion forum. It’s likely that the nature of the site where the domain name was directed also has something to do with it.  It is clear that further clarity on these issues is required.

Calgary – 15:30 MST

Today the Government finally introduced its long-awaited Copyright Reform bill – (Bill C-61 ). Of course over the coming days, media and bloggers will be dissecting it.  But the immediate summary appears to be that the efforts to balance user rights (things like private copying, format and time-shifting) are restricted by anti-DRM circumvention provisions. 

It appears that you may be permitted to copy a song or movie to your iPod, and if you have to crack a digital lock in order to do so, then you may be able to avoid statutory damages for breaking the lock (statutory damages are automatic damages ranging between $500 and $20,000 per work) if the circumvention was for “private purposes”.  Curiously, it appears that you can only avoid statutory damages, but not actual damages.  This means that the copyright owner could still sue for actual damages, even if the circumvention was for “private purposes.”

 Calgary – 15:00 MST

 

When can a TV broadcaster - or any news organization - use Flickr photos?  Flickr is a popular photo-sharing site. People use it to share photos of every description.  The site hosts millions of images.  So when can a news organization download and publish a “newsworthy” picture from Flickr or Facebook, or from any photo-sharing site?  After all, the Copyright Act (Section 29.2) does permit “fair dealing” for the purpose of “news reporting”.

In this case, photographer Joel Charlebois, clashed with Toronto broadcaster CablePulse 24 when the broadcaster copied Charlebois’s pictures from Flickr without his permission. The photographer complained to the Canadian Broadcast Standards Council, and in its decision the CBSC confirmed that the broadcaster was off-side by failing to provide proper attribution – in other words, indicating the name and source of the photos.  The issue was not one of permission but of attribution.  Permission is not necessarily required, but attribution, at a minimum, is.

The pictures capture a failed burglar who tried to escape from a botched break-and-enter, fell two storeys, broke his leg and was arrested. To see the photos: Torontoist Article

Calgary – 10:30 MST

This is the story of online defamation allegations levelled against Yahoo, Google, Wikipedia, MySpace and others by a B.C. man who says he was defamed by certain online postings. We have been following this defamation case since it was initiated (See:earlier post ).

The BC Court of Appeal has now dismissed the appeal relating to Yahoo.  In Crookes v. Yahoo, 2008 BCCA 165, the Court has made it clear that merely alleging that something has been posted on the internet is not, on its own, sufficient to show that publication can be presumed.  In other words, just because it was online, doesn’t mean anyone read it.  This is important because “publication” must be proved in order to win a defamation case.  If there’s no publication, then there can be no defamation. In the case of newspapers and broadcasts, publication is presumed.  The BC Court of Appeal has made it clear that this presumption does not always apply with the internet.

In this case, the allegedly defamatory comments were made on a members-only site, and the court said: “In Wiebe [Wiebe v Bouchard, a 2005 defamation case] significance was attached to the fact the libellous statements were posted on the internet nationwide as well as being made available in the main public library in Victoria.  But they were posted on a Government of Canada website and, as was noted, were made available to everyone in the country who had a computer.  By contrast, the statements that are the subject of Mr. Crookes’ action were posted on a website with restricted access that was not available to the public.  The basis for any presumption that might be said to have been recognized in Wiebe does not exist here.  I do not consider the mere fact a statement was posted on a website with the kind of restricted access there was in this case supports the presumption it was read by anyone in British Columbia.”

This is a helpful step forward in clarifying online defamation law in Canada.

Calgary – 10:45 MST

First, there has been much debate about when the Tory government in Ottawa will table their revised copyright bill.  In late 2007, draft legislation was pulled amid an unusual groundswell of opposition.  Now, there is renewed speculation that the bill will be introduced before Parliament breaks for the summer (assuming there is no election in the meantime).  If it is introduced, the bill will head into a thorough committee review, meaning the bill wouldn’t likely become law until sometime next year. 

Second, the QuebecTorrent case (a lawsuit by the canadian recording industry against an online file-sharing site) is reportedly scheduled to go to trial this summer. (Earlier post here.) If it proceeds through to a court decision, it will be a potentially landmark case for online copyright law in Canada, and it will be interesting to see how it dovetails with the proposed copyright legislation.  In the US, a decision released Monday (Atlantic Recording Corp. v Howell) is a setback for the anti-file-sharing efforts of the US recording industry.  In that decision, the court stated that copyright is not infringed unless there is actual distribution of an unauthorized copy of the work: “Merely making an unauthorized copy of a copyrighted work available to the public does not violate a copyright holder’s exclusive right of distribution.”  This is significant since loading a file onto a shared folder is “making available”, and according to this decision, such an act on its own does not constitute infringement. 

 

Calgary – 10:30 MST

In a story we posted last year, eBay lost when the Canada Revenue Agency compelled disclosure of its records – specifically, records showing how much money was earned in Canada by so-called “PowerSellers”. 

The Federal Court of Appeal (eBay Canada Limited vs. The Minister of National Revenue, 2008 FCA 141) has now upheld that lower court decision, and ordered eBay Canada Ltd. to produce the names, addresses, phone numbers, e-mail addresses as well as gross sales figures for all Canadian PowerSellers.  eBay’s argument that the records were stored in the US and did not reside in Canada, was not accepted by the Court and this decision has implications on a number of levels – the right to privacy for anonymous eBay sellers, as well as the production of documents by US and other foreign companies doing business in Canada.

 Calgary – 10:15 MST

A recent US Court of Appeal decision (North American Medical Corp. v. Axiom Worldwide, Inc., 2008 WL 918411, 11th Circuit Court of Appeals, April 7, 2008) deals with meta-tags and trade-mark infringement.  In a nutshell, the court agreed that the use of a competitor’s trade-marks in metatags constitutes infringement.  This decision is the latest, but does not settle the matter in the US; first, the Second Circuit Court of Appeals has applied different reasoning, and next, the changing nature of metatags requires a more sophisticated analysis of how search engines produce results. 

In Canada, the decision in BCAA et al. v. Office and Professional Employees’ Int. Union et al., 2001 BCSC 156 (CanLII) is still one of the most-cited case on the topic of trade-marks and metatags.  In the midst of a labour dispute, a disgruntled union used the BCAA’s metatags in a union protest site.  The court found that one of the early versions of the union’s site did constitute passing-off.  However, both the North American Medical case and the BCAA case illustrate the problem posed by changing technology. 

In BCAA, the court noted that: “When search engines gather information they seek out and obtain the information in the meta tags.  Meta tags are used by most search engines and directories to gather information.”  This statement is no longer accurate, because of the way search engine technology has evolved.  New court decisions will have to catch up to the search engines.

In the meantime, don’t use competitor’s trademarks in your website metatags – it won’t do you much good in search engine rankings, and the courts are clear that it will be perceived as infringement.

Calgary – 10:15 MST

A new decision and a new policy:

• In a recent decision (Enterprise Rent-A-Car Company v. David Bedford ), Enterprise won handily in its dispute over the bank of names registered by Mr. Bedford, a BC domainer. The dozen domain names (enterpriseautorental.ca, enterprisecarrentals.ca, enterprisecanada.ca, etc.) were used with a pay-per-click advertising scheme and this decision provides a useful precedent for trade-mark owners, along with the panelist’s finding that the test under the CDRP is one of resemblance, not confusion.
• CIRA, Canada’s official dot-ca domain name registry, is introducing changes to the WHOIS policy, starting in June 2008.  Under the new policy, private information about individual registrants will no longer be accessible through the dot-ca WHOIS database. The WHOIS information of corporate registrants will be displayed by default. This means that in order to contact an individual owner of a dot-ca domain name – say, for the purposes of proposing a transaction, or complainaing about trade-mark abuse – a new “administrative process” will be used.  This new process is under development, but it is expected to be an online form which will automatically forward correspondence to anonymous registrants, via CIRA. 

 

Calgary – 10:30 MST

In our earlier post we wrote about the practice of domain kiting and domain tasting.  Other common tricks, such as Network Solutions’ practice of “front-running” (using customer search strings to pre-emptively register domain names before customers can get them), reflect the growing competitiveness in the domain name industry.

One more thing to watch for: a number of outfits such as AsiaDNR, or China Net Technology Limited, are sending “helpful” notices to Canadian domain name owners.  These notices appear to be from an official Asian registry and purport to notify owners that they are providing a service to protect the owner’s rights because someone else is trying to register “example.cn”, “example.hk”, “example.asia” … and ten other variations.  It’s just one more form of spam.

This practice is not new, but seems to be more common in the past six months.  It is best to ignore these notices.  I don’t know of any legitimate registrars who provide this kind of “helpful” service.  Decide whether any of the variations are of use to your business.  If you are a local Canadian operation with no plans to expand into Asia, then you may conclude that none of the Asian top-level domains will make sense for your company from a business perspective.  Even if you decide you need an Asian domain name presence, go through a legitimate registrar, such as AsiaDNS or Webnames.

Calgary – 14:01 MST

In Canada, what is the liability of online service providers — so-called “interactive computer services” —  including Craigslist, Yahoo Groups or Facebook?

The US Court of Appeals decison last week in the case of Chicago Lawyers’ Committee for Civil Rights Under Law v. Craigslist, Inc., 2008 WL 681168 (7th Cir. March 14, 2008) highlights the US approach: under Section 230 of the Communications Decency Act, providers of an “interactive computer service” who publish information provided by others can obtain immunity from liability.  In the Craigslist decision, the popular site was sued on the basis of discriminatory rental listings which were posted on the site.  The court decided that Section 230 immunity protected Craigslist from liability for those postings.

In Canada, the law is still unclear. Courts have touched on this issue.  The Canadian decision in Society of Composers, Authors and Music Publishers of Canada v. Canadian Assn. of Internet Providers (C.A.), 2002 FCA 166 (CanLII) dealt with copyright online and commented that: “…operators of host servers and Internet access providers do not effectively control the content of what is transmitted …their role is passive and that their activities usually consist only of the provision of the means of telecommunication.” 

We previously reviewed the decision in Crookes v. Yahoo, 2007 BCSC 1325 (CanLII), which dealt with alleged defamatory postings on a Yahoo site.  Although the case was decided on other grounds, the court observed that: “Yahoo did not author the postings.  Yahoo is joined in this action on the basis that it provided the means by which the defamatory material was published and it failed to remove the postings.”  This is precisely the area that requires clarity, and we’re waiting for a decision to tackle this issue head-on. 

 

Calgary – 10:50 MST

The Montreal Gazette  interviewed Richard Stobbe, lawyer with the Technology & IP Group, for an article on intellectual property rights in the internet context.  The article also provides an interesting perspective on developments in IP rights in other countries.   

Calgary – 11:45 MST

The story of Montrealer Gérémi Adam, who is an alleged copyright pirate, has attracted more attention after the man dropped out of sight on the date of a scheduled court appearance last month.  He did appear in court yesterday to answer the charges and to plead not guilty.  If the case goes to trial it will provide a good test case on what evidence the court will accept as proof that a particular individual posted a particular pirated copy of a movie.  He was charged before Canada’s new anti-camcording law came into effect, so he will face penalties under the previous copyright infringement provisions.  Another Montreal man, Louis-René Haché, was charged under the new anti-camcording legislation enacted last year and his case may provide a test of that law.    

Related reading: Microsoft Scores Software Piracy Win

Calgary – 16:00 MST

The domain name < myspace.co.uk > was registered in August 1997, fully six years before MySpace, the now-famous social-networking site, was even founded in 2003.  In a recent decision (MySpace, Inc. vs. Total Web Solutions Ltd.)  under the dot-uk domain name rules, MySpace has won a dispute that appears to break new ground.  MySpace was able to convince the decision-maker that it should be entitled to take over the dot-uk domain name, even though the registration occurred before MySpace existed.

Until now, many analysts have agreed that the relevant time to measure whether a domain name was registered in bad faith is the date of registration, not the date of the complaint.  This decision seems to have stepped around that detail, and found that the registration was “abusive” because of what happened since 2005, after MySpace had started establishing an international reputation. 

Maybe the UK registrant should have taken the $430,000 offer that MySpace reportedly put on the table in the negotiations leading up to the complaint.  With the stakes that high, it’s no wonder the losing party has filed an appeal of this decision. 

While this decision is not binding on decision-makers in dot-com or dot-ca dispute procedures, the appeal will be watched closely to see how the consensus is developing on this issue.

Calgary – 10:45 MST

Some of the common issues facing Canadian businesses today are: ensuring compliance with e-commerce laws, handling employee surveillance issues and protecting brands online. The following links relate to online contracting and e-commerce in Alberta, as well as employee surveillance issues and online brand strategies for Canadian business:

• E-Commerce: Alberta Internet Sales Contract Regulation
• E-Commerce & Privacy: Alberta Investigation Report P2007-IR-007 – A case in which Ticketmaster contravened PIPA by requiring on-line customers to consent to the use of personal information for event provider’s marketing purposes as a condition of ticket sales transactions.
• Video Surveillance (Federal Case): Eastmond v Canadian Pacific Railway, 2004 FC 852 – in this case, the Federal Court reviewed video surveillance under federal privacy laws and articulated a four-part test.
• Video Surveillance (Provincial Case): Talisman Centre For Sport and Wellness Order P2006-008 (Alberta) – in this case, the Alberta Privacy Commissioner reviewed video surveillance under provincial privacy laws and confirms a three-part test for reviewing the appropriateness of video surveillance.
• Video Surveillance (Provincial Case): R.J. Hoffman Holdings Ltd. Investigation Report P2005-IR-004 (Alberta) – in this case, the Alberta Privacy Commissioner reviewed video surveillance in an employment context, under provincial privacy laws.
• Domain Name Decision: Neteller PLC vs Prostoprom – in this recent decision, Neteller successfully challenged the registration of a domain name under the UDRP rules, and the panel reviewed a number of common issues that were all present in this case: confusing similarity, likelihood of confusion, commercial use when using affiliate advertising programs or pay-per-click advertising, and the use of disclaimers.
• Community Trade Mark (EU): Regulations

Calgary – 20:00 MST

There are virtual lawyers, virtual commerce, virtual brands.  So logically someone has finally opened what purports to be the Second Life Patent and Trademark Office saying: “We allow you to register, protect, and add value to your Second Life creations to protect your intellectual property rights.” 

It is unclear how virtual protection of virtual rights would function in Second Life (let alone First Life).  There have been more real-world disputes over virtual rights, including a real lawsuit  launched a few months ago by virtual business operators Le Cadre Network and others who complain of copyright infringement and passing off within Second Life.  Bear with me here…  The complainants in that suit filed (real) copyright registrations for their (virtual) products in the (real) US Copyright Office.  Maybe they can convince their lawyers to charge virtual legal fees. 

 

Calgary – 11:45 MST

In what might be a high-water mark for online vendors, a decision of the US Third Circuit Court of Appeals in Schwartz v. Comcast Corporation has upheld the terms of a subscription agreement even in the absence of any proof that the customer actually knew of, let alone assented to the terms.  This echoes the reasoning of the Supreme Court of Canada in the Dell case last year.  In Dell the online contract was referred to in a linked document, but did not appear on the sales page. It was at least arguable that a customer would be aware that a contract existed even if the customer never took the time to read those terms. 

In the Comcast case the court went one step further stating that: “in some cases, a party is excused from the terms of a contract where he never had access to the contract and thus could not make himself aware of its terms. However, in this case, the terms of the contract were available to Schwartz via the web site, and thus they are binding, despite the fact that he was unaware of them.”  The customer argued that he never received any notice of any terms and was therefore completely unaware that there were terms for him to find. 

Does this mean that merely posting the fine-print on the company website will suffice to make online terms binding?  Probably not. Comcast was able to convince the court of its practice of providing the Subscriber Agreement to all new customers.  Consistent corporate practices are critical to establishing evidence that the terms should be upheld.  Canadian courts may not go this far, but it does provide some guidance for Canadian companies doing business online with US customers.

 

Calgary – 17:00 MST 

 

 

There is growing debate (and some misinformation) about the control by private interests over the very essence of language and thought in our society.  For example, some of the analysis over the Olympic and Paralympic Marks Act (which came into force in December, 2007) has suggested that anyone uttering the number “2010” in the same breath as “gold medal” will be subject to sanction at the hands of VANOC, the defenders of the Olympic brand.  VANOC has tried to explain its approach to infringement assessment to manage this issue. They seem to be applying an even-handed analysis to enforcement, although I’m sure someone will find a way to test the bounds of that law.

Similarly, the current interest in copyright reform in Canada is fuelled by a perception that giving private companies increased protection over copyright will result in a privatization of language and culture itself. 

A recent article in the Toronto Star is a case in point.  The article makes some good arguments but Canada’s intellectual property laws do not prevent someone from using the phrase “freedom of expression” just because someone has registered that slogan as a trade-mark. Infringement involves an analysis of the use of a mark in association with certain goods or services which are the subject of the trade-mark registration. 

The law should engage in a balancing act between competing interests.  Let’s hope that the current groundswell of public interest in intellectual property law will help lawmakers reach that balance.

 

Calgary – 10:10 MST

Alberta Premier Ed Stelmach is in good company: he joins Julia Roberts, Kevin Spacey and Mick Jagger, not to mention lesser celebrities such as one-time federal MPs Don Boudria and David McGuinty. This club can boast of the price that comes with celebrity in an internet age, since they’ve all had their personal names registered by someone else as domain names. In 2000, Julia Roberts fought and won a domain name dispute case over juliaroberts.com, paving the way for other celebrities and politicians to win back their domain names, including Mick Jagger and Kevin Spacey. In those cases, the panelists did not have trouble finding that celebrities have rights to their own names, even though the dispute resolution policy does not specifically say as much.
The dispute resolution procedure for dot-ca domain names (CDRP) is not identical to the UDRP which applies to dot-com domain name disputes. And further, a personal name has not yet been the subject of a dot-ca dispute under the CDRP. This means any attempt to run this dispute through the CDRP will break new ground.
Calgary – 23:30 MST

Four intellectual property topics to watch in the new year:

Canadian Copyright Changes

The government’s announcement of new copyright legislation has generated considerable debate in Canada in the last few weeks – when copyright reform hits the front page of the Globe and Mail, then you know something is up.  So far all of the media interest, including a Facebook group of several tens of thousands of concerned citizens, seems to have triggered a review of the proposed legislation.  We will be watching to see what the bill looks like.

Filesharing

We are hoping to see some clarity in this area in 2008.  The recording industry seems to be pushing for an opportunity to litigate, and the proposed copyright legislation may address this issue, providing guidance to content-providers, musicians, users and industry alike.

US Patent Reform

The proposed patent reform bill in the US is currently making its way through Capitol Hill and the changes effected by the new law will undoubtedly transform the patent landscape.  We’ll keep an eye on these developments south of the border because of their impact on so many Canadian patent holders and inventors.

Privacy Online

Privacy issues will continue to play a central role in the conduct of online business.  Massive privacy breaches have become almost common-place – announcements of lost data or hacked credit card info now seem to be weekly occurences - and Canadian law in this area is changing as new decisions and investigations try and produce guidelines for business.  Watch for this area to continue to evolve over the next year.

 

Calgary – 10:35 MST