My recent article can be found here: Canada’s New Anti-Spam Legislation: How can it impact your business?

Related Reading: Canada’s “New” Anti-Spam Law

 

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

 

 

 

This post is the first in our 3-part employment law series.  Recent cases have again focused the spotlight on this vexing issue: when an employee leaves, do they take their social media contacts with them, or check them at the door?  Once upon a time, social media was something that employers asked you not to do while on the job. Now, Facebook, LinkedIn, Twitter, YouTube and Instagram feeds are not just idle time-burners, they might be part of your job description. In the UK case of Hays Specialist Recruitment (Holdings) Ltd. v. Ions, an employee was ordered to disclose his LinkedIn contacts when he left his employer, and a 2011 case in the US (PhoneDog v. Kravitz, 2011 WL 5415612 (N.D. Ca.; Nov. 8, 2011)) is grappling with this issue, where an employer claims $340,000 in damages from an ex-employee.  Lessons for business?

• Check your own employment policies to see whether this is covered, and if not, consider introducing effective policies to manage social media issues;
• Employees who are hired specifically for social media marketing are the obvious ones to look at, but salespeople, managers or executives should also be considered;
• Theft of trade-secrets is often claimed, but commonly fails on the grounds that the social media contacts are often available for all to see.

Calgary – 07:00 MST

As we reported last January ( Intellectual Property Law in 2011) Canada passed an Anti-Spam Law in December 2010 with the unwieldly title of “An Act to promote the efficiency and adaptability of the Canadian economy by regulating certain activities that discourage reliance on electronic means of carrying out commercial activities, and to amend the Canadian Radio-television and Telecommunications Commission Act, the Competition Act, the Personal Information Protection and Electronic Documents Act and the Telecommunications Act” (… guaranteed to trip up Twitter character limits).

The Anti-Spam Law, getting ready to celebrate its one-year birthday, is not yet in force.  It’s in a bureaucratic holding pattern as the regulations are drafted and redrafted. What this means in practice is that the government is navigating through the demands of various business and industry groups, all of whom want to avoid being saddled with high implementation costs. The law is not expected to take effect until 2012. Stay tuned.

Calgary – 07:00 MDT

 

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

This is a story we’ve been following for several years (see our past posts here: Update: Canadian Online Defamation & Hyperlink Case). It’s based on an allegation of online defamation brought by businessman Wayne Crookes, which ultimately focussed on one issue. To succeed in an action for defamation, a person must prove on a balance of probabilities that the defamatory words were “published”. If you hyperlink to defamatory content, can you be liable for “publishing” that defamatory content?

In a decision this week in the case of Crookes v. Newton, 2011 SCC 47, the country’s top court has upheld the lower court decisions, and decided that there was no publication of the defamatory content in this case. A hyperlink, by itself, is not “publication” of the defamatory content to which it refers. To decide otherwise would “seriously restrict the flow of information on the Internet and, as a result, freedom of expression,” according to the court.

Some in the court pointed out that a blanket statement that hyperlinks can never constitute publication is too broad, since links can take many forms. The consensus is that a mere general reference to a website is not enough to find publication. Anyone who links to salacious gossip can now breathe a little easier.

Calgary – 07:00 MDT

 

Just when you thought it was safe to go back in the water….along comes another change to the domain name world.

This is a final reminder that the Sunrise period for the .XXX blocking process runs until Friday, October 28, 2011, to protect Canadian trade-marks. To be eligible for this procedure, the request must correspond to a trade-mark that was registered by Sept. 1, 2011. For more info, see this link. 

Next up:  The Canadian Internet Registration Authority (CIRA) recently announced its own changes within the .CA domain. CIRA is currently proposing to introduce French-accented letters. The current system only recognizes .CA domain names in ASCII or non-accented letters (a-z) and numbers. CIRA is considering the implementation of French Internationalized Domain Names (IDNs) at the second level (to the left of the dot). What does this mean? This would permit the use of accented letters such as those listed below:

1. é, ë, ê, è
2. â, à
3. ô
4. ù, û, ü
5. ç
6. î, ï

Yes, this would come complete with its own Sunrise period, to permit existing registrants to preregister and a landrush protocol which is similar to other domain name changes such as the introduction of the .XXX domain. For more info on CIRA’s proposed changes, see this link. 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 our previous post (Privacy & Freedom of Expression: Alberta Court Says Privacy Law is Unconstitutional), we discussed the recent Alberta decision that struck down portions of a provincial privacy law (the Personal Information Protection Act), because of the way it limited protections for organizations other than “pure journalists”. Let me put this another way: collection and use of personal information is regulated by PIPA; in that Act, if you collect personal information for “journalistic purposes” and no other purposes, then you would be exempt from the regulations set out in PIPA. It’s like a get-out-of-jail card for journalists. The hitch is that the collection of personal info has to be “journalistic purposes” and no other purposes. However the court in United Food and Commercial Workers, Local 401 v. Alberta (Information and Privacy Commissioner), 2011 ABQB 415 (CanLII) said that is an infringement of the right to free expression for all those organizations who aren’t “pure journalists” – that is, organizations who might collect personal info for some purpose other than journalism. The Supreme Court of Canada in its 2009 decision of Grant v. Torstar Corp. (2009 SCC 61), defined “journalist” broadly to include bloggers and anyone “publishing material of public interest in any medium”.  So is the effect of these two decisions to create a loophole for anyone to collect personal information so long as they are “publishing material of public interest”? Anyone with an internet connection can set up a blog, Facebook page or Twitter account (or all three) in about 5 minutes, so the barriers to entry to qualify as a “journalist” and start publishing personal information appear low. It appears we have a pretty big hole in Alberta’s privacy laws.   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   

A striking union recorded video of a picket-line outside a casino in Edmonton. Photo and video was then posted online at a union protest site. Three people complained that their personal information had been collected in breach of the Personal Information Protection Act (PIPA). A decision by the Privacy Commissioner said that the union’s practice breached PIPA. The union appealed and an Alberta court has handed down a surprising decision that some of the privacy restrictions in PIPA are unconstitutional, because they tread on the right to freedom of expression.

In United Food and Commercial Workers, Local 401 v. Alberta (Information and Privacy Commissioner), 2011 ABQB 415 (CanLII) , the court surveyed the law in this area and focussed on two issues:

• First, what constitutes “publicly available” information? PIPA provides an exception for such information, which is defined in the Regulations and includes such things as information in phone books and directories and records held in public registries. The definition does not cover information that could be collected at public, social or political events. The court decided that this restriction violated the union’s Charter-protected freedom to express itself through video and photos taken at a public political event  
• The other exception examined by the court is the “journalistic purposes” exception in PIPA.  The union argued that PIPA limits the “journalistic purposes” exception to traditional media such as newspapers, magazines and television and excludes “non-traditional media” such as the union, who collect information for purposes other than journalism. Again, the court decided that this restriction violated the union’s freedom to express itself for purposes that may include journalism and other purposes.

Thus, the court quashed the decision of the Privacy Commissioner, and struck down portions of PIPA as being in violation of the Charter of Rights and Freedoms. This leaves some holes in PIPA that will have to be plugged by the government. Either they have to appeal the decision (which is likely) or they have to amend the legislation. This one will be interesting to watch since it touches on all kinds of fascinating topics such as a right to privacy in the Facebook era, what is in public sphere, “citizen journalism” and free expression through posting photos and videos online.

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

 

The Federal Tories have made it clear that they intend to re-introduce their copyright reform bill (the bill formerly known as Bill C-32) this fall, with new legislation possible by Christmas. They may want to re-think that timeline and ask Santa to wait on the shiny new copyright law. The Supreme Court of Canada is scheduled to weigh in on the subject, with a record five copyright cases scheduled in early December. While the issues in these five appeals will not span all of copyright law, the interpretation and analysis of copyright will undoubtedly impact the proposed legislation.

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

 

If you followed the headlines regarding the ongoing battles between Apple and Samsung this summer, you will have noticed that Apple succeeded in shutting down sales of the Samsung Galaxy Tab in the EU, based on its allegation that Samsung’s Galaxy Tab 10.1 infringed Apple’s industrial design (See: Industrial Design in Canada & US). Samsung succeeded in limiting that court order. That is a battle over the design of the iPad (part of the appeal of Apple’s designs are that they are minimalist and functional, which raises the question of what exactly is protectable… but we’ll leave aside for the moment).

Designs and trademarks are both useful intellectual property tools to ward off competitors. Canadian companies can register their industrial designs in the EU, as well as their trademarks across the EU (through a Community Trade Mark or CTM). In the recent case of DHL Express France SAS v Chronopost SA, Case C-235/09, 12 April 2011, the EU Court of Justice ruled that injunctions to prevent infringement of a CTM can be enforced across the EU. The scope of an injunction against infringement of a CTM extends to all 27 countries of the European Union.

Related Reading: Apple’s worldwide court battles against Samsung: where they stand and what they mean 

For assistance with your international brand protection, including in the US and EU, contact us at Field Law. 

Calgary – 07:00

This post ( The Legality of Online Anonymity: Two Cases ), reviews two recent Ontario cases which decide when to order the disclosure of identities in the conext of anonymous online comments. Courts will assess these “Warman” factors in deciding when to order disclosure:

• whether the anonymous person could have a reasonable expectation of anonymity in the circumstances; 
• whether the plaintiff could establish a prima facie case against the anonymous person and is acting in good faith;
• whether the plaintiff has taken reasonable steps to identify the anonymous party and has been unable to do so; and
• whether the public interests favouring disclosure outweigh the legitimate interests of freedom of expression and right to privacy of the anonymous person.

Related Reading:

Exposing Online Identities: Another Update 

Is a Website Operator Liable for User Comments?

Calgary – 07:00 MDT