Trade-marks traditionally protect visible brands – a design, word or slogan. The brand that is visible on packaging or advertising is like a tool to assist consumers so they know, when they consider a purchase, who stands behind the product or service. So why can’t these indicators or “tools” be non-visible? Scent marks have been registered or applied-for in other countries:

• The EU: The EU permits scent marks as long as they can be described or depicted graphically.  OHIM, the office that handles registration of Community Trade Marks (CTM), has accepted the smell of fresh cut grass for tennis balls as an “olfactory mark” (Link to Decision (PDF)).
• USA: Scent marks are capable of being registered, and there is no requirement to sumbit a drawing or graphical depiction of the mark.  The USPTO has accepted the scent of Plumeria blossoms for sewing thread and embroidery yarn, and apple cider scent or fragrance in association with office supplies.
• Australia: Scent marks are registrable, though there is a requirement that a mark must be graphically depicted.  This can be satisfied with a written description of the scent and how it’s applied. In Australia, only one scent mark has been successfully registered: a eucalyptus scent for golf tees.
• Canada: If you try to search for “scent marks in Canada”, you will find articles about woodchucks and timber wolves marking their territory. Currently scent marks are not registrable in Canada, due to the requirement that marks must be depicted visually. To get around this legal conceptual barrier to scent marks, an amendment to the Trade-marks Act would be required, which is not likely in the near future.

There are several problems associated with scent marks. First, they must (in many countries, including Canada) overcome the hurdle of visual or graphical depiction in the trade-mark application. Next, the scent mark must not reflect the natural scent or aroma of the product itself – for example, the scent of fresh-baked bread should not be registrable for bread products. And perhaps most importantly, scent marks suffer from an inherent subjectivity that is difficult to overcome: “fresh-cut grass” means something different to different people, even if you can get over the other legal hurdles of adequately depicting or describing the scent for the purposes of the application. How can the problem of trade-mark confusion be solved in light of this subjectivity, where, for example two brands of tennis balls have similar cut-grass scents applied to them?

In Canada at least, this is one frontier that we will watch from the sidelines.

Related Reading: Holograms & Other Nontraditional Trade-marks in Canada

Also, see this good overview of: Nontraditional Trade-Marks in Canada

Calgary – 07:00

 

Today we begin a 5-part series on intellectual property that is at the edge in one way or another – either a novel technology, or a familiar “asset” that is being protected in new ways, through patent law, copyright or trade-marks. We start with gestures.

Characters in movies such as Avatar, Minority Report, Ironman and The Matrix all used hand gestures to manipulate computers. Not all that futuristic anymore, at least not for anyone who has used a Wii or Kinect to play games.

Apple and Microsoft are among the innovators who are rushing to the patent office to protect the use of hand gestures in conjunction with computer hardware devices and software to perform certain functions such as, in the case of Apple’s patent application (PDF), for real-time video processing. Microsoft’s application covers the use of hand gestures to “draw” three-dimensional objects on a computer. Before you get worried that Bill Gates can stop you from gesturing your hands in the air, there are a few points to make: these applications first have to pass through the patent office, to verify their patentability. Second, a patent would only protect an invention which uses gestures in conjunction with specific software and hardware to perform the functions covered in the patent’s claims.

If issued, these patents could provide valuable ammunition in future patent battles involving the use of gestures in conjunction with mobile devices.

Calgary – 07:00 MST

 

An employer shares confidential information with an employee. When the employee departs, what obligation does that ex-employee have with respect to the employer’s confidential info?

In part 3 of our 3-part employment law series, we look at an issue critical for many technology-based businesses: trade-secrets and confidentiality. Courts in Canada have made it clear that departing employees owe certain duties to their employer. Many of these duties expire when the employment relationship ends. Any attempt to bind the employee after employment must be limited by time and geography. Put another way, non-competition and non-solicitation obligations must be limited by time and space if they are to hold up; otherwise, courts will strike them down as being an unreasonable restraint on the employee’s ability to earn a living. However, those time-and-space limitations do not apply to wrongful disclosure of “truly confidential or proprietary information” by former employees. Simply put, employees cannot disclose their employer’s secrets. Those obligations continue until the information is no longer confidential or proprietary, or limitation periods have passed.  As the court stated in a recent Alberta decision, Evans v. The Sports Corporation, 2011 ABQB 244 (CanLII) (http://canlii.ca/t/fl0b3): “It is illogical to suggest that an employer must, to validly protect its confidences and proprietary information, specify a reasonable date after which a former employee is free to use the information for his own benefit and to the detriment of the former employer.”

Lessons for business: Check your employment agreements to verify that this is covered.

Related Reading: Executives Depart with Secrets and IP

Calgary – 07:00 MST    

 

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

Calgary – 07:00 MST

 

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

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

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

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

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

Calgary – 07:00 MST

 

Sound familiar at Christmas time? ‘Tis the season when trade-marks play a critical role in millions of buying choices of millions of consumers. So where is the line between two marks that appear similar, for similar products? With all due respect, the Supreme Court of Canada is not known for being succinct, but I have to admit this quote from the top court does capture the issue, and in this context the term “provenance” refers to source, or which company the products come from:

• “Trade-marks in Canada are an important tool to assist consumers and businesses. In the marketplace, a business marks its wares or services as an indication of provenance. This allows consumers to know, when they are considering a purchase, who stands behind those goods or services. In this way, trade-marks provide a “shortcut to get consumers to where they want to go” […]  Where the trade-marks of different businesses are similar, a consumer may be unable to discern which company stands behind the wares or services. Confusion between trade-marks impairs the objective of providing consumers with a reliable indication of the expected source of wares or services. […] “

That is the essence of trade-mark law in Canada.

A recent case from the Federal Court (MÖVENPICK HOLDING AG v. EXXON MOBIL CORPORATION, 2011 FC 1397) has reiterated this concept, in a battle between the marks Marché Express for fast-food items sold at a convenience store, and Marché for restaurant services. The court stated that “The test to be applied is a matter of first impression in the mind of a casual consumer somewhat in a hurry who sees the [mark], at a time when he or she has no more than an imperfect recollection of the [prior] trade-marks …” Ultimately, the court decided that there was no confusion, partly since the term “Marché” was commonly used in this industry, indicating that consumers are accustomed to seeing the word and will use relatively small differences to distinguish between trade-marks.

ipblog.ca will be taking a break until January… So, for all those casual consumers somewhat in a hurry, slow down and have a great holiday!

Calgary – 07:00 MST

 

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

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

Calgary – 07:00 MST

 

In September, 1998, Amazon applied to patent its 1-click check-out, an invention officially entitled “Method and System For Placing A Purchase Order Via A Communication Network” (Canadian Patent Application No. 2,246,933). In Canada, the patent office refused to grant the patent because it didn’t consider the invention to be patentable under the Canadian Patent Act. Amazon appealed that refusal and in 2010 the Federal Court reversed the patent office’s decision and effectively ordered the patent to be issued. The patent office still refused to grant the patent, and appealed the case up to the Federal Court of Appeal. In a decision in November 2011, the Federal Court of Appeal handed down its decision in Attorney General of Canada et al v Amazon.com, Inc., 2011 FCA 328. The appeal court has confirmed that business methods are patentable in Canada and there is no basis under Canadian law for excluding business methods from patentability in Canada.

Related Reading:

CIPO’s Software & Business Method Patent Guidelines

Business Method Patents in Canada

Calgary – 07:00 MST

 

The BlackBerry maker can’t get a break these days. On December 6th, an American company obtained a Temporary Restraining Order, from a US court barring RIM from using the mark BBX in association with software. The lawsuit is based on the registered trade-mark BBX owned by BASIS International Ltd. This has caused an embarassing renaming of RIM’s new operating system to BlackBerry 10.

Lessons for business?

• Trade-mark screening searches are critical when launching a new brand. Searches can be conducted country-by-country, and search services can screen top markets with quick “knock-out” searches to quickly determine availability.
• Sure, RIM has been beat up a bit by the markets recently, but it’s still a global titan in the mobile devices and software industry… but that didn’t stop a rival software maker from taking on a trade-mark fight. That’s because BASIS had registered trade-marks in its arsenal.  Without the benefit of a trade-mark registration, this fight would have been much more costly and time-consuming and the outcome would have been much different.
• Think about timing and territory – in this case, the preliminary injunction was rushed to court because of the BlackBerry Developer’s Conference in Asia on December 7 and 8, where the BBX mark would have been used extensively by RIM. Does a US court have jurisdiction to issue an order to a Canadian company regarding the use of its mark in Singapore? You might think the answer is no, but an American judge will have a different view. Faced with the US order, RIM decided to re-brand. 

Calgary – 07:00 MST

This is the second in our 3-part employment law series.

Employees are often asked to sign a set of “restrictive covenants” as part of their employment agreement. This is the case in many competitive industries, and particularly in technology companies. These clauses can include non-competition restrictions, non-solicitation obligations, and other restrictions which bind the employee after termination. In Globex Foreign Exchange Corporation v. Kelcher , 2011 ABCA 240, the Alberta Court of Appeal reviewed the enforeability of these clauses. This case provides guidance for drafting and imposing restrictive covenants. Here is a summary of some of the court’s most important findings:

• Restrictive covenants can fail due to the “lack of consideration”. The employee has to receive something of real benefit in exchange for agreeing to be bound to the restriction. An employer who wants to impose a restrictive covenant in the middle of the employment relationship must take special care, since continued employment alone does not provide sufficient consideration for a new restriction to be imposed during the term of employment. This is because the employer is already required to continue the employment until there are grounds for dismissal or reasonable notice of termination is given.
• Non-solicitation and non-competition covenants are not enforceable unless they are reasonable. What’s reasonable will depend upon the circumstances of the industry, the employer and the employee. For one of the ex-employees in this case, the court found that the restriction was unreasonably wide, because it prevented him from soliciting any customer for a period of 18 months. In other words, this restriction was not limited to customers with whom the ex-employee had a relationship during employment. The employer in this case had no legitimate interest in protecting this category of customers from solicitation by the ex-employee.
• An employer remains free to dismiss an employee at any time provided there is just cause, or there is reasonable notice of termination, or payment in lieu of notice. If none of these occurs, then the employee has been wrongfully dismissed, and wrongful termination renders the restrictive covenants unenforceable. In other words, an employee who is not terminated for just cause, or given reasonable notice or payment in lieu cannot be held to the non-competition or non-solicitation restrictions that appear in the employment agreement.

Lessons for business? Review your restrictive covenants with experienced counsel. Carefully consider the process of introducing new employment terms in the middle of an employment relationship. And handle terminations very carefully to avoid the problems of wrongful dismissal.

Calgary – 07:00 MST

 

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

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

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

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

Calgary – 07:00 MST  

 

My 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

 

A simmering IP infringement case between Oracle and Google raises some fascinating copyright issues for software: what scope of protection is given to functional elements in an SDK (software development kit) or an API (application programming interface)? The case of ORACLE AMERICA, INC. v. GOOGLE INC. (Case No. 3:10-cv-03561-WHA) is in pre-trial contortions, with the trial currently slated for 2012. None of this has been decided in court, it merely focusses attention on a very narrow issue of copyright protection for certain elements of software code (there is a patent infringement claim on the table as well).  Oracle alleges that Google infringed copyright in Java code when it built the Android software platform. Specifically, Oracle complains that Google copied design specifications of some 37 APIs for Java libraries, as well as Java source code, object code and comments in 12 software files. In its defence, Google claims that the APIs are purely functional elements and are not eligible for copyright protection. Will this threaten Android ? Likely not. Google has articulated a compelling argument that there is no copyright in the Java APIs (see here (PDF)), but if the court disagrees and finds either copyright or patent infringement, it will merely trigger a damages calculations, and millions of dollars in royalty payments, not a death-knell for Android.

In Canada, the law is clear (see Delrina Corporation v. Triolet Systems Inc., a 2002 Ontario Court of Appeal decision) computer programming that is dictated by the operating system or reflects common programming practices is not original expression and will not receive copyright protection.  In the meantime, we will watch the Oracle vs. Google case to see if it goes to trial before the parties can reach settlement.

Further Reading including Google and Oracle Trial Briefs.

Calgary – 07:00 MST

 

Their December 1st Launch Party is just a few weeks away: Get tickets here. It’s an annual event for enterprising Calgary technology companies to spend a moment in the spotlight and get support and recognition from the tech community.

Calgary – 07:00

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