Zune vs. Zunior

Wired has picked up on the Canadian site zunior.com which operates an online music store dedicated to Canadian independent music.  The obvious question is whether the name ZUNIOR may be confusingly similar with the ZUNE trade-mark of Microsoft fame.   

According to Wired, Dave Ullrich isn’t worried: “We’ve been selling digital music [since] 2004… well before the Zune.  I always assumed someone there [at Microsoft] must have heard of us, but maybe not.  [When] I heard of the Zune, I immediately applied for copyright but I don’t really know if it matters.”

He means trade-mark, not copyright.  But anyway, he’s got the right form of protection, even if the wrong terminology.  Whether this is on Microsoft’s radar screen is anybody’s guess but chances are, it is.  Would Microsoft take a run at him?  On the face of it, they shouldn’t be entitled to if he’s been using it since 2004.  But this wouldn’t be the first time they used the force of legal persuasion, even when trade-mark law isn’t technically on their side.  They shut down an attempt to trade-mark MICROSOFT for use with soft contact lenses, even though it’s safe to say they’ll never be in the contact lens business. 

Calgary - 13:08 MST

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Convicted Phisher Faces Jail Time

In what is the first jury conviction of a “phisher” under the US CAN-SPAM Act of 2003, Jeffrey Goodin faces significant jail time when the case goes to sentencing in June, 2007.  Goodin used an elaborate phishing scheme to defraud AOL users out of sensitive credit card and personal information.  Aside from the obvious financial harm done to victims whose credit card information is harvested and misused, this kind of scheme invariably includes trade-mark infringement and other intellectual property rights violations.  In this case, Goodin sent authentic-looking email (displaying the AOL trade-mark) to AOL customers posing as AOL’s billing department.  Victims were directed to a fraudulent web page (also displaying AOL trade-marks), where their credit card information was collected.

While there is no anti-spam legislation in Canada, the problem is just as pervasive here as it is south of the border.  A few weeks ago, the Federal Department of Finance issued a news release warning of an email fraud scheme in which a phisher tried to lure victims to disclose personal financial information through a “tax refund request” form.  This is just one example among many of the overlap of privacy rights, internet law and intellectual property law in the world of phishing.

Calgary – 22:28 MST

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Registering Sound as a Trade-mark

Chances are you can still recall a jingle from your childhood – a memorable snippet of song advertising your favourite cartoon, fast-food restaurant or a coveted toy.  Sound can be a very effective way for marketers to distinguish their products from those of competitors.  Think of the way the Oscar Mayer jingle gets lodged in your brain (“My baloney has a first name; it’s O-S-C-A-R….”  If you really want to hear it again, just click here).

Sound can function — and can be registered — as a trade-mark.  Registering sound as a trade-mark is a relatively recent phenomenon, and as a result only a small fraction of registered trade-marks are “sound marks”.  One famous example is the effort by Harley-Davidson to register “the exhaust sound of applicant’s motorcycles, produced by V-twin, common crankpin motorcycle engines when the goods are in use” in the United States.  Predictably, this application was opposed by 9 competing motorcycle manufacturers. The opponents asserted that the exhaust sound was purely functional and not eligible to be registered as a trade-mark.

Internationally, trade-mark practice varies widely and local counsel is required.  In the United States, there are only about 100 registered sound marks.  In Canada, this practice is still in its infancy.  In Australia only 25 have been registered.  Under the European Community Trade-mark regime, there are 31 registered sound marks.  Interestingly, the trade-mark laws of some countries, such as Egypt, China and Saudi Arabia, expressly prohibit the registration of sound marks. 

For a Canadian example, Tellme Networks, Inc. (a US company) applied to register a sound mark consisting of “a musical jingle in the key of C, comprised of two notes in sequence of F, C and any relative equivalent thereof.”  The description of the mark makes it very difficult to determine what the mark is without musical training, but this type of description satisfies the application requirements. 

With increasing competition and the use of more imaginative ways for advertisers to reach their targets, sound marks and other non-traditional marks will likely increase in importance, particularly given the power of sound or music to transcend cultural or language barriers.

Calgary – 14:05 MST

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Battling “Function Creep”

Seemingly benign technologies can be pressed into service as privacy offenders. 

Internet-based companies are slowly becoming aware of the importance of maintaining customer confidence in the handling of personal information.  Even traditional companies are waking up to privacy issues.  A stolen laptop is the easiest way to understand the risks: a commonly-used piece of technology loaded with customer data makes mobile employees more productive; it can also present a public relations nightmare if the laptop is pinched while your employee is grabbing a coffee.

Whether the technology is simple (such as data loaded onto a laptop) or complex (cloaked software which conducts surreptitious surveillance on users), the issue is the same: personal information must be safeguarded in the face of “function creep”.   Function creep is the phenomenon of a particular technology’s function to “creep” beyond its original scope, to include other nefarious purposes.  The temptation to use the technology to harvest valuable personal information is seemingly irresistible.  The Sony Rootkit case is a classic example where efforts at copyright protection crossed the line into privacy violation. 

In Canada, the Federal Privacy Commissioner recently considered this issue in a complaint by employees that their employer was conducting surveillance on them via a GPS system installed in company vehicles.  Interestingly, the Privacy Commissioner found that the data collected by the GPS system did qualify as “personal information” under the relevant Act, even though the system only collected metrics about the use of the vehicle – speed, location, start and stop-times, etc.  The system did not collect any information about the identity of the person driving it, although company records could be used to determine who used which vehicle.  In the end the complaint was resolved in the employer’s favour since the purpose of the technology (safety, productivity and asset management) could be balanced effectively against the potential invasion of employee privacy.

Calgary – 10:48 MST


Trademark Infringement and Google AdWords

If you go through Google’s AdWords program and buy a competitor’s trademark as a keyword, are you infringing on that competitor’s trademarks rights?

US courts are still struggling to sort out the law on this issue and while there have been a few Canadian skirmishes over the use of meta-tags, Canadian courts have yet to tackle the adwords issue directly.  The US decision in J.G. Wentworth SSC Ltd v. Settlement Funding LLC d.b.a. Peachtree Settlement Funding No. 06-0597 (E.D. Pa. Jan. 4, 2007) scores a point for advertisers.  In this case the defendant Peachtree bought its competitor’s name “J.G. Wentworth” as an adword and included the same name in its metatags.   J.G. Wentworth sued for trademark infringement.  

Although past cases have gone both ways on this issue, this decision shows that the courts will examine what is ultimately displayed to the consumer.  Here, the use of the competitor’s trademarks was entirely behind the scenes.  J.G. Wentworth’s trademarks were never displayed in search results or ad copy.  Therefore, the court reasoned, consumers never have a chance to confuse the defendant’s services or links for those of the plaintiff.   The case was dismissed. 

Calgary – 14:30 MST

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Virtual Intellectual Property Rights?

Every once and while a story comes along that seems to capture an essential quality of the times. This is one of those stories: In December, CNET News.com interviewed Second Life entrepreneur Anshe Chung, the virtual identity of real-life entrepreneur Aillin Graef.

Anshe ChungThe interview took place in CNET’s virtual Second Life studio in front of dozens of virtual audience members. Video taken during the interview was sabotaged by digital hecklers who harrassed both Anshe Chung and her real-life owner, Ailin Graef. Afterward (like any other video taken in the real world), a video of the harrassment was posted on YouTube.  Real-life company Anshe Chung Studios filed a complaint against YouTube, claiming that real-life Graef’s copyright in the virtual character Anshe Chung had been infringed because the images had been used in the video without her permission. YouTube removed the offending video. (Link to story)

A news report in the (real-life) Syndey Morning Herald was also the subject of a complaint by Graef, since the news story reproduced a screen shot of the offending video image. However, in the real world, fair-use or fair-dealing exceptions allow reproduction of copyright-protected content for the purpose of news reporting.

It seems that the more distortion we see in layers of reality (the digital alter-ego of a real person is digitally harrassed in a digital world and a digital video of the harassment is digitally posted in the real world, prompting the real person to complain to the real-life company that hosts the digital video), the more fascinating the intellectual property issues become. At its most basic level, the (virtual) Anshe Chung character is merely a string of code protected by (real-world) copyright.  In the Second Life, however, was it copyright that was infringed, or were the personality rights of Anshe Chung infringed? If Ms. Chung can’t bring an action for defamation of character in the virtual world, I’m sure those days aren’t far in the future.

Calgary – 09:13 MST



Cisco Sues Apple over iPhone Trademark

Well, it didn’t take long.  Yesterday, Apple unveiled its iPhone.  ipblog.ca questioned how Apple intended to brand its new device considering the trademark was already registered by Cisco and applied for by several other companies. 

Today Cisco announced that it has sued Apple in the United States District Court for the Northern District of California “seeking to prevent Apple from infringing upon and deliberately copying and using Cisco’s registered iPhone trademark.”  

Calgary - 16:39 MST

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An iPhone by any other name?

Apple unveiled yet another iconic product at MacWorld today: the iPhone, a sleek, multifunction device with a full touch-screen which solves the design problem of packing a number pad and a QWERTY keyboard onto a device meant to slide into your shirtpocket.

The iPhone seems destined to follow in the iPod’s footsteps as a consumer favourite. However, trade-mark lawyers must raise the question: what do they plan to call the thing? Apple’s application for the trademark “iPhone” is being opposed in Canada by Comwave Telecom Inc. which claims rights dating from 2004 in association with local and long distance telephone services, and VOIP telephone services. In the US, the “iPhone” mark is claimed by no less than four companies: Teledex LLC, XTREME Mobile LLC, Ocean Telecom Services LLC, and CISCO Technology, Inc. the last of which has a trademark registration. Apple hasn’t even applied for the trademark in the US. Apple must have a plan of some kind and let’s hope it will be another example of creative thinking. Otherwise this branding exercise will hit a brick wall.

Calgary - 22:15 MST

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The Trivial Side of IP Litigation

Last Friday another court case wrapped up in Canada. This case raised the difficult question of inventorship over a wildly successful product, based on an original idea, which made the four co-inventors millionaires several times over.

The product was Trivial Pursuit, and the co-inventors were Chris Haney and his friend Scott Abbott, brother John Haney and Ed Werner. David Wall, a Nova Scotia man, claims he was the source of the idea and relayed it to Chris Haney in 1979. The Trivial Pursuit game was a classic overnight success story – 22 million copies of it were sold in 1984 alone. Intellectual property questions like this are front-and-centre for every inventor, author or creator: how to protect original ideas and get credit when the paycheques are cut.

This case is reminiscent of the Neudorf vs. Nettwerk case in which Darryl Neudorf sued Sarah McLachlan and her record company for a declaration of co-ownership of copyright in several songs. That case was dismissed when the court found that the test for joint-authorship was never satisfied and that there was no intent to co-author the songs. Will Mr. Wall get a slice of the pie or will he go away empty handed? The court will hand down its decision in the next few months.

Calgary – 14:40 MST

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Previously Loved .CA Names to be Released

CIRA will release the next batch of gently used .CA domain names on January 10, 2007.  There are about 2100 names on the list, including a number of trade-marks (for example, MGMStudio.ca, Nokiaringtones.ca and xboxnews.ca), a number of typosquatting domain names (wwfutureshop.ca, wwmsn.ca, wwshaw.ca, wwticketmaster.ca and wwwalmart.ca) and about 130 domain names which double as downtown Vancouver street addresses. 

Calgary – 10:52 MST

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Copyright in a Webcast

A recent decision out of a federal court in Texas (Live Nation Motor Sports Inc. f/k/a SFX Motor Sports Inc. v. Davis d/b/a TripleClamps) has ruled that a webcast of a live sporting event is protectable by copyright.  This in itself is not particularly ground-breaking.  Original content such as a webcast is expected to be the subject of copyright protection, much like a television broadcast would be.    

However, the decision has attracted attention because the court ordered the defendant to take down its link to the protected webcast.  This means that, in this case, an unauthorized hyperlink amounted to copyright infringement.  There has been much legal debate about when links should be considered copyright infringement, since links go to the heart of the functioning of the internet.  

Unfortunately, the court did not provide much guidance on the difference between merely displaying a link to the page on which the audio webcast was posted (much like the “deep linking” cases such as Ticketmaster vs. Tickets.com), as opposed to providing direct unauthorized streaming of the protected webcast.  The defendant in this case appears to have been engaged in unauthorized streaming, but the court order only dealt with the defendant’s link to the webcast. 

If you read the decision, two lessons will emerge:

1.  The plaintiff prepared its case well, made strong economic arguments to support its claim for protection, and ensured that it had adequately warned the defendant to cease and desist;

2.  By contrast, the defendant appeared disorganized, contradictory and made a baseless counterclaim for trade-mark infringement.  At one point, the defendant compared the plaintiff to Ghengis Khan.  All of which helped the plaintiff win.

Calgary - 09:46 MST

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Peaceful Coexistence in a Connected World

Let’s start the new year on a positive note: how to resolve differences peacefully when two identical or similar brands start overlapping in the marketplace.  You have taken steps to ensure your brand is unique in your own country.  But what happens when that brand becomes successful elsewhere in the world, and suddenly you’ve got a potential dispute brewing with a foreign trade-mark owner? 

Do you litigate or negotiate? 

In the case of Apple vs. Apple, the answer is a bit of both.  Apple Computers with its stylized apple symbol, and Apple Records , with its granny-smith apple logo, have been in and out of court rooms and the lawyers’ boardrooms for more than twenty years, trying to navigate through the trade-mark minefield.  A 1981 arrangement ended up in court in 1989, resulting in a coexistence agreement in 1991 .  This lasted until 2003, when the success of Apple’s iTunes service ignited another lawsuit.  In 2006, Apple Computer was cleared of the allegations of breaching the coexistence agreement in a decision of the High Court of England.

Another recent case illustrates an alternative approach.  Tsubi, the successful Australian jeans designer bumped up against Tsubo, an American shoe company.  Rather than fight a trade-mark infringement battle, Tsubi and Tsubo reached a settlement in which Tsubi will retain its trade-mark in Australia, but will be re-branded as Ksubi in the rest of the world.  The Australian company now faces the challenging task of educating its customers and migrating them over to the new brand.  A little creativity and flexibility means that they will be spending their money on marketing instead of litigation.   

Calgary – 11:06 MST

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