Archive for April, 2007

European Domain Names

One year ago, the dot-eu domain was launched.  Now, more than 2.5 million registrations later, it is worth reviewing this European-level domain.  For Canadian businesses the dot-eu domain is available where they meet the test for eligibility:  registrants must be a company having its registered office or principal place of business within the EU, or an organisation established within the EU, or an individual resident in the EU. 

With any top-level domain, there are hundreds of disputes and in this case they are managed by the Czech Arbitration Court .

One recent dispute involved a temp_left-top.gifcomplaint by the owners of the famous ESPRIT trade-mark over the registration of the domain name esprit.eu. The Arbitration Decision ordered the domain name to be transferred back to ESPRIT, even though the word is a generic dictionary word (it means “spirit” in French). The trade-mark owner was able to establish the required elements that the domain name was identical to the Complainant’s mark, and the registrant lacked legitimate interests in the domain name. Having established a lack of legitimate interests, the “bad faith” element was not required under the dot-eu regulations.

 

Calgary – 19:40 MST

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Canadian Brand Value

There are no shortage of studies ranking the value of brands – usually Coca-Cola is at or near the top and the rest of the world’s brands jockey for position after that.  This time around, Google has edged into first place – maybe a sign of the times.

In the latest study, a Canadian company has made the top 100. The study pegs the brand value of the Royal Bank of Canada at US$13.6 billion, number 39 on the top-100, ahead of popular consumer brands like Pepsi, Nike and Sony. 

Another Canadian favourite, Tim Horton’s, is ranked number 5 in the fast-food category, beating out international franchise icons like Pizza Hut and Burger King. 

While this doesn’t mean that Tim’s or RBC has generated the kind of international recognition enjoyed by Nike, Sony or Pizza Hut, it does mean that some Canadian brands generate enough income for their owners that they are ranked in the big leagues.  If you have recently paid a “convenience fee” at an RBC ATM to get cash to pay for your double-double, then you are doing your part to help Canadian brands.

 

Calgary – 14:24 MST

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Google, Wikipedia in Canadian Defamation Suit

On April 10th, we posted an article about Online Defamation.  This week, a very interesting new online defamation lawsuit  was launched in Canada catching two high-profile defendants: Blogspot.com, Google’s free blog-hosting site, and Wikipedia, the online encyclopedia. 

The suit was filed by Wayne Crookes who alleges that he suffered defamation at the hands of anonymous posts to those sites.  The question will be whether the operators of the sites can be held liable for defamatory postings.  As we noted in our earlier post, online content-providers such as Google and Wikipedia cannot take advantage of the traditional protections provided to newspaper publishers or broadcasters.  The law in Canada could use some further clarity in this area, and this case may provide it.

 

Calgary – 09:50 MST   

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New Canadian Copyright Law?

There are reports that the Conservative government is planning to introduce long-anticipated amendments to Canada’s copyright laws this spring (barring another Federal election which seems to be an annual occurrence). Controversial amendments such as US-style DRM (digital rights management) protection provisions will certainly generate opposition and the progress of the legislation will be closely watched.  The Liberals’ attempt at copyright reform came in Bill C-60 which died before the government changed hands.  We will be monitoring the proposed legislation when it is introduced.  

Calgary – 16:45 MST 

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BMW vs. Nissan: Passing Off in the Fast Lane

 

2003_bmw_m3_csl_03_m.jpgA trade-mark battle over the letter “M” has finally made its way through court, resulting in an injuction against Nissan Canada for passing off.  The Federal Court has issued its decision in BMW Canada Inc. vs. NISSAN Canada Inc. in March 2007.  BMW sued Nissan for infringement of its “M” family of trade-marks, alleging that the use of the letter “M” by Nissan in connection with its Infiniti luxury cars constituted trade-mark infringement and passing off.  BMW’s lawyers compiled survey evidence to show the extent of the reputation of the “M” trade-mark in Canada.  The Court was not convinced that Nissan’s use of the letter “M” met the test for infringement, but agreed with the allegation regarding passing off.  There is a three-part test for passing-off :

  • the existence of goodwill,
  • deception of the public due to a misrepresentation and
  • actual or potential damage to the plaintiff.

The judge was convinced and issued an order to stop Nissan in its tracks.  Nissan promptly applied for a stay of the injunction.

The lessons for business?  Trade-mark searches will uncover potential issues with competitor’s marks and experienced counsel can assist in interpreting the search results and providing guidance.  The cost of rebranding (let alone damages) makes a trade-mark search look like a pretty good preventative measure.

 

Calgary – 15:50 MST

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Online Defamation

When I wrote an article about online defamation in 2005, MySpace and YouTube were still relatively unknown.  The prospect of a highschool principal suing former students for defamation would have been remote.  Now, it’s a reality. 

In Canada, the issue of internet defamation came back into the spotlight when Sharman Networks CEO Nikki Hemming filed a libel lawsuit against p2pnet last year.  The suit will be interesting to watch as it may clarify when ISPs and hosts of online discussion forums will be liable for publication of defamatory content. 

In the 2003 case of Bahlieda v. Santa, the Ontario Court of Appeal dealt with a complaint of online defamation.  The lower court initially decided that the online material qualified as a ‘broadcast’ (similar to a television or radio broadcast) for the purposes of the provincial Libel & Slander Act.  Under that law a defendant can deflect a complaint if it is not brought within six weeks.  On appeal, the court overturned this decision, allowing the complaint to proceed.

In Weiss v. Sawyer, a defamatory letter was published in both the hard-copy paper and online version of a newspaper.  Both the paper and the online versions were treated as ‘newspapers’ for the purpose of the provincial libel and slander law, and the time limits applied. The complaints were dismissed because they were brought outside those strict time limits. However, an email transmission of the same material was not considered a ‘newspaper’ or ‘broadcast’ under the legislation. The complaint in connection with the email was allowed to proceed.

ISPs and online content-providers probably can’t take advantage of the protections afforded to newspaper publishers or broadcasters unless the material appears in an online version of a traditional newspaper or broadcast.

 

Calgary – 11:45 MST

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International Trade-Mark Issues

As Canadian companies branch out into foreign markets, it is inevitable that they will confront local trade-mark issues.  It even happens to the titans of the brand-name world. Lawyers for Starbucks Corp. are attempting to stop a new chain of coffee shops in India.  The chain is the brainchild of Shahnaz Husain, an Indian businesswoman, who  plans to use the trade-markStarstruck.

Starbucks is concerned that a coffee-shop chain with a similar name will eat into local market share.  There are plenty of Canadian examples. Take the profusion of knock-offs of Canadian wine  in the Chinese market. A few local wine labels famously billed themselves as ”Whistler Estates, Canada ice wine” and “Toronto Ice Wine”.  The local effect is to erode market share for Canadian companies selling the genuine article.

Addressing international trade-mark issues requires:

  • an awareness of the local business environment including the connotations of your trade-mark in the local language and culture;
  • an awareness of the local options available for trade-mark protection and dispute resolution; and
  • access to expertise in local trade-mark law.

Calgary – 14:52 MST

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GST on Canadian Websites

In the wake of Dawn’s Place vs. the Queen, a recent (October 2006) decision from the Federal Court of Appeal, website operators who sell digital content to non-residents should be reviewing their system of collecting GST (Goods and Services Tax) on the sales.

The question in Dawn’s Place was whether the Canadian website operator should be collecting GST on subscription fees for access to its website.  Access to the website was previously considered a zero-rated supply for GST purposes.  The term “zero-rated” refers to a specified list of goods and services that are taxable at the rate of 0%. Generally, intellectual and intangible property is covered under the definition as a zero-rated supply and GST is not charged for non-resident customers.

In the decision, the appeal court found that customers had the right to download and retain a copy of copyrighted material accessed on the website.  The appeal court made a distinction between the supply of copyrighted material and the supply of some or all of the bundle of rights that comprise the copyright, and agreed with the government position that the latter was not covered by the definition of a zero-rated supply. 

As a result of this decision, Canadian website operators may be required to charge GST on subscription or access fees charged to non-residents.  Website operators should review their tax collection procedures as well as the terms (including license terms) under which they are supplying intellectual or intangible property to non-resident customers.

 

Calgary – 9:45 MST

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New US Digital Copyright Decison

In Perfect 10 Inc. v. CCBILL LLC, the US Ninth Circuit Court of Appeal issued an important new decision considering the (US) Digital Millennium Copyright Act (DMCA). The case involved allegations of copyright infringement by Perfect 10. While the case considered a complex range of issues, there are a few practical points to highlight: the Court was clear that that ISPs who rely on the DMCA safe harbor must maintain records on which subscribers are allegedly “repeat infringers” under the DMCA, but ISPs do not need to go so far as to “actively police” their users for evidence of infringement. Where ISPs receive “direct financial benefit” from infringing conduct, they cannot take advantage of the safe harbor provisions.

In considering the notice-and-take-down regime, the Court stipulated that copyright holders must “substantially comply” with all requirements under the DMCA in order for their notices to trigger the take-down procedures. ISPs can ignore notices which fall short of substantial compliance.

Canadian copyright holders who are considering action against copyright violations taking place through US-based ISPs should seek advice on ensuring their DMCA notices comply with the requirements.

A few more DMCA cases are making their way up to the appeal level and decisions are expected soon.

Calgary – 9:20 MST

 

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