Archive for January, 2014

Canadian Update on International IP Treaties

Earlier this week, the government introduced an unprecedented five international intellectual property treaties in the House of Commons on the same day. The five tabled treaties, introduced for ratification and implementation, are:

  • the Protocol Relating to the Madrid Agreement Concerning the International Registration of Marks,
  • the Singapore Treaty on the Law of Trademarks,
  • the Nice Agreement Concerning the International Classification of Goods and Services for the Purposes of the Registration of Marks,
  • the Geneva Act of the Hague Agreement Concerning the International Registration of Industrial Designs, and
  • the Patent Law Treaty.

If you follow these sorts of things – and who doesn’t? – you will know that these treaties have been the subject of debate in Canada for years. For example, here is a 2001 article reviewing the merits of the Madrid Protocol. Why does the government have a sudden interest in pushing these treaties forward now?  It’s because the government is in the process of negotiating a Canada-EU free trade deal  as well as the Trans-Pacific Partnership. According to reports, implementation of these legal reforms is a condition for Canada to finalize treaty negotiations with other countries.

Implementation of all these treaties will result in so many interconnecting changes to Canadian IP law that it will take some time to sort out how this impacts Canadian business in a practical sense. Stay tuned for further updates and guidance on these developments.

Calgary – 07:00 MST

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A Domain Name is Property. A Domain Name is Not Property.

Business people are sometimes seen to roll their eyes when they ask their lawyer a straighforward question, and the lawyer pauses and replies “Well… it depends…”

In our earlier post (here and here), we reviewed the Canadian decision in Tucows.Com Co. v. Lojas Renner S.A., 2011 ONCA 548, which stands for the proposition that a domain name is intangible personal property. The court pointed to an emerging consensus among other courts that domain names are a form of property. This decision was denied leave to appeal to the Supreme Court of Canada in Lojas Renner S.A. v. Tucows.Com Co., 2012 CanLII 28261 (SCC) which seems to settle the matter.

In the United States, courts have also come to the same conclusion that a domain name is personal property, for example in (Bosh v. Zavala (C.D. Cal. Sept. 24, 2009) and Kremen v. Cohen, 325 F. 3d 1035 (US Ninth Circuit Court of Appeals).

A recent US decision out of Virginia (In re Alexandria Surveys Int’l, LLC, 13-CV-00891 (E.D. Va. Nov. 7, 2013)) has come to a different conclusion in a bankruptcy matter. In this case, the court decided that “a domain name registrant acquires the contractual right to use a unique domain name for a specified period of time . . . a domain name is not personal property but rather ‘the product of a contract for services.’” [Emphasis added]

Many Canadian companies have intangible assets like domain names on both sides of the border, particularly in cases where branch offices or subsidiaries carry on business in both countries. While Canadian law appears to have some clarity on this topic, the Alexandria Surveys decision in the US does raise questions – questions that are compounded in light of the fact that intangible assets like domain names are designed to be used without regard to any particular country or jurisdiction.

Calgary – 07:00 MST

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Google’s Breach of Canadian Privacy Rules

In a recent decision released by the Canadian Privacy Commissioner (PIPEDA Report of Findings #2014-001), the commissioner investigated a complaint that Google pitched ads to an individual based on medical information that he disclosed while surfing various health-related websites. The commissioner’s office took the position that “meaningful consent” is required for the delivery of this kind of targeted advertising. Implied consent might be acceptable in certain circumstances, where the information is limited to “non-sensitive information (which would avoid medical, financial or health information).

In this case, the individual who initiated the complaint was using Google to search for information related to a medical device used to treat a specific medical condition. Google used this sensitive personal health information (as the commissioner described it, the “online activities and viewing history of health related websites”) to target ads to that individual. When Google relied on implied consent for the use of this sensitive personal health information, it contravened Principles 4.3 and 4.3.6 of the Act. Express consent is required for use of this kind of sensitive personal information.

Calgary – 07:00 MST

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Supreme Court on Copyright Infringement & Protection of Ideas

Let’s say you pitch a story idea to a TV production company – and not just an idea, but a complete set of storyboards, characters and scripts. You would be surprised if one day you saw that story idea come to life in a TV production that gave no credit to you as the orginal creator of the materials. That’s what happened to Claude Robinson and his idea for a children’s TV program inspired by Robinson Crusoe.

One of the most important copyright decisions in 2013 was issued by the Supreme Court of Canada (SCC) in late December: In Cinar Corporation v. Robinson, 2013 SCC 73, the court reviewed Mr. Robinson’s claim that Cinar Corp. infringed copyright in his original story materials by copying a substantial part of those materials in the new TV production called “Robinson Sucroë”.

I am often asked when or why someone can copy the ideas of someone else. Ideas themselves are not protected by copyright law. Many features of a TV show or a movie are simply non-protectable, including ideas, elements drawn from the public domain or generic components of a story, like heroes, villains, conflict and resolution. However, in this case, the idea was articulated and expressed in a set of original written materials which resulted from the skill and judgement of the author.

The court framed this fascinating issue in this way: “The need to strike an appropriate balance between giving protection to the skill and judgement exercised by authors in the expression of their ideas, on the one hand, and leaving ideas and elements from the public domain free for all to draw upon, on the other, forms the background against which the arguments of the parties must be considered.”

In the end, the court rejected the notion that the two works must be compared piecemeal to determine if protectable elements of the original work were similar to the copy. Instead, the court reviewed the “cumulative effect” of the features copied from the original, to determine if those features amount to a substantial part of the original work as a whole. Thus the court approved a “qualitative and holistic assessment of the similarities between the works”, rather than dissecting both works to compare individual features in isolation.

This decision will be applied in other copyright infringement situations in Canada, including art, media, music and software.

Calgary – 05:00 MST

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$10.5 Million Damages to Rebroadcast “Family Guy”

In a recent default judgment granted to Twentieth Century Fox, a Canadian Federal Court recently issued an injunction and a damage award in Twentieth Century Fox Film Corp. v. Hernandez et al (T-1618-13) for copyright infringement based on copying and rebroadcasting The Simpsons and Family Guy programs through the defendant’s websites “Watch The Simpsons Online” and “Watch Family Guy Online”.

As the court noted: “Statutory damages, elected by Twentieth Century Fox in this case, would be insufficient to achieve the goal of punishment and deterrence of the offense of copyright infringement in this case. Hernandez’s repeated, unauthorized, blatant, high-handed and intentional misconduct, and his callous disregard for the Plaintiff’s copyright rights, is deserving of the penalty of punitive damages.”

The court went on to issue a damage award of $10 million in statutory damages under 38.1 of the Copyright Act, as wel as $500,000 in punitive damages, costs of $78,000, plus interest

Hat tip to Alan Macek at Dimock Stratton for a link to the decision.

Calgary – 07:00 MST

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Social Media & Non-Competition Clauses

In our earlier post (Are Non-Competition Restrictions Enforceable?), we reviewed “restrictive covenants” – these are clauses under which employees are bound by restrictions such as non-competition restrictions, non-solicitation obligations, and other controls on the employee’s behaviour which bind the employee after termination.

In Eagle Professional Resources v. MacMullin, 2013 ONSC 2501, the court considered a dispute between two competitors – Eagle and Maplesoft.

Eagle alleged that its ex-employees took confidential information from Eagle, and began soliciting clients, employees, and contractors of Eagle to work for Maplesoft. The defendant ex-employees argued that they did not use any confidential information to solicit business. They asserted that any contact information that they used was already publicly available through LinkedIn or Facebook accounts.

When reviewing the enforceability of restrictive covenants in the employment context, the court reiterated a three-part test (when in doubt, there is always a handy three-part test ): 

  • Does the employer have a proprietary interest entitled to protection? 
  • Are the temporal and spatial features of the restrictive covenant too broad? (Put another way, are there reasonable limits in time and geographic space?)
  • Is the covenant unenforceable as being against competition generally, as opposed to a more limited covenant against solicitation of former clients?

The court concluded that “there is no evidence from Eagle, other than a very bald assertion, that it had any proprietary interest entitled to protection. According to the Defendants, the information that they learned at Eagle was all publicly available and obtained from such sources as social media websites.” There are a few take-aways from this decision:

  1. When drafting restrictive covenants in the employment context, non-solicitation and confidentiality clauses are more likely to stand up, whereas non-competition clauses are likely to be struck down as unenforceable, as in this case. Make sure to have your agreements reviewed;
  2. If a “confidential customer list” is virtually the same as the employee’s LinkedIn or Facebook contacts, then there will be no proprietary interest to protect, since the information will be publicly visible to anyone.
  3. The court will assume that the employer will lead with its strongest evidence. Compelling evidence of specific cases of solicitation or competition is critical for success in an application by the employer – as the court quipped “Lead with trump or risk losing”. In this case, the evidence was ambiguous or it fell outside the non-competition period.

Calgary – 7:00 MST

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Can BlackBerry Patent a Keyboard?

typo-cases-dual.jpgCan there be a better way to start 2014 than with a patent infringement story with a Canadian twist? BlackBerry has filed a patent infringement lawsuit  against Typo Products LLC. If you are a believer in the maxim that “the only thing worse than bad press is no press” then you would see this as a boon for Typo, which has garnered attention just in time for CES 2014. A Google search for “BlackBerry keyboard patent” now displays pictures of a smiling Ryan Seacrest, a co-founder of Typo.  Typo sells a slide-on physical keyboard for the iPhone 5, and the layout does looks suspiciously similar to a BlackBerry keyboard.

capture.JPGThe question from an IP law perspective is whether BlackBerry can claim patent protection for a keyboard. Isn’t asholesglidden2.png keyboard just a keyboard? After all, the QWERTY keyboard has been around since it was invented by Christopher Sholes in the late 1800s (the design at right). In fact there are hundreds of keyboard patents, and BlackBerry owns a number of issued patents for keyboard design, for both utility and design patents, including the US patent “Ramped-key keyboard for a handheld mobile communication device” US8449208 (image at left). A new improvement on the basic QWERTY design can indeed be protectable, either through a utility or design patent. Whether this particular patent infringement case proceeds, or is settled, it illustrates the uses of patent  and industrial design to protect incremental improvements to existing technology. Stay tuned.

Calgary – 11:00 MST

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