In recent privacy decision from the Ontario Court of Appeal (R. v. Cole, 2011 ONCA 218), the court recognized a core right to privacy of personal information which extends into the workplace – in this case, an employer’s laptop that was used by the employee in the course of employment.  The question was whether the employee had a “reasonable expectation of privacy” in the contents of the laptop. The court decided that the circumstances of this case, the employee did enjoy privacy in the contents of the laptop.

 Calgary – 07:00 MDT

 

A recent app dispute between the Globe and Mail newspaper, and Spreed Inc., a Toronto-based app developer, highlights the risks with outsourcing app development, for both companies and developers.  Spreed developed an iPhone app news reader for the Globe, which was popular enough to pull in 700,000 readers. For whatever reason, the Globe later decided to develop its own app inhouse.

When the Globe’s inhouse app was launched, Spreed issued a software update to the users of Spreed’s Globe and Mail app. Updates provide bug fixes, upgrades to a new iOS, or new functionality – at least that’s what users expect. However, in this case, the update peeled off the Globe and Mail user-interface, and transformed the app into something new called “Free Press News” – a generic news reader no longer associated with the Globe and Mail.  Why can Spreed do this? Because, according to them, they own the code.  Lessons for business?

• Get advice. If you’ve hired an independent app developer, then check your contract: who owns the code? This becomes critical when the relationship breaks down – in this case between the content-provider and the app developer.
• App ownership is important in other situations including: privacy (who has access to what information during and after the contract?), and transfer of IP rights (let’s say you sell your company and want to transfer all the intellectual property – including your popular iPhone or Blackberry app. You can’t transfer the code if you don’t own it).

Calgary – 07:00 MDT

The Lawyers Weekly interviewed Richard Stobbe for its recent article Canada mulls registration of non-traditional marks.

The introduction of motion marks in the Canadian Intellectual Property Office (CIPO) would permit registration of marks such as the “VeriSign Secured” motion mark, depicted at left. The mark is an EU Community Trade mark registered in 2006 (No. 004366001).  The graphic depicts a stop-action representation of the motion mark. The new CIPO guidelines are expected soon, for motion and hologram marks. To permit registration of other nontraditional marks in Canada (particularly sound marks), CIPO may have to seek changes to the Trade-marks Act and Regulations rather than simply issuing a practice notice.

Related Reading:

• Holograms & Other Nontraditional Trade-marks in Canada
• Time for Sound Marks in Canada?

Calgary – 07:00 MDT

 

My article Software Licensing in the Cloud  [PDF copy] is published in the May 6th edition of The Lawyers Weekly, which addresses the legal issues arising in the use of “cloud computing” services: including data handling, jurisdictional issues, warranties and service levels, customization and subcontracting, and licensing models.

Contact me at the Intellectual Property and Technology Group at Field LLP for advice on your cloud computing licenses.

Calgary – 07:00 MDT

 

It is a long established principle that, under Canadian law, a mark must be used in the form it is registered. For example, Apple couldn’t remove the “bite” out of its famous Apple logo, or for example, add an extra bite. This could result in loss of rights in the original mark. However, Canadian trade-mark law does permit some variation to occur, as long as the differences are unimportant and the dominant features of the mark are maintained. A recent decision has raised questions about what constitutes use of the mark as registered. In the Trade-Marks Opposition Board (TMOB) case Bigras v. BMO Nesbitt Burns Corporation Limited, 2010 TMOB 174, Bank of Montreal has lost its registration of the trade-mark SIGMA ACCOUNT because it published a brochure with the word SIGMA followed by the symbol ®. Elsewhere on the brochure, the words “BMO Nesbitt Burns Sigma Account ®” appeared, but the TMOB decided that consumers were misled when the symbol ® was placed immediately after SIGMA in the core of the brochure, and by a footnote stating that SIGMA is a registered trade-mark. Lessons for business?

• Seemingly small details – such as placement of the ® symbol, footnotes, or the font size of the trade-mark - can be critical in a situation like this.
• Brand guidelines can help ensure consistent use of your brand across the business – in marketing, advertising, social media and packaging.
• Seek advice to ensure that your core brands are protected, and that use of the marks matches registration of the marks.

Calgary – 07:00 MDT

 

It’s playoff season in Canada, and some hockey fans cheer when the players brawl. The good folks at UFC have simplified things by doing away with the hockey and all the other distractions, and just giving the fans what they want: big guys hitting each other. 

A Kelowna, BC, man registered the domain name ULTIMATEFIGHTINGCHAMPIONSHIPS.CA and seven other variations using the .US, .INFO and .BIZ extensions.  Zuffa LLC, the company that owns the UFC trade-marks, approached the registrant with an offer to settle. When the man refused, Zuffa filed a complaint under the CDRP – the dot-ca dispute resolution procedure. In the recent decision in Zuffa LLC v David Bruce [PDF], the panelist had to decide if the domain name had been registered “in bad faith” which is typically one of the more difficult elements to prove. 

In this case, the registrant had admitted in email correspondence with Zuffa that he hoped to make a great deal of money from the registrations, that he was well aware of the UFC brand, and he had registered other offending domain names. The panelist had no trouble concluding that this qualified as “bad faith”.  The domain name was ordered transferred to the trade-mark owner.  That’s one down, seven to go. 

Calgary – 07:00 MDT

 

Quick, which is Apple’s iPhone and which one is the Samsung Galaxy phone?In a recent lawsuit Apple Inc. v. Samsung Electronics Co. Ltd., (11-1846 U.S. District Court, ND Cal.) Apple complains that Samsung’s line of Galaxy phones and tablets infringes the “look-and-feel” of the Apple iPhone and iPad. Besides patent and trade-mark infringement, this is an interesting trade-dress infringement claim, which alleges that Apple owns rights in the way their phones and tablets appear – the screen layout, product design elements, user interface, the appearance of icons and packaging. Can this kind of intellectual property be protected?

In Canada, the law will protect “trade dress” that distinguishes the product – such as colour schemes, signage, the layout of packaging and product design.  Industrial design law can also protect the ornamental (non-functional) elements of a product including product shape and size. In Eli Lilly and Co. v. Novopharm Ltd., [2001] 2 F.C. 502, a drug-maker complained that the distinctive shape, size and colour of its drug (in this case, Prozac) was being unfairly copied by generic competitors. This leads to a claim for “passing off” – where the knock-off product is passed off as the genuine original by copying the distinctive trade-dress of the original.

The three necessary components of a passing-off action are:

1. the distinctive trade-dress must have a reputation in the mind of consumers;
2. misrepresentation and deception that leads consumers to believe that the knock-offs are actually the genuine original; and
3. actual or potential damage to the original brand owner.

Apple’s recent lawsuit is one more battleground in the fierce war for consumers in the highly competitive mobile computing marketplace.

Calgary – 07:00 MDT

There seems to be a run on litigation by co-founders of Facebook. So if you’re one of them, get in line. As John F. Kennedy observed “Victory has a thousand fathers, but defeat is an orphan.” The many technology business ventures that have died and withered away had parents who are now too busy with other things to dig through seven-year old emails or back-of-napkin agreements. However, for the Facebooks of the world, there will always be co-founders to contend with. 

Made famous in the popular movie The Social Network, the Winklevoss brothers recently settled (or were told to accept settlement for) their “zombie lawsuit” against Facebook for roughly $65 million. Eduardo Saverin settled his own claim. Next in line is Paul Ceglia, a man who recently stunned observers when he retained a high-powered law firm, refiled his claim for 50% of Facebook and produced evidence – including seven-year old emails and a back-of-napkin agreement – to support the allegations.  In the lawsuit Ceglia claims that, under a 2003 contract between him and Mark Zuckerberg, he owns at least 50% and up to 84% of Facebook. Facebook was founded in 2004 and now has a market capitalization of $50 billion+ and more than half a billion active users. [See: Ceglia v. Zuckerberg and Facebook, Inc., No. 10-CV-569A, United States District Court, W.D. New York, in which Facebook won a preliminary skirmish over jurisdiction.]  The lessons for business?

• The term “get it in writing” can cut both ways. A written contract can breathe life into an otherwise unlikely claim such as Mr. Ceglia’s. Depending on its content, it can also protect a start-up company when intellectual property ownership claims come out of the woodwork. Start-up technology companies should ensure their critical intellectual property does not become encumbered with early-stage promises about joint ownership or perpetual revenue sharing.
• The “paper trail” should be analyzed and cleared in the course of various early-stage investments and transactions. When an early-stage company is an acquisition target, or it receives a substantial investment, it is common for all of these ownership issues to be flushed out and addressed in the course of the transaction.

Calgary – 07:00 MDT

 

Two decisions just in time for spring cleaning and barbeque season. 

• Someone tried to trade-mark the term PEAMEAL BACON BACON for peameal-style bacon. A competitor, D & S Meat Products Ltd., opposed that application. The application disclaimed the right to the words “PEAMEAL BACON” and “BACON” (leaving open the question of what’s left to be protected). In making its argument to the Trade-Marks Opposition Board (TMOB), the applicant used the PIZZA PIZZA argument – namely, that the repetition of the word BACON qualified as a “unique linguistic construction” that consumers would recognize as a brand. In the famous decision of Pizza Pizza Ltd. v. Registrar of Trade Marks (1992), 67 C.P.R. (2d) 202 (F.C.T.D.) (famous for trade-mark agents, that is) the court allowed the mark PIZZA PIZZA for pizza, but that case was based on about 10 years of use of the mark in which time the owner created a “distinguishable identity” in the marketplace. The mere use of repetition cannot, on its own, defeat a claim that a mark is clearly descriptive. Decision: D & S Meat Products Ltd. v. Peameal Bacon of Canada Ltd.

 

• The second case opens up the competitive world of garage-door openers. The TMOB originally decided that there was no likelihood of confusion between an existing brand LIFTMASTER and newcomer LYNXMASTER, both for garage door openers. The court reviewed this decision and pointed out that the marks should be considered in their totality, without dissecting the marks and considering the word LIFT with LYNX in the absence of the rest of the trade-marks. The court decided that the two marks would be confusing with each other, and denied the application for registration of the LYNXMASTER marks. Decision: The Chamberlain Group, Inc. v. Links Industries Inc. 2010 F.C. 1287

 

Calgary – 07:00 MDT

 

As a follow-up to our earlier post (To hack or not to hack…), here’s a reason NOT to hack. Evony LLC, a maker of multi-player online games, has successfully sued Philip Holland, a “botter” who had developed a task automator for one of Evony’s games. By circumventing the copy protection measures in one of Evony’s titles, Mr. Holland developed a bot that automatically completed tasks and effectively played the game for players.

In Evony, LLC v. Holland, Dist. Court, WD Pennsylvania 2011  the company obtained a permanent injunction, an order for impoundment and destruction of copies of the game and bots, as well as damages of $300,000, plus lawyers’ fees, costs and interest.  The judgement came so swiftly (they only filed their claim in January 2011) because Mr. Holland failed to file a defence. The case was based, in part, on breach of Evony’s Terms of Use.

Related Reading: our post on a World of Warcraft botter: Apps, Bots and Workarounds – Part 1

Calgary – 07:00 MDT

 

 

For Canadians who are following the copyright reform story, here are are a few updates:

• Bill C-32 (the hotly debated proposal for amendments to the Copyright Act) has now died on the vine. When the government was defeated and Parliament was dissolved, all pending legislation fell off the order paper, including Bill C-32. The next Parliament is likely to take this issue up, but the timing and approach will depend on who forms government. 
• While legislative reform idles, the Supreme Court of Canada (SCC) is carrying on.  The SCC has agreed to hear several major cases that will impact copyright law in Canada.
• First the appeal in Entertainment Software Association (ESAC) et al. v. Society of Composers and Authors and Music Publishers of Canada (SOCAN) will address the use of music in video games. SOCAN (the organization responsible for collecting copyright royalties) asserts that royalties should apply to video games that incorporate copyright-protected music
• Another SOCAN case is Rogers Communications Inc. v. SOCAN, and will also deal with royalties applicable to online music sales. 
• A third SOCAN case (SOCAN v. Bell Canada ) will also be heard, dealing with the interpretation of the word “research” and whether 30-second song previews qualify as “fair dealing” for the purpose of the research and private study exception under the Copyright Act.

Related Event: Copyright Reform is Dead…. Long Live Copyright Reform!! For details and registration, please see the invitation.

Photo Credit: Renjith Krishnan

Calgary – 07:00 MDT

 

That is the business question for many in the software industry, including Microsoft, Sony and Twitter.

Software companies have to consider whether to embrace the hacking (…or shall we say “custom development”) culture of their customers, or gird for battle against the hackers. Mashable’s interesting article (Xbox Kinect vs. Sony PS3: How 2 Companies Handle Hacking) reviews the different approach taken by Microsoft which is (uncharacteristically) opening up its popular Kinect gaming console, and Sony which is suing customers who hack into PlayStation 3 [Link to Sony’s Complaint against hacker George Hotz is here 1MB PDF ].  Big old multinationals like Microsoft and Sony aren’t the only ones who have to face this question. New technology upstarts like Twitter are also wrestling with the problem: Twitter recently told developers to back off, after complaints of privacy violations and fragmented user experience. Companies offering software of any kind are finding that customers – both individual consumers and corporate users – are accessing the code, unlocking, jaibreaking and building their own functionality, whether or not the vendor has approved this.  My recent article on Software Licensing in 2011 [PDF] reviews the issues for software vendors.

Related Reading: Apps, Bots and Workarounds

Calgary – 07:00 MST

The Canadian Intellectual Property Office announced last week that the new clean-tech patent rules are now in force. The new rules officially came into force on March 3, 2011. This will permit applicants to obtain expedited prosecution of applications when the invention is related to green technology. This requires a declaration by the applicant that the technology, when commercialized, would help to “resolve or mitigate environmental impacts or conserve the natural environment and resources”.  For further information, see CIPO’s page on Expedited Examination of Patent Applications Related to Green Technology

Related Reading:
CleanTech & Clean Energy: Innovation vs Patents

CleanTech in Calgary

The National Post interviewed Richard Stobbe for an article on the plan to fast-track cleantech patent applications: “Canada plays catch-up on cleantech patents“

Calgary – 07:00 MDT

In a recent trade-mark dispute, the parties entered into a settlement agreement of sorts. The dispute was over use of the mark GUTTERFILTER and resulted in litigation in both Canada and the US. Under the terms of settlement, one party would cease its use of the mark, and the other party would make a payment – a “substantial payment” no less.

In Gutter Filter Company L.L.C. v. Gutter Filter Canada Inc.,  2011 FC 234, the court had to decide whether this settlement agreement was a binding contract. One side argued that the terms were too vague to be enforceable. In its analysis, the court concluded that: “In light of the malleable meaning of the word “substantial,” the language used in the Settlement Document, “after a substantial payment has been received,” lacks certainty. “Substantial” in the context it was used could arguably mean a wide range of different amounts.”  As a result, there was no binding agreement to settle, and the litigation continued.

Lessons for business?

• Settlement negotiations are often highly charged and create special circumstances that require additional attention to the specifics of the written document. Parties may want to gloss over the “fine print” but there’s a reason that lawyers want to focus on clarity of language.
• Settlement may require quick action at or shortly after the meeting. In this case, the parties met and tried to settle, but waited too long before documenting the settlement terms. In the intervening period, their relationship soured again, and the settlement terms were called into question.

Calgary – 07:00 MST

The US Senate has been grappling with a proposed reform of patent law for many years – hence the various proposed bills such as the Patent Reform Act of 2007, the The Patent Reform Act of 2009 and The Patent Reform Act of 2011. Last week the US Senate passed S.23, the America Invents Act [PDF] with broad bipartisan support. The bill now goes to the U.S. House of Representatives. This Senate bill has not yet become law, and the ultimate outcome depends on the text of the corresponding House bill (which has not yet been unveiled) and the process of reconciling the two bills if there are differences.  However, if it does become law, it would represent the biggest shift in US patent law in half a century.  Among the changes are the switch to patent priority from the present first-to-invent system to a first-to-file system, as we have in Canada.

Calgary – 07:00 MT

 

The Canadian Intellectual Property Office is expected to announce new guidelines on “nontraditional marks” sometime this year. In their current proposed practice notice, the office would allow motion marks and holograms as two types of nontraditional marks. There is still some debate about how these marks would be depicted visually, since the limitations are not so much technological but rather procedural – the current rules require the mark to be depicted visually in a drawing.

Other nontraditional marks currently permitted in Canada include marks that protect the shape of the product, such as the Life Saver Design (at left) (Reg. No. TMA562616) registered by Kraft Foods for candy. BMW has registered the Mini Distinguishing Guise (Reg. No. TMA789872) for the shape of their iconic MINI cars. This protects the shape of the car as a distinguishing guise. Colour can be part of a trade-mark. Three-dimensional marks are also permitted in Canada.  Sound marks are allowed in the US and other jurisdictions, but Canada has a long way to go.  There are currently no sound marks registered in Canada. The MGM lion’s roar, which was the subject of a Canadian “sound mark” application in October, 1992 (Application No. 714314), is still before the Canadian trade-marks office after almost 20 years, having gone through various extensions, refusals and appeals.  Some other possibilities:

• Scent marks: a “cherry scent” is registered in the US for “synthetic lubricants.”
• Tactile marks: a velvet texture and a leather texture are registered in the US, both appearing on the surface of a wine bottle. Germany has permitted registration of the mark UNDERBERG in Braille for beverages.
• Flavour marks: an application for a trade-mark for an artificial strawberry flavor for “pharmaceutical preparations” was refused in Europe.

Related Reading: Time for Sound Marks in Canada?

Calgary – 07:00 MST

In March 2010, a U.S. district court’s ruling that isolated DNA and inventions that use isolated DNA are not eligible for patent protection sent shockwaves through the biotech and life sciences sector in Canada and the US. Association for Molecular Pathology v USPTO, 09 Civ. 4515 (Link courtesy of Genomics Law Report) resulted from a lawsuit against Myriad Genetics, a company that patented the BRAC1 and BRAC2 genes, genes associated with increased risk of breast cancer and ovarian cancer.  The court overturned the patents on the basis that inventions that use isolated DNA are not markedly different from “products of nature”.  The decision is currently under appeal to the US Federal Circuit and a decision is expected in 2011. 

BioBusiness Magazine has interviewed Richard Stobbe on this topic in its current issue: The Myriad Decision: What does the patent dispute mean to Canadian biotech? 

Calgary – 07:00 MST

 

We’ve all agreed to releases and waivers. We do it on paper, before bungee jumping, skiing or attending a kids’ birthday party. Or we agree online, before booking an event, ordering a product or downloading software. This is the fine print that essentially says that the operator or vendor has no liability or limited liability for any injury, damages or loss. Do these hold up in court?

In a recent case (Loychuk v. Cougar Mountain Adventures Ltd., 2011 BCSC 193) the BC Supreme Court had to consider this question in connection with an injury from ziplining. Prior to booking the activity online, the participants were advised on the website that a waiver of liability was required in order to participate in the activity. It was a one-pager entitled “RELEASE OF LIABILITY, WAIVER OF CLAIMS AND ASSUMPTION OF RISK AGREEMENT”. The participants signed a paper copy of the release before ziplining, and an injury occurred. The court dismissed the personal injury lawsuit on the basis of the release, confirming a long line of cases upholding such clauses.

Vendors and operators who wish to make use of such clauses in their online agreements should take care in drafting and implementing the terms. 

 

Calgary – 07:00 MST

 

 

Answer: Forum Selection.  The concept of “forum selection” can be summed up as follows: where 2 parties are entering into a contract and they are located in different jurisdictions (different countries, provinces or states), then they can choose the “forum” or the location where their disputes will be settled. This choice usually covers both law and location – for example, the law of Alberta and the courts located in Calgary. Or the law of B.C. and arbitration in Vancouver. These clauses are also referred to as “mandatory jurisdiction” or “choice of law” clauses. There are subtle differences between them, but generally they all serve the same purpose.  As an online consumer, you may have agreed to be bound by the laws of Washington State (Microsoft), California (Apple) and Ontario (BlackBerry).

In the US, forum selection clauses are respected by the courts: a recent decision (Evans v. Linden Research, Inc., E.D. Pa. Feb. 3, 2011) upheld the provisions of the Second Life online user agreement, confirming California as the proper venue pursuant to the forum selection clause.

In Canada, courts will generally hold the parties to their contract, which includes their choice of law and forum. So these clauses will be upheld, unless there is “strong cause” or convincing evidence to satisfy the court there is a really good reason not to uphold the forum selection clause. Sounds a bit circular – (courts will uphold the clause…unless they won’t) – but this gives Canadian courts the flexibility to weigh the surrounding circumstances. In the recent case of Hudye Farms Inc. V. Canadian Wheat Board, 2011 SKQB 29 (CanLII), an online sign-up process for a Canadian Wheat Board grain-handling contract incorporated certain standard terms. These standard terms specified that disputes would be governed by the courts of Manitoba and the application of Manitoba law.  Although no-one actually signed those terms, the court agreed that they were binding on the parties through a series of agreements and click-through screens.  The clause was upheld, and the lawsuit transferred to Manitoba.

Related Reading: E-Commerce & Internet Jurisdiction

Calgary – 07:00 MST

 

 

What do you get when you photograph someone else’s photograph? German photographer Michael Wolf received honorable mention in this year’s World Press Photo Contest for a series of images from Google Street View. He scrolled / strolled through Street View in different cities, and photographed scenes that he came upon. Let’s leave aside the question of whether this qualifies as art or photojournalism (maybe it’s both), and look at the copyright issue. Can a photograph of another image be protected by copyright or is it an infringement of the copyright in the original work?

The Quebec Superior Court in Ateliers Tango Argentin Inc. v. Festival d’Espagne et d’Amerique Latine Inc., (1997), 84 C. P. R. (3d) 56, dealt with a staged reproduction of a photo, rather than a photo of a photo. In that case, the defendant reproduced a photograph – same location, same angle, same layout of the same subject matter. The court decided that this infringed the copyright in the original photograph. Applying this reasoning, a photo of a photo could easily be an infringement.

In a 1999 US case, the court considered whether a copy of a photograph of a painting would infringe copyright.  Someone had taken photos that were exact replicas of paintings.  Copyright in the paintings had already expired at the time the photos were taken. The court decided that the photos are not themselves protected by copyright because they lack originality – an essential ingredient of copyright. So, copying those photos was not an infringement of copyright: Bridgeman Art Library v. Corel Corp., 36 F. Supp. 2d 191 (S.D.N.Y. 1999).

The image above? It’s not one of Mr. Wolf’s works – this one is my own image, snapped from Google Street View, right outside Field’s Calgary office. (If you look closely, you can see Google’s copyright notation on Calgary’s summer sky.)

Calgary – 07:00 MST