When are domain names so descriptive or generic that they can’t function as a trade-mark? 

A Montreal lawyer registered and used the domain name canadavisa.com for immigration law services.  He then challenged the owner of canadavisa.ca claiming that the use of the dot-ca domain name for similar services would constitute bad faith contrary to the dispute resolution policy.  In a recent arbitration decision Cohen v. 3824152 Canada Inc. the panel decided that CANADA VISA cannot function as a trade-mark for services related to obtaining visas for Canada, since under trade-mark law both CANADA and VISA would have to be disclaimed as being purely descriptive of the services.  Since the domain name could not function as a “mark” under the rules, the complaint failed. 

Compare this with the recent complaint by a Toronto realtor who used yourcommunityrealty.com.  The realtor complained about the registration of yourcommunityrealty.ca, which was directed to a page featuring ads for competing realtors.  Is YOUR COMMUNITY REALTY generic for real estate services?   In the decision Risi v. Fattahi, the panel relied on the complainant’s Canadian trade-mark registrations for YOUR COMMUNITY REALTY.  Because she had chosen a slightly more distinctive mark, and had taken the step of registering trade-mark rights several years before, the complainant avoided the problem of proving distinctiveness or acquisition of secondary meaning (the problem which foiled the complaint in the Canada Visa case).  The complaint was successful.

In the recent Trade-mark Opposition Board decision in London Drugs v. Total Care Pharmacy (April 28, 2008), the board refused to permit the registration of the proposed mark CROSSBORDERPHARMACY.COM for an online pharmacy because the mark was clearly descriptive.   

There are several lessons for business:

1. A domain name does not need to be distinctive to be successful as a website address (canadavisa.com reportedly enjoyed popularity as a site), but without a distinctive element, the domain name cannot function as a trade-mark and this will always limit enforcement options in the case of infringement or domain name disputes;
2. Trade-mark registration can be a very useful tool – in the Community Realty case, the complainant could likely have pursued a trade-mark infringement case, but the domain name arbitration was cheaper and quicker, and the trade-mark registration proved critical for success in that venue;
3. Defensive domain name registrations are also good practice: if the owner of canadavisa.com had registered the dot-ca and other variations as a defensive measure, then the lack of distinctiveness would be irrelevant.

Related post: Update: Generic Trade-marks 

Calgary – 11:00 MST

We have previously commented on the series of defamation lawsuits  commenced by Wayne Crookes.  These lawsuits are resulting in court judgements which have established some guidance in this emerging area.  The latest decision, Crookes v. Wikimedia Foundation Inc., 2008 BCSC 1424 has established that linking to defamatory content does not, in itself, amount to publication of that content.  In other words, the publisher of an article which links to the defamatory content, without reproducing it, is not liable for the defamation. The court stated that “the mere creation of a hyperlink in a website does not lead to a presumption that persons read the contents of the website and used the hyperlink to access the defamatory words.”  And the court went on to say that “reference to an article containing defamatory content without repetition of the comment itself should not be found to be a republication of such defamatory content”.

The court’s analysis refers to evidence of whether anyone linked to and read the defamatory content, leaving open the question of whether different facts would have resulted in a different conclusion.  Liability may arise where there is ample evidence that numerous readers used the link to access the defamatory content, or in a situation where the linked content is used to refer directly to the defamed person.  The court speculated that if an article states “the truth about [the defamed person] is found here” and “here” is hyperlinked to the specific defamatory words, then the publisher of the article may be liable.

There was also a recent defamation decision in Ontario, giving rise to $50,000 in damages for online defamation.

A third decision, in Manson v. Moffat, [2008] O.J. No. 1697, resulted in a damage award of $20,000 for internet libel, and an injunction was issued against the U.S. defendant.  The case arose from false statements posted online relating to the plaintiff’s patent.

Calgary – 10:00 MST

It is very common for Canadian companies to expand their customer base into the US, and it is also common for Canadians to encounter difficulties when they discover that they have the same brand name as a US competitor. Trade-mark law permits the same trade-mark to owned by different companies in different countries. But internet marketing blurs those lines, leading to trade-mark disputes and turf wars.

An American court has saddled a Canadian company with “corrective advertising compensatory damages” or what might be termed “Google damages”. The decision in Punch Clock Inc. v. Smart Software Development, No. 07-61684 (S.D. Fla., April 7, 2008) started as a complaint by the owner of PUNCH CLOCK, a US trademark registered for payroll and time-keeping software. The Canadian defendant marketed a competing product in Canada, also under the mark PUNCH CLOCK. When the US company launched a lawsuit in Florida, the Canadians changed their mark to LION CLOCK, but they never responded to the lawsuit, and the US company won a default judgment.

The US company complained that Google searches for the terms “punch clock” produced results that listed the Canadian website above the US company’s site. Alexa searches also showed that the traffic rank for the Canadian website was much higher than for the US company’s site. As a result, the court awarded seven years worth of “corrective advertising” – specifically, the Canadians were ordered to pay the cost for the US company to purchase top placement of its website on Google search listings for five keywords for seven years. At $136 per day for seven years, the corrective advertising damages totaled $347,480, which the court tripled to $1,042,440, on the grounds that the infringement was willful.

Corrective advertising is not a new concept, but it has traditionally been employed in consumer-protection situations where it is ordered to counter false advertising. In this case, it is hard to see why one company should have a “right” to be at the top of Google search results.  There are many reasons why a site enjoys higher or lower rankings on Google search results that have nothing to do with infringement, and the court’s effort to push an aggrieved party to the top of Google’s ranking seems a bit misplaced.  Nevertheless, Canadian companies need to be aware of this risk when facing trade-mark disputes south of the border.

Calgary – 11:30 MST

The Canadian Intellectual Property Office has introduced amendments to the Industrial Design Regulations which are effective October 5, 2008. The changes allow for greater flexibility in submitting design applications with respect to the colour and size of images, and permit the filing of colour drawings and photographs. There is also more flexibility to include an article’s “environment” (i.e. subject matter that is not part of the article) in the drawings. The amendments are posted at the Canada Gazette website and a summary is listed in the FAQ section of the CIPO site.

Calgary – 10:40 MST

 

DBC Marine Safety Systems Ltd. invented an inflatable reversible life raft and applied for a patent (No. 2,233,846).  During the course of any patent application, it is common for the Patent Office to send an examiner’s letter to the applicant, requesting further information or amendments to comply with the Patent Act. In its reply to one such letter, DBC’s patent agent responded to one of the requests, but overlooked the other request.  The Patent Office and Patent Act are both clear that if a response is completely silent in respect of any of the requests in an examiner’s report, then the application will be deemed to be abandoned. 

The initial 6-month time period lapsed, and the notice of abandonment was issued after the 12-month reinstatement period had expired. In other words, the patent agent made a mistake by overlooking the one request, and the Patent Office failed to follow their normal practice of providing a “courtesy” notice of impending abandonment. The result was that the application was treated as abandoned and could not be reinstated.  In the recent Federal Court of Appeal decision in DBC Marine Safety Systems Ltd. v. Canada (Commissioner of Patents) (Trial Decision here ), the Federal Court of Appeal dismissed the appeal and upheld the decision of the Patent Office to treat the application as having been abandoned.   

Calgary – 10:30 MST

 

What do nursing homes and nightclubs have in common? In these 2 decisions, they both collect biometric data on their employees.

Biometric data can be anything that records “measurable characteristics” of an individual – from thumbprints to voice-prints to DNA. Organizations will collect and use this data with greater frequency as tracking technology becomes less costly and more reliable. So what do privacy laws say about this kind of information?

Two recent decisions from the Information & Privacy Commissioner of Alberta tackle biometric data collection issues head-on.

In Report of an investigation on the use of a hand recognition system, (August 7, 2008) the Commissioner investigated a nursing home in Calgary. The nursing home phased out employee swipe-cards, and introduced a hand-scanner as a way of tracking employee arrival and departure. The Commissioner decided that hand-scan data (measurements of a person’s hand to generate a unique identifier) does qualify as “personal information” under the Freedom of Information and Protection of Privacy Act (FOIPPA), and that the employer’s collection practices did not meet the requirements of that Act.

In Report of an Investigation into the Collection and Use of Personal Information, (August 27, 2008) the Commissioner looked into a complaint by an employee of an Edmonton nightclub, who was obliged to use a thumbprint sign-in system at the beginning of every shift. This time, the Commissioner made its analysis under the Personal Information Protection Act (PIPA) since the employer was a private sector organization. The employer did not collect thumb-prints but rather “unique numeric identifiers which represent distinct attributes of thumbprints” – a difference that should have been made clear to employees. This data qualified as “personal information” within the meaning of that Act, and in this case, by failing to explain its privacy policy, and thereby failing to obtain informed consent, the employer did not meet the requirements of PIPA.

The lessons for business? In both cases, the employers stumbled, but not on the type of data collected – the Commissioner accepted the employers’ argument that biometric data collection was reasonable and justified – but rather the employers both failed to adequately explain the collection process, answer questions and alleviate employee concerns. As the Commissioner stated: “Employers …have a heightened responsibility to be open and transparent about their practices as they relate to employees…”

Calgary – 10:00 MST

The Canadian Do-Not-Call List (DNCL) goes into effect tomorrow. 

The CRTC (Canadian Radio-television & Telecommunications Commission) is coordinating the DNCL and starting September 30, Canadian consumers can register their telephone numbers on the DNCL for free.  The DNCL is designed to reduce the number of telemarketing calls and faxes directed to consumers, and is to be financed from telemarketers’ subscription fees. 

If consumers still receive telemarketing calls 31 days after registering on the DNCL, they may file a complaint, and violations may give rise to fines of up to $1,500 for individuals and $15,000 for corporations.  In practice, it is often difficult for consumers to determine which organization is calling, so complaints will likely be limited to situations where the telemarketer is easily identifiable.

Of course, there are limitations. Consumers must renew their registration every three years if they want their number(s) to stay on the National DNCL.  Exempt telemarketers include:

• registered charities seeking donations;
• newspapers looking for subscriptions;
• political parties and their candidates;
• companies that have an existing business relationship with a consumer (within the previous 18 months); and
• organizations directing calls and faxes to businesses.

Also, this is unlikely to prevent annoying calls from American telemarketers who will be beyond the reach of the CRTC. 

However, it is a good step forward.  Now the government needs to tackle national anti-spam legislation.

Calgary – 10:30 MST

With glowing hearts, we protect our brand.

VANOC, the organizer of the 2010 Olympics, has unveiled the new Olympic motto “WITH GLOWING HEARTS“.  Of course, some will criticise the choice because it lifts a line from the Canadian national anthem. I can understand why VANOC wants to use the motto with disposable cameras, stuffed mascots and athletic events… but “navigation of down hole probe assembly for oil drilling and drilling assemblies for routing underground utilities”?  Maybe they have an official supplier of downhole probe assemblies for drilling oil.

In any event, VANOC isn’t the only one registering parts of the anthem as a trade-mark.  Canadian patriots will be happy to know that our anthem is well-protected by other trade-mark owners:

OH CANADA (registered for use in association with whiskey)

HOME AND NATIVE LAND (registered for key chains, mugs, coasters and place mats)

TRUE NORTH (registered for footwear namely shoes, boots, slippers and sandals)

STRONG AND FREE (registered for T-shirts, sweaters, and hats)

WE STAND ON GUARD (registered for water purification systems)

Don’t worry, there are several brandable phrases still available. The Americans have the same problem. Someone registered the opening line: OH, SAY CAN YOU SEE? (Reg. No. 2089762) registered in 1997 for clothing.

Calgary – 12:00 MST

Lawyers are often asked how much copying will constitute copyright infringement.  Of course, every good lawyer will answer “It depends.”  The recent Harry Potter case illustrates this issue: Author J.K. Rowling claimed that a plan to publish a lexicon (essentially an alphabetized reference listing Harry Potter characters, names and other information) would be a violation of copyright in the Harry Potter series of novels, even though the novels themselves weren’t copied, but rather the character’s names and information about the characters.  Last week’s US ruling came down in favour of Rowling, and the proposed book will never see the light of day.

So, how much is too much?  In Canada, the Copyright Act refers to a “substantial part” but like many legal concepts, the exact meaning is up to the court to determine.  In one recent Alberta case, Flag Works Inc. v. Sign Craft Digital, 2007 ABQB 434 (CanLII) a company copied its competitor’s advertising brochure, changing only the name, and a few details in the text. The court had no trouble concluding that a “substantial part” was copied, and therefore copyright was infringed. 

At the other end of the spectrum, a recent US case (Veritas Operating Corp. v Microsoft Corp., No. 06-0703, 208 US Dist. LEXIS 8166 (W.D. Wash. Feb 4, 2008) made it clear that copying a mere 0.03% of software code (that’s 54 lines out of about 160,000 lines) may constitute copyright infringement, if the copied code is critical to the operation of the program.

A reproduction of about 5% (the copy comprised five lines out 116 lines of original text) was not considered a “reproduction of a substantial part of the whole” in the 2003 decision in Dolmage v. Erskine, 2003 CanLII 8350 (ON S.C.), and therefore did not constitute infringement.

Now you know why lawyers say “It depends”. 

Calgary – 13:10 MST

When the Liberal Party decided to brand their environmental policy earlier this year, they picked the name “Green Shift” …and walked right into a trade-mark lawsuit.  The mark GREEN SHIFT was already in use by a Toronto environmental consulting company.  The company promptly fired off a cease-and-desist letter, followed up by a trade-mark infringement suit in early July.  It would have been interesting, from a trade-mark law perspective, to see how a court would resolve the interplay of political brands and trade-marks. Alas, we’ll have to wait for the next case.  Election campaigns have a way of motivating settlement and yesterday the Liberal Party announced that they had resolved the dispute, and posted a notice on their site stating that: “The Liberal Party of Canada and Green Shift Inc. have resolved their dispute over the ‘Green Shift’ trademark. The Liberal Party of Canada will continue to use ‘Green Shift’ under license from Green Shift Inc.  Green Shift Inc. is not affiliated with the Liberal Party of Canada and the grant of the license does not constitute an endorsement by Green Shift Inc. of the Liberal Party of Canada.”

The business issues:

• For any new brand, trade-mark clearance searches are essential.  The Liberal Party may not have done a trade-mark search when picking a brand for their policy; it might not be standard procedure, considering that a polictical policy is not what we think of as a “product” or a “service” (not unless we’re thinking cynically).
• This shows the increasing complexity of brands and the cost of clean-up in the wake of the launch of a new brand that hasn’t been properly screened.

Calgary – 10:30 MST

With the announcement yesterday that Parliament is dissolved, and Canada is heading into a Federal election set for October 14th, the government’s copyright reform bill (Bill C-61) dies on the order paper.  Canadians will have to wait until the dust settles after the election to see what will happen to the copyright debate.  In the meantime, the copyright battles continue, and the latest salvo comes courtesy of isoHunt, a torrent site which has announced a pre-emptive lawsuit against the CRIA , seeking a declaratory judgement that isoHunt’s activities do not infringe copyright.

 

Calgary – 11:30 MST

 

In China, the birthplace of countless knock-offs and counterfeits, the task of policing Olympic marks must be daunting indeed.  The trade-marks police must strive to be faster, higher, stronger than the offenders.  French retailer Carrefour was recently rebuked for the use of Olympic emblems in its Nanjing retail location.  Hanging Olympic banners and propping up Olympic mascots in-store is forbidden without paying the appropriate sponsorship fees under Olympic license agreements.  Another story from China illustrates that this isn’t just a matter of preventing unauthorized use of the Olympic rings, but also one of banning the display of any unauthorized logo of any company. Nike’s swooshes were covered up (this was regular advertising appearing in a Beijing pedestrian underpass) since Nike is not an official sponsor. 

This isn’t always a hi-tech affair – inside the stadium, the brand cops will use duct tape to mask any renegade brand that might be picked up by the cameras. If a reporter brings an Apple laptop, they’ll cover up the logo while its in the stadium to avoid the perception that Apple is getting free Olympic advertising.    

As the 2008 Olympics draw to a close, it’s clear that the Chinese experience is a preview of what we can expect to see in Vancouver and Whistler in 2010 when the enforcement of the Olympic and Paralympic Marks Act will be in full swing.  We’ll review Olympic advertising guidelines in 2010.

Related Reading: http://www.ipblog.ca/?p=115

 

Calgary – 09:30 MST

In the current copyright battle between Viacom and Google, the users (including you, if you’ve ever watched a YouTube video) are caught in the cross-fire. 

Viacom and other broadcasters launched a lawsuit against Google last year, alleging $1-billion in damages. The lawsuit claims that thousands of clips of Viacom television programming are available on Google’s YouTube. In the latest salvo, Viacom won a federal court ruling in the US, in which Google was ordered to deliver up its database of records associated with every YouTube clip that users have viewed.  Whenever a YouTube clip is viewed, YouTube’s database apparently collects information about those who viewed it: including log-in names (for users with YouTube accounts), and IP addresses (for viewers without accounts).

Predictably, there was an outcry; even Ontario’s Privacy Commissioner weighed in with an open letter to Google citing the privacy risks for Canadian users. Ultimately, the parties were able to come to an agreement to anonymize certain data elements to make it more difficult to identify individual users.

Two points are worth raising:

• In today’s borderless culture, the jurisdiction of US courts over Canadian personal information is not an academic question. It’s an unavoidable reality – Canadians leave their personal digital fingerprints all over the US whenever they use the internet;
• Secondly, someone should be asking… why is YouTube collecting all this data in the first place? 

Calgary – 13:45 MST

A few notes from the internet and domain name world:

• CIRA’s revised WHOIS policy has been criticized by Michael Geist  and others for its “backdoor access for special interests”.  I have to disagree with Prof. Geist on this one.  The ability of trade-mark owners to be able to defend against cybersquatters and trade-mark infringement is a business reality, no different from the ability of someone to see a business license at a store, or to conduct corporate records searches to see who owns a company.  The criticism of the new WHOIS policy is misplaced. The policy strikes a balanced approach between the interests of registrants and brand owners (who are made up of both small local businesses and multinational corporations);
• I don’t often put in a plug for summer sales, but reliable Canadian Registrar webnames.ca is offering new domain name registrations for 50% off , until August 31, 2008.  The promotion applies to all domain extensions: .CA, .COM, .ORG, .MOBI, .NET, .INFO, .BIZ, .US, .CN and .ASIA.  This provides an opportunity for trade-mark owners to buy up variations of their core marks, to fence in their online brand and pre-empt cybersquatting disputes;
• Lastly, the new dot-tel top-level domain is due to be launched at the end of this year, with the Sunrise Period commencing December 3, 2008.  Full particulars of the new domain and the launch schedule can be found here.

 

Calgary – 12:30 MST

 

The U.S. Customs and Border Protection Office recently announced that the value of counterfeit and pirated products seized at the border had increased in 2008, up to $113.2 million. Of course, that’s just the stuff they seized, and countless other counterfeits and knock-offs are flowing in.

In Canada, the recent case of Louis Vuitton Malletier SA v. 486353 B.C. Ltd. 2008 BCSC 799, illustrates how one brand owner tackled the problem. Louis Vuitton’s investigations showed that counterfeit Louis Vuitton handbags were being sold at various retails locations throughout suburban Vancouver, all operated by one proprietor. The lawyers pounced, seized the counterfeit evidence, but avoided litigation by entering into a settlement agreement with the proprietors in 2006. This included a slap-on-the-wrist payment of $6,000 to Louis Vuitton. After monitoring the stores throughout 2007, it became apparent that the settlement agreement had been breached, and Louis Vuitton brought a second lawsuit, this time pushing it through trial to arrive at a significant damage award of close to $1 million, when all the trade-mark and copyright damages were added up. The court also made it clear that the directors would not avoid personal liability:

“A corporation cannot be used to shield an officer or director or a principal employee, when that individual’s actions amount to a deliberate, willful and knowing pursuit of a course of conduct which was likely to constitute infringement or at least where those actions reflect an indifference to the risk of an infringement.”

The battle against counterfeits has spilled over into eBay where various luxury-goods brand owners such as Tiffany have complained that eBay had become a clearing house for counterfeits. A US judge recently decided that eBay was not liable for the providing the means of selling counterfeit goods, and the key to eBay’s win was its set of policies and procedures to respond to complaints of trade-mark infringement.

The take-home message is that brand owners must police their own brands both online and offline. Online venues such as eBay cannot be pressed into service as trademark watchdogs – though they must be prepared to react if notified of an infringement. Just as brand owners must be prepared to investigate and act decisively in maintaining their brand’s integrity.
Calgary – 22:00 MST

What happens when a resident of B.C. posts defamatory comments on a usenet group about a resident of Australia?

In this case, two men were engaged in a protracted and ugly name-calling session in the usenet group “alt.suicide.holiday”, described as a discussion forum for persons who were feeling depressed and suicidal. In Griffin v. Sullivan, 2008 BCSC 827, a BC court has reviewed the issues around online defamation and breach of privacy.  The decision resulted in an award of damages for defamation of $150,000 and an award of $25,000 in damages for breach of privacy as well as a permanent injunction against the B.C. man.

The claim for breach of privacy arose when the B.C. man published the name and address of the plaintiff Australian man.  Names and addresses are often considered public information; however, the court found that the disclosure constituted breach of privacy (under the very seldom-used B.C. Privacy Act) since the Australian man had previously maintained his anonymity in the usenet group, and group members often shared sensitive information about themselves.

The other interesting element of the decision is that the court did not review the fundamental question of whether anyone in B.C. (or anywhere else in Canada) actually read the defamatory postings.   In Crookes v. Yahoo, 2008 BCCA 165, the Court of Appeal made it clear that merely alleging that something has been posted on the internet is not, on its own, sufficient to show that publication can be presumed, as we reported earlier.

Names can never hurt you… but they can result in significant damage awards.

Calgary – 14:30 MST

The Quebec Torrent case (past stories here and here ) appears to have ended with the recording industry claiming victory.  Last week a Quebec court issued a permanent injunction against the operators of the P2P site, effectively shutting down the site and turning off the exchange of music files, television shows and other content.  The order prevents the site’s operators from using “any technology allowing the download of any work protected by copyright.” 

A victory? That part is questionable. This order was not a result of a full trial that would have canvassed the issues in court.  The defendant essentially capitulated at the eleventh hour, consenting to the order in exchange for an agreement by the recording industry to drop a $200,000 damages claim.  And remember the P2P site managed to defeat the recording industry’s application for a preliminary injunction earlier in the case.  So this order is by no means a definitive ruling by the court.

Canada is still waiting for its first direct decision on peer-to-peer file sharing.  Meanwhile, the recording industry is expected to use this order as a way of trying to shut down other P2P sites.  If you operate such a site, you can expect a letter containing a copy of the order in the near future if you haven’t received one already.

Calgary – 10:35 MST

For IP lawyers, these are interesting times. It isn’t often that proposed intellectual property legislation makes front-page news and in Canada, the debate over Bill C-61 has been front and centre. There is ample coverage of the proposed law in the media across the country since the bill was introduced last month.  

You might think that all the debate is purely academic: sure, if you download a CD to your iPod and then give the CD away to your brother-in-law, a record company can claim infringement …in theory, but would they really bother?  (If you don’t believe that this is infringement under the proposed law, see here: Section 29.22(4) )

The answer is this, if the law contains a useful tool, copyright owners will use it.  To see how the new tools might be used, we can look to the US, where the DMCA notice-and-takedown system permits copyright owners to send notices of alleged infringement, and demand that the infringing content be removed.  In one recent US case, the notices were filed by Associated Press against independent bloggers for paraphrasing AP news stories in discussion forums.  The message was clear: don’t cut-and-paste or paraphrase any part of our news stories, or we’ll come after you for infringement.   “Fair use” or “fair dealing” exceptions should provide a defence to infringement claims, but of course the boundaries of that concept are open to interpretation.  AP later backed-down and promised certain “guidelines” on how to refer to AP news. 

In the meantime, the take-home message is this: when the US DMCA was introduced, its drafters might never have imagined that a news organization would send take-down notices for online references to its news stories – but the tool was available in the toolbox, and it was used.  Whatever is in Bill C-61 will also be used, sooner or later. 

Calgary – 11:45 MST 

There is a news story circulating that internet regulators are permitting domain names with an infinite variety of extensions – so users would not be limited to dot-com, dot-ca or the other 21 extensions which are currently approved.  The piece I heard made it sound as if internet users could wake up tomorrow and start typing in their own random top-level domain suffixes. 

To clarify: It’s true that ICANN (the Internet Corporation For Assigned Names and Numbers) has approved a proposal to widen the number of extensions, and to permit extensions to be expressed in languages other than the roman alphabet.  However, this will be a long time in coming.  Organizations interested in introducing a new extension must apply to have it approved and implemented.  And ICANN is not expected to even accept applications until mid-2009, then those new extensions that are approved are not likely to be rolled-out until 2010 at the earliest. 

As usual, trade-mark owners and brand managers need to keep abreast of these developments and make strategic decisions about where to focus their branding efforts.  But this particular development is a few years away.

 

Calgary – 14:00 MST

A disgruntled ex-employee registers the dot-com version of the employer’s dot-ca domain name.  Then, just before leaving on vacation out of the country, the ex-employee directs the dot-com domain name to a gay porn site.  The employer sues for damages.

In a recent judgement (Inform Cycle Ltd. v. Draper, 2008 ABQB 369), the Court has awarded damages against the ex-employee for passing-off and defamation, to the tune of $15,000.00.  The case is interesting for a few reasons: first, it is one of the few decisions dealing with both online corporate defamation (defamation of business reputation on the internet) and domain name issues.  And it is interesting for the summary way in which the Court concluded that damages were appropriate.

In the B.C. case of Crookes v. Yahoo, the Court disposed of an online defamation claim by reasoning that there was no evidence that the alleged defamatory material was accessed by someone in B.C.  “Publication is an essential element for an action in defamation,” said the judge. “In this case … [t]here is no evidence anyone read the material in British Columbia.”

Contrast that with the analysis in the Inform Cycle case: “There is no record of the number of people who were forwarded to the gay pornographic website…the people referred to the ‘.com’ site over that 16 day period were people who had made an error by choosing ‘.com’ instead of ‘.ca’. We do not know how many people made that error. We do not know how many actually thought that the referral to the porn site was deliberate rather than a computer or internet glitch. We do not know if anyone, or how many, actually believed that Inform was involved in the porn site or business.” (emphasis added) Despite those apparent gaps in the evidence, the Court had no problem concluding that defamation had occurred, and that damages were appropriate.  The difference might be explained (at least partly) by the fact that the alleged defamatory comments in the Crookes case were made in a members-only discussion forum. It’s likely that the nature of the site where the domain name was directed also has something to do with it.  It is clear that further clarity on these issues is required.

Calgary – 15:30 MST