Archive for May, 2010
When can an internet user remain anonymous? It depends….
As an update to our recent post about Mosher v. Coast Publishing Ltd., 2010 NSSC 153 (where the identity of anonymous comment-writers was ordered to be disclosed), the recent decision in Warman v. Wilkins-Fournier,  ONSC 2126 (S.C.J.), took an opposite view.
The recent Wilkins-Fournier decision was an appeal of an earlier decision (See: Online Defamation Update) in which the court ordered the disclosure of all personal information, including name, email and IP address, of eight anonymous posters in a defamation case. In this new decision, the court reviewed privacy rights and freedom of expression issues, and overturned the disclosure order. The court indicated that disclosure should not be automatic, and the plaintiff must first demonstrate a prima facie case of defamation before the disclosure of personal identities is ordered. Interestingly, the court compared this situation to the one in BMG Canada Inc. v. John Doe, where the recording industry sought the disclosure of anonymous alleged copyright infringers.
Calgary – 09:00 MTNo comments
Can you get a trade-mark for .doc, .pdf or other file extensions? The makers of AutoCAD software are pursuing trade-mark protection over the file extension .dwg (referring to “drawing”), which is the file format for the AutoCAD software product. In the US case Autodesk, Inc. v. Dassault Systemes Solidworks Corp., 2009 WL 5218009 (N.D. Cal. December 31, 2009), the Court has made it clear that file extensions are functional and thus cannot be protected as trade-marks.
What about in Canada? Autodesk is also pursuing trade-mark protection for the DWG mark in Canada, and the application has been allowed. No Canadian decisions have considered the specific question of claiming trade-mark rights over a file extension. However, Canadian law accords with US law on the topic of functionality. In the Supreme Court’s famous decision in Kirkbi AG v. Ritvik Holdings Inc., 2005 SCC 65 (CanLII), (the Lego case), the Court denied trade-mark protection for the shape of Lego building blocks on the grounds that the shape of the blocks is purely functional in nature, and thus cannot be protected as a trade-mark.
Calgary – 08:00 MTNo comments
Today, the Canadian Intellectual Property Office (CIPO) announced that it is developing a protocol to expedite the examination of patent applications related to “green technology”. Proposed amendments to the Patent Rules would be published for comment in the Fall of 2010, meaning that the fast-track program would not likely take effect until late 2010 or early 2011.
When it is implemented, the program will make Canada more competitive internationally in this growing industry, since the US, UK, South Korea, and Australia have all implemented similar fast-track programs to earmark cleantech inventions for expedited examination.
Our earlier posts:
Calgary 09:30 MTNo comments
Patent enforcement and defence strategy often involves a coordinated approach, including patent infringement litigation, patent reexamination before the USPTO, and complaints filed with the International Trade Commission, a U.S. trade panel that can ban importation of infringing goods.
The i4i suit against Microsoft provides a good case-study. In its long-running patent infringement dispute against Microsoft, the Canadian tech company i4i has won another battle (though the war is far from over). Microsoft challenged the vailidty of i4i’s patent, and the USPTO recently upheld the patent’s validity.
Microsoft appealed the original trial decision, and that appeal was dismissed. Microsoft filed another appeal for a en banc re-hearing, and that appeal was dismissed. The options are now to pursue the appeal up to the US Supreme Court, or appeal the USPTO’s reexamination decision.
Calgary – 09:00 MTNo comments
Planning on outsourcing your company’s email to Gmail? Or maybe you’re outsourcing your data storage to a server in the US? Recent changes to Alberta’s Personal Information Protection Act (PIPA) stipulate that organizations must notify people when they will be transferring personal information to a service provider outside of Canada. Take the example of the University of Alberta’s recent plan to use Google as an email provider (though as public body the university falls under FOIP, not PIPA). Such a change involves the hosting of personal information outside of Canada. In the case of online transactions, which necessarily route credit-card clearing services through the US for approval purposes, there appears to be an exception.
The other major changes include breach reporting and notification obligations, which are a first in Canada. This means that, if a privacy breach occurs and it creates “a real risk of significant harm” to an individual, the organization must make a report to the Privacy Commissioner.
The changes became law on May 1, 2010. Information about the amendments and how they work is available at: www.oipc.ab.ca.
Calgary – 08:00 MSTNo comments
Industrial design is often overlooked while its flashier cousins – patents, copyright and trade-marks – hog the spotlight. In both Canada (which uses the term industrial design) and the US (which refers to a design patent), this category of intellectual property only provides protection for ornamental and not functional aspects of the design of the article. In the recent US Federal Circuit Court of Appeals decision in Richardson v. Stanley Works, Inc., No. 09-1354 (Fed. Cir. Mar. 9, 2010), the court reviewed two design patents claiming an ornamental design for multifunction carpentry tools. Stanley, the owner of the “Fubar” tool (shown left)was sued by Richardson, the owner of the “Stepclaw” tool (shown right) . The Court was clear that the patented design is for a multi-function tool that has several functional components, and that “a design patent, unlike a utility patent, limits protection to the ornamental design of the article.” The Court found that the only similarities between the two tools were those of unprotectable functional elements, and thus no infringement occurred.
Calgary – 07:00 MSTNo comments
You may have seen our recent post on the subject of Apple’s robust trade-secret protection program. Apple grabbed headlines again when a prototype iPhone made its way into the hands of a blogger at Gizmodo, who promptly posted a review of it. It didn’t take long for Apple to flex its trade-secret enforcement tools. The “Rapid Enforcement Allied Computer Team” (a uniquely Californian computer-crime task force) descended on the blogger and reportedly seized a number of items including a laptop, hard-drive and other personal effects. The message is unmistakeable: technology companies will go to extraordinary lengths to protect trade-secrets.
Could this happen in Canada? Search warrants are typically used where a criminal investigation is under way. In civil cases, a technology company could use an “Anton Piller Order”, which is a form of civil search warrant enabling representatives of a plaintiff to search the defendant’s premises and seize relevant documents and other evidence pertinent to the lawsuit. It comes from a trade-secret lawsuit from the 1970’s, where a technology company convinced the court to permit a search-and-seizure at the defendant’s premises. Such an order can only be granted where:
- there is a strong case for the plaintiff and the potential for “very serious” damage to the plaintiff;
- there is convincing evidence that the defendant has “incriminating documents or things”; and
- there is a real possibility that the defendant might destroy the incriminating evidence.
These orders can be set aside, as in this recent Federal Court case involving a copyright infringement claim: Vinod Chopra Films Private Limited v. John Doe, 2010 FC 387 (CanLII).
Calgary – 08:00 MST