Olympic Mark Protection Overkill: One Step Removed From Official Mark Protection and Two Steps Removed From Standard Trademark Protection

November 14, 2007 by Nadia Conte

In response to a request from the Vancouver Organizing Committee (VANOC) for additional trademark legislation related specifically to the Olympic and Paralympic 2010 Winter Games, the Canadian government proposed Bill C-47, The Olympic and Paralympic Marks Act, which received Royal Assent on June 22, 2007 and is now awaiting its coming into force by the Governor in Council. The legislation’s objective is to target and protect against both the unauthorized use of Olympic trademarks and the consequent destruction of ambush marketers who endeavor to associate their business with Olympic trademarks, without actually becoming official sponsors. While the aim of the legislation to thwart the reduction of sponsorship opportunities may appear to be noble and sound at first, upon closer examination, it is clear that the need for this extra layer of protection is unwarranted in the face of already existing broad protection and definitely not in the public interest.

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Second Life for Lawyers?

November 14, 2007 by Steven Cutler

Second Life, as it is aptly named, is a virtual world. Through online personas, known as avatars, users of Second Life interact with each other as well as with the virtual items that they create. Users reap rewards for their creative efforts by retaining and exploiting intellectual property (`IP’) rights in their creations; the result is that users are able to `buy, sell and trade’ their creations. What undoubtedly attracts so many users to Second Life is that although these transactions occur using in-world currency, in-world currency can be exchanged for US dollars. In fact, the Second Life website boasted that over US$220,000 was spent in the 24 hours prior to writing this post.

The inherent appeal of Second Life is that users can visit virtual merchants, businesses and homes, in a visually familiar manner. Hoping to capitalize on that appeal and attract clients, Davis LLP has opened an office in Second Life[2]. Using a virtual world presence to establish contact with clients is certainly an avant-garde move, and Davis LLP is wisely reluctant to conduct its substantive legal services through Second Life. The reason for such reluctance: Terms of Service[1].

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Posted in Ownership, Technology, IP, Copyright | 1 Comment »

US Appeals Court Partly Upholds Patent Ruling Against Vonage?

November 14, 2007 by Chris Davenport

Vonage has been the target of substantial patent infringement litigation in recent months. One of their ongoing disputes has been with Verizon, a competitor in the internet phone business. Recently, the U.S. Court of Appeals for the Federal Circuit released its decision in Vonage’s appeal. At first glance, it may appear Vonage was the more successful of the two parties in the appeal as the entire damages award was vacated, and a new trial was ordered for the infringement of one of the patents. In fact one journalist wrote that the appeal court `partly’ upheld the patent ruling against Vonage[1]. However, a closer review of the decision illustrates that the bulk of the patent ruling against Vonage was essentially upheld.

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Hilton v. Hallmark: What Would Happen in Canada?

November 14, 2007 by Gillian Dinning

Paris Hilton has filed a federal lawsuit over a U.S. $2.49 Hallmark greeting card that uses a photograph of the heiress and her trademarked phrase “That’s Hot.” Ms. Hilton is seeking at least U.S. $500,000 in actual damages and a permanent injunction barring Hallmark from further exploitation of her name and likeness. Although this case will play itself out in the U.S., it is interesting to think bout how Canadian copyright law would address this issue.

There are two areas of potential copyright infringement on Hallmark greeting card: (1) the use of Ms. Hilton’s photograph and (2) the use of the phrase “That’s Hot”. Regarding photographs, section 13(2) of the Copyright Act, states that where if the original photograph  “was ordered by some other person and was made for valuable consideration, and the consideration was paid… the person by whom … original was ordered shall be the first owner of the copyright.” This means that Ms. Hilton would retain the copyright over her picture, as long as she ordered and paid for the picture to be taken by someone else, and Hallmark would be guilty of infringement

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Posted in Trademarks, IP, Copyright | 1 Comment »

Thailand’s “War on Drugs”

November 13, 2007 by Yu-Sung Soh

Thailand is at war, with battles taking place on several fronts. Over
600,000 people in Thailand are infected with HIV and the government is
fighting the epidemic by administering HIV treatment and medication
through its universal healthcare system.

But HIV drugs are costly. In order to provide its people with the
necessary medication, Thailand has turned to cheaper, generic versions of
drugs manufactured by large pharmaceutical companies. This has placed them
into a brewing conflict with the pharmaceutical industry.

Last November, Thailand announced that it would be bypassing the patent on
the HIV drug Efavirenz, which is manufactured by pharmaceutical giant
Merck, by issuing a compulsory license which would allow the country to
import or locally produce generic versions at a fraction of the price.
Three months later, Thailand also issued a compulsory license for Kaletra,
an HIV drug manufactured by the US company Abbott.

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Posted in Pharmaceutical Drugs, Patents, IP | 1 Comment »

Response to “Rise of the Patent Trolls”

November 13, 2007 by Jenn Wood

The first thing that strikes me about this article is that the term
“patent troll” carries many different meanings. The definition of patent
troll suggested in the article “Rise of the Patent Trolls” by Joe
Beyers[1] is “a company or business function whose primary business
activity is to acquire patents for the purpose of offensively asserting
them against other companies”. Two further restrictions on the definition
can be inferred from the article: the “trolls” acquire patents with the
intent and primary purpose of threatening and making infringement lawsuits
and; they don’t have any intent on actually commercializing the idea which
they receive a patent for. Wikipedia[2] has many definitions for “patent
troll”, which each lead me to very different views on the activities of
“patent trolls”. I shall look at each of these in turn.

The first definition is “a person or company that enforces it patents
against one or more alleged infringers in a manner considered unduly
aggressive or opportunistic”. This definition strikes me as very broad,
and to some degree a matter of opinion, as what is considered “unduly
aggressive or opportunistic” is up to interpretation. In addition,
whether someone is “aggressive or opportunistic” is not prohibited by
patent law and in fact, opportunism is often encouraged to further
innovation.

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Domain Name Dispute Processes – What is the preferable procedure?

November 13, 2007 by Joanna Wice

Since the advent of the Internet in the early 1990s, domain name
registration has provided a constant source of dispute. On the one
hand, you have people who are merrily registering domain names of
their choosing; on the other hand, you have trademark holders who are
frowning at the fact that their most obvious domain name choice has
already been registered, or worse, that the domain name has been used
for nefarious purposes.

In 1999, while the Internet was just hitting its stride, the Internet
Corporation for Assigned Names and Numbers (ICANN) created guidelines
to resolve the domain name disputes, through the Uniform Domain
Dispute Resolution Process (UDRP). One of the main concerns that this
process addresses is cybersquatting, which is the registration of
domain names that contain trademarked terms. One type of cybersquatter
is one who has registered a domain name in “bad faith” in order to
profit on the re-sell of the domain to the trademark owner. Many
other cybersquatters register the domain name in order to profit from
advertising that the traffic of mistaken web surfers view. Yet still
other users may have registered trademarked words in domain names for
other purposes, or even for the purposes of praising or trashing the
trademark holder.

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The Problems Associated with the Expanding Reach of US Patents

November 13, 2007 by Tory Westbrook

Over the years, judicial and legislative efforts have
dramatically changed the face of US patent law. Traditionally, the United
States prescribed to a patent law regime which was territorial in nature,
meaning that in order for a finding of infringement to be made, the
infraction had to occur wholly within the United States. The recent
increase in globalization of both technology systems and inter-territory
trade has caused the traditional patent regime to be expanded to include
events occurring outside of the US. The actions taken by the US Courts and
the legislature regarding § 271(f) of the Patent Act, have unnecessarily
expanded the scope of US patent rights and created a great deal of
uncertainty surrounding this provision.

Section 271(f) imposes liability upon, “whoever without
authority supplies or causes to be supplied…from the United States any
component of a patented invention…intending that such component will be
combined outside of the United States in a manner that would infringe the
patent if such combination occurred within the United States.”[1] This
provision which deviates from the traditional territorial regime was
enacted by Congress in 1984 in response to the Supreme Court’s decision in
Deepsouth Packing Co. v. Laitram Corp.[2] In Deepsouth, the Court refused
to enlarge the extraterritorial scope of US patent law and held that the
exportation of domestically manufactured components of a patented product
to be assembled in a foreign country is not infringement.

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Posted in Cross Border Issues, Patents | 1 Comment »

Linden Lab’s Second Life Taking on Too Many Lives

November 13, 2007 by Saeed Walji

It is important to appreciate that the principal issue in this case
surrounds the notion of a contract to purchase virtual land. The onus was
on Linden Lab to ensure that their online purchasing system was intact and
not penetrable to unfair usages by purchasers. On the other hand, it is
arguable that Bragg was unwarranted in the manner that he obtained the
land and was unjustly enriched because other prospective purchasers were
paying a higher price for similar properties.

With that being said, I now turn to address the validity of virtual
property rights in online universes such as Second Life. Second Life has
taken the concept of online gaming to include real world elements that can
lead to major issues of incompatibility when disputes such as this arise.
For example, by allowing individuals to make a real life profit by the
selling and trading of various virtual properties, Second Life has double
dipped into both the virtual and real worlds without fully realizing the
muddle to be faced when transitioning from one to the other. As such, it
is suggested that the company has gone too far with the development of
this virtual community.

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Posted in Cross Border Issues, Technology, IP | 1 Comment »

Web ad blocking may not be (entirely) legal

November 13, 2007 by Helen Voudouris

Legal experts have recently made speculations regarding the blocking of
internet pop-up advertisements, and have hypothesized that these
web-browser plug-ins may be illegal. Any lawsuit commenced by advertisers
would likely involve two arguments: the first one based on copyright
infringement through derivative works and secondly, the violation of a
website’s terms of agreement.

The issue arises because internet users are not merely ignoring these
advertisements, but rather have employed the use of a third party. As the
popularity of these ad-blockers increases, publishers argue that their
profits will deplete. This profitability argument is based on the claim
that pop-ups “work”. However, this was refuted in a survey conducted in
2004 by a UK-based web consultancy, which determined that 90% of users who
clicked on a pop-up ad were trying to get rid of them and had accidentally
clicked through them.*

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