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Archive for the ‘Intellectual Property’ Columns

Savour the Flavor of Victory: FLAVOR SAVER Decision Confirms Trade-Mark Use When Flyers Advertising Goods Are Used in Online Ordering

The Internet has changed how distributors and consumers purchase goods, and those who purchase goods for multi-level marketing from companies such as Tupperware are no exception. A recent decision Federal Court decision involving the manufacturer of Tupperware, Dart Industries Inc. v. Baker & McKenzie LLP, considered whether trade-mark use occurred when goods are purchased online using flyers. The Dart decision also provides important lessons on preparing trade-mark use evidence, especially from goods and services are purchased online.

Background

Dart owns Canadian trade-mark registration No. TMA145,567 FLAVOR SAVER for plastic household containers and lids. Baker& McKenzie initiated proceedings under section . . . [more]

Posted in: Intellectual Property

Patent Trolls in Canada?

Recently, there has been a renewed discussion about Patent Assertion Entities, also known as non-practicing entitles (NPEs), or colloquially, patent trolls. In early June, President Obama announced new initiatives to combat what he called, Patent Assertion Entities, which “don’t actually produce anything themselves,” and instead develop a business model “to essentially leverage and hijack somebody else’s idea and see if they can extort some money out of them.”

The U.S. president made a number of recommendations to congress for legislative changes and announced executive actions to address these Patent Assertion Entities. The recommendations included legislative changes to permit judges to . . . [more]

Posted in: Intellectual Property

YouTube (Part III) Notice and Take Down Safe Harbor Under the DMCA

A driving force for the development of the internet was to provide certainty for internet service organizations on the liability exposure they may have for acts of third parties on their internet sites.

Given that many Canadian internet web sites do receive U.S. visitors and many also utilize a DMCA safe harbor provision, understanding the scope of protection that the safe harbor provides can be important to Canadians. The ongoing legal saga in Viacom International Inc., et al. v. YouTube, Inc., YouTube, LLC, and Google, Inc., 07 Civ. 2103 illuminates the scope of the DMCA safe harbor.

The DMCA . . . [more]

Posted in: Intellectual Property

Patentable Subject Matter – New Notices From Canadian Patent Office, Anticipated Issues for the Court?

The Canadian Intellectual Property Office (“CIPO”) has recently published two notices for patent examiners relating to patent interpretation[i], and in particular computer-related/business method type patents. These notices were released following a 2011 Federal Court of Appeal decision – CIPO v Amazon, 2011 FCA 328 (“Amazon”). In Amazon the FCA instructed the patent office on how to evaluate a patent application to determine the threshold issue of whether it covers patentable subject matter. The FCA held that patent claims must first be purposively construed before one can evaluate whether the claimed subject matter covers acceptable (ie. patentable) subject matter. . . . [more]

Posted in: Intellectual Property

Grey Law on Grey Books

Last month, the United States Supreme Court held in Kirtsaeng v. John Wiley & Sons that it was non-infringing of copyright to import books into the United States that had been legally purchased elsewhere. The decision upheld the “first sale doctrine,” a concept that says once a publisher sells a copy of a work to a member of the public, the buyer is free to do sell or dispose of the copy as they wish. In Canada, the situation is less clear.

The defendant in the United States proceeding, Mr. Kirtsaeng was a student at Cornell University who bought foreign . . . [more]

Posted in: Intellectual Property

Access to Server Data for Foreign Criminal Investigative Purposes

The impacts of privacy sensitivities continue to expand and affect all manner of technology and other transactions transactions. 

Canada and the United States have a long healthy and constructive relationship in providing assistance to the law enforcement agencies of each country in the investigation of cross boarder criminal activity. Canada has, with the United States and with other countries a series of mutual cooperation arrangements (including Mutual Law Assistance Treaties or MLATs) in place between Canadian and U.S. law enforcement by which criminal and terrorist conduct can be investigated and relevant information exchanged.

Such international cooperation is routine and rarely . . . [more]

Posted in: Intellectual Property

A Rare Example Perhaps of “More Than Mere Exercise of Patent Rights” – a Recent Competition Bureau Inquiry Into Pharmaceutical “Product Hopping”

There is an obvious inherent tension between competition principles and intellectual property (“IP”), including patents. A recent Competition Bureau inquiry into alleged market manipulation by Alcon provides a good illustration of how these principles can intersect.

By their very nature patents may be considered exclusionary and anti-competitive. The Competition Act (s. 32) specifically empowers the court to prevent use of a patent only if it “unduly” lessens competition. Otherwise there must be “something more” than the mere exercise of patent rights to be anti-competitive. The Competition Bureau has provided enforcement guidelines to evaluate when IP rights may be used in . . . [more]

Posted in: Intellectual Property

Timing Is Crucial in CIRA Domain Name Disputes

CIRA, the Canadian Internet Registration Authority, manages the registration of domain names ending in “ca”. It has created a set of rules and procedures, called the Canadian Dispute Resolution Process (or CDRP), for resolving some of the disputes that arise over domain names, particularly cybersquatting. Everyone who registers a dot-CA domain name agrees to abide by CIRA’s rules and procedures.

In a couple of recent dot-CA domain name disputes, the outcome has turned on the timing of the formation of the party complaining about a domain name. It is important that before bringing a domain name dispute that you investigate . . . [more]

Posted in: Intellectual Property

A Charter Right to Search Google™?

The Internet has transformed society in so many ways. Even the ways we find information and the sources we rely upon have been fundamentally transformed. It appears our legal systems need to adapt to this new reality.

In R. v. McKay, 2013 ABPC 13 (CanLII) the Alberta Provincial Court had the occasion to consider these issues in the context of a charge under the Criminal Code. The accused had been pulled over, a breathalyzer was applied and then he was taken to the police station. At the police station he was given a toll free number, to the Yellow . . . [more]

Posted in: Intellectual Property

The Past Can Come Back to Haunt You: The Danger of Backdated Copyright Assignments

Copyright assignments are often back-dated or retroactive. A Federal Court decision – Harmony Consulting Ltd. V. G.A. Foss Transport Ltd., 2011 FC 340, aff’d 2012 FCA 226 – demonstrates the dangers of such assignments, and two (2) questions anyone relying on such an assignment should ask.
Posted in: Intellectual Property

Is It Easier to Invalidate a Patent in Canada? Eli Lilly Thinks So and Wants It to Stop

The Canadian generic pharmaceutical industry has recently been successful in invalidating several brand name drug patents on the basis of “The Promise” doctrine. Eli Lilly would like to put an end to this, using Canada’s international treaty obligations under NAFTA.

Can you see the difference?

In the mid 2000s one could start to see Canadian patent cases “turning” somewhat. Before this, the general sense was that a mere scintilla of utility was enough to obtain a patent. However, if the patentee made an explicit and unequivocal “Promise” of a certain use or result, recent cases have held the patentee to . . . [more]

Posted in: Intellectual Property

Federal Court Costs

The Federal Court, where most intellectual property litigation takes place has a system for determining costs that differs in many respects from that of the Ontario Court system.

Costs in the Federal Court are generally determined based on a number of discretionary factors, set out in Rule 400 of the Federal Courts Rules, and a table of fixed amounts for steps in the litigation. Judges and Prothonotaries can also order costs on a lump sum basis.

The Tariff

Unlike in the Ontario Courts, the Federal Court Rules include a tariff, Tariff B, which allocates a range of ‘units’ for . . . [more]

Posted in: Intellectual Property