Courts have often struggled with how to characterize a domain name using traditional legal concepts. On one level it’s just a “bundle of rights”  - a registration that provides the registrant with rights to exclude others from the use of the domain name, and point the domain name to a certain IP address on the internet.  The question of whether this intangible bundle is “property” has not been settled by any Canadian appeal court, until now.

In Tucows.Com Co. v. Lojas Renner S.A., 2011 ONCA 548, the court had to decide if the domain name renner.com was intangible personal property “located in Ontario”. This was an important issue in the case, since a finding that the domain name was property located in Ontario would permit the court to take jurisdiction and the lawsuit to proceed. The court decided that there is an emerging consensus among other courts that domain names are a form of property, and found that domain names, for the purposes of Ontario law, can be considered intangible personal property. 

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A recent article in the Globe and Mail shows that VC and government investment in Canadian cleantech remains strong, but the markets are not responding due to the relatively small size and short-term underperformance of the sector.  In Alberta, cleantech investment has been given a boost by the federal government’s Sustainable Development Technology Canada (SDTC) fund, which announced $53 million for 17 new funded projects in July, four of which are either based in Alberta or have a direct connection to Alberta technology.

SDTC is now accepting applications under the NextGen Biofuels Fund™, and information on the Fund and applications details are available at www.sdtc.ca.  On a related note, the Global Clean Energy Congress takes place in Calgary in November.

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Check out this interesting summary of Art Law concepts: Art Law TV, a series of videos which explores copyright and other legal issues faced by artists, presented through the lens of artistic practice.

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In a new series, we review the basics of Canadian trade-mark, copyright and patent law.

• Canadian Copyright: The Canadian Copyright Act gives authors the right to control their creative works, such as books and pictures. Under copyright law, the concept of “author” is understood broadly and includes software programmers, photographers, musicians, mobile-app developers, animators, graphic designers, artists, dancers, writers, cinematographers, painters and poets. Original creative works are protected automatically under the Copyright Act, which gives authors the right to make copies for the term of copyright. Copyright generally lasts for 50 years after the death of the author.  It is an infringement of copyright to makes unauthorized copies of a work that is protected by copyright. One important point to remember is that copyright law does not protect ideas or concepts, but protects the expression of the idea - as expressed in written or fixed form, such as a book, a sound recording, a photo or a painting.
• Best Practices:
• Notation - A standard copyright notation is “© ABC Company Inc. 2011, all rights reserved.” A notation of this type is not required by the Copyright Act but it is recommended on copyright protected works.
• Register Copyright - Registration is relatively easy and inexpensive, and provides the owner with proof of ownership of copyright . In Canada, you are not required to submit a copy of the work with your application for registration.
• Public Domain - Just because something is publicly available on the internet does not mean that it’s in the “public domain” for copyright purposes. The concept of “public domain” refers to the expiry of copyright protection. So, for example, the original works of Shakespeare or an 18th century painting can be said to be in the public domain since the term of copyright has lapsed.
• Copyright in Software: Software, even open source software, is subject to copyright. The owner of the software could be the author of the code, or a company employing the author. To protect the intellectual property rights in software of any kind - whether it’s sold on a disc at the retail level, or is downloadable, whether an operating system or a mobile app - the owner should use proper copyright notations and implement a well-drafted license agreement. An end-user software license is a contract between the owner and the user that deals with topics such as ownership, use restrictions, warranties, liability, tech support, and related terms.
• Copyright Outside Canada: Under the Copyright Act and international copyright conventions, Canadians enjoy copyright protection in countries who are parties to treaties such as the Berne Convention, Universal Copyright Convention and the Rome Convention. Even with this legal framework in place, enforcement of copyright is challenging in the context of the internet, since infringement can occur easily and anonymously in multiple jurisdictions on multiple servers. Specialized assistance is usually required in combatting copyright infringement outside Canada.  

For more information and assistance with your copyright and software licensing needs, visit Field’s Intellectual Property & Technology Group. 

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As a follow-up to our earlier post (Domain Name Update: .xxx Blocking Process), this is a reminder that on Wednesday, September 7, 2011, the “Sunrise B” period will commence to permit the owners of registered trade-marks to block their marks from becoming part of a .XXX domain name. The opt-out process blocks eligible trade-marks at the .XXX registry so these trade-marks cannot be registered by others.  As an example, Microsoft might make use of this procedure to block the registration of “microsoft.xxx” as a domain name. This Sunrise period runs for 52 days until Friday, October 28, 2011. By that date, trade-mark owners must submit their Reservation Request under the Sunrise B procedure.

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In a new series, we review the basics of Canadian trade-mark, copyright and patent law.

• Canadian Trade-marks: Trade-marks protect the rights to brand names, such as a word, logo or design. A trade-mark is used in the marketplace to identify products of one company, and distinguish these products from others in the marketplace. Trade-marks can be extremely valuable assets of a company, and represent the company’s reputation with consumers. If mishandled or left unprotected, trade-mark rights can be eroded or lost. In Canada, trade-marks can be registered through the Canadian Intellectual Property Office, and a Trade-mark Agent can assist with screening searches and registration services.
• Best Practices:
• Registration - Seek registration for your core brands. This extends your rights to that mark, in connection with your products, across Canada. Unregistered marks do not enjoy the same scope of protection.
• Screening Searches - Make better business decisions with better information. Searches are critical, particularly before launching a new brand. This helps assess risk and provides insight about potential competitors in the marketplace.
• Notation -  Mark your brands with the ™ symbol or the ® symbol for registered marks. Consider establishing brand guidelines for your organization.
• Licensing - Marks used within a large corporate group, or between a parent company and its subsidiaries, licensees or franchisees, should be properly licensed. Otherwise, a company risks losing its rights to unlicensed marks.
• Trade-marks on the Internet: Trade-mark policing and enforcement is challenging in the context of the internet, since infringement can easily occur in any jurisdiction, and from any server. Establish a strategy that’s suitable and cost-effective in your industry, coordinating with your domain names and your national and international brand portfolio.
• Trade-marks Outside Canada: If you have or are seeking customers outside Canada, then get advice on trade-mark protection in those markets, whether in the US, China, the EU, or developing markets in South America. Trade-mark rights are governed country-by-country, so remember that trade-mark rights in Canada will not provide any protection in the US or elsewhere. Prioritize your brands and markets and seek assistance from professionals who can help establish a strategy for brand protection beyond Canada’s borders.

For more information and assistance with your trade-mark needs visit Field’s Intellectual Property & Technology Group. 

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In our earlier posts [Amazon Business Method Case to be Appealed] we reveiwed the case of the (infamous) Amazon 1-click patent, a case which is currently on appeal. The appeal was heard in Toronto this summer and a decision may come down in late 2011. In light of the Federal Court decision in Amazon.com Inc. v. Commissioner of Patents 2010 FC 1011 , the Canadian Intellectual Property Office (CIPO) has revised its practices. New practice guidelines are now in effect, replacing the contrary guidance in the MOPOP…. until the Federal Court of Appeal hands down its own decision. Stay tuned.

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If the health of an industry is measured by the litigation it spawns, then the app and gaming economy is going strong:

• Copyright: Fantasy Flight Publishing has sued a European app-developer, Puffin Software, for alleged infringement of copyright in a medieval-themed game (Fantasy Flight Publishing, Inc. v. Puffin Software et al. U.S. District Court, District of Minnesota Case No. 11-cv-01928, Filed July 15, 2011). Fantasy Flight claims that Puffin’s iPad title “Viking Lords” is an infringement of copyright in the board game BattleLore owned by Fantasy Flight. In the claim, Puffin allegedly approached Fantasy Flight to pitch an iPad version of BattleLore, and when there was no uptake, Puffin decided to go ahead and publish the game under its own title.  The case will involve an analysis of the elements of each game, and a breakdown of functional and original elements, as in the Sony case (below).
• Patent: App-developer Zynga has been sued in Segan LLC v. Zyna Inc. for alleged infringement of Segan’s U.S. Patent No. 7,054,928, which was issued for a system for accessing “enhancement content” on the internet. The claim alleges that Zynga titles such as FarmVille, PetVille, and FrontierVille infringe the patent.
• Copyright: In Dath v. Sony Computer Entertainment America Inc., the US Ninth Circuit Court of Appeals upheld the lower-court decision in a copyright infringement case involving the Sony PS2 and PSP title “God of War”. The plaintiffs alleged that Sony infringed copyright in their written works about war between Sparta and Athens. The plaintiffs could not show actual copying, so they had to rely on the US concept of access and substantial similarity. Remember, copyright does not protect ideas, but merely the form and expression of ideas. In this case, there was no substantial similarity of expression of ideas. In this analysis, the court reviewed elements of expression such as plot, themes, dialogue, mood, settings and characters, and concluded that the works were not similar and no infringement occurred. 

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In our earlier post (Myriad Issues: Patentability of Isolated DNA), we reviewed the US decision which causes ripples through the life sciences world by deciding that isolated DNA sequences were not patentable subject matter since they were “products of nature”. Myriad’s invention covers two isolated human genes, BRCA1 and BRCA2, and mutations in these genes are associated with a predisposition to breast and ovarian cancers. The recent decision by the US Federal Circuit Court of Appeals in The Association For Molecular Pathology v. USPTO & Myriad has reversed the lower court’s finding. The appeals court held last week that isolated DNA can be proper subject matter for patentability, provided the invention meets other criteria such as novelty and non-obviousness. Here, the inventors had isolated the DNA sequences and in doing so had changed the DNA through inherently transformative steps, thus bringing the invention into patent-eligible subject matter. 

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In a recent Federal Court of Appeal decision in Canada (Corlac Inc. and National Oil Well Canada Ltd. v. Weatherford Canada Ltd., 2011 FCA 228) the court clarified whether there is a general duty of good faith on the part of patent applicants in Canada. Paragraph 73(1)(a) of the Patent Act is clear that a patent application is considered abandoned if the applicant does not “reply in good faith” to the examiner. However, once the patent issues, any “good faith” duty is extinguished since the duty relates only to good faith in the prosecution of the patent application. The court has clarified that any alleged breach of this duty cannot be used to attack the validity of an issued patent. Post-issuance, other remedies must be used, such as section 53(1), for allegations of misrepresentation.

In Canada, this clarification of the law helps to allay fears that an “inequitable conduct” doctrine was creeping into Canadian law (for example, G.D. Searle & Co.  et al. v. Novopharm Limited et al. (in 2007) and Janssen-Ortho Inc. v. Apotex Inc. (in 2008) both explored these concepts).

This marks a distinction from US patent law, where the inequitable conduct doctrine can be used to attack an issued patent. Even in the US, the United States Court of Appeals for the Federal Circuit in Therasense, Inc. v. Becton, Dickinson and Company (Fed. Cir. 2011), has scaled back the impact of this approach, calling it the “atomic bomb” of patent law. In patent law, this is one bomb that has been defused in Canada.

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Can you get a trade-mark for .doc, .pdf or other file extensions? To follow up on our earlier post (Can File Extensions be Trade-marked?), in the US, the answer is “No”, as the makers of AutoCAD software discovered in 2009, when they tried to enforce a trade-mark for the file extension .dwg (referring to “drawing”), which is the file format for the AutoCAD software product. There, the Court made it clear that file extensions are functional and thus cannot be enforced as trade-marks. Autodesk has also failed to obtain a registration for the mark DWG at the USPTO because DWG is descriptive of software which assists in the creation of drawings which use a .dwg file extension. So far, their application to register DWG has been denied for these reasons. 

In Canada, the answer is apparently “Yes” since Autodesk has obtained a registered trade-mark for the mark DWG for use in association with “Computer programs and software in the field of computer aided design and instruction manuals sold as a unit.”  Canadian law generally accords with US law on the subject of descriptiveness and functionality.  In the Supreme Court’s famous decision in Kirkbi AG v. Ritvik Holdings Inc., 2005 SCC 65 (CanLII), (the Lego case), the Court was clear that Lego building blocks are not protectable as trade-marks in Canada, on the grounds that the shape of the blocks is purely functional in nature, and the Trade-marks Act is clear that descriptive marks are not registrable. Why this analysis does not apply to file extensions is not clear, but any attempt by Autodesk to assert a trade-mark infringement claim against a functional or descriptive use of .dwg as a file extension would likely run into that defence.