Some of the common issues facing Canadian businesses today are: ensuring compliance with e-commerce laws, handling employee surveillance issues and protecting brands online. The following links relate to online contracting and e-commerce in Alberta, as well as employee surveillance issues and online brand strategies for Canadian business:

• E-Commerce: Alberta Internet Sales Contract Regulation
• E-Commerce & Privacy: Alberta Investigation Report P2007-IR-007 - A case in which Ticketmaster contravened PIPA by requiring on-line customers to consent to the use of personal information for event provider’s marketing purposes as a condition of ticket sales transactions.
• Video Surveillance (Federal Case): Eastmond v Canadian Pacific Railway, 2004 FC 852 - in this case, the Federal Court reviewed video surveillance under federal privacy laws and articulated a four-part test.
• Video Surveillance (Provincial Case): Talisman Centre For Sport and Wellness Order P2006-008 (Alberta) - in this case, the Alberta Privacy Commissioner reviewed video surveillance under provincial privacy laws and confirms a three-part test for reviewing the appropriateness of video surveillance.
• Video Surveillance (Provincial Case): R.J. Hoffman Holdings Ltd. Investigation Report P2005-IR-004 (Alberta) - in this case, the Alberta Privacy Commissioner reviewed video surveillance in an employment context, under provincial privacy laws.
• Domain Name Decision: Neteller PLC vs Prostoprom - in this recent decision, Neteller successfully challenged the registration of a domain name under the UDRP rules, and the panel reviewed a number of common issues that were all present in this case: confusing similarity, likelihood of confusion, commercial use when using affiliate advertising programs or pay-per-click advertising, and the use of disclaimers.
• Community Trade Mark (EU): Regulations

Calgary - 20:00 MST

Our earlier post reviewed one of the decisions in the ongoing trade-mark dispute between Cross-Canada Auto Body and Hyundai, the Korean car manufacturer.  This is a dispute over the distribution of Hyundai auto parts.  Hyundai’s injunction application recently failed on appeal (Hyundai Motor America v. Cross Canada Auto Body Supply (Windsor) Limited.), under the three-part test set out by the Supreme Court of Canada:

1. There must be a serious question to be tried in the main action.
2. It must be demonstrated that in the absence of an interlocutory injunction the plaintiff will suffer irreparable harm; and
3. It must be demonstrated that the balance of convenience as between the parties favours the grant of an injunction against the defendants.

The Federal Court of Appeal reinforced the prevailing law that injunctions can be difficult to obtain in trade-mark cases and this factor must be taken into account in any trade-mark litigation strategy. 

Calgary - 10:45 MST

It was only a matter of time before someone took a run at Apple’s famous iPhone and it is reported that Minerva Industries, Inc. launched a patent infringement lawsuit against Apple on Tuesday, mere hours after the unknown company was told that its US patent issued (Patent No. 7,321,783 entitled “Mobile Entertainment and Communication Device”). A portion of figure 1 from the patent is excerpted at left.
From reading the claims, this inventor should have every cell-phone maker on the planet running scared. Something tells me the cell-phone industry will try and compare notes on this one to dig up some prior art. Apple is no stranger to IP lawsuits over its iPhone. After all, the product was launched in the midst of a highly-publicized trade-mark infringement fight.

Calgary - 21:35 MST

There are virtual lawyers, virtual commerce, virtual brands.  So logically someone has finally opened what purports to be the Second Life Patent and Trademark Office saying: “We allow you to register, protect, and add value to your Second Life creations to protect your intellectual property rights.” 

It is unclear how virtual protection of virtual rights would function in Second Life (let alone First Life).  There have been more real-world disputes over virtual rights, including a real lawsuit  launched a few months ago by virtual business operators Le Cadre Network and others who complain of copyright infringement and passing off within Second Life.  Bear with me here…  The complainants in that suit filed (real) copyright registrations for their (virtual) products in the (real) US Copyright Office.  Maybe they can convince their lawyers to charge virtual legal fees. 

Calgary - 11:45 MST

In what might be a high-water mark for online vendors, a decision of the US Third Circuit Court of Appeals in Schwartz v. Comcast Corporation has upheld the terms of a subscription agreement even in the absence of any proof that the customer actually knew of, let alone assented to the terms.  This echoes the reasoning of the Supreme Court of Canada in the Dell case last year.  In Dell the online contract was referred to in a linked document, but did not appear on the sales page. It was at least arguable that a customer would be aware that a contract existed even if the customer never took the time to read those terms. 

In the Comcast case the court went one step further stating that: “in some cases, a party is excused from the terms of a contract where he never had access to the contract and thus could not make himself aware of its terms. However, in this case, the terms of the contract were available to Schwartz via the web site, and thus they are binding, despite the fact that he was unaware of them.”  The customer argued that he never received any notice of any terms and was therefore completely unaware that there were terms for him to find. 

Does this mean that merely posting the fine-print on the company website will suffice to make online terms binding?  Probably not. Comcast was able to convince the court of its practice of providing the Subscriber Agreement to all new customers.  Consistent corporate practices are critical to establishing evidence that the terms should be upheld.  Canadian courts may not go this far, but it does provide some guidance for Canadian companies doing business online with US customers.

Calgary - 17:00 MST 

An interesting article in the NY Times gives an update on the US patent reform process and the battle lines that are drawn between large technology companies such as Intel, Microsoft, IBM and Apple, who are looking for ways to take away leverage from small-time patent holders, and the pharmaceutical industry which traditionally relies on robust patent protection.’

And if you want some more light reading, try the draft report prepared by the Senate Judiciary Committee on the Patent Reform Act of 2007.

Calgary - 15:25 MST

There is growing debate (and some misinformation) about the control by private interests over the very essence of language and thought in our society.  For example, some of the analysis over the Olympic and Paralympic Marks Act (which came into force in December, 2007) has suggested that anyone uttering the number “2010″ in the same breath as “gold medal” will be subject to sanction at the hands of VANOC, the defenders of the Olympic brand.  VANOC has tried to explain its approach to infringement assessment to manage this issue. They seem to be applying an even-handed analysis to enforcement, although I’m sure someone will find a way to test the bounds of that law.

Similarly, the current interest in copyright reform in Canada is fuelled by a perception that giving private companies increased protection over copyright will result in a privatization of language and culture itself. 

A recent article in the Toronto Star is a case in point.  The article makes some good arguments but Canada’s intellectual property laws do not prevent someone from using the phrase “freedom of expression” just because someone has registered that slogan as a trade-mark. Infringement involves an analysis of the use of a mark in association with certain goods or services which are the subject of the trade-mark registration. 

The law should engage in a balancing act between competing interests.  Let’s hope that the current groundswell of public interest in intellectual property law will help lawmakers reach that balance.

Calgary - 10:10 MST

Alberta Premier Ed Stelmach is in good company: he joins Julia Roberts, Kevin Spacey and Mick Jagger, not to mention lesser celebrities such as one-time federal MPs Don Boudria and David McGuinty. This club can boast of the price that comes with celebrity in an internet age, since they’ve all had their personal names registered by someone else as domain names. In 2000, Julia Roberts fought and won a domain name dispute case over juliaroberts.com, paving the way for other celebrities and politicians to win back their domain names, including Mick Jagger and Kevin Spacey. In those cases, the panelists did not have trouble finding that celebrities have rights to their own names, even though the dispute resolution policy does not specifically say as much.
The dispute resolution procedure for dot-ca domain names (CDRP) is not identical to the UDRP which applies to dot-com domain name disputes. And further, a personal name has not yet been the subject of a dot-ca dispute under the CDRP. This means any attempt to run this dispute through the CDRP will break new ground.
Calgary - 23:30 MST

Four intellectual property topics to watch in the new year:

Canadian Copyright Changes

The government’s announcement of new copyright legislation has generated considerable debate in Canada in the last few weeks - when copyright reform hits the front page of the Globe and Mail, then you know something is up.  So far all of the media interest, including a Facebook group of several tens of thousands of concerned citizens, seems to have triggered a review of the proposed legislation.  We will be watching to see what the bill looks like.

Filesharing

We are hoping to see some clarity in this area in 2008.  The recording industry seems to be pushing for an opportunity to litigate, and the proposed copyright legislation may address this issue, providing guidance to content-providers, musicians, users and industry alike.

US Patent Reform

The proposed patent reform bill in the US is currently making its way through Capitol Hill and the changes effected by the new law will undoubtedly transform the patent landscape.  We’ll keep an eye on these developments south of the border because of their impact on so many Canadian patent holders and inventors.

Privacy Online

Privacy issues will continue to play a central role in the conduct of online business.  Massive privacy breaches have become almost common-place - announcements of lost data or hacked credit card info now seem to be weekly occurences - and Canadian law in this area is changing as new decisions and investigations try and produce guidelines for business.  Watch for this area to continue to evolve over the next year.

Calgary - 10:35 MST