On Tuesday, Microsoft lost at the U.S. federal court of appeals in a landmark case that will force the software maker to redesign its flagship word-processing program. The US appeal court upheld a $290-million US judgment against Microsoft in the patent battle launched by Canadian company i4i Inc.  The injunction comes into effect in January to stop sales of Microsoft Word software which infringes i4i’s software patent for XML editing. Microsoft claims it is reviewing its legal options.

Calgary - 09:00 MST

Way back in 1998 - almost prehistoric when it comes to technology - a US inventor registered a design patent for “Computer display with an iPhone window” in a prescient move that saw a device with email, telephone, internet services all arranged by handy icons in a rectangular screen called an “iPhone”.  Sound familiar?  Check it out.

The inventor, Joseph Giordano, sold the invention to InfoGear Technology Corp., which was acquired by Cisco in 2000, and Cisco famously locked horns with Apple in January 2007 when Apple’s iPhone was launched.  The rest, of course, is history.  The good news is that if someone on your gift list is clamouring for an iPhone, you can always get them one of these if you can’t afford the latest 3GS.

Calgary - 09:00 MST

The irony of this one won’t be lost on consumers.  After years of lecturing and lawsuits by the recording industry about the sins of copyright infringement, the tables are turned in this class-action lawsuit. 

The estate of jazz musician Chet Baker has sued the major record labels - Sony BMG Music, EMI Music, Universal and Warner Music - for copyright infringement claims that, if proven, may add up to significant damages. [Link to story and PDF of the claim] The claim alleges that the record industry has a backlog list of hundreds of thousands of songs which were published but for which copyright royalties were never negotiated or paid.  Using the metrics of statutory damages, each instance of infringement may attract a flat $20,000 liability for the recording industry, which means 300,000 songs create a potential $6 billion damage award.

This one will be closely watched in 2010.

Calgary - 10:00 MST

A few trade-mark stories are worth noting:  Trade-mark Opposition is a process where one brand owner can oppose the trade-mark application of another. Take these two recent examples which illustrate why you need good advice when arguing your case before the Trade-marks Opposition Board (TMOB):

• PIZZA SPOT vs WHITE SPOT: the owners of the well-known White Spot chain of restaurants opposed the application for the mark PIZZA SPOT for restaurant services, citing its family of 17 registered WHITE SPOT marks; the TMOB decided that PIZZA SPOT would not be confusing with WHITE SPOT for identical services; there is a low degree of distinctiveness for the word SPOT, and so the mark PIZZA SPOT was permitted to proceed (White Spot Limited v. Mazzaruss Inc., 76 C.P.R. (4th) 385 (T.M.O.B.));
• SEA MILES vs AIR MILES: what appears to be a similar case resulted in the opposite conclusion. The owners of the AIR MILES brand challenged the application for the trade-mark SEA MILES for identical services (travel rewards programs). The AIR MILES owner cited its family of 27 registered AIR MILES marks.  The TMOB concluded there is a high degree of resemblance between the marks, and refused the application for SEA MILES (Air Miles International Trading B.V. v. Sea Miles LLC, 76 C.P.R. (4th) 369 (T.M.O.B.)).

Why the difference? In making their arguments, AIR MILES submitted substantial evidence of use and advertising, and built up their case for their family of “MILES” marks.  In the WHITE SPOT case, the evidence wasn’t clear that there was a family of “SPOT” marks, though evidence was tendered to support the use and advertising of the WHITE SPOT mark.    

An update to our post on the The Great Olympic Sweater Debate: the Cowichan Tribes have reached a settlement with VANOC in a licensing deal that permits sales of genuine Cowichan sweaters in Vancouver alongside the Olympic brand. Although the Cowichan band likely did not have an arguable case under intellectual property law, they did have a good argument in the court of public relations.  A quick resolution attests to VANOC’s desire to avoid negative headlines in the run-up to the games. 

Calgary - 09:00 MST

The US Patent and Trademark Office (USPTO) has announced a pilot project to provide accelerated examination of certain clean technology (cleantech) patent applications. The program is aimed at “green technology” though so far there are no details on what inventions will qualify. The current wait-time for a patent application is roughly 2.5 years just to get to a first office action, and over 3 years to obtain a final decision.

Now that the US has joined the UK, South Korea and Australia, the question of Canada’s response becomes more pressing. When will Canada adopt a fast track for cleantech patents?

Click here for the PDF of: Tips and Trends in CleanTech Licensing.

Related Reading: More CleanTech articles on ipblog.ca 

Calgary - 09:45

An organization has collected a wealth of online data including names, addresses, prices, photos, specifications, geo-location data, text, links and more.  Can you access their system, scrape the data and then repackage it for your own business?

In this case, the answer is no. An Ontario court has again shut down a data-mining operation in Toronto, where real estate broker Fraser Beach attempted to scrape and redisplay MLS data. The court dismissed Mr. Beach’s request to open up the MLS data.

The latest decision follows a similar battle in 2007, where an Ontario company (operated by the same realtor) asked the court to compel MLS to share its data. In Realtysellers (Ontario) Limited v. Toronto Real Estate Board, 2007 CanLII 50283 (ON S.C.), the court turned down this request, citing the MLS “Authorized User Agreement” which prohibits the kind of wholesale, unrestricted data mining that was the cause of the dispute.  The terms of the user agreement were instrumental in the court’s decision in both cases.

Get advice on how to protect your online data through the use of copyright and properly drafted online access agreements.

Calgary - 10:45 MST

Earlier this year, iPhone app developer Zynga Game Network Inc. sued rival game-maker Playdom Inc. and a number of ex-employees in California state court. Among the causes of action were: misappropriation of trade secrets, breach of contract, breach of the duty of loyalty, tortious interference with contracts and unfair competition. Zynga alleges that Playdom hired away four key employees who allegedly took with them key information and planning documents when they left Zynga, including “The Zynga Playbook”, a document which would contain valuable trade secret information in the fiercely competitive app industry. The court granted an initial request for a temporary restraining order against Playdom and the other defendants. Those defendants are prohibited from destroying any of the files allegedly misappropriated. (To see the court documents, link here.)

Under Canadian law, the misappropriation of trade secrets has been scrutinized in several high-profile cases, including the RBC v. Merrill Lynch case, where virtually all of the investment advisors at an RBC branch joined competitor Merrill Lynch.  The law is clear that departing employees owe a duty of “good faith” to their employer, and can also owe a  “fiduciary” duty - a special category which applies to employees such as senior managers, executives, directors and officers.  In the RBC case, the departing employees were not fiduciaries, and had the legal right to leave RBC and to compete with their former employer. But note that employees owing a fiduciary duty will be held to a higher standard.

The lessons for business? Ensure your standard employment agreements contain appropriate non-competition and confidentiality clauses to prevent unfair competition and improper use of confidential information.
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