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In the copyright and patent infringement lawsuit between Oracle and Google (we posted on the copyright aspects here: Copyright Protection for APIs and SDKs and APIs: Do they have copyright protection?), a decision was reached last week by the jury on the patent side of the claim. The jury has determined that Google did not infringe the two patents that Oracle held for its Java system. This leaves the Oracle case in tatters, with no real prospect of meaningful damages, even in light of an earlier finding that Google infringed Oracle’s copyright in the Java APIs. The copyright side of the claim is still muddled - the judge has not yet decided the issue of whether APIs can be the subject of copyright protection, and the jury failed to agree on whether Google had a “fair use” defence to the copyright infringement that did take place… assuming that APIs can enjoy copyright that is capable of being infringed.

Still with me? We might expect some clarity on the copyright issue if the judge issues a determination on copyrightability. What’s more likely is that the patent decision is appealed and the copyright decision is sent back down for a retrial, leaving the entire issue unresolved.

Calgary - 07:00 MDT

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Join the Field Law IP & Technology Group for a breakfast seminar on June 6, 2012, in Nisku, Alberta, on the following subjects:

• patents for oilfield service companies;
• intellectual property issues;
• non-disclosure and confidential information in the oil patch;
• copyright and trade-marks, brand protection.

Registration details: RSVP to rsvpEdmonton@fieldlaw.com or (403) 260-8502.

Calgary - 10:30 MDT

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This month marks the 25th year of operations for the .CA domain, Canada’s country-code top-level domain (ccTLD). It was originally allocated to John Demco, an employee of UBC, who operated the domain on a volunteer basis between 1987 and 2000, when it was formally transferred to CIRA (the Canadian Internet Registration Authority). I still recall the days when the mentality around domain name disputes was quite simple - someone knew someone who knew Jon Postel, who could simply reallocate the nameservers. Today, .CA disputes are resolved through formal arbitration under the CDRP - the CIRA Domain Name Dispute Resolution Policy, version 1.3 which came into effect August 22, 2011. A few recent decisions:

• Transfer Granted: In Oakley Inc. v. Zhou Yayang, the famous manufacturer of sunglasses and sportswear claimed rights in the domain name DISCOUNT-OAKLEYSUNGLASSES-SALE.CA. This case was a classic “squatter” case which featured a registrant who filed no defence. Evidence that the domain was being used to sell Oakley products outside of Oakley’s distribution chain. A long line of decisions was cited to support Oakley’s win, and the domain name was ordered to be transferred.
• Claim Dismissed: In Ebates Canada Inc. v. Cranhill & Co., there was a dispute about the EBATES.CA domain name. Ebates Canada claimed that it was the exclusive Canadian licensee of the trade-mark EBATES, a mark which is the subject of two competing trade-mark applications in the Canadian trade-marks office. Cranhill, the registrant, argued that it enjoyed earlier use of the name EBATES dating back to 1994 and had rights in 2000, the year the domain name was registered. In deciding to dismiss the complaint, the panelists noted that the claimant Ebates Canada Inc. was not incorporated until 2011. It did not exist in 2000 and could not have had any rights at the time the domain name was registered.

What’s the overall chance of success? If recent statistics are any guide, decisions are most often rendered in favour of applicants. There have been 51 decisions in 2010, 2011 and 2012 (to date) and of those decisions, roughly 80% of decisions have resulted in a transfer; in about 20% of the cases, the claim was dismissed. That may reflect the fact that applicants will only pursue a remedy through the CDRP when they have a strong case. In about 64% of the cases, a single arbitrator was used, as opposed to a panel of 3 decison-makers. Interestingly, of the cases in which the claim was dismissed, the majority (72%) were decided by a 3-member panel.

Calgary - 07:00 MDT

As a follow-up to our earlier article (SDKs and APIs: Do they have copyright protection?), the jury in the Oracle v. Google lawsuit issued a decision last week that Google’s Android software infringed copyright in the overall structure, sequence and organization of Oracle’s Java code. However, the jury failed to return a decision on Google’s “fair use” defence. Oracle’s main complaint was that Google’s Android software used Java code - in particular, 37 Java APIs (application programming interfaces) - that was not properly licensed from Oracle. Google has maintained that the use of any Java APIs in Android is protected by a “fair use” defence.

You’d think a jury decision would be a step forward. However, the issue of copyright protection of APIs remains unsettled, since the jury merely assumed copyright protection for the purposes of this issue, without a clear decision by the court on that point. The failure to decide on the “fair use” defence also leaves the issue open. The jury was deadlocked on that question, potentially leading to a mistrial. Indeed, Google filed for a new trial last week.

This jury decision is really just a way-station on the road… a very long road. The next phase of the lawsuit will deal with Oracle’s patent infringement claims; which will be followed by a further hearing to determine any damages. Stay tuned.

Related Reading: Copyrightability of Java APIs would be consistent with law and practice, not a ’substantial departure’ for industry (FOSS Patents)

Calgary - 07:00

You may recall our earlier posts describing the gTLD process (see: The New gTLDs: Who, What and When). 

ICANN’s process introduces new generic Top-Level-Domains (or gTLDs), expanding the domain name system from the current familar strings such as .com, .net and .ca, etc. to who knows what… .flowers, .lawyers or .anything. The application period was due to close on April 12, 2012. May 1, 2012 was slated as “Reveal Day”, when the applicants and their proposed TLDs were to be published. So far, some 2,091 applications along with USD$350 million in application fees have been submitted to ICANN. The May 1st deadline has passed without the publication of the application information, because ICANN has suffered a “software glitch” which must be resolved before the application period can be reopened and finalized.  

Once that is complete, ICANN will publish the names of applicants and their proposed TLDs. This triggers a seven-month objection period, during which rightsholders can file a complaint. A recent article from Managing Intellectual Property reports that the “Trademark Clearinghouse” is also behind schedule.

Even if half of the applications are approved, that means the introduction of a thousand new generic Top-Level-Domains. Trade-mark owners, brace yourselves.

Related reading: Lawyers Weekly: Domain Name Article

Calgary - 07:00 MDT

Virtual desktops running on the cloud (Desktop-as-a-Service or DaaS, if you need another acronym) have delivered desktop-style computing to mobile devices such as iPads and Android tablets. This is a way to remotely access the full functionality of a desktop (such as track-changes in MS Word, which is currently impossible on an iPad). This is the subject of a recent spat between OnLive, tuCloud and Microsoft. This dispute - a dramatic one in which tuCloud openly dared Microsoft to sue it - has focussed attention on the fine-print in Microsoft’s licensing regime under its Service Provider License Agreement. In a broader sense, it impacts any virtualization. When can a licensee of software deliver virtual access to multiple instances of that software, and how does the software vendor control such access? 

This dispute is one which will be watched closely as it develops. Software vendors should review their terms and their licensing models to ensure that they have contractual terms that match the current virtualization risks and opportunities that come with DaaS. 

For a related event, please join us for “Software Licensing: The Good, The Bad, and The Virtual“ on May 31, 2012.

Calgary - 14:00 MDT