American computer giant Dell Inc. has launched a challenge against Canadian computer maker Psion Teklogix Inc. and its ownership of the trade-mark NETBOOK.  Psion registered the mark NETBOOK in both Canada and the US in 2000 (based on its original application filed in 1996), and now Dell is challenging that registration.  Lawyers for Dell argue that Psion has abandoned the mark by failing to use it in connection with laptops, or alternatively, they argue that the mark is generic and therefore not eligible to function as a trade-mark, since “the primary significance of the term to the relevant public is as the name for small and inexpensive laptop computers.”  Psion has an uphill battle since competitors are using the mark in a generic way, and are even filing trade-mark applications, including for COBY NETBOOK, WIND NETBOOK and G NETBOOK for personal computers, all of which erode the distinctiveness of NETBOOK as a mark that identifies Psion. To protect this mark the owner will have to fight off Dell’s challenge, oppose the multiple trade-mark applications by competitors, then go out and sue infringers across the industry. 

A good example of a once-unique mark that has fallen into a “dead zone” which makes it expensive to salvage.  The lesson for brand owners is two-fold: use-it-or-lose-it, and fiercely defend at the first sign of infringement.

Related reading: Generic Domain Names in Canada  and Update: Generic Trade-marks  

Calgary - 10:30 MST

UPS has a label-printing and shipment-tracking software program that is installed on a customer’s computer. So what happens when the UPS technician (rather than the customer’s own employee) installs the software, scrolls past the license agreement, and clicks “I accept”?

This situation was reviewed in the recent case of Via Viente Taiwan, L.P. v. United Parcel Service, Inc., 2009 WL 398729 (E.D. Tex. February 17, 2009).  When UPS was sued in Texas, it tried to deflect the lawsuit to the State of Georgia, the forum selected in the license agreement.  The customer argued that the license agreement was not binding because it was the UPS employee who clicked through, and the customer never actually agreed to the terms. The court upheld the agreement (and the forum-selection clause) because the customer should have been aware that the license agreement was part of the deal when it signed the general UPS Carrier Agreement that required the use of the software. Secondly, the court reasoned that the UPS technician likely would have been supervised by Via Viente employees during the software installation. Lastly, the customer had enjoyed the benefit of the agreement - including the UPS shipping services and the use of the software - so it wouldn’t have been fair to permit it to “pick and choose” and avoid the terms of the license agreement. The lawsuit was transferred to the Northern District of Georgia.

Calgary - 10:00 MST

A few weeks ago, Facebook attempted to revise its Terms of Service - the online contract that governs the relationship with Facebook users.  Revising a contract can be tricky at the best of times, let alone an online contract with 175 million users from around the world. 

When word leaked that someone had actually read the fine print, and the fine print extended Facebook’s rights to user content, there was a groundswell of protest, and a quick retreat by Facebook.  Yesterday the company reverted to its old Terms of Service, and users claimed victory.  However, the fine print, even in the old Terms of Service, still permits Facebook to use your photos, profiles (including name, image, and likeness), messages, notes, text, information etc. “for any purpose, commercial, advertising, or otherwise, on or in connection with the Site or the promotion thereof...”  This expires when you remove your content, but millions of users have still granted Facebook extremely broad rights to their personal information and images, so it is interesting that these terms are being considered a triumph. (What was that one about the frog in boiling water?)

Under Canadian and US law, a company must be very careful to ensure that amendments to online contracts are enforceable (see: Online Contract Amendment Not Binding).

Calgary - 10:35 MST

The Canadian Intellectual Property Office has announced that the Trade-marks Opposition Board will be changing its practice, effective March 31, 2009, pursuant to the new Practice in Trade-mark Opposition Proceedings. Here’s a summary of the changes:

• The new practice will simplify the procedure and time-lines for granting extensions of time, and will clarify when extensions of time can be granted in exceptional circumstances.
• Parties will be encouraged to mediate and settle disputes early in the process, including through the use of a “cooling-off” period.
• A new practice is introduced for scheduling hearings.

Calgary - 14:30 MST

In January, the federal Privacy Commissioner released Guidelines for Processing Personal Data Across Borders (PDF Copy of Guidelines). These guidelines set out the Commissioner’s view of how the Federal Personal Information Protection and Electronic Documents Act (PIPEDA) will be applied to transfers of personal information across borders. It’s worth noting that the document does not review obligations for public sector entities.  Transborder transfers of personal data would include transfers across provincial as well as national boundaries since PIPEDA does not distinguish between domestic and international transfers of data.  So if your organization is outsourcing data handling to a service provider in another province or another country, these guidelines will be applicable.

Calgary - 10:30 MST

The Government has issued a Request For Information on open source software to assist it in developing guidelines related to the “planning, acquisition, use and disposal of No Charge Licensed Software (NCLS).”  The term NCLS is apparently intended to include all forms of software which is available without charge - from “true” open source software, freeware, shareware, to free proporietary downloads such as Adobe readers, iTunes, Google toolbars, etc.  The RFI closes February 19, 2009.

This obviously reflects the growing use of open source software within the public sector, and the need for consistent guidelines.  The guidelines, once developed, will likely be of interest to both public sector and private sector organizations.

Calgary -  09:30 MST

In a recent story that made national newspapers here, it was suggested that McGill University’s new advertising campaign had somehow stepped on the toes of American Larry Smith, editor of an online magazine.  Mr. Smith raised an allegation that somehow the idea of a six-word summary was protectable under intellectual property laws - trade-marks, or copyright, or something.  Such an idea is certainly not protectable, so McGill has nothing to worry about and Mr. Smith is off-base. 

Calgary - 15:00 MST

The Eastern District of Texas has gained notoriety as a magnet for patent lawsuits.  Plaintiffs will commence lawsuits there with the hope that pro-patent-owner juries will be convinced to decide the case in favour of the patent owner and award significant damages.  The district also has a reputation for moving patent cases along efficiently, which can benefit a well-prepared plaintiff.

The Fifth Circuit Federal Court of Appeals issued its decision in the case of Re TS Tech USA Corp. a few weeks ago, and agreed to transfer a case from the Eastern District of Texas to the Southern District of Ohio, on the basis that the lawsuit had more of a connection to Ohio than Texas.  This could trigger transfers of other patent lawsuits that do not have the required level of connection to Texas. Defendants TS Tech USA Corp, TS Tech North America, Inc. are based in Ohio and the Plaintiff Lear Corporation is a Delaware corporation based in Michigan.

In earlier posts ( Welcome to Texas: Keep Your Powder Dry ; Patent Infringement Update ), we noted cases involving Canadian companies caught up in patent lawsuits commenced in Texas.  The case of Re TS Tech USA Corp. also dealt with a Canadian defenant, auto-parts manufacturer TS Tech Canada, Inc., based in Ontario.  The TS Tech decision is one more strategic tool for Canadian defendants to challenge jurisdiction.

Calgary - 10:00 MST