Last night I had the opportunity to hear Don Tapscott speak about his book Wikinomics and the Web 2.0 phenomenon. Yes, I’m sure the term Web 2.0 will eventually be like “Y2K” or “Information Superhighway” — a term which dates those who use it and places them on the historical continuum of the internet’s evolution. However, for the moment it is a term which captures a certain approach to technology’s possibilities. It’s not new by the internet’s standards. The term was coined in 2004 and has been percolating since then, gaining momentum as a way to define the collaborative and community-based development of internet-related technologies. To think of the internet or the Web as one technology among many is itself a bit contrary to the spirit of Web 2.0 — the internet is becoming seamless with the use of other tools, all of which interact and are interacted with, to the point where it’s not clear where one leaves off and the next picks up.

This brings me to the idea of the practice of law: Web 2.0 for lawyers? Lawyers have been described (by one of their own) as a “medieval guild“; in other words, a conservative profession which is resistant to change. That’s not exactly a revolutionary statement. The question is whether you can teach old lawyers new tricks. The legal bankruptcy of the RIAA’s efforts to sue its own customers into compliance is one obvious example where the old thinking about intellectual property rights has to give way. I have two thoughts on this: first, yes I believe lawyers can and will change the way they do business, particularly as their clients demand it. Lawyers all over the country are already showing signs of change: blogs, RSS feeds, podcasts, wikis and client intranets. There’s no shortage of legal information and content. The lawyer’s role will be not only to change the way information is disseminated, but also to continue doing what they do now: provide analysis, recommendations and advice to place that information in context and help clients order their affairs and manage risks. Secondly, the growth and development of Web 2.0 will continue to depend on the underlying foundation provided by intellectual property rights and contract law. Even open sourcing and crowdsourcing depend on copyright law and contract law to function and flourish.

Let me illustrate it this way: health information is more open and available than ever before and patients are no longer passive recipients of health care services: but when you need surgery, all the health information, wikis and blogs won’t replace the role of an experienced surgeon. Some things you don’t leave to the collaborative community.

Calgary - 15:49 MST

Apple and Cisco announced yesterday that they have inked a Settlement Agreement on the use of the iPhone trademark.  Under the agreement, both companies are free to use the iPhone trademark on their products throughout the world.  Pending lawsuits will be dismissed. 

For the two companies to use the same trademark in the same channel of trade and still maintain distinctiveness for the purposes of trademark law they will have to tread carefully: Cisco could license the use of the trademark to Apple, or Apple could license it to Cisco or they could set up a separate holding company to own the trademark and license it out to both companies.  Financial details are confidential, so we can only speculate about the price Apple had to pay for coming late to this trademark game.

Calgary - 15:46 MST

In an earlier post we answered some common questions about trade-marks. Here are a few more practical issues about usage guidelines:

Q: What are “trade-mark usage guidelines”?

A: A set of “trade-mark usage guidelines” is like a rule-book on how a trade-mark should be used and displayed. These guidelines are designed to guide those who might not otherwise know (or care about) the specifics of how the trade-mark should appear. Guidelines of this type might specify the type of font, the particular colours which should be used, the size and relative position, and the placement of the trade-mark in relation to other elements on the label, or page or ad copy. They should go into enough detail to direct someone in the proper and consistent use of the trade-mark.

Q: Why are they necessary?

A: Trade-mark usage guidelines are necessary because consistency in the appearance of the trade-mark is very important to maintain the validity and strength of the mark over time. If a trade-mark changes too much over time or is inconsistent in the way it is used, it may lose distinctiveness and be open to attack by competitors. Look at the distinctive script used in the Coca-cola trademark. It has been used in the same way since the 1880s and strict guidelines ensure that the relative size, colour and shape of the script remain consistent across time and across a multitude of uses, from bottle and pop can labels to every conceivable type of spin-off merchandising.

Q: When would trade-mark usage guidelines be necessary?

A:  Trade-mark usage guidelines are necessary when others within your company, or others outside your company who are licensed to use your mark, need to reproduce the trade-mark regularly in the course of advertising, labelling, packaging or corporate communications. It is a way of setting and maintaining certain standards when you don’t have direct control over the use of the mark. Here are a few examples: In a large company, guidelines can be distributed to the marketing department, so that the person in charge of the online advertising can be reading from the same set of standards as someone producing corporate T-shirts, or someone sending instructions to an ad agency producing magazine ads or the intern designing the annual report. These are all uses that technically take place within the company or within the direct control of the company. Another trade-mark owner may have franchised its business model so that a hundred individual franchisees all use the mark for their own local advertising across the country or in different countries. Usage guidelines will ensure brand consistency across the entire franchise. Guidelines can also be useful for resellers, authorized distributors or service providers.

Q: Can you give me some tips on trade-mark usage guidelines?

A: Yes, when developing trade-mark usage guidelines, you should keep in mind several things: Who is your audience? Present your guidelines in a way that makes sense for those using the mark. It may make sense to keep the guidelines confidential within the company. It may make sense to publish guidelines on the internet, if that is the most effective way to protect the integrity of the brand. Your marketing department may simply need some basic guidance by email, with a designated “official” file attachment containing the approved form of the mark. Or, you may need a more involved explanation of trademark usage. Some companies prepare detailed guidelines that explain exactly what to do and what not to do. Also, look at what marks you are trying to control. Make sure you list and identify the marks governed by the guidelines. Some marks may not need to be covered by the guidelines. Sone marks may be old forms of the trade-mark that you wish to phase out in favour of a new colour scheme or style as part of a controlled evolution to a new brand.

For a few examples of effective trade-mark usage guidelines, see:
Sun Microsystems
Macromedia
Apple

Calgary - 00:06 MST

Cisco has agreed to temporarily suspend its litigation against Apple and talk about possible settlement of the iPhone trademark dispute. Cisco doesn’t appear to be backing down if its recent New York Times ad is any indication of its approach. In early February, Cisco took out a full-page ad for its own iPhone-branded device. Nevertheless, rumours are now circulating that a settlement with Apple is in the works. Perhaps Steve Jobs is in the mood to get along. A few weeks ago Apple arrived at another settlement with Apple Records in the decades-long dispute about their overlapping use of the Apple logo.

Calgary - 14:17 MST

It is hard to guage how proposed ISP tracking legislation will impact Canadian ISPs if the new bill is passed in the US. Certainly, Canadians who use US-based ISPs would be impacted.

The bill was introduced in the US Congress last week, and if passed, it would compel internet service providers (ISPs) to track their customers’ online activities to aid police in possible future investigations. ISPs who fail to retain the data could face fines and their employees could even face prison terms. There doesn’t seem to be any time limit on the data retention obligations, nor does there seem to be constrains on the scope of the data covered: CNET speculates that data which records details of web browsing, instant messages, or e-mail exchanges might all be fair game under the proposed law.

Calgary - 15:43 MST

As I’ve noted in past posts, privacy and internet law often overlap. In a very interesting Federal Court decision on Monday, the Privacy Commissioner of Canada has been ordered to re-open its investigation into the privacy practices of an American company. A Canadian complainant asked the Privacy Commissioner to investigate Accusearch Inc. for possible violations of the Personal Information Protection and Electronic Documents Act (PIPEDA). In 2005, the Privacy Commissioner’s office closed its file after concluding that it lacked the jurisdiction to investigate a foreign company. In coming to this decision, the Commissioner stated that “Canadian legislation will only apply to the persons, property, juridical acts and events that occur within the territorial boundaries of the enacting body’s jurisdiction.” That decision was appealed to the Federal Court, resulting in Monday’s judgement.

The Federal Court disagreed with the Commissioner and clearly stated that “PIPEDA gives the Privacy Commissioner jurisdiction to investigate complaints relating to the transborder flow of personal information.” The court also noted that absent an investigation and a corresponding report, the complainant’s avenue to an award of damages would be closed. Citing Pro Swing v. Elta, the court noted that “A money judgment may be enforced in another jurisdiction.” This is a curious observation, since Pro Swing is a Canadian decision about enforcement of a foreign judgement in Canada, and any possible order against Accusearch would involve the enforcement of a Canadian judgment in the US, a matter for a U.S. court to decide. This decision will open the door to investigations of foreign companies and will result in some interesting enforcement challenges.

Calgary - 21:28 MST

Any owner who has tried to stop copyright and trade-mark infringement can attest to the difficulty of pursuing an effective practical remedy; websites come and go, distributors of pirated software disappear and rematerialize under a different name, and servers are taken down merely to pop up in a different jurisdiction.

Microsoft Canada can chalk up a win in a recent Canadian Federal Court decision (Case name: Microsoft Corporation v. 9038-3746 Quebec Inc., 2006 FC 1509).  In the decision, the Federal court slapped a Quebec-based distributor of pirated Microsoft software with a $700,000 damage award for copyright and trade-mark infringement.  The award was based on the maximum statutory damages under the Copyright Act of $20,000 per infringement, for a total of half a million dollars, plus punitive damages of $200,000.  Cerrelli, the director of the corporate defendant was personally liable with the corporation, due to his personal involvement and knowledge of the infringement.  The total damages may not come close to Microsoft’s actual loss in sales, nor the infringer’s profits, but the number is enough to drive a point home.

This case underscores two points: there can be a practical and effective remedy for copyright infringement, with a carefully prepared case. Secondly, directors can and will be held personally liable with their corporations, when the circumstances are right.  

Calgary - 11:20 MST