In our earlier post we wrote about the domain kiting and domain tasting.  Other common tricks, such as Network Solutions’ practice of “front-running” (using customer search strings to pre-emptively register domain names before customers can get them), reflect the growing competitiveness in the domain name industry.

One more thing to watch for: a number of outfits such as AsiaDNR, or China Net Technology Limited, are sending “helpful” notices to Canadian domain name owners.  These notices appear to be from an official Asian registry and purport to notify owners that they are providing a service to protect the owner’s rights because someone else is trying to register “example.cn”, “example.hk”, “example.asia” … and ten other variations.  It’s just one more form of spam.

This practice is not new, but seems to be more common in the past six months.  It is best to ignore these notices.  I don’t know of any legitimate registrars who provide this kind of “helpful” service.  Decide whether any of the variations are of use to your business.  If you are a local operation with no plans to expand into Asia, then none of the Asian top-level domains will make sense for your company from a business perspective.  Even if you decide you need an Asian domain name presence, go through a legitimate registrar, such as AsiaDNS or Webnames.

Calgary - 14:01 MST

In Canada, what is the liability of online service providers – so-called “interactive computer services” —  including Craigslist, Yahoo Groups or Facebook?

The US Court of Appeals decison last week in the case of Chicago Lawyers’ Committee for Civil Rights Under Law v. Craigslist, Inc., 2008 WL 681168 (7th Cir. March 14, 2008) highlights the US approach: under Section 230 of the Communications Decency Act, providers of an “interactive computer service” who publish information provided by others can obtain immunity from liability.  In the Craigslist decision, the popular site was sued on the basis of discriminatory rental listings which were posted on the site.  The court decided that Section 230 immunity protected Craigslist from liability for those postings.

In Canada, the law is still unclear. Courts have touched on this issue.  The Canadian decision in Society of Composers, Authors and Music Publishers of Canada v. Canadian Assn. of Internet Providers (C.A.), 2002 FCA 166 (CanLII) dealt with copyright online and commented that: “…operators of host servers and Internet access providers do not effectively control the content of what is transmitted …their role is passive and that their activities usually consist only of the provision of the means of telecommunication.” 

We previously reviewed the decision in Crookes v. Yahoo, 2007 BCSC 1325 (CanLII), which dealt with alleged defamatory postings on a Yahoo site.  Although the case was decided on other grounds, the court observed that: “Yahoo did not author the postings.  Yahoo is joined in this action on the basis that it provided the means by which the defamatory material was published and it failed to remove the postings.”  This is precisely the area that requires clarity, and we’re waiting for a decision to tackle this issue head-on. 

Calgary - 10:50 MST

You win some, you lose some.

An injunction is essentially a court order which prevents a company from doing something, such as using a trade-mark or a patent.  It can be a very useful tool in intellectual property litigation.  However, as we’ve reviewed in other cases, the test in Canada for obtaining - and maintaining - an injunction is not easy to meet.  The test derives from the Supreme Court decision in RJR-Macdonald Inc. v. Canada (A-G), 1994 CanLII 117 (S.C.C.) .  Two recent Canadian cases illustrate this - one win and one loss:

• Trade-Mark Case: In a recent decision out of Manitoba, the Court decided that the Plaintiffs in Marlborough Hotel Corporation et al. v. First Canadian Hotels & Entertainment Ltd. et al. were entitled to an interlocutory injuction in a battle over the use of the “Skyview Ballroom” mark for hotel services.
• Patent Case: In the recent Alberta decision in Core Laboratories Canada Ltd. v. Lonkar Services Ltd., 2008 ABCA 76 (CanLII), the Court of Appeal overturned an injunction granted by the lower court.  At the lower court, the judge had granted an interim injunction prohibiting the appellants from marketing and providing services which include the use of a gamma ray spectral memory tool. On appeal, the court decided the test had not been met.

Calgary - 10:45 MST

To update our earlier post , the owner of the trade-mark CHEAP TICKETS lost at the Federal Court of Appeal in the decision in Cheaptickets and Travel Inc. v. Emall.ca Inc. et al., 2008 FCA 50. The expungement order was upheld.

The court agreed with Emall that the marks were generic and “clearly descriptive” when used in association with travel agency and ticket agency services.

Calgary - 13:00 MST 

A photographer is hired to do some work on an ad campaign.  If the photographer’s bill is never paid, and the photographs are used, is it copyright infringement? 

The Copyright Act makes it clear that copyright would belong to the person who ordered the photographs.  But that only applies if the photographer is paid - no money, no copyright.  The recent Alberta decision in Don Hammond Photography Ltd. v. The Consignment Studio Inc., 2008 ABPC 9 might be the first time a court has considered those particular sections of the Act.  In that decision, the court was clear that copyright was infringed when the photographs were used without payment of the photographer’s invoice, and that statutory damages were appropriate in the circumstances.  The lessons for business? 

• Pay your photographers;
• When engaging an ad agency, website designer or other graphic designer, determine who is responsible for payment of photographers and other sub-contractors; and
• Remember this doesn’t just apply to an ad campaign. The same principle applies to images used in any corporate media - websites, annual report packages, brochures, and newsletters.

Calgary -  10:30 MST

A promising Canadian company is hit with a dubious software patent owned by a US competitor. The Canadian company is based in Ontario; the US patent-holder is headquartered in Washington, DC.  But the lawsuit takes place in the infamous Eastern District of Texas: the plaintiff-friendly outback of patent infringement litigation.  

Without commenting on the merits of the case, the recent decision in Blackboard Inc. vs. Desire2Learn Inc. illustrates the perils for Canadian businesses of facing a patent lawsuit in the US. The Canadian company lost last week and is now reviewing its options to appeal the $3.1 million ruling.  The lessons for business?

• defensive patents may provide leverage for settlement or cross-licensing; 
• a successful challenge to the vailidity of the plaintiff’s patent will deep-six the patent infringement claim; developments in US law are bringing clarity to the patentability of software and business-methods and the grounds for challenging such patents (See: Business Method Patents Under Review);
• experienced patent litigation lawyers will review other options, including interim injunction orders which, if successful, can effectively put the defendant out of business.

Meanwhile, draft US patent reform legislation attempts to control forum-shopping, and may force litigants to commence their lawsuits in jurisdictions which are more closely connected to their headquarters or their actual place of business. In other words, Washington-based Blackboard Inc. would have to sue in Washington.  What a thought.  Until then, the patent battles will continue in Texas, and Canadian companies will have to keep their powder dry. 

Calgary - 9:45 MST