Does a US judge have jurisdiction over a website operated in Canada?  The answer is found in a recent US court decision involving a Canadian website operator  (Columbia Pictures Industries Inc. v. Fung ). 

In that case, the Motion Pictures Association of America sued Gary Fung, operator of IsoHunt (a popular BitTorrent site). Mr. Fung’s web sites were all hosted in Canada but the US court had no trouble establishing it could extend its ruling to cover Mr. Fung and his activities. The MPAA convinced the court that infringement had taken place within the US.  From there, it wasn’t a leap to tag Mr. Fung with liability under the US theories of “inducement, material contribution, and vicarious infringement”, even though Mr. Fung’s conduct occurred outside the US.

The court said that “United States copyright law does not require that both parties be located in the United States. … Plaintiffs need only show that United States users either uploaded or downloaded copyrighted works; Plaintiffs need not show that a particular file was both uploaded and downloaded entirely within the United States.”

Last year, Mr. Fung, through his company isoHunt Web Technologies Inc., attempted to launch a pre-emptive strike against the recording industry by seeking a declaration that its operations did not violate the Copyright Act.  No final ruling has been issued in that case.

Related Reading: Canadian P2P Copyright Battle Continues

Calgary - 09:00 MST

A game developer incorporates martial arts moves into a new video game. Is the choreography of those moves protectable by copyright?   The answer is, apparently, yes. 

The 1997 decision in Ahn v. Midway Manufacturing Co., 965 F. Supp. 1134 (N.D. Ill. 1997) decided that under US law, certain martial arts routines fell within the subject matter of copyright.  In that case, a software developer hired dancers to create moves which were later incorporated into the well-known game “Mortal Kombat”. A dispute arose about the ownership of the routines, but the dancers had assigned their rights to the software developer under a written contract, so they could not maintain a claim for joint ownership.  The 2005 US decision in Open Source Yoga Unity v. Choudhury, 2005 WL 756558 (N.D. Cal. Apr. 1, 2005) suggests that yoga moves can be eligible for copyright protection.

Does this apply in Canada as well?  Yes, in Pastor v. Chen, 2002 BCPC 169 (CanLII), the court reviewed a dispute about dance routines, and decided that the “uniquely choreographed moves and dance styles” were properly covered by copyright.  Game developers should take care to get advice whenever incorporating choreographed elements into their applications.  And the next time you’re on the dance floor, just be sure not to infringe the copyright in anyone’s new dance moves.

Calgary - 09:00 MST

Copyright protects a range of creative works - photographs, images, software, books and music, to name a few.  And copyright law is considered to be “territorial” - this means that Canadian copyright law deals with protection and enforcement within Canada.  So what happens when works are published online, or transferred across borders?  Do the traditional territorial concepts break down in an environment where borders are technologically nonexistent?

Two recent cases illustrate how the law adapts to these issues: 

1. In Moberg v. 33T LLC et al., 2009 WL 3182606 (D. N.J. Oct. 6, 2009), a US court considered the publication of images online in Germany. The case turned on a technicality of whether a work published on a website in Germany (or anywhere outside the US) should be considered for legal purposes to have been simultaneously published in the US. The court decided that the images were not “United States works” leaving the author free to make a copyright infringement claim in the US, without first registering copyright in the US.  This helps clarify the rights of Canadian authors who may wish to sue in the US, even though copyright in their works is not registered there.
2. The Canadian decision in Thumbnail Creative Group Inc. v. Blu, 2009 BCSC 1833 (CanLII) dealt with a transfer of images across the Canada / US border. In this case, a BC company alleged that certain Canadian defendants provided images to the US defendants in violation of the author’s copyright and moral rights.  The court analyzed the situation and found that if copyright infringement occurred anywhere, it was in the US, not Canada. Since Canadian copyright law is territorial, it cannot be infringed by any act which occurs outside Canada. The court dismissed the claim, indicating that a US court was more appropriate to decide the matter.

Calgary - 14:00 MST 

Calling all small business owners. Remember that nagging feeling that you should get a handle on your brands and trade-marks? Here’s a local cautionary tale that illustrates why trade-marks are critical for small business. A popular chain of Calgary eateries has been trading under the name NELLIE’S for years.  Last month, the 5-restaurant chain was cited for highly publicized health code violations.  The problem?  Another local eatery, also trading under the name NELLIE’S, but independently owned and operated, is now caught up in the bad press, even though it had no violations.    

Lessons for business?  There are many reasons to protect your brand, and this is just one of them.  A unique, distinctive brand that sets you apart from the competition, will help avoid “guilt by association” and will help your business become stronger and more valuable.  Contact us to review options and strategies for trade-mark protection.

Calgary - 09:00 MST

Even Google can’t win them all.  In a recent domain name arbitration decision, Google Inc. v 207 Media, a small Canadian company has prevailed against a challenge by almighty Google Inc.  Google objected to the registration of the domain name GROOVLE.COM, claiming that it was too close to Google’s own famous brand name.  In a domain name arbitration, a complainant must prove 3 things:

(1)   the domain name is identical or confusingly similar to the complainant’s trademark ;
(2)   the person who registered the domain name has no rights or legitimate interests in respect of the domain name; and
(3)   the domain name has been registered and is being used in bad faith.

In this case, the arbitrator decided that Google failed on the first count. GROOVLE was found to be not confusingly similar to Google’s trade-mark. This follows an earlier decision where Google challenged the domain name FROOGLES.COM and lost (Google, Inc. v. Wolfe, FA 275419 (Nat. Arb. Forum, July 18, 2004)).

The real dispute was not so much the similarity of the names (Google has better things to do than chase every single misspelled variation of its domain name).  It was rather the use by Groovle of Google’s Custom Search Engine program.  This program permits users to embed a Google search box into their own site; Groovle took this one step further and permitted users to essentially customize their own search page, using Google’s engine, but displaying Groovle’s brand.

Calgary 10:00 MST