E-TIPS

The President of the European Patent Office (EPO) has referred several questions of law to the EPO's Enlarged Board of Appeal (EBoA) in an attempt to clarify the patentability of software-based inventions.

On November 15, a private, US-based voice for online privacy appeared, The Future of Privacy Forum (FPF). Boasting an advisory board of scholars, lawyers and corporate officers of leading companies, FPF aims to ensure that "considerations around data retention, limitation and deletion are a significant part of the consumer privacy debate".

In Astral Media Radio Inc v Society of Composers, 2008 FC 1198, the Federal Court interpreted the Regulations Defining Advertising Revenues (Regulations) under the Canadian Copyright Act (Act) in order to decide whether radio stations that offered advertising services bundled with production services are required to pay royalties on the entire amount charged for the bundled services, or only for the amount attributable to advertising services.

Gary Fung, a BC resident, is the owner of www.Isohunt.com, one of the most popular web sites on the Internet. Globally, the site reportedly indexes approximately 1.5 million Torrents, totaling approximately 1 petabyte (1024 terabytes) of information. "Torrent" refers to a technology used to quickly transfer various media files, many of which are the subject of copyright. Fung has preemptively applied to the Supreme Court of British Columbia (Court), seeking a ruling whether the site is violating the Copyright Act.

In Crookes v Wikimedia Foundation Inc [2008] BCSC 1424, the British Columbia Supreme Court (Court) has held that hyper-linking to web sites with allegedly defamatory content does not amount to publication.

In Apotex Inc v Merck & Co Inc (2008 FC 1185), Justice Hughes has ruled that section 8 of the Patented Medicines (Notice of Compliance) Regulations (Regulations) is properly enabled and constitutional, but that damages ordered under this section are limited to actual losses or lost profits of the generic manufacturer, and do not extend to disgorgement of profits of the innovator manufacturer.

On October 17, 2008, American Airlines filed a complaint in the Texas Northern District Court against Yahoo alleging trade-mark infringement. American Airlines claims that Yahoo is confusing potential customers and diverting them to competitors, by selling to third parties American Airlines' marks as keywords that trigger the appearance of "sponsored links".

In a widely anticipated decision, the US Court of Appeals for the Federal Circuit (Court) has moved to clarify aspects of the patentability of business methods. In In re Bilski and Warsaw [2007 – 1130] and following an unusual en banc review by all 12 judges, by a 12-3 majority the Court upheld the decision of the USPTO Board of Patent Appeals and Interferences that a business method cannot be patented unless it is "tied to a particular machine" or unless it "transforms an article into a different state or thing".

We previously reported that Internet Corporation for Assigned Names and Numbers (ICANN) would expand the number of generic top-level domains (see E-TIPS®, "ICANN to Expand Number of Top Level Domain Name Suffixes", Vol 7, No 1, July 3, 2008).

A court in the Netherlands has convicted two teenagers for stealing a classmate's virtual items in the online game, Runescape. The court held that under Dutch law, virtual goods are still goods, and therefore stealing virtual goods amounts to theft.

Starting in August 2006, an Edmonton resident, William Grosvenor, engaged in an online campaign aimed at tarnishing the reputation and threatening the life of Ottawa human rights lawyer, Richard Warman. On October 20, 2008, Justice Ratushny of the Ontario Superior Court of Justice ended the online campaign by granting an injunction and awarding Warman $50,000 in damages for defamation and assault.

On September 23, 2008, the Ontario Government introduced Bill 100, Ideas for the Future Act, 2008 (Bill), which would allow a qualifying corporation to receive a tax exemption for the corporation’s first 10 taxation years.

In Symbian Limited v Comptroller General of Patents ([2008] EWCA Civ 1066), the English Court of Appeal has held that software inventions are patentable if they make a "technical contribution" to the state of the art.

As reported in a previous E-TIPS article ("Canadian Do-Not-Call List Overwhelmed", October 8, 2008, Volume 7, Number 8), three weeks ago the Canadian Radio-television and Telecommunications Commission (CRTC) launched a national do-not-call list (DNCL). On October 20, the CRTC announced that it will consider changes to the DNCL.

In an en banc rehearing in Egyptian Goddess v Swisa, the US Court of Appeals for the Federal Circuit has broadened the test for infringement of a design patent. Rejecting the relatively recent "point of novelty" test, the Court reviewed a long line of cases that started with a decision of the US Supreme Court in 1871, and affirmed that the appropriate test for infringement is the "ordinary observer" test.

The Supreme Court of Washington State has confirmed a finding that the dispute resolution provision of AT&T's Consumer Services Agreement was unconscionable and therefore denied a motion to compel arbitration.

Following DefCon, the largest hacker convention in the United States, Canada launched its second annual IT security convention, "SecTor". While the Canadian conference attracts a variety of people, many attendees and speakers were security professionals and well-intentioned hackers who seek out and pinpoint the internal vulnerabilities of the companies they work for.

US President Bush recently signed into law the PRO-IP Act (its full title is the Enforcement of Intellectual Property Rights Act) which strengthens federal penalties for piracy and counterfeiting, and creates a post of federal intellectual property czar, a person who would directly advise the President on domestic and international intellectual property protection. The PRO-IP Act also authorizes the seizure of any devices used in copyright piracy.

On October 15, 2008, the Canadian Radio-television and Telecommunications Commission (CRTC) announced that it will hold public hearings to better understand broadcasting in new media, particularly the distribution of broadcasting content over the Internet and mobile devices. The CRTC is seeking comments on the following issues:

The US Court of Appeals for the Federal Circuit (Court), in Broadcom Corporation v Qualcomm Inc, recently upheld a jury's determination that the defendant Qualcomm Inc (Qualcomm) infringed several patents of Broadcom Corporation (Broadcom). The Court held that it was proper for the jury to consider the lack of a legal opinion in determining whether Qualcomm had the necessary intent for indirect infringement through inducement.