E-TIPS

The Centre for Democracy & Technology (the "Centre") conducted a study seeking to determine the sources of spam. In particular, in the summer of 2002, the Centre set up hundreds of different email addresses. After waiting six months, the Centre sought to establish what kind of email those addresses received. The Centre concluded that, depending on where the email addresses were used, different volumes of spam were received and different methods were used by those sending the spam.

In an attempt to reduce piracy and on-line file-sharing, the Recording Industry Association of America ("RIAA") sent letters to 300 large U.S. companies alleging that company employees were using corporate computer networks to "illegally distribute copyrighted music on the Internet". The letter referred to specific instances where employees used corporate Internet connections to access file-sharing software like Kazaa and iMesh to download pirated songs and movies.

In Ets-Hokin v. Skyy Spirits Inc., the U.S. Court of Appeals (9th Circuit) found that the copyright protection in photographs of a vodka bottle was limited by the doctrines of merger and scenes a faire because of the narrow range of artistic expression available in the context of a photographs of commercial product such as a vodka bottle. The plaintiff had taken a series of photographs of a blue vodka bottle for use in a marketing campaign. Years later, the defendant had other photographers take more photographs of the bottle for other marketing material. The plaintiff argued that these photographs infringed the copyright in his photographs.

The Direct Marketing Association ("DMA"), in conjunction with on-line, off-line and catalogue companies, released a new study entitled, "A Current Calculation of Uncollected State Sales Tax Arising from Internet Growth". The study was based on U.S. Department of Commerce data and showed that the amount of potential sales tax lost as a result of on-line sales is about 85% less than the numbers stated in previous studies.

In the recent case of Barton No-Till Disk Inc. and Flexi-Coil Ltd. v. Dutch Industries Ltd. and The Commissioner of Patents ("Dutch Industries"), the Canadian Federal Court of Appeal allowed an appeal against a Federal trial court's decision concerning the determination of entity status for the purpose of fees relating to patents and patent applications.

In a copyright infringement suit, the U.S. Court of Appeals (7th Circuit) recently affirmed the District Court's grant of summary judgment to the defendant MetaTrans Logistics ("MetaTrans"). At issue was the copyright interest in a computer program first developed by the plaintiff, ITOFCA, which had been involved in various corporate transfers. MetaTrans claimed that it acquired copyright in the program in a bankruptcy proceeding; ITOFCA claimed that it still retained copyright in the program.

On March 19, 2003, the World Wide Web Consortium ("W3C") released a final proposed draft of its patent policy ("Proposed Policy"). The W3C is a consortium of stakeholders in the Internet and its development with the aim of establishing and promoting standards relating to the web's overall structure. Its members include commercial, educational and governmental entities.

© 2003, Deeth Williams Wall LLP. All Rights Reserved. By: Lenni Carreiro (March 19, 2003) In a 5:4 split decision, the majority of the Supreme Court of Canada recently ruled in Harvard College v. Canada (Commissioner of Patents) i that a genetically altered mouse ("the oncomouse") was not patentable subject matter. Canada is now one of the few jurisdictions which have refused to provide patent protection to the oncomouse.

In a reversal of the conclusions of two lower courts, the U.S. Supreme Court (USSC) recently held that a party's use of the mark VICTOR'S SECRET did not dilute the quality of the mark VICTORIA'S SECRET for the purpose of relief under the U.S. Federal Trademark Dilution Act (FTDA). The USSC based its decision on the requirement that actual dilution must be established by evidence, holding that there was a complete absence of evidence of any lessening of the capacity of the VICTORIA'S SECRET mark to identify and distinguish goods or services sold in Victoria's Secret stores or advertised in its catalogues.

Trade-mark counsel for Google recently sent "wordspy.com" ("Wordspy") a letter asking it to "make sure that when people use "˜Google,' they are referring to the services our company provides and not to Internet searching in general." Wordspy is an online dictionary that references newly coined words used in the media. It had defined "google" as a verb meaning "to search information on the Web, particularly using the Google search engine." In response, Wordspy added a trademark designation so that the term now appears as "Google™" to satisfy the company.

The Ontario Privacy Commissioner, Ann Cavoukian, has urged companies to review their policies and procedures for the handling and destruction of personal information records. This recommendation comes in the wake of the unintentional release of the highly sensitive health information of an Ontario woman.

Mrs. Fields Cookies and the Hershey Food Corporation have settled with the Federal Trade Commission (FTC) for the alleged violation of a Rule enacted by the FTC pursuant to the Children's Online Privacy Protection Act (Rule). This Rule prohibits operators of commercial websites from collecting personal information from children under 13 without having first obtained the verifiable consent of a parent or guardian first.

Last month, the Canadian-based Zi Corporation was granted a Chinese patent for its Chinese text input system. The patent covers a method of offering Chinese characters or partial Chinese characters, and word associations by inputting Chinese stroke or phonetic elements. This technology allows Chinese characters to be inputted into a cellular phone for instant messaging more easily.

Following David M. Rocci's guilty plea for conspiring to import, market and sell circumvention devices in December 2002, the U.S. Department of Justice recently seized the website, www.iSONEWS.com, which was a website dedicated to online copyright piracy. In particular, Mr. Rocci was involved in the marketing and sale of the "mod" chips, which were designed to circumvent copyright protections built into games consoles.

In Connecticut Department of Public Safety et al. v. Doe, the U.S. Supreme Court reversed the Second Circuit's decision that online sex offender registries violate the Due Process Clause of the U.S. Constitution. The respondent, a sex offender subject to this law, argued that under procedural due process, he and those similarly situated were denied a liberty interest where the state refused to grant them an opportunity to contest the fact that they are "currently dangerous".

Recently, Google was granted a United States Patent for a method of determining the relevance ranking of web pages found as a result of entering search queries. The grant of US Patent 6,529,903 to Google may affect other companies that are in the process of developing technology to search web pages and intelligently rank the results in relation to the queries.

A working group comprised of industry trade groups, consumer rights advocates and the governments of Canada, Alberta, Ontario and Quebec have announced the development of a voluntary Canadian Code of Practise for Consumer Protection in Electronic Commerce ("Code").

The Canadian Intellectual Property Office ("CIPO") will no longer publish a paper copy version of the Canadian Patent Office Record ("CPOR"). The CPOR will now be distributed exclusively online at CIPO's website.

In the first patent of its kind to be granted in the European Community, New York-based online claims mediation company, Cybersettle, Inc., has received a UK patent on its method for settling disputes. Cybersettle provides confidential claim settlements by matching offers and demands via a secure website. The company is also the assignee of U.S. Patent No. 6,330,551 for the "Computerized Dispute Resolution System and Method".

The United States Court of Appeal for the Sixth Circuit reversed a decision of the District Court and dissolved both preliminary injunctions preventing the defendant-appellant, Henry Mishkoff, from using a series of domain names including domain names that criticized the plaintiff-appellee, the Taubman Company.