US Law on Trade-mark "Fair Use" Settled by Supreme Court US Law on Trade-mark "Fair Use" Settled by Supreme Court

Trademarks
January 12, 2005January 12, 20052015-07-08
It is settled trade-mark law in the US that a defendant can assert the affirmative defense of "fair use" to avoid liability in an infringement suit. Until recently, however, it was unsettled whether this defense was available if the contested use caused confusion with the owner's trade-mark.
Deeth Williams Wall https://www.dww.com/articles/us-law-on-trademark-fair-use-settled-by-supreme-court

High Tech Continues to Infiltrate Daily Life: Two More New Developments High Tech Continues to Infiltrate Daily Life: Two More New Developments

Information Technology
January 12, 2005January 12, 20052015-07-08
Technology that seemed like science fiction only a few years ago has become part of our everyday lives. The low cost and availability of wireless networking, digital photography and global positioning system (GPS) technology has led to new and exciting applications apart from those originally conceived by their inventors. Here are two recent examples of new uses that may confront us in 2005.
Deeth Williams Wall https://www.dww.com/articles/high-tech-continues-to-infiltrate-daily-life-two-more-new-developments

Canada's "Do-not-call" Bill Introduced Canada's "Do-not-call" Bill Introduced

Telecommunications
December 22, 2004December 22, 20042015-07-08
On December 13th, 2004, the Federal Government introduced Bill C-37 which, if it becomes law, should contribute to a quieter dinner hour for many Canadian households. The Bill would amend the Telecommunications Act and authorize the Canadian Radio-television and Telecommunications Commission (CRTC) to establish, maintain and update a national and central "do-not-call list". Canadian residential telephone subscribers who choose not to receive telephone solicitation may add their names to the list.
Deeth Williams Wall https://www.dww.com/articles/canadas-donotcall-bill-introduced

CRTC Hearings Held for US Subscription Satellite Radio CRTC Hearings Held for US Subscription Satellite Radio

Telecommunications
December 22, 2004December 22, 20042015-07-08
US subscription-based satellite radio soon may be legally available in Canada. Recently, the Canadian Radio-Television and Telecommunications Commission (CRTC) heard applications from Canadian Satellite Radio and Sirius Canada (a joint venture of Sirius Radio, Standard Radio and the Canadian Broadcasting Corporation) for licences to provide US subscription-based satellite radio service in Canada.
Deeth Williams Wall https://www.dww.com/articles/crtc-hearings-held-for-us-subscription-satellite-radio

Bill C-29 Addresses Small Entity Top-Up Payments, Senate Consultation on JCPA Committee Members Bill C-29 Addresses Small Entity Top-Up Payments, Senate Consultation on JCPA Committee Members

Intellectual Property
December 22, 2004December 22, 20042015-07-08
Bill C-29, An Act to Amend the Patent Act, was introduced in Parliament in Canada on December 3, 2004. The Bill addresses two technical issues. First, the Bill amends the Canadian Patent Act in response to fallout from the Dutch Industries decision reported previously in E-TIPSâ„¢ (Vol 2, No 15, January 8, 2004). In that decision, it was decided that the Commissioner of Patents had no discretion to accept top-up payments to correct underpaid patent maintenance fees from small entity to large entity. The Patent Act provides for reduced patent fees for certain applicants who qualify as "small entities". However, a potential for underpayment arises if a small entity applicant later becomes a large entity.
Deeth Williams Wall https://www.dww.com/articles/bill-c29-addresses-small-entity-topup-payments-senate-consultation-on-jcpa-committee

CIPO Introduces Updated Industrial Design Office Practices CIPO Introduces Updated Industrial Design Office Practices

Industrial Designs
December 22, 2004December 22, 20042015-07-08
The Canadian Intellectual Property Office (CIPO) introduced significant changes to its Industrial Design Office Practices on November 12, 2004. CIPO indicated that the changes have been made in conjunction with a stakeholder group, the Partnership Committee on Industrial Design, and were developed in order to simplify the application process and improve response times and volume.
Deeth Williams Wall https://www.dww.com/articles/cipo-introduces-updated-industrial-design-office-practices

Health Canada Publishes Summary Report on Canadian Pharmacy Compliance Inspections Health Canada Publishes Summary Report on Canadian Pharmacy Compliance Inspections

Food and Drug
December 22, 2004December 22, 20042015-09-23
Canada's Health Products and Food Branch Inspectorate (Inspectorate) has recently published a Summary Report on the on-site compliance inspections it conducted earlier this year of Canadian pharmacies selling prescription drugs via the Internet or via other forms of distance dispensing, such as mail order. The Inspectorate assessed 11 selected pharmacies for compliance with the Food and Drugs Act (Act) and Food and Drugs Regulations (Regulations), which establish the regulatory regime relating to the sale of prescription drugs in Canada.
Deeth Williams Wall https://www.dww.com/articles/health-canada-publishes-summary-report-on-canadian-pharmacy-compliance-inspections

CIPO Releases Updated Industrial Design Office Practices CIPO Releases Updated Industrial Design Office Practices

Industrial Designs
December 21, 2004December 21, 20042015-07-08
© 2004, Deeth Williams Wall LLP, All Rights Reserved By: Jason Young, Student at Law (December 21, 2004)
Deeth Williams Wall https://www.dww.com/articles/cipo-releases-updated-industrial-design-office-practices

Telcos Required to Seek Informed Consent to Use Subscriber Information Telcos Required to Seek Informed Consent to Use Subscriber Information

Telecommunications
December 8, 2004December 8, 20042015-07-08
The Federal Court of Appeal has ruled that a phone company infringed federal privacy laws by not informing first-time subscribers, at the time of enrolment, of the primary and secondary purposes for which their personal information was collected and in not informing them at that time of the availability of the non-published number service. Canada's phone companies have for years collected their subscribers' personal information for listing in white pages, 411 services and for other uses, including: making the information available to independent directory publishers and other organizations; publishing the listing information in online directory assistance services which allow reverse searching by address or phone number; and making the listing information available via CD-ROM for retail use.
Deeth Williams Wall https://www.dww.com/articles/telcos-required-to-seek-informed-consent-to-use-subscriber-information

Bell Canada to Deliver TV over Phone Lines Bell Canada to Deliver TV over Phone Lines

Information Technology
December 8, 2004December 8, 20042015-07-08
Bell Canada (Bell), the largest incumbent phone company in Canada, has been granted regulatory approval to deliver television services over phone lines to major urban centres in Ontario and Quebec. The Canadian Radio-television and Telecommunications Commission (CRTC) made the decision on November 18, 2004 (CRTC 2004-496) to grant two regional licenses to Bell, allowing the company to serve cities such as Toronto, Ottawa and Montreal.
Deeth Williams Wall https://www.dww.com/articles/bell-canada-to-deliver-tv-over-phone-lines

EU "Software Patent Directive" Delayed EU "Software Patent Directive" Delayed

Patents
December 8, 2004December 8, 20042015-07-08
The European Union proposed Directive on software patents is again in limbo due to an apparent withdrawal of support by Poland, whose vote would be necessary to pass the legislation. Since 1997, the European Union has been attempting to harmonize the laws of its member states regarding the patentability of computer-implemented inventions.
Deeth Williams Wall https://www.dww.com/articles/eu-software-patent-directive-delayed

Industry Canada Issues Cluster Study on ICT, Life Sciences and Converging Technologies Industry Canada Issues Cluster Study on ICT, Life Sciences and Converging Technologies

Information Technology
December 8, 2004December 8, 20042015-07-08
A recently released study (Cluster Study) by Industry Canada compares the status and growth opportunities of three related industry sectors – information and communications technologies (ICT); life sciences (LS); and converging next-generation technologies (CNT) – in the four urban clusters of Vancouver, Toronto, Montreal and Ottawa.
Deeth Williams Wall https://www.dww.com/articles/industry-canada-issues-cluster-study-on-ict-life-sciences-and-converging-technologies

Rights of Joint Patentees Strengthened by US Congress Rights of Joint Patentees Strengthened by US Congress

Patents
December 8, 2004December 8, 20042015-07-08
The US Congress has passed Bill S 2192 ENR, which creates a clearer standard on permitted disclosure in the course of joint development. Senator Leahy, in promoting the bill in June, noted that the law will prevent further decisions such as OddzOn Products, Inc v Just Toys, Inc, 43 USPQ 2d 1641 (Fed Cir 1997). That is, it will promote the public policy goal of confidential disclosures in a joint development relationship without the fear of those disclosures being cited as prior art against a joint patent.
Deeth Williams Wall https://www.dww.com/articles/rights-of-joint-patentees-strengthened-by-us-congress

ForSaleByOwner.com Wins Exemption from Licensing Requirement ForSaleByOwner.com Wins Exemption from Licensing Requirement

Technology Contracting
December 8, 2004December 8, 20042015-07-08
A US District Court has ruled it unconstitutional for the state of California to require web sites to obtain a real estate broker's license in order to display property listings. The Court held in favour of New-York based ForSaleByOwner.com, a real estate services company which charges a flat fee for online listings. The company had filed a lawsuit against the state of California last year to challenge the licensing regime.
Deeth Williams Wall https://www.dww.com/articles/forsalebyownercom-wins-exemption-from-licensing-requirement

Copyright Cannot Protect Anti-Competitive Behaviour Copyright Cannot Protect Anti-Competitive Behaviour

Copyright
December 8, 2004December 8, 20042015-07-08
The US 6th Circuit Court of Appeals has vacated a preliminary order barring Static Control Components (SCC) from selling computer chips to third-party manufacturers making cheaper substitutes for Lexmark International Inc's (Lexmark) printer toner cartridges (Lexmark International Inc v Static Control Components Inc, DC No. 02-00571, October 26, 2004).
Deeth Williams Wall https://www.dww.com/articles/copyright-cannot-protect-anticompetitive-behaviour

Canadian Civil Servant Appointed as ICANN Ombudsman Canadian Civil Servant Appointed as ICANN Ombudsman

Domain Names
December 8, 2004December 8, 20042015-07-08
Frank Fowlie, formerly a senior official with the Financial Consumer Agency of Canada and an experienced conflict resolution specialist, has been appointed by the Internet Corporation of Assigned Names and Numbers (ICANN) as its Ombudsman. Mr. Fowlie will operate from his own offices but have access to ICANN's offices in Marina del Ray and Brussels.
Deeth Williams Wall https://www.dww.com/articles/canadian-civil-servant-appointed-as-icann-ombudsman

Ontario Court Finds Cyber-Libel More Pernicious Ontario Court Finds Cyber-Libel More Pernicious

Litigation
November 24, 2004November 24, 20042015-09-23
An Ontario lower court has ruled that a man who used e-mail to disseminate statements to colleagues that imputed dishonest and reprehensible conduct on the part of an archaeologist disparaged her and her profession. In the case of Ross v Holley, [2004] OJ 4643 (Sup Ct), Justice Low noted that defamatory statements occupy a continuum ranging from those made in a bona fide (though wrongly held) belief that the statement is true to defamatory statements made knowing that they are untrue and with the express intent to bring the subject into hatred, ridicule, contempt and to destroy the subject's reputation in society.
Deeth Williams Wall https://www.dww.com/articles/ontario-court-finds-cyberlibel-more-pernicious

European Court of Justice Scales Back Scope of Database Rights European Court of Justice Scales Back Scope of Database Rights

Litigation
November 24, 2004November 24, 20042015-09-23
On November 10, 2004, the European Court of Justice (ECJ) released four decisions limiting the scope of database rights under the EU Directive on the legal protection of databases (Directive 96/9/EC of the European Parliament and of the Council of March 11, 1996). The decisions represent the first interpretation of the Directive by the ECJ since its introduction in 1996. The Directive provides makers of databases with the right to prevent unauthorized acts of extraction and re-utilization of the whole or substantial part of the contents of a database. This sui generis protection is reserved, however, only for databases for which it can be shown that a substantial investment, quantitatively or qualitatively, has been made in the obtaining, verification or presentation of their contents.
Deeth Williams Wall https://www.dww.com/articles/european-court-of-justice-scales-back-scope-of-database-rights

A Chapter Closed on Microsoft Lawsuits A Chapter Closed on Microsoft Lawsuits

Information Technology
November 24, 2004November 24, 20042015-09-23
Microsoft recently announced two major settlement agreements putting to rest disputes with Novell Inc and the Computer & Communications Industry Association (CCIA), a Washington-based trade group whose members include Oracle, Red Hat and Sun Microsystems. As part of the settlement agreements, Novell and the CCIA both agreed to end their participation in the European Union antitrust case against Microsoft. The CCIA also agreed to not ask the US Supreme Court to review the 2001 antitrust settlement deal with the US Justice Department. For its part, among other things, Microsoft agreed to become a member of the CCIA.
Deeth Williams Wall https://www.dww.com/articles/a-chapter-closed-on-microsoft-lawsuits

DE Technologies Sues Dell: Implications for Universal Shopping DE Technologies Sues Dell: Implications for Universal Shopping

Patent Litigation
November 24, 2004November 24, 20042015-07-08
DE Technologies Inc (DE), a small Virginia-based company, has launched a patent infringement suit against Dell Inc over a patent that it claims covers all international e-commerce transactions. The business method patent, entitled "Universal Shopping Center for International Operation" (US 6,460,020), took almost six years to issue after being re-examined by the United States Patent and Trademark Office (PTO) because of the controversy generated when it was first approved.
Deeth Williams Wall https://www.dww.com/articles/de-technologies-sues-dell-implications-for-universal-shopping

Disclaimer: This Newsletter is intended to provide readers with general information on legal developments in the areas of e-commerce, information technology and intellectual property. It is not intended to be a complete statement of the law, nor is it intended to provide legal advice. No person should act or rely upon the information contained in this newsletter without seeking legal advice.

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