Federal Court Finds that HERBS R US Design Mark is Likely to Depreciate the Goodwill in the TOYS R US Trademark Federal Court Finds that HERBS R US Design Mark is Likely to Depreciate the Goodwill in the TOYS R US Tra...

Trademark and Copyright Litigation
July 2, 2020July 2, 20202020-07-02
On June 11, 2020, the Federal Court of Canada (the Court) issued its decision in Toys “R” Us (Canada) Ltd v Herbs “R” Us Wellness Society (2020 FC 682), holding that use of the HERBS R US design mark was likely to depreciate the goodwill in the registered trademark TOYS R US & Design, contrary to section 22 of the Trademarks Act (the Act).
Deeth Williams Wall https://www.dww.com/articles/federal-court-finds-herbs-r-us-design-mark-likely-to-depreciate-goodwill-toys-r-us

Federal Court of Appeal Upholds Canada’s Anti-Spam Legislation as Constitutional Federal Court of Appeal Upholds Canada’s Anti-Spam Legislation as Constitutional

CASL
June 17, 2020June 17, 20202020-06-17
On June 5, 2020, the Canadian Federal Court of Appeal (the Court) in 3510395 Canada Inc v Canada (Attorney General) 2020 FCA 103, unanimously upheld the constitutionality of Canada’s Anti-Spam Legislation (CASL) which regulates, among other things, the sending of commercial electronic messages (CEMs), such as e-mails and text messages, to protect individuals and businesses against spam and other electronic threats.
Deeth Williams Wall https://www.dww.com/articles/federal-court-of-appeal-upholds-canada%E2%80%99s-antispam-legislation-as-constitutional

Amended Patented Medicines Regulations Set to Come Into Force on January 1, 2021 Amended Patented Medicines Regulations Set to Come Into Force on January 1, 2021

Patent
June 17, 2020June 17, 20202020-06-17
On June 1, 2020, the Canadian Patented Medicine Prices Review Board (PMPRB) announced that the coming into force date for the amended Patented Medicines Regulations (Regulations) will be delayed until January 1, 2021.
Deeth Williams Wall https://www.dww.com/articles/amended-patented-medicines-regulations-set-to-come-into-force-on-january-1-2021

Federal Court of Appeal Dismisses Appeal to Expunge HORLICKS Trademarks Federal Court of Appeal Dismisses Appeal to Expunge HORLICKS Trademarks

Trademark and Copyright Litigation
June 17, 2020June 17, 20202020-06-17
On May 26, 2020, the Canadian Federal Court of Appeal (FCA) dismissed an appeal by Bedessee Imports Ltd. (Bedessee) from a decision of the Federal Court dismissing an application brought by Bedessee to expunge GlaxoSmithKline Consumer Healthcare (UK) IP Limited (GSK)’s HORLICK’S and HORLICKS trademarks (the Marks) (2020 FCA 94).
Deeth Williams Wall https://www.dww.com/articles/federal-court-of-appeal-dismisses-appeal-to-expunge-horlicks-trademarks

UK Patent Attorneys Publish Discussion Paper Calling for Clarity on Patenting Inventions Created by Artificial Intelligence UK Patent Attorneys Publish Discussion Paper Calling for Clarity on Patenting Inventions Created by Artif...

Patent
June 17, 2020June 17, 20202020-06-17
On June 3, 2020, the UK-based Chartered Institute of Patent Attorneys (CIPA) published a position paper calling for clarity over the patenting of innovations created by artificial intelligence in the United Kingdom (the Paper). The Paper is part of CIPA's work to resolve uncertainties and limitations regarding the inventorship of innovations created using artificial intelligence (AI).
Deeth Williams Wall https://www.dww.com/articles/uk-patent-attorneys-publish-discussion-paper-calling-for-clarity-on-patenting-inventions

US Copyright Office to Study State Sovereign Immunity and Copyright Infringement US Copyright Office to Study State Sovereign Immunity and Copyright Infringement

Copyright
June 17, 2020June 17, 20202020-06-17
The US Copyright Office (the Office) has announced the initiation of a public study to determine the extent to which copyright owners are experiencing infringement by states without adequate remedies under state law.  The Federal Register notice regarding the study indicates that the Office will also be assessing the extent to which such infringements appear to be based on intentional or reckless conduct.
Deeth Williams Wall https://www.dww.com/articles/us-copyright-office-to-study-state-sovereign-immunity-and-copyright-infringement

US Court Rules in Favour of Nike on Ownership of the “Klaw” Logo US Court Rules in Favour of Nike on Ownership of the “Klaw” Logo

Trademark and Copyright Litigation
June 3, 2020June 3, 20202020-06-03
On May 18, 2020, the Oregon District Court (the Court) released its decision in Leonard v Nike, Inc (Case No. 3:19-cv-01586-MO), holding that Nike, Inc (Nike) owns the “Klaw” Logo (Logo) and the right to register copyright in the Logo.
Deeth Williams Wall https://www.dww.com/articles/us-court-rules-favour-of-nike-on-ownership-of-%E2%80%9Cklaw%E2%80%9D-logo

U.S. Surveillance Reform Threatens Privacy Protections Around Americans’ Online Activity U.S. Surveillance Reform Threatens Privacy Protections Around Americans’ Online Activity

Privacy
June 3, 2020June 3, 20202020-06-03
On May 14, 2020, the U.S. Senate passed the USA Freedom Reauthorization Act of 2020 (the Bill) to renew a number of lapsed surveillance powers, including reauthorizing section 215 of the USA PATRIOT Act (the Act) which allows the U.S.
Deeth Williams Wall https://www.dww.com/articles/us-surveillance-reform-threatens-privacy-protections-around-americans%E2%80%99-online-activity

Canadian Media Outlets Push for Regulatory Changes to Level Playing Field with Tech Giants Canadian Media Outlets Push for Regulatory Changes to Level Playing Field with Tech Giants

Regulatory Law
June 3, 2020June 3, 20202020-06-03
On May 7, 2020, the Canadian Government Standing Committee on Finance met to hear from stakeholders impacted by the COVID-19 pandemic. This included publishers of Canadian newspapers and media outlets, who have called for an urgent overhaul of the Broadcasting Act to have digital media platforms share their advertising revenues with Canadian media companies.
Deeth Williams Wall https://www.dww.com/articles/canadian-media-outlets-push-for-regulatory-changes-to-level-playing-field-tech-giants

New Criminal Remedies Available for Theft of Trade Secrets New Criminal Remedies Available for Theft of Trade Secrets

Trade-secret
June 3, 2020June 3, 20202020-06-03
On July 1, 2020, The United-States-Mexico Canada (USMCA) trade agreement will come into force. This agreement has led to the enactment of a new Criminal Code of Canada (CCC) provision, Article 391, which provides protection to help deter the theft of trade secrets.
Deeth Williams Wall https://www.dww.com/articles/new-criminal-remedies-available-for-theft-of-trade-secrets

Federal Court Considers Patent Prosecution History in Claim Construction Federal Court Considers Patent Prosecution History in Claim Construction

Patent Litigation
June 3, 2020June 3, 20202020-06-03
On May 15, 2020, in Bauer Hockey Ltd v. Sport Maska Inc (CCM Hockey) (2020 FC 624), the Federal Court of Canada (the FC) considered section 53.1 of the Canadian Patent Act, which is a provision recently added to the Patent Act which allows for patent prosecution history to be admitted into evidence in court proceedings.
Deeth Williams Wall https://www.dww.com/articles/federal-court-considers-patent-prosecution-history-claim-construction

Working in the Digital Age: Post-Pandemic Employments for the 21st Century Presentation Working in the Digital Age: Post-Pandemic Employments for the 21st Century Presentation

Information Technology
May 29, 2020May 29, 20202020-05-29
Presentation by Hashim Ghazi of Deeth Williams Wall LLP and Nancy Shapiro of Koskie Minsky LLP exploring key considerations in drafting and maintaining effective employment and contracting agreements, including what employers need to know about the post-pandemic working world.
Deeth Williams Wall https://www.dww.com/articles/working-digital-age-postpandemic-employments-for-21st-century-presentation

Thomson Reuters Accuses Ross Intelligence of Copyright Infringement Thomson Reuters Accuses Ross Intelligence of Copyright Infringement

Trademark and Copyright Litigation
May 20, 2020May 20, 20202020-05-20
On May 6, 2020, Thomson Reuters and West Publishing Corporation (the Plaintiffs) filed a claim for copyright infringement against ROSS Intelligence Inc. (ROSS) alleging that ROSS used artificial intelligence to obtain proprietary data from the Westlaw database to create a competing product. 
Deeth Williams Wall https://www.dww.com/articles/thomson-reuters-accuses-ross-intelligence-of-copyright-infringement

USPTO Launches “Patents 4 Partnership” Platform to Aid in COVID-19 Response USPTO Launches “Patents 4 Partnership” Platform to Aid in COVID-19 Response

Patent
May 20, 2020May 20, 20202020-05-20
On May 4, 2020, the United States Patent and Trademark Office (USPTO) launched an online intellectual property marketplace – Patents 4 Partnerships (the Platform) – to help connect patent licensors and licensees in key technologies.
Deeth Williams Wall https://www.dww.com/articles/uspto-launches-%E2%80%9Cpatents-4-partnership%E2%80%9D-platform-to-aid-covid19-response

Privacy Principles for Contact Tracing Apps Privacy Principles for Contact Tracing Apps

Privacy
May 20, 2020May 20, 20202020-05-20
On May 7, 2020, the Federal, Provincial and Territorial Privacy Commissioners in Canada released a Joint Statement on contract tracing apps, entitled “Supporting public health, building public trust: Privacy principles for contact tracing and similar apps.”  The Statement invites the various levels of government, if they plan to use apps for contact tracing or for notifying individuals that they have been in close proximity of someone who is or is likely to be a carrier of COVID-19, to respect a set of principles.  These principles include:
Deeth Williams Wall https://www.dww.com/articles/privacy-principles-for-contact-tracing-apps

USPTO Denies Petition to Recognize AI as Patent Inventor USPTO Denies Petition to Recognize AI as Patent Inventor

Patent
May 20, 2020May 20, 20202020-05-20
On April 22, 2020, the United States Patent and Trademark Office (USPTO) denied the petition to recognize DABUS as the inventor of patent application No 16/524,350 (’350).
Deeth Williams Wall https://www.dww.com/articles/uspto-denies-petition-to-recognize-ai-as-patent-inventor

Ontario Superior Court Dismisses Wiseau’s Copyright Infringement Claim Ontario Superior Court Dismisses Wiseau’s Copyright Infringement Claim

Trademark and Copyright Litigation
May 20, 2020May 20, 20202020-05-20
On April 23, 2020, the Ontario Superior Court of Canada (the Court) released its decision in Wiseau Studio, LLC et al v Harper et al (2020 ONSC 2504), dismissing the plaintiffs’ action for copyright infringement against the creators of a documentary entitled “Room Full of Spoons”. 
Deeth Williams Wall https://www.dww.com/articles/ontario-superior-court-dismisses-wiseau%E2%80%99s-copyright-infringement-claim

Health Canada on Hand Sanitizer and Disinfectants amid COVID-19 Health Canada on Hand Sanitizer and Disinfectants amid COVID-19

Regulatory Law
May 20, 2020May 20, 20202020-05-20
There has been a recent increase in licenses granted by Health Canada for “hand sanitizer products” amid the COVID-19 pandemic. In order to qualify as a hand sanitizer, Health Canada has specified that the product must contain at least 60% ethanol alcohol. Furthermore, in order to use the terms “hand sanitizer” or “disinfectant”, evidence that the products meet these standards needs to be included in an application to Health Canada. 
Deeth Williams Wall https://www.dww.com/articles/health-canada-on-hand-sanitizer-and-disinfectants-amid-covid19

OPC Publishes a Privacy Assessment Framework in Response to COVID-19 OPC Publishes a Privacy Assessment Framework in Response to COVID-19

Privacy
May 6, 2020May 6, 20202020-05-06
On April 17, 2020, the Office of the Privacy Commissioner of Canada (OPC) published a privacy assessment framework to assist federal government institutions in understanding their privacy-related responsibilities for the collection, use and disclosure of personal information during the COVID-19 outbreak.  This framework builds on the previous OPC guidance issued last month (as previously reported by the E-TIPS® Newsletter 
Deeth Williams Wall https://www.dww.com/articles/opc-publishes-a-privacy-assessment-framework-response-to-covid19

Federal Court of Appeal Overturns Access Copyright-York University Copyright Decision Federal Court of Appeal Overturns Access Copyright-York University Copyright Decision

Trademark and Copyright Litigation
May 6, 2020May 6, 20202020-05-06
On April 22, 2020, in York University v The Canadian Copyright Licensing Agency (Access Copyright) (2020 FCA 77), the Canadian Federal Court of Appeal (FCA) allowed the university's appeal, holding that although the actions of York University (York) were not fair dealing, the payment of tariffs to Access Copyright as set by Canada's Copyright Board (CCB) was not mandatory.
Deeth Williams Wall https://www.dww.com/articles/federal-court-of-appeal-overturns-access-copyrightyork-university-copyright-decision

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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