E-TIPS

The US Copyright Office is seeking submissions from the public on how the government should deal with "orphan works". Orphan works are copyrighted works whose owners are difficult or impossible to locate. As a result, the works effectively become inaccessible to the public, as permission to use them cannot be obtained. Where good faith attempts to locate the copyright holder are unsuccessful, the potential users are reluctant to make use of the work for fear of being sued for infringement in the future.

The Canadian Government has taken the unusual step of filing an amicus curiae brief with the US Court of Appeals for the Federal Circuit (Appeals Court) in patent litigation involving an infringement claim by NTP Inc against Research in Motion Inc (RIM) of Waterloo, Ontario. At issue are alleged infringements involving RIM's ubiquitous BlackBerry® wireless platform.

A New York trial judge has ruled that evidence gleaned from a car's "black box" is admissible in a second-degree murder trial against two men involved in a fatal three-car collision in Nassau County, New York.

On January 21, 2005, the European Patent Office (EPO) held that the second of three patents in a series owned in part by Myriad Genetics Inc (Myriad) of Salt Lake City should be narrowed from the approximately 30 claims contained in its application to three. The patents cover different aspects of the human BRCA1 gene and relate to the diagnosis and of breast and ovarian cancer.

The Canadian Government recently published proposed amendments to the Patented Medicines (Notice of Compliance) Regulations and the Food and Drug Regulations dealing specifically with data protection.

In December, a court in Nanterre ruled that Google infringed the trade-mark rights of the hotel chain Le Meridien by allowing Le Meridien's competitors to bid on keyword advertising. The ads placed by the winning bidder were triggered by a user of the search engine employing the Le Meridien trade-marks in a search. The French court ordered Google to cease its practice, failing which it will face a fine for each day that it fails to comply with the order. A Google representative indicated that it will appeal. In a previous court case in France brought by Louis Vuitton, the plaintiff was also successful against Google.

On December 22, 2004, the European Court of First Instance (Court) ordered Microsoft Corp (Microsoft) to comply with the penalties previously imposed by the European Commission (Commission) in its landmark antitrust ruling of last March.

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.

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.

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.

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.

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.

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.

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.

© 2004, Deeth Williams Wall LLP, All Rights Reserved By: Jason Young, Student at Law (December 21, 2004)

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.

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.

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.

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.

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.