E-TIPS

Recently in Japan, the inventor of an optical device commonly used in CD and DVD players successfully sued his former employer, Olympus Optical Co. (Olympus), for compensation over royalties for his invention. The former Olympus employee alleged that he was not fairly compensated for the patent on his invention. The Supreme Court of Japan ("SCJ") held that regardless of a company's internal rules, an inventor is permitted to be rewarded for an invention.

The State of Virginia recently enacted anti-spam legislation which raises penalties for distributing spam. The provisions of the Virginia Computer Crimes Act allows authorities to seize assets earned from spamming and imposes penalties of up to five years in prison for sending spam.

Under a recent settlement of their lawsuit, Redback Networks will license telephone industry competitor Nortel Network's patented technology for an undisclosed amount. This ends the litigation commenced nearly 2 years ago when Redback sued to invalidate 5 U.S. patents owned by Nortel. Nortel counterclaimed for patent infringement.

Recently, four university students settled lawsuits brought against them by the Recording Industry Association of America ("RIAA") by agreeing to make payments to the RIAA totalling between $12,000 and $17,500 in annual installments from 2003 to 2006. The RIAA had commenced separate lawsuits against the four students last month for operating file-search services that searched for MP3 song files on computers connected to the internal networks of their colleges. In addition, the students shared copyrighted music from their computers.

On April 24, 2003, a federal judge of the U.S. District Court for the District of Columbia denied Verizon Internet Services' ("Verizon") motion to quash a subpoena requiring it to identify a subscriber who was suspected of illegally sharing music online. The Recording Industry Association of America ("RIAA") had served the subpoena on Verizon pursuant to the Digital Millennium Copyright Act of 1998 ("DMCA"). Under the DMCA, a copyright holder can request a subpoena by asserting that a violation has occurred. The subpoena can be issued from any U.S. District clerk's office without requiring a judge's signature.

Recently, in Metro-Goldwyn-Mayer Studios, Inc. v. Grokster, Ltd., a U.S. District Court for the Central District of California ruled that two companies, Grokster Ltd. and StreamCast Networks Inc. (the "Defendants"), that were distributing file-sharing software, were not responsible for illegal copying committed by users of the software.

In the recent decision of Air Products Canada Ltd./Prodair Canada Ltee v. Index Quebec Inc., an arbitration panel held that the registration of descriptive domain names solely for the purposes of rental, is not considered bad faith registration.

The U.S. Court of Appeals (9th Circuit) recently ruled on whether the trade-mark "MICRO COLORS" is generic when used in association with permanent makeup color pigments. Lasting Impression I, Inc. ("Lasting") owns a U.S. incontestable trade-mark registration for MICRO COLORS in a design form for color pigments. K.P. Permanent Make-up, Inc. ("K.P.") also uses the term "micro colors" on its pigment bottles. K.P. sued Lasting, seeking a declaration that Lasting did not have the right to use the term "micro colors" and that the term was generic and incapable of receiving trade-mark protection. Lasting counterclaimed, alleging that K.P.'s use of the term "micro color" infringed Lasting's registered mark. The District Court agreed with K.P. and granted it summary judgment. It held that the term "micro color" is generic, and if not generic, descriptive. It also held that K.P.'s use was protected under the "fair use" doctrine.

In its April 14, 2003 decision in Puerto Rico Tourism Company v. Virtual Countries, Inc., the WIPO Arbitration and Mediation Centre refused to transfer puertorico.com on the basis that Puerto Rico was not a trade-mark of the government owned complainant.

British Columbia (B.C.) has introduced privacy legislation covering the private sector. B.C.'s move is aimed at ensuring that the Federal privacy legislation covering the private sector, the Personal Information Protection and Electronic Documents Act ("PIPEDA"), does not take effect in B.C. after January 1, 2004, as would be the case in any province or territory that does have its own "substantially similar" legislation in place by that date.

In Ontario, statutory libel includes defamatory words in a broadcast. The question before the Ontario Superior Court in the recent decision of Bahlieda v. Santa was whether defamatory material published on a website and made available to the public over the Internet is a "broadcast" within the meaning of the Libel and Slander Act of Ontario ("the Act"). Under the Act, the plaintiff has a period of six weeks, subsequent to discovering the broadcast, within which to notify the defendant of the matter; otherwise, the libel action will fail.

In the recent case of Buskirk v. The New York Times Co., and John L. Plaster, the United States Court of Appeals for the Second Circuit upheld a New York District Court's dismissal of a defamation suit. The plaintiff, Robert Van Buskirk ("Buskirk"), brought an action against both The New York Times ("Times") and John L. Plaster ("Plaster") for libel. The subject of the action against Plaster was a letter he had written and posted on an Internet site. The suit against the Times arose from the publication of an opinion article based on a revised version of the letter. In both the letter and the subsequent Times article, Plaster had declared that Buskirk was the source of various allegedly untrue statements made within a report broadcast by CNN.

On April 10, 2003, the U.S. 6th Circuit Court of Appeals, in Interactive Products Corporation v. a2z Mobile Office Solutions, Inc. ("Interactive Products"), ruled that there was no liability for U.S. trademark infringement where one party's trademark appeared in the post-domain path field of another party's web page uniform resource locator ("URL", e.g., dww.com/bios/dd.htm).

Two recording companies, Universal Music Group and EMI Recorded Music, filed suit recently in the U.S. District Court in Los Angeles against the venture capital firm, Hummer Winblad Venture Partners (the "VC"), accusing the VC of contributing to widespread Internet music piracy through its financial support of Napster in the form of a $13 million investment. This lawsuit is one of a number of lawsuits that have arisen after Napster sought bankruptcy protection in June of 2002.

Legal steps being taken against spam have increased considerably. Here are some recent developments: America Online has recently filed five lawsuits against alleged spammers. The spammers are accused of sending approximately 1 billion spam emails promoting mortgages, steroids, and pornography to its subscribers. AOL launched the suits after receiving roughly 8 million individually spam complaints through a "Report Spam" feature that AOL introduced last fall. The identity of some of the spammers is unknown. However, filing the lawsuit has now enabled AOL to subpoena service providers and others to attempt to locate more information on the spammers.

On April 7, 2003, a sole panelist of the World Intellectual Property Organization (WIPO) Arbitration and Mediation Center issued his decision in Urbani Tartufi s.n.c. v. Urbani U.S.A., a dispute involving the domain name "urbani.com". The Complainant, Urbani Tartufi s.n.c., is a world leader in the harvesting and sales of truffles and owns the registered trademark word "URBANI" in the U.S.A. and Italy.

The UK based EasyInternet Café (the "Café") chain has paid the British Phonograph Industry ("BPI") ₤180,000 in damages and fees to settle a court battle over copyright infringement. The issue arose out of a music downloading service offered by the EasyInternet Café chain. For a fee of ₤5, the Café chain allowed customers to download music from the Internet and copy it onto a CD.

The U.S. Court of Appeals (4th Cir.) released its decision in Beskind v. Easley, holding that North Carolina's ban on direct shipment of wine from out of state wineries to North Carolina residents violates the U.S. Constitution's Commerce Clause.

Earlier this month, a British Columbia manwasconvicted of violating the Canada Elections Act("the Act") and fined C$1,000for posting federal election results on the Internet. Paul Bryan is the only individual ever convicted under the provisions of the Act which make it an offence to publish election results in parts of the country where the polls are still open. Bryan published the results of the 2000 election on his Internet site as soon as they were available in each region of the country, before polls closed in BC.

Recently, the Privacy Commissioner of Canada (the "Commissioner") released a series of findings based on individual complaints under the Personal Information Protection and Electronic Documents Act ("PIPEDA"):