E-TIPS

On August 23, 2002, the United States Court of Appeals released two interesting cybersquatting decisions which looked into the nature of in rem jurisdiction under the Anticybersquatting Consumer Protection Act ("ACPA"). In an in rem suit, the plaintiff takes action against property instead of individuals or organizations. In the case of cybersquatting, this means that the plaintiff would take action against the domain names instead of the persons or entities individually, who registered the domain names.

SEDAR is the System for Electronic Document Analysis and Retrieval, the electronic filing system for the disclosure documents of public companies and mutual funds across Canada. All Canadian public companies and mutual funds are generally required to file their documents in the SEDAR system. SEDAR's website is an easy to use and a great place to find information on Canadian public companies and mutual funds.

On July 19, 2002, the Ontario provincial government released new draft legislation related to the Retail Sales Tax ("RST") treatment of computer programs. The draft legislation is intended to simplify the taxation of computer software and IT services. The legislation includes new industry specific definitions which reflect the characteristics of the services provided by the IT industry.

The Missouri Court of Appeals has extended First Amendment protection to a work of fiction merely adopting a real person's name. Former hockey "enforcer", Tony Twist, the namesake of mob enforcer, Antonio Twistelli, a.k.a. Tony Twist, in Todd McFarlane's "Spawn" comic book, had been awarded $24.5 Million by a jury in a case dealing with "misappropriation of name" and "right to publicity" issues.

The Canadian Booksellers Association ("CBA") has filed a judicial review application with the Federal Court of Canada. The CBA has asked the Court to quash the current Department of Canadian Heritage ("DCH") ruling and launch a formal review of amazon.ca.

As part of Microsoft's settlement of the Federal Trade Commission (FTC) complaint that Microsoft misrepresented security features in its various Passportâ„¢ Internet services, Microsoft has agreed to provide an improved security program according to guidelines set out in the agreement.

The recent decision in Richmond (City of) v. S.L. & T. Dynamic Enterprises Ltd. [2002] B.C.S.C. 1093 reinforces the general approach adopted by many courts to regulate Internet activities according to traditional principles of law even if the end result is somewhat unusual. In this case an Internet café was declared an "amusement centre."

The Technical Information Bulletin B-90 GST/HST and Electronic Commerce released by the Canada Customs and Revenue Agency (CCRA) in July 2002 provides some guidance on whether "a supply of intangible personal property or a service" is made in Canada for the purposes of the GST.

The U.S. Court of Appeals (7thCir) released its decision in Promatek v. Equitrac, a case involving the use of trademarks in HTML metatags. The case involved two companies, Promatek and Equitrac, whose systems enable professional firms, such as law firms or accounting firms, to automatically capture expenses related to a client and integrate them into the firm's billing system.

A Quebec provincial court decision will force websites advertising to Quebec customers to make their content available in French. In his May 23, 2002 decision in Procureur General du Quebec c. Waldie-Reid (no. 760-61-026203-019), Mr. Justice Boyer rejected the defendant's contention that the Internet is beyond the scope of the Charte de la langue francaise (L.R.Q., c-11), Quebec's French language law. The website in question (a unilingual English website advertising a Quebec farm and its products to Quebec customers) had been charged with violating section 52 of the Charte which requires "catalogues, brochures, folders, commercial directories, and any similar publications" to be made available in French.

In 1986, a US patent was issued for a "coding system for reducing redundancy". Forgent Networks, the current owner of the patent, claims that it directly applies to a compression technique used in the creation of JPEG images. JPEG is the industry standard for compression of digital images. Many devices and software use to compress, store, manipulate, print or transmit digital images use JPEG technology. Although the patent is set to expire in 4 years, Forgent has begun seeking licenses from companies that implement JPEG in "all fields of use, with the sole exception of the satellite broadcast business".

The CATO Institute recently issued a briefing paper authored by Robert Corn-Revere, a US attorney who co-wrote an amicus brief in the French case which involved the liability in France of Yahoo! for having its users offer for sale Nazi artefacts. The author argues that US courts should continue to accord the Internet with wide freedom of speech protection and reject attempts to enforce foreign judgements amounting to censorship.

On July 7, 2002, the fight over the Canadian.biz domain name was taken to the next level. The registrant of the domain name appealed the previous National Arbitration Forum ("NAF") decision to the Ontario Superior Court. The dispute resolution panellist of the NAF had ordered that the domain name Canadian.biz be transferred to Molson Canada, owners of the trade-mark "Canadian".

The public can now access decisions issued by the Canadian Commissioner of Patents since 1970. Through the Canadian Intellectual Property Office CIPO website, users can search the online database for decisions by keyword, date or file particulars, or browse by topics. Practitioners, in particular, will find this a useful resource for current decisions on many areas of Canadian patent practice.

The Canadian Intellectual Property Office (CIPO) has launched an electronic processing system for industrial design applications and amendments, including the recording of assignments affecting pending and newly registered designs.

A German court has ruled that a German news search service, Newsclub, is violating the EU Database Directive by searching through and deep-linking to the website of a German newspaper.

Eli Lilly has reached a settlement with a number of states in the U.S. including New York in connection with its accidental disclosure of personal information of subscribers to an e-mail reminder service for the drug Prozac. On one occasion, the company sent an e-mail reminder using the "To:" button to address the e-mail as opposed to the blind copying feature. The settlement agreement requires Eli Lilly to strengthen its internal standards relating to privacy protection, training, and monitoring. Eli Lilly will also institute automated checks for any of its software that accesses consumer information databases. The company will also undergo annual, independent compliance reviews over the next five years and report the findings of those reviews to the states. This is in addition to a payment of $160,000 to the states involved.

Recently, a split World Intellectual Property Organization (WIPO) Panel ruled against Ted Turner, refusing his ICANN UDRP claim for the domain name tedturner.com, which was registered by a Montreal student in 1999. The dispute over the domain name began when Mr. Turner and his "˜Ted Turner Film Properties LLC' (TTFP) filed a US trade-mark application for "˜Ted Turner Pictures LLC'.

The U.S. Federal Court of Appeals recently upheld a lower court decision dismissing an action brought by Mattel against MCA Records, alleging trade-mark infringement and dilution over the music company's 1997 hit song "Barbie Girl". Mattel, a toy company, owns the trade-mark rights to BARBIE. It is also the maker of the Barbie doll. In 1997, a pop band called Aqua produced a song titled "Barbie Girl" on its album Aquarium. In the song, one band member impersonates Barbie, singing in high pitch doll-like voice and another band member calling himself Ken entices Barbie to "Go Party". In its action, Mattel alleges that MCA's use of the term "Barbie" constitutes trade-mark infringement as it is likely to confuse consumers as to Mattel's affiliation with Barbie Girl or dilute the BARBIE mark.

In a recent defamation case involving false statements published on a number of websites, the Ontario Superior Court awarded damages and legal costs to the successful plaintiffs significantly greater in total than if the defamation had not been so published.