E-TIPS

In a recent case, Aral v Earthlink Inc, the California Court of Appeal wrestled with the complexities of overlapping federal, state and common law principles regarding the rights of a consumer bound by an online standard form contract to participate in a "reasonable" dispute settlement process.

A ruling from the US Trademark Trial and Appeal Board (TTAB) is expected imminently on the registrability of the first taste trade-mark in the US. If the TTAB finds in favour of its registrability, this will bring the protection of taste marks in line with other non-traditional marks in the US, such as colours and scents.

On November 15, the federal Minister of Public Safety and Emergency Preparedness introduced the long-awaited Modernization of Investigative Techniques Act ("MITA"). The dissolution of Parliament has killed the bill, but observers agree that it will be back in the New Year, regardless of which party forms the government.

In a much anticipated decision, the Supreme Court of Canada in Kirkbi AG v Ritvik Holdings Inc, 2005 SCC 65, commonly known as the Lego versus Mega Bloks case, upheld both the trial and appeal court decisions that functional elements cannot be protected either by registered trade-marks or by the common law tort of passing off.

Sony BMG Music Entertainment (Sony) has recalled all music CDs with Extended Copy Protection (XCP), a program that was designed to prevent illegal copying of the CD, in the face of widespread reaction in the media and from consumers to the unintended consequences of using the program. At least three lawsuits have been filed regarding the XCP program and its problems.

The US federal government is concerned about possible damage from a disruption to BlackBerry® service stemming from any injunction that may issue in the ongoing patent dispute between Research In Motion Ltd (RIM) and NTP Inc (NTP).

In a case which will be closely analyzed by IP lawyers and competition lawyers alike, the Federal Court of Appeal has held that, as a matter of law, a patent assignment can violate competition law. More specifically, an assignment of a patent could constitute an agreement or arrangement to lessen competition unduly, contrary to section 45 of the Competition Act.

Health Canada recently released a revised Guidance Document entitled "Drug Name Review: Look-alike Sound-alike (LA/SA) Health Product Names". The document is intended to clarify the way information and material related to proposed drug names submitted by drug companies is handled by the Health Products and Food Branch.

The Canadian Intellectual Property Office (CIPO) has announced that the small entity remedial provisions of Bill C-29 will come into force on February 1, 2006. Patent owners will have 12 months from that date to make any top-up payments in order to remedy underpaid fees (including payments mistakenly paid at a small entity rate). Case law in Canada had declared that it was impossible to make such top-up payments in the ordinary course, forcing the Government to enact a special regime to allow patent owners to secure their patent protection. Canadian patents can be held invalid for underpaid fees.

The Federal Court of Canada, Trial Division, has issued an injunction against an individual, prohibiting him from communicating hate propaganda over the Internet while a complaint against him is pending before the Canadian Human Rights Commission (CHRC).

Recently, two US lower courts considered whether the threshold of evidence required to obtain an order allowing cell phone surveillance should be equivalent to or greater than that required for a land line surveillance order.

In a precedent setting decision, Ex Parte Lundgren, the United States Board of Patent Appeals and Interferences (Patent Board) has opened the field wider for business method patents. In the Lundgren decision, the Patent Board reversed the USPTO-imposed "technological arts" test that had been used to narrow somewhat the issue of these patents.

The Information and Privacy Commissioner of Ontario (Commissioner) launched an investigation last month after receiving word from a reporter for the Toronto Star that patient records containing personal health information had been strewn about the streets of a downtown Toronto intersection during a movie shoot. The incident brought into play the provisions of Ontario's new Personal Health Information Protection Act, 2004, (PHIPA).

The European Court of Justice (ECJ), the European Union's highest court, has ruled that "feta" is a traditional Greek name and should enjoy protection within the 25-nation Community.

Agence France-Presse (AFP) has filed a copyright infringement suit against Google in US District Court after Google put AFP headlines, photos and article leads on the Google News web page, http://news.google.com. AFP is seeking US$17 million in damages and an injunction barring Google from further publishing its news stories and photos.

The Alberta Privacy Commissioner has found that the scanning of patrons' identification at the door of a nightclub violates the province's Personal Information Protection Act (PIPA). The report concluded that purposes for which the personal information was collected were not reasonable, contrary to section 11 of PIPA.

In a recent case in the Ontario Superior Court of Justice, Autosurvey Inc v Prevost et al, the plaintiff (Autosurvey) took the surprising and unusual step of hacking into the server of the defendant (Prevost) while legal proceedings were pending between them.

In its judgment dated October 20, 2005 in a patent dispute between Synthon BV (Synthon) and Smithkline Beecham plc (SkB) regarding the invention of paroxetine methanosulfate, the House of Lords found that Synthon's earlier unpublished application did anticipate SkB's patent, making the latter invalid. The decision restored the original trial decision by the High Court, later reversed by the Court of Appeal.

In a case of first impression (Regatos v North Fork Bank), the New York State Court of Appeals has upheld a lower court finding that a foreign customer who has so-called "hold mail" arrangements with his New York bank (allowing the bank not to mail account statements to the customer until requested to do so) is not precluded from claiming that the bank improperly paid on fraudulent cheques merely because the bank's standard form customer agreement requires the customer to notify the bank of account irregularities immediately.

The federal Privacy Commissioner has found that a Canadian bank that outsourced the processing of credit card transactions to a US-based service provider complied with the requirement to provide a "comparable level of protection" under the Personal Information Protection and Electronic Documents Act (PIPEDA).