Canadian Federal Court of Appeal Expunges BOSTON CHICKEN Trade-mark for Lack of Distinctiveness Canadian Federal Court of Appeal Expunges BOSTON CHICKEN Trade-mark for Lack of Distinctiveness

Trademarks
June 5, 2003June 5, 20032015-07-08
The Canadian Federal Court of Appeal recently held that the mark BOSTON CHICKEN lacked distinctiveness and therefore should be expunged from the trade-mark register. Boston Pizza International Inc. ("BP") filed an application to expunge Boston Chicken's ("BC") registration for BOSTON CHICKEN for use in association with take-out restaurant and catering services. The main grounds for the application included: (1) the BOSTON CHICKEN mark was not distinctive of BC's services, contrary to subsection 18(1)(b) of the Trade-marks Act; and (2) the mark was not registrable at the date of registration because it was confusing with BP's prior registration for BOSTON PIZZA. Although the trial judge found that the mark BOSTON CHICKEN lacked distinctiveness, he did not expunge the mark because he found no likelihood of confusion between the marks BOSTON CHICKEN and BOSTON PIZZA. As a result, BP's application was dismissed.
Deeth Williams Wall https://www.dww.com/articles/canadian-federal-court-of-appeal-expunges-boston-chicken-trademark-for-lack-of

Copyright Claim in Novelty Teeth Upheld Despite Defect in Registration Copyright Claim in Novelty Teeth Upheld Despite Defect in Registration

Copyright
June 5, 2003June 5, 20032015-07-08
An innocent error in applying for copyright registration is not fatal to the owner's copyright infringement claim, the U.S. Court of Appeals (7th Cir.) recently confirmed. In its May 21, 2003 opinion in Billy-Bob Teeth, Inc. v. Novelty, Inc., the Court held that Billy-Bob was the valid owner of the copyright in certain designs for joke false teeth, and that Novelty had infringed Billy-Bob's copyright. The ruling overturned an Illinois District Court's decision that Billy-Bob had no ownership interest in the copyright due to an improper claim of "work for hire" in the copyright registration.
Deeth Williams Wall https://www.dww.com/articles/copyright-claim-novelty-teeth-upheld-despite-defect-registration

W3C Issues Finalized Patent Policy W3C Issues Finalized Patent Policy

Patents
June 5, 2003June 5, 20032015-07-08
The World Wide Web Consortium (W3C), dedicated to developing Web-related standards with member organizations coming from both commercial and public sectors, has recently finalized its Patent Policy governing the handling of patents in the process of producing Web standards. The Policy, developed over three and a half years, reflects a compromise between those parties who wish to protect and exploit their intellectual property and others (in particular, the open-source community) who see patents as impediments to technological progress and standardization.
Deeth Williams Wall https://www.dww.com/articles/w3c-issues-finalized-patent-policy

New Canadian Food Labeling Regulations New Canadian Food Labeling Regulations

Food and Drug
June 1, 2003June 1, 20032015-07-08
New Canadian Food Labeling Regulations* (PDF Format) By Gordon S. Jepson and M. Susana Diaz * With permission from FDLI
Deeth Williams Wall https://www.dww.com/articles/new-canadian-food-labeling-regulations

CIRA Panel Concludes "Bad Faith" Standard Different in .ca Disputes Than Those In .com Disputes CIRA Panel Concludes "Bad Faith" Standard Different in .ca Disputes Than Those In .com Disputes

Domain Names
May 22, 2003May 22, 20032015-07-08
On April 8, 2003, panellists of the British Columbia International Commercial Arbitration Centre (BC ICAC) issued their decision that the domain name www.radiocanada.ca should be transferred to CBC/Radio-Canada from Williams Quon, based on the finding that Quon had registered the domain name in bad faith.
Deeth Williams Wall https://www.dww.com/articles/cira-panel-concludes-bad-faith-standard-different-ca-disputes-than-those-com-disputes

U.S. Court of Appeals Releases Ruling on Constitutionality of Junk Fax Ban U.S. Court of Appeals Releases Ruling on Constitutionality of Junk Fax Ban

Litigation
May 22, 2003May 22, 20032015-07-08
Recently, in State of Missouri, v. American Blast Fax, Inc., the U.S. Court of Appeals for the 8th Circuit reversed a decision of the District Court which held that 47 U.S.C. § 227 (b)(1)(C) of the Telephone Consumer Protection Act of 1991 ("TCPA"), a federal law banning unsolicited fax advertisements, violated the First Amendment guarantee of freedom of speech.
Deeth Williams Wall https://www.dww.com/articles/us-court-of-appeals-releases-ruling-on-constitutionality-of-junk-fax-ban

U.S. Court Rules that Federal Law Banning Junk Faxes Does Not Apply to E-mail U.S. Court Rules that Federal Law Banning Junk Faxes Does Not Apply to E-mail

Litigation
May 22, 2003May 22, 20032015-09-23
In Mark B. Aronson v. Bright-Teeth Now, LLC., a Pennsylvania Superior Court ruled that the Telephone Consumer Protection Act of 1991 ("TCPA"), banning unsolicited fax advertisements, cannot be applied to restrict unsolicited commercial e-mail. The Plaintiff received six unsolicited e-mail advertisements from the Defendant company and was seeking to recover $9,000 in damages under the TCPA.
Deeth Williams Wall https://www.dww.com/articles/us-court-rules-federal-law-banning-junk-faxes-does-not-apply-to-email

Online Real Estate Site Sues State of California Over Broker Licensing Requirements Online Real Estate Site Sues State of California Over Broker Licensing Requirements

Technology Contracting
May 22, 2003May 22, 20032015-09-23
Recently, the New York based Corporation, ForSaleByOwner.com and its Sacramento-based magazine affiliate, commenced an action against the State of California seeking to declare portions of the State's real estate licensing laws unconstitutional for allegedly restricting free speech. In accordance with California's licensing laws, companies who provide certain real estate services are required to obtain a state broker's license.
Deeth Williams Wall https://www.dww.com/articles/online-real-estate-site-sues-state-of-california-over-broker-licensing-requirements

Company Claims Software Copyright Infringement Based on Copying of Business Logic Company Claims Software Copyright Infringement Based on Copying of Business Logic

Copyright
May 22, 2003May 22, 20032015-09-23
BulletProof Technologies ("BulletProof"), a software development company based in California, recently sought a California judicial declaration that it had not infringed any U.S. copyrights owned by Navitaire of Minnesota ("Navitair"), a subsidiary of Accenture. BulletProof also asked for a declaration that it had the right to sell, distribute and market the software product in question. Prior to this, Navitaire had commenced litigation in the United Kingdom alleging infringement by BulletProof Technologies of Navitaire's UK copyright in a software system package.
Deeth Williams Wall https://www.dww.com/articles/company-claims-software-copyright-infringement-based-on-copying-of-business-logic

Trans Union Loses transunion.ca Trans Union Loses transunion.ca

Domain Names
May 22, 2003May 22, 20032015-07-08
Trans Union LLC, a U.S. corporation (the "Complainant"), commenced an action under the CIRA dispute resolution policy against 1491070 Ontario Inc., an Ontario corporation (the "Registrant"). The Complainant, held registered Canadian trade-marks for "TRANS UNION" and contended that the Registrant's domain name, tranunion.ca, was identical and therefore confusingly similar to the TRANS UNION marks.
Deeth Williams Wall https://www.dww.com/articles/trans-union-loses-transunionca

Registrant Loses saveonfoods.ca Registrant Loses saveonfoods.ca

Domain Names
May 22, 2003May 22, 20032015-07-08
The Complainant in this action, Great Pacific Industries Inc., filed a complaint with the British Columbia International Commercial Arbitration Centre against Mr. Ghalib Dhalla (the "Registrant"), with respect to the registration and use of saveonfoods.ca, registered in 2000 by the Registrant.
Deeth Williams Wall https://www.dww.com/articles/registrant-loses-saveonfoodsca

Alberta Latest Canadian Province to Introduce Privacy Legislation Alberta Latest Canadian Province to Introduce Privacy Legislation

Privacy
May 22, 2003May 22, 20032015-07-08
Last week, Alberta became the latest Canadian province to introduce privacy legislation to cover the private sector. Alberta's legislation 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 Alberta 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.
Deeth Williams Wall https://www.dww.com/articles/alberta-latest-canadian-province-to-introduce-privacy-legislation

The Federal Court of Appeal Ruled on Issue of Distinctiveness in Boston Pizza International Inc. v. Boston Chicken Inc. The Federal Court of Appeal Ruled on Issue of Distinctiveness in Boston Pizza International Inc. v. Bosto...

Litigation
May 20, 2003May 20, 20032015-07-08
© 2003, Deeth Williams Wall LLP. All Rights Reserved. By: Hung Nguyen (May 20, 2003) INTRODUCTION
Deeth Williams Wall https://www.dww.com/articles/federal-court-of-appeal-ruled-on-issue-of-distinctiveness-boston-pizza-international-inc-v

Supreme Court of Japan Orders Company To Share Profits from Patent with Ex-employee Supreme Court of Japan Orders Company To Share Profits from Patent with Ex-employee

Patents
May 8, 2003May 8, 20032015-07-08
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.
Deeth Williams Wall https://www.dww.com/articles/supreme-court-of-japan-orders-company-to-share-profits-from-patent-exemployee

Stringent Spam Laws Enacted in Virginia Stringent Spam Laws Enacted in Virginia

Information Technology
May 8, 2003May 8, 20032015-07-08
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.
Deeth Williams Wall https://www.dww.com/articles/stringent-spam-laws-enacted-virginia

Settlement Ends U.S. Patent Litigation Between Nortel and Redback Settlement Ends U.S. Patent Litigation Between Nortel and Redback

Patents
May 8, 2003May 8, 20032015-07-08
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.
Deeth Williams Wall https://www.dww.com/articles/settlement-ends-us-patent-litigation-between-nortel-and-redback

College Students Agree to Pay RIAA to Settle Online Music Piracy Lawsuit College Students Agree to Pay RIAA to Settle Online Music Piracy Lawsuit

Copyright
May 8, 2003May 8, 20032015-07-08
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.
Deeth Williams Wall https://www.dww.com/articles/college-students-agree-to-pay-riaa-to-settle-online-music-piracy-lawsuit

Verizon Ordered to Disclose Names of Internet Subscribers Suspected of Offering Copyrighted Music for Downloading Verizon Ordered to Disclose Names of Internet Subscribers Suspected of Offering Copyrighted Music for Dow...

Copyright
May 8, 2003May 8, 20032015-07-08
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.
Deeth Williams Wall https://www.dww.com/articles/verizon-ordered-to-disclose-names-of-internet-subscribers-suspected-of-offering

U.S. District Court Rules that Grokster and StreamCast are Not Liable for Copyright Infringement U.S. District Court Rules that Grokster and StreamCast are Not Liable for Copyright Infringement

Copyright
May 8, 2003May 8, 20032015-07-08
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.
Deeth Williams Wall https://www.dww.com/articles/us-district-court-rules-grokster-and-streamcast-are-not-liable-for-copyright-infringement

Panel Rules for Registrant of Generic .Ca Over Complainant Trade-Mark Holder Panel Rules for Registrant of Generic .Ca Over Complainant Trade-Mark Holder

Trademarks
May 8, 2003May 8, 20032015-07-08
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.
Deeth Williams Wall https://www.dww.com/articles/panel-rules-for-registrant-of-generic-ca-over-complainant-trademark-holder

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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