E-TIPS

On March 27, 2003, the Supreme Court of Canada granted leave to the Canadian Association of Internet Providers ("ISPs") to appeal the Federal Court of Appeal's judgment of the Canadian Copyright Board's "Tariff 22" decision. The original decision of the Copyright Board ISPs to pay royalties to copyright music collectives, such as the Society of Composers, Authors and Music Publishers of Canada ("SOCAN"), for music downloaded over the Internet by the ISP's subscribers. No royalties were required to be paid where the ISP was acting solely as a conduit for the music being transferred.

Recently, an arbiter of Resolution Canada, which is an accredited dispute resolution provider of the Canadian Internet Registration Authority ("CIRA") issued its decision under the Domain Name Dispute Resolution Policy (the "CDRP") on a complaint submitted by Elysium Wealth Management Inc. (the "Complainant"). The Complainant is the owner of the registered trade-mark CEO FUND in Canada (for use in association with the provision of financial portfolio management services) and sought the transfer of the domain name "CEOFUNDS.CA" from Mr. Brian Driscoll (the "Registrant").

The Department of Canadian Heritage recently released the first part of a study on Technological Protection Measures (TPMs). The study discusses a variety of policy considerations associated with the use of TPMs as a means of applying the law of copyright in digital environments.

On March 27, 2003, the U.S. House of Representatives passed a bill called the Child Abduction Prevention Act (CAPA), which includes provisions to punish those who use misleading domain names to lure people into visiting obscene websites. In particular, under this Bill, anyone who knowingly uses a misleading domain name to attract people to a pornographic Internet site could face up to 2 years in prison.

The U.S. Attorney for the Eastern District of Missouri has alleged that eBay's PayPal has violated the Patriot Act (the "Act") by processing payments for online gambling. The Act was passed by Congress following the September 11, 2001 attacks. This legislation broadens law enforcement powers to combat money laundering that is suspected to finance terror attacks and also prohibits transmitting funds known to have come from a criminal offence, or that are intended to promote or support unlawful activities.

The Alberta government is closing a tax loophole that allows cigarette purchasers to avoid paying Alberta provincial sales tax by ordering cigarettes over the Internet. The loophole exists because Alberta does not have an agreement with the Canada Customs and Revenue Agency to collect provincial tax on goods that enter the country.

A trial date has been set for a patent infringement claim against eBay. The suit was filed by MercExchange LLC in September 2001 and involves patents that deal with methods of creating and searching online marketplaces and auctions. These patents date back to the mid 1990's, approximately 5 months before the eBay website was launched. After a long history of motions for dismissal, the trial has been scheduled for April 22, 2003 in the U.S. District Court for the Eastern District of Virginia in Norfolk. eBay contends that they have "meritorious defenses and will defend [themselves] vigorously".

In Japan's first court decision under its anti-spam legislation, Japan's dominant mobile phone carrier, NTT DoCoMo Corp., was awarded 6.57 million yen against a Tokyo company for flooding its wireless e-mail network with spam. Japan's recently enacted anti-spam legislation requires spam e-mail to be labeled in the subject heading as "unsolicited advertising".

© 2003, Deeth Williams Wall LLP. All Rights Reserved. By: Heather Watts (April 4, 2003) An initiative headed by the Medicins Sans Frontieres (MSF), called the Drugs for Neglected Diseases Initiative (or DNDI), was begun in early 2002, and more recently put into action by linking in the support of the World Health Organisation, France's Pasteur Institute, Brazil's Oswaldo Cruz Foundation, the Indian Council of Medical Research and the Malaysian Health Ministry.

The Supreme Court of Canada ("SCC") has released its decision in Editions Chouette (1987) Inc. v. Desputeaux. This decision will have a significant impact on the future use of arbitration in the resolution of intellectual property rights disputes. This case arose out of a dispute concerning the ownership of copyright in the Caillou character appearing in a popular series of children's books. A motion was brought seeking to have the parties referred to an arbitrator by virtue of section 37 of the Quebec Act respecting the professional status of artists in the visual arts, arts and crafts and literature, and their contracts with promoters (the "ARPSA"). Section 37 of the ARPSA provides that every dispute arising from the interpretation of a contract between an artist and a promoter shall be submitted to an arbitrator. The Quebec Superior Court found that the existence of the contract was not at issue and that there were no allegations relating to its validity and therefore, referred the case to arbitration. After the arbitrator made his decision, a motion for annulment of the arbitration award was brought before the Quebec Superior Court, which was subsequently dismissed.

The Supreme Court of Canada (SCC) recently dismissed the appeal of the Earth Fund Lottery case and upheld the decision of the Prince Edward Island ("P.E.I.") Court of Appeal. The P.E.I. government had originally provided the Earth Fund Internet Lottery with a license to operate a lottery over the Internet. This decision met with protests from other provincial lottery administrators who were worried about Internet based lotteries drawing away their customers.

The Centre for Democracy & Technology (the "Centre") conducted a study seeking to determine the sources of spam. In particular, in the summer of 2002, the Centre set up hundreds of different email addresses. After waiting six months, the Centre sought to establish what kind of email those addresses received. The Centre concluded that, depending on where the email addresses were used, different volumes of spam were received and different methods were used by those sending the spam.

In an attempt to reduce piracy and on-line file-sharing, the Recording Industry Association of America ("RIAA") sent letters to 300 large U.S. companies alleging that company employees were using corporate computer networks to "illegally distribute copyrighted music on the Internet". The letter referred to specific instances where employees used corporate Internet connections to access file-sharing software like Kazaa and iMesh to download pirated songs and movies.

In Ets-Hokin v. Skyy Spirits Inc., the U.S. Court of Appeals (9th Circuit) found that the copyright protection in photographs of a vodka bottle was limited by the doctrines of merger and scenes a faire because of the narrow range of artistic expression available in the context of a photographs of commercial product such as a vodka bottle. The plaintiff had taken a series of photographs of a blue vodka bottle for use in a marketing campaign. Years later, the defendant had other photographers take more photographs of the bottle for other marketing material. The plaintiff argued that these photographs infringed the copyright in his photographs.

The Direct Marketing Association ("DMA"), in conjunction with on-line, off-line and catalogue companies, released a new study entitled, "A Current Calculation of Uncollected State Sales Tax Arising from Internet Growth". The study was based on U.S. Department of Commerce data and showed that the amount of potential sales tax lost as a result of on-line sales is about 85% less than the numbers stated in previous studies.

In the recent case of Barton No-Till Disk Inc. and Flexi-Coil Ltd. v. Dutch Industries Ltd. and The Commissioner of Patents ("Dutch Industries"), the Canadian Federal Court of Appeal allowed an appeal against a Federal trial court's decision concerning the determination of entity status for the purpose of fees relating to patents and patent applications.

In a copyright infringement suit, the U.S. Court of Appeals (7th Circuit) recently affirmed the District Court's grant of summary judgment to the defendant MetaTrans Logistics ("MetaTrans"). At issue was the copyright interest in a computer program first developed by the plaintiff, ITOFCA, which had been involved in various corporate transfers. MetaTrans claimed that it acquired copyright in the program in a bankruptcy proceeding; ITOFCA claimed that it still retained copyright in the program.

On March 19, 2003, the World Wide Web Consortium ("W3C") released a final proposed draft of its patent policy ("Proposed Policy"). The W3C is a consortium of stakeholders in the Internet and its development with the aim of establishing and promoting standards relating to the web's overall structure. Its members include commercial, educational and governmental entities.

© 2003, Deeth Williams Wall LLP. All Rights Reserved. By: Lenni Carreiro (March 19, 2003) In a 5:4 split decision, the majority of the Supreme Court of Canada recently ruled in Harvard College v. Canada (Commissioner of Patents) i that a genetically altered mouse ("the oncomouse") was not patentable subject matter. Canada is now one of the few jurisdictions which have refused to provide patent protection to the oncomouse.

In a reversal of the conclusions of two lower courts, the U.S. Supreme Court (USSC) recently held that a party's use of the mark VICTOR'S SECRET did not dilute the quality of the mark VICTORIA'S SECRET for the purpose of relief under the U.S. Federal Trademark Dilution Act (FTDA). The USSC based its decision on the requirement that actual dilution must be established by evidence, holding that there was a complete absence of evidence of any lessening of the capacity of the VICTORIA'S SECRET mark to identify and distinguish goods or services sold in Victoria's Secret stores or advertised in its catalogues.