E-TIPS

In 1999, the U.S. Congress passed the Internet Tax Freedom Act (ITFA) which exempted Internet access from state and local taxes. In 2001, the moratorium was extended. It is now set to expire on November 1, 2003 and it is unclear whether the exemption will be extended past that date. Congress is under considerable pressure from state and local governments to give them access to this new revenue source. Internet providers have concerns about the administrative burden of collecting taxes for a multitude of jurisdictions and are wary of turning off consumers.

The U.S. Court of Appeals for the Third Circuit has ruled that the colour and appearance of a drug may not be protected by trade dress protection under the Lanham Act.

In Search King, Inc. v. Google Technology, Inc., a U.S. District Court granted Google's motion to dismiss a lawsuit filed by an Internet advertising company alleging that Google had intentionally lowered the advertising company's ranking on Google's search engine.

The U.S. Department of Homeland Security ("DHS") announced that it has created a new division called the National Cyber Security Division ("NCSD") to focus on cyber security in the U.S. The new 60-person unit was created as part of President Bush's National Strategy to Secure Cyberspace and the Homeland Security Act of 2002.

On June 12, 2003, President Bush, the Food and Drug Administration Commissioner and the Secretary of Health and Human Services announced new regulations and review procedures to expedite the process for bringing generic drugs to market. The new regulations - termed the Final Rule – are designed to accelerate the availability of generic versions of brand name drugs to consumers.

The U.S. Court of Appeals for the Federal Circuit recently vacated the finding of the Trademark Trial and Appeal Board that the mark CALIFORNIA INNOVATIONS is "primarily geographically deceptively misdescriptive" and remanded the case for further proceedings under a new test.

Recently, the North Dakota Supreme Court affirmed a decision of the district court awarding the Plaintiff $3,000,000 in damages for libel, slander, and intentional interference with a business relationship. In John Wagner v. Glenda Miskin, Wagner, a professor at the University of North Dakota ("UND"), filed a complaint against a student, Miskin, for publishing defamatory statements about Wagner on Miskin's website. One of the key issues raised in the appeal was Miskin's argument that the Court lacked jurisdiction over the Internet publications originating outside of the State. Miskin, now a Minnesota resident, argued that her Internet communications were not directed solely to the State of North Dakota.

A criminal investigation has been launched by the South African Department of Health. The investigation is of Tableview, a Cape Town man that allegedly sold pharmaceutical drugs over six different websites for prices that exceeded two or three times the drug's South African value.

In the recent case of Kohus v. Mariol, the United States Court of Appeals for the Sixth Circuit considered the legal standard to be applied in copyright infringement cases to determine whether there is substantial similarity between works.

On May 13, 2003, the Federal Court of Canada in L'Ecuyer v. Aéroports de Montréal (May 13, 2003), [2003] F.C. 573, overturned a decision of the federal Privacy Commissioner and decided that neither the Court nor the Privacy Commissioner has jurisdiction to hear employment related complaints involving the Personal Information Protection and Electronic Documents Act (PIPEDA), where the parties were bound by a collective agreement. The complainant brought a complaint against her employer for sharing a denial of a request for information (the personal information) with her union representatives and with an employee relations officer, without her consent.

Recently, a United States Federal Court jury in Virginia found eBay and one of its subsidiaries, Half.com, liable for $35 million in damages for patent infringement. In September 2001, the plaintiff, MercExchange L.L.C., commenced the action against eBay and Half.com for allegedly infringing the claims of its U.S. Patent Numbers 6,085,176, 5,845,265 and 6,202,051. These three patents relate to methods for searching online marketplaces and auctions invented by MercExchange's founder Tom Woolston. The jury held that eBay and Half.com willfully infringed the claims of Patent Numbers 6,085,176 and 5,845,265. The verdict centered on the companies' "Buy It Now" feature which permits fixed price sales.

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.

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.

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.

New Canadian Food Labeling Regulations* (PDF Format) By Gordon S. Jepson and M. Susana Diaz * With permission from FDLI

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.

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.

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.

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.

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.