E-TIPS

An Ontario court has ruled that there must be something more than a mere "˜exchange of consideration' to characterize an activity as commercial under federal privacy legislation. In finding that the Personal Information Protection and Electronic Documents Act (PIPEDA) did not prohibit the disclosure of the membership list of a non-profit club that was otherwise permitted by law, MacKenzie J of the Ontario Superior Court rejected the argument that non-profit status automatically exempts an organization from PIPEDA. The relevant test is whether specific activities are commercial in nature. The Court also dismissed the respondents' claim that because the information that made up the list had been collected along with a membership fee in expectation of certain benefits and services, that the activity was commercial in nature and therefore subject to PIPEDA.

On September 17, California Governor Arnold Schwarzenegger signed new anti-spam legislation into law. In addition to an outright prohibition and criminalization of the sending of unsolicited e-mail, the new law also allows ISPs, the California Attorney General, and recipients of commercial spam e-mail to recover damages of up to $1,000 for each unsolicited e-mail that does not disclose valid e-mail contact address and the name and location of the sender.

In a follow-up to his July 7, 2004 opinion in <em>Mosaid Technologies Inc v Samsung Electronics Co</em>, 01-CV-4340 (USD NJ), Magistrate Judge Hedges has imposed monetary sanctions against Samsung in the amount of US$566,838 for what he termed "extremely reckless behavior" in destroying e-mail relevant to Mosaid's patent infringement claim. In addition to the monetary award, the Judge also finalized instruction language to the jury, permitting the jury to make an adverse inference as a result of the defendant's failure "to produce virtually all technical and other e-mails in the case". The Judge's key finding was that "No reasonable litigant could believe that [Mosaid's definition of "document"] did not include e-mails."

© 2004, Deeth Williams Wall LLP. All Rights Reserved. By: Jason Young, Student at Law (September 28, 2004) In The Pickwick Papers, a 19th Century account of the comical adventures of a hunt and game association, Charles Dickens ends his fiction with the happy dissolution of the club "to the satisfaction of all members." The case of Rodgers v. Calvert (8 September 2004), 03-BN-6556 (On. Sup.

In mid-December 2003, the Ontario Ministry of Consumer and Business Services released its draft Regulation under the Consumer Protection Act, 2002 (Act) for public comment (see E-TIPSâ„¢ Volume 2, Number 15, January 8, 2004). The draft Regulation deals with a wide range of consumer protection issues, including Internet agreements and other e-commerce concerns.The Ministry has now posted the revised draft Regulation which incorporates the changes made as a result of consultation input.

In Harrison v Teton Valley Trading Co [2004] EWCA Civ 1028, the English Court of Appeal upheld the decision of the Registrar of Trade Marks to reject an application for the trade mark CHINA WHITE on the basis that the application had been made in bad faith. The Applicant had applied to register the trade mark for a cocktail drink. The Opponents, the owners of a London night club named CHINAWHITE, argued that the registrations should be refused under section 3(6) of the Trade Marks Act 1994 which states that "a trade mark shall not be registered if or to the extent that the application is made in bad faith".

On August 24, 2004, the United States Patent Office (USPTO) issued US Patent No 6,781,030, entitled "Methods for cloning mammals using telophase oocytes" which includes claims directed to methods for cloning "mammals". Although the USPTO has long issued patents on transgenic mammals and the methods for producing these, the issuance of this patent is noteworthy, following as it does with the recent enactment of the "Weldon amendment" which was an attempt to bar the USPTO from issuing patents on human organisms.

The Motion Picture Association of America (MPAA), a trade association whose members include Buena Vista Pictures Distribution and Universal Studios, has recently brought lawsuits against two manufacturers of chips used in DVD players. These chips allegedly bypass copy-protection schemes required by the CSS (Content Scramble System) licence.

Tiffany & Co, the luxury jewelry company, recently filed suit in US District Court against eBay Inc, the online auction company, alleging that eBay had assisted in diluting the TIFFANY brand by allowing fake items to be sold on its web site. Tiffany claimed that eBay has profited from the sale of counterfeit products and demanded an accounting of profits. It also wants eBay to stop listing any TIFFANY product that is known to be counterfeit.

PayPal, the Internet payments arm of eBay Inc, has announced a policy of "fining" customers who use its services to pay for gambling, pornography and buying or selling prescription drugs from uncertified sellers of pharmaceuticals.

The Canadian Privacy Commissioner, Jennifer Stoddart, has recently released a public response regarding the impact of the USA Patriot Act (Patriot Act) on the privacy rights of Canadians. The BC Privacy Commissioner had made a request for such a statement after launching an inquiry into growing public concern about the ability of the US government to gain access to the personal information of Canadians dealing with US companies.

On August 19, 2004, the 9th US Circuit Court of Appeals for the Ninth District upheld a lower court decision that peer-to-peer (P2P) software developers are not liable for vicarious and contributory copyright infringement (Metro-Goldwyn-Mayer v Grockster, 04 CDOS 7624). A coalition of movie studio and record company copyright owners sued defendants Grokster Ltd and Streamcast Networks Inc in an effort to shut down trading of pirated files. The plaintiffs argued that they were entitled to monetary and injunctive relief from the companies who write and distribute file-sharing software because people use the software to illegally trade in copyrighted works.

A recently released paper by the Fraser Institute links government policies to relatively high prices of generic and non-patented drugs in Canada. The paper compares the pricing of generic drugs in Canada to that in other countries, and asserts that pricing generic drugs at median international levels, as is already done with patented medicines in Canada, would bring savings of $810 million a year to Canadian consumers.

The 2004 Olympic Games in Athens have now come to an end, but during the period of the Games, it was clear that the International Olympic Committee Olympic (IOC) and its affiliates were prepared to take action to protect the Olympic name and trademarks. Corporations pay millions of dollars for international rights to use the Olympic name and the five interlocking rings in marketing campaigns and, naturally, they and the IOC are concerned about any unauthorized use. During the period that Olympic-related TV ads appeared, the Canadian Olympic Committee (COC) approached a number of major corporations because their ads could violate exclusive Olympic intellectual property rights.

In an effort to reduce the cost of prescription drugs for its citizens, some American states and cities have introduced Canadian drug importation plans. However, the US federal government has opposed such plans, often citing safety as a major concern. In developing their own state drug importation system, officials of the State of Oregon believe they have addressed the safety issues raised.

On August 25, 2004, the Bank of Canada unveiled a new $20 bill for distribution after September 29. Apart from a striking new graphic design, the note contains seven features intended to make it both more difficult for counterfeiters to reproduce it and easier for consumers and merchants to verify its authenticity.

As of July 26, 2004, the Canadian Intellectual Property Office (CIPO) has become the competent International Search Authority (ISA) and International Preliminary Examination Authority (IPEA) for international patent applications filed by Canadian applicants under the Patent Cooperation Treaty (PCT). Applications filed before July 26 will still be searched and examined by the European Patent Office. The upcoming change was noted in an earlier issue of E-TIPSâ„¢, Vol 2, No 4, July 31, 2003 (see "Fees and Administrative Changes at CIPO").

In a move that highlights the value of patents in the field of internet software tools, Google recently settled claims by Yahoo that Google's advertising ranking software violates a patent issued to Yahoo subsidiary Overture Services Inc. According to an article in The New York Times, the payment of 2.7 million Shares of Google will also help settle a dispute between the companies regarding an earlier investment. If the Google IPO proceeds as anticipated, the shares will be valued at approximately $300 million.

In a move applauded by open source proponents, IBM has announced that it has no plans to assert its patent portfolio against the heart of Linux kernel, which is the heart of the Linux operating system. Nick Donofrio, a senior vice president at IBM, made the announcement on August 4, 2004 in a speech at the LinuxWorld Conference and Expo. Mr. Donofrio further challenged other companies in the patent race to follow its example.

In an effort to drive its IP licensing program, it appears that Microsoft will dramatically increase its patent filings in the coming year. Microsoft chairman Bill Gates announced recently that the company expects to file 3,000 patent applications, up from just over 2,000 last year and 1,000 per year in recent years. Gates noted that his company is not just interested in the numbers, "We think"”patent for patent"”what we are doing is, if anything, more important than what others are doing."