E-TIPS

As reported in the July 3 issue of E-Tips, in May 2003, the US, joined by Canada and Argentina, had brought a complaint to the World Trade Organization (_WTO_) regarding European Union (_EU_) restrictions on the import of genetically modified (_GMO_) products.

A recent refusal by the US Supreme Court to hear an appeal from a lower courts decision further strengthens the position of software producers in the use of anti-reverse engineering clauses in shrink-wrap licenses.

A photographer, Leslie Kelly, had sued Arriba Soft Corporation (now Ditto.com) for infringing his copyrights in photographs when Arriba made thumbnails of his pictures and stored them in a public image search engine. When the thumbnails were clicked, the user was shown the full-sized versions of the pictures. The federal 9th Circuit Court of Appeals affirmed the District Court's ruling that making these thumbnail copies of images for the search engine was 'fair use'. However, the appellate court held that the linking to the full-sized images, originally deemed to be fair use by the court below, was not suitable for summary judgment, and remanded the case for further consideration on that issue.

The Federal Court of Canada recently held that the trade-mark CHRISTINA 4 YOU & Design was not confusing with the trade-mark 4 YOU Design as of its filing date and should not be expunged from the register.

A recent attempt to amend Canada's Copyright Act has stirred controversy between policy makers and stakeholders. The copyright provisions of Bill C-36 would amend a provision of the Act relating to the term of copyright for unpublished works of deceased authors whose death occurred between 1930 and 1950. Unusually, the proposed copyright amendments were included in an unrelated bill to merge the National Archives with the National Library of Canada.

The Federal Court of Canada (Trial Division) has recently allowed what may be Canada's first Markman-style claim interpretation hearing. In his May 28, 2003 decision in Realsearch Inc. v. Valone Kone Brunette Ltd., Mr. Justice Noël granted a motion to hold a separate determination of the issue of claim construction before the trial of the main action on patent infringement. The case related to mechanical devices for removing bark from logs. The applicant sought a preliminary determination of the meaning of two specific and technical phrases in the claims.

A committee of the European Union (EU) recently reported on its review of a proposed directive concerning the patentability of software-related inventions. According to the report, its general aim is to "counter any extension of the scope of patent protection for software while resisting the call to exclude patent protection altogether", in response to the liberalizing trend of the European Patent Office ("EPO").

The European Union has recently announced that it will allocate 140 million euros (about $216 million CAD) this year to study the feasibility of issuing and maintaining biometric passports and visas, among other immigration-related issues. Intended to stop fraud and counterfeit activities, the measures would see computer chips with digital fingerprints and eye scans implanted in all new European passports and visas.

Where there is an existing provincial court action over the same patent, a concurrent Federal Court action may not be stayed if patent validity may be an issue and the patent holder does not consent to the expungement of the patent registration in the event that the alleged infringer establishes invalidity in the provincial trial.

A recent Federal Court of Canada case may provide insight into requirements for establishing the chain of title for a patent. The Plaintiff, Depalma, was ordered to provide further particulars of the foreign statute or principle of law relied on to support the allegation that, upon the dissolution of a corporation, its patents devolve to the shareholders of the dissolved corporation.

Bauer Nike Hockey Inc. ("Bauer") commenced an action in the Federal Court of Canada against Tour Hockey and Roller Derby Skate Corp. ("Tour and Roller"), alleging an infringement of one of Bauer's trade-marks. In August 2002, Tour and Roller sent a "without prejudice" letter to Bauer stating that they were willing to admit to infringement and pay damages of CDN $2500, with each party bearing its own costs.

The United States Court of Appeals for the Ninth Circuit recently ruled that a listserv moderator and operator of a website is able to benefit from the immunity-from-liability provisions of section 230 of the Communications Decency Act, 47 USC §230. Section 230 specifies that "[n]o provider or user of an interactive computer service shall be treated as the publisher or speaker of any information provided by another information content provider."

In May, 2003, the United States, joined by Canada and Argentina, brought a complaint to the World Trade Organization ("WTO") regarding European Union ("EU") restrictions on the import of genetically modified products.

© 2002, Deeth Williams Wall LLP.

Not all Canadians will be celebrating on our national holiday on July 1, 2003. The day also marks the onset of controversial new collection measures for European Value-added Tax (VAT) that will affect many Canadian e-businesses.

The New Brunswick Court of Queen's Bench has made an order which may result in Yahoo! Canada Co. ("Yahoo!") and Aliant Telecom Inc. ("Aliant") being obliged to reveal the identity of a person in a case involving email disclosure of confidential information. An unknown person obtained confidential payroll information relating to a number of senior employees of Loblaws Companies Ltd. ("Loblaws"). That person allegedly sent an email containing the confidential information to 34 Loblaws employees.

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.