U.S. Court of Appeal Rules in Generic Trade-mark Dispute U.S. Court of Appeal Rules in Generic Trade-mark Dispute

Trademarks
May 8, 2003May 8, 20032015-07-08
The U.S. Court of Appeals (9th Circuit) recently ruled on whether the trade-mark "MICRO COLORS" is generic when used in association with permanent makeup color pigments. Lasting Impression I, Inc. ("Lasting") owns a U.S. incontestable trade-mark registration for MICRO COLORS in a design form for color pigments. K.P. Permanent Make-up, Inc. ("K.P.") also uses the term "micro colors" on its pigment bottles. K.P. sued Lasting, seeking a declaration that Lasting did not have the right to use the term "micro colors" and that the term was generic and incapable of receiving trade-mark protection. Lasting counterclaimed, alleging that K.P.'s use of the term "micro color" infringed Lasting's registered mark. The District Court agreed with K.P. and granted it summary judgment. It held that the term "micro color" is generic, and if not generic, descriptive. It also held that K.P.'s use was protected under the "fair use" doctrine.
Deeth Williams Wall https://www.dww.com/articles/us-court-of-appeal-rules-generic-trademark-dispute

Puerto Rico Loses Puertorico.com Dispute Puerto Rico Loses Puertorico.com Dispute

Domain Names
May 8, 2003May 8, 20032015-07-08
In its April 14, 2003 decision in Puerto Rico Tourism Company v. Virtual Countries, Inc., the WIPO Arbitration and Mediation Centre refused to transfer puertorico.com on the basis that Puerto Rico was not a trade-mark of the government owned complainant.
Deeth Williams Wall https://www.dww.com/articles/puerto-rico-loses-puertoricocom-dispute

British Columbia Introduces Privacy Legislation British Columbia Introduces Privacy Legislation

Privacy
May 8, 2003May 8, 20032015-07-08
British Columbia (B.C.) has introduced privacy legislation covering the private sector. B.C.'s move 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 B.C. 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/british-columbia-introduces-privacy-legislation

Internet Posting Comes Within "Broadcast" for Purpose of Libel Internet Posting Comes Within "Broadcast" for Purpose of Libel

Information Technology
April 24, 2003April 24, 20032015-09-23
In Ontario, statutory libel includes defamatory words in a broadcast. The question before the Ontario Superior Court in the recent decision of Bahlieda v. Santa was whether defamatory material published on a website and made available to the public over the Internet is a "broadcast" within the meaning of the Libel and Slander Act of Ontario ("the Act"). Under the Act, the plaintiff has a period of six weeks, subsequent to discovering the broadcast, within which to notify the defendant of the matter; otherwise, the libel action will fail.
Deeth Williams Wall https://www.dww.com/articles/internet-posting-comes-within-broadcast-for-purpose-of-libel

Single Publication Rule Applies to Internet Publications Single Publication Rule Applies to Internet Publications

Information Technology
April 24, 2003April 24, 20032015-09-23
In the recent case of Buskirk v. The New York Times Co., and John L. Plaster, the United States Court of Appeals for the Second Circuit upheld a New York District Court's dismissal of a defamation suit. The plaintiff, Robert Van Buskirk ("Buskirk"), brought an action against both The New York Times ("Times") and John L. Plaster ("Plaster") for libel. The subject of the action against Plaster was a letter he had written and posted on an Internet site. The suit against the Times arose from the publication of an opinion article based on a revised version of the letter. In both the letter and the subsequent Times article, Plaster had declared that Buskirk was the source of various allegedly untrue statements made within a report broadcast by CNN.
Deeth Williams Wall https://www.dww.com/articles/single-publication-rule-applies-to-internet-publications

Post Domain Portion of URL's Not U.S. Trademark Infringement Post Domain Portion of URL's Not U.S. Trademark Infringement

Domain Names
April 24, 2003April 24, 20032015-09-23
On April 10, 2003, the U.S. 6th Circuit Court of Appeals, in Interactive Products Corporation v. a2z Mobile Office Solutions, Inc. ("Interactive Products"), ruled that there was no liability for U.S. trademark infringement where one party's trademark appeared in the post-domain path field of another party's web page uniform resource locator ("URL", e.g., dww.com/bios/dd.htm).
Deeth Williams Wall https://www.dww.com/articles/post-domain-portion-of-urls-not-us-trademark-infringement

Record Companies Sue Venture Capital Firm for Supporting Napster Record Companies Sue Venture Capital Firm for Supporting Napster

Intellectual Property
April 24, 2003April 24, 20032015-07-08
Two recording companies, Universal Music Group and EMI Recorded Music, filed suit recently in the U.S. District Court in Los Angeles against the venture capital firm, Hummer Winblad Venture Partners (the "VC"), accusing the VC of contributing to widespread Internet music piracy through its financial support of Napster in the form of a $13 million investment. This lawsuit is one of a number of lawsuits that have arisen after Napster sought bankruptcy protection in June of 2002.
Deeth Williams Wall https://www.dww.com/articles/record-companies-sue-venture-capital-firm-for-supporting-napster

The War on Spam Heats Up The War on Spam Heats Up

Information Technology
April 24, 2003April 24, 20032015-07-08
Legal steps being taken against spam have increased considerably. Here are some recent developments: America Online has recently filed five lawsuits against alleged spammers. The spammers are accused of sending approximately 1 billion spam emails promoting mortgages, steroids, and pornography to its subscribers. AOL launched the suits after receiving roughly 8 million individually spam complaints through a "Report Spam" feature that AOL introduced last fall. The identity of some of the spammers is unknown. However, filing the lawsuit has now enabled AOL to subpoena service providers and others to attempt to locate more information on the spammers.
Deeth Williams Wall https://www.dww.com/articles/war-on-spam-heats-up

Licensee Gets to Keep Licensor's Domain Name After License Termination Licensee Gets to Keep Licensor's Domain Name After License Termination

Domain Names
April 24, 2003April 24, 20032015-07-08
On April 7, 2003, a sole panelist of the World Intellectual Property Organization (WIPO) Arbitration and Mediation Center issued his decision in Urbani Tartufi s.n.c. v. Urbani U.S.A., a dispute involving the domain name "urbani.com". The Complainant, Urbani Tartufi s.n.c., is a world leader in the harvesting and sales of truffles and owns the registered trademark word "URBANI" in the U.S.A. and Italy.
Deeth Williams Wall https://www.dww.com/articles/licensee-gets-to-keep-licensors-domain-name-after-license-termination

British Internet Café Pays ₤180,000 for Copyright Infringement British Internet Café Pays ₤180,000 for Copyright Infringement

Copyright
April 24, 2003April 24, 20032015-07-08
The UK based EasyInternet Café (the "Café") chain has paid the British Phonograph Industry ("BPI") ₤180,000 in damages and fees to settle a court battle over copyright infringement. The issue arose out of a music downloading service offered by the EasyInternet Café chain. For a fee of ₤5, the Café chain allowed customers to download music from the Internet and copy it onto a CD.
Deeth Williams Wall https://www.dww.com/articles/british-internet-caf%C3%A9-pays-%C3%A2%E2%80%9A%C2%A4180000-for-copyright-infringement

North Carolina Statute on Internet Wine Sales Held Discriminatory North Carolina Statute on Internet Wine Sales Held Discriminatory

Information Technology
April 24, 2003April 24, 20032015-07-08
The U.S. Court of Appeals (4th Cir.) released its decision in Beskind v. Easley, holding that North Carolina's ban on direct shipment of wine from out of state wineries to North Carolina residents violates the U.S. Constitution's Commerce Clause.
Deeth Williams Wall https://www.dww.com/articles/north-carolina-statute-on-internet-wine-sales-held-discriminatory

B.C. Man Fined for Posting Election Results on the Internet B.C. Man Fined for Posting Election Results on the Internet

Information Technology
April 24, 2003April 24, 20032015-07-08
Earlier this month, a British Columbia manwasconvicted of violating the Canada Elections Act("the Act") and fined C$1,000for posting federal election results on the Internet. Paul Bryan is the only individual ever convicted under the provisions of the Act which make it an offence to publish election results in parts of the country where the polls are still open. Bryan published the results of the 2000 election on his Internet site as soon as they were available in each region of the country, before polls closed in BC.
Deeth Williams Wall https://www.dww.com/articles/bc-man-fined-for-posting-election-results-on-internet

Recent Decisions by the Canadian Privacy Commissioner Recent Decisions by the Canadian Privacy Commissioner

Privacy
April 24, 2003April 24, 20032015-07-08
Recently, the Privacy Commissioner of Canada (the "Commissioner") released a series of findings based on individual complaints under the Personal Information Protection and Electronic Documents Act ("PIPEDA"):
Deeth Williams Wall https://www.dww.com/articles/recent-decisions-by-canadian-privacy-commissioner-0

Tariff 22 Decision Heading to Supreme Court Tariff 22 Decision Heading to Supreme Court

Litigation
April 10, 2003April 10, 20032015-07-08
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.
Deeth Williams Wall https://www.dww.com/articles/tariff-22-decision-heading-to-supreme-court

Decision Released on "CEOFUNDS.CA" Decision Released on "CEOFUNDS.CA"

Domain Names
April 10, 2003April 10, 20032015-07-08
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").
Deeth Williams Wall https://www.dww.com/articles/decision-released-on-ceofundsca

Copyright Technological Protection Measures Study Released Copyright Technological Protection Measures Study Released

Copyright
April 10, 2003April 10, 20032015-07-08
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.
Deeth Williams Wall https://www.dww.com/articles/copyright-technological-protection-measures-study-released

U.S. House of Representatives Passes Child Internet Bill U.S. House of Representatives Passes Child Internet Bill

Information Technology
April 10, 2003April 10, 20032015-07-08
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.
Deeth Williams Wall https://www.dww.com/articles/us-house-of-representatives-passes-child-internet-bill

PayPal Accused of Violating Patriot Act PayPal Accused of Violating Patriot Act

Information Technology
April 10, 2003April 10, 20032015-07-08
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.
Deeth Williams Wall https://www.dww.com/articles/paypal-accused-of-violating-patriot-act

Alberta Government Closing Tax Loophole for Online Cigarette Sales Alberta Government Closing Tax Loophole for Online Cigarette Sales

Information Technology
April 10, 2003April 10, 20032015-07-08
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.
Deeth Williams Wall https://www.dww.com/articles/alberta-government-closing-tax-loophole-for-online-cigarette-sales

Patent Infringement Lawsuits Against Palm and eBay Patent Infringement Lawsuits Against Palm and eBay

Patents
April 10, 2003April 10, 20032015-09-23
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".
Deeth Williams Wall https://www.dww.com/articles/patent-infringement-lawsuits-against-palm-and-ebay

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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