E-TIPS

In a spate of moves on the part of governments, consumers and regulatory agencies, a cross-border drama continues in the pharmaceutical sector driven primarily by the influence of the Internet on the industry's distribution system. (See an earlier news item in E-TIPSâ„¢, Vol 2, No 15, January 8, 2004).

A recent case in the Canadian Federal Court Trial Division pitted a trade-mark applicant in the restaurant business, Spiridon Zervas & Dimitr Zervas in Partnership trading as 007 (Zervas), against Danjaq Inc (Danjaq), the owner of a strong trade-mark in the entertainment business associated with the Ian Fleming novels and the movies character James Bond.

A Florida District Court of Appeal has upheld the decision of a trial court in denying a motion by America Online, Inc (AOL) for dismissal of a class action for improper venue. In so doing, the Court refused to enforce the forum selection clause in the company's standard form subscriber agreement (Member Agreement).

Microsoft Corporation (Microsoft) has expanded its legal battle against Lindows.com Inc (Lindows), suing the software maker for trade-mark infringement in Canada. Lindows, a California-based software company, and its Canadian distributor, South West Shore Development Authority (based in Yarmouth, Nova Scotia), are named as defendants in an action launched in the Federal Court, Trial Division. In addition to other relief, Microsoft is seeking an injunction barring the defendants from doing business under the "Lindows" trade name.

On the application of a coalition of Hollywood movie studios, the District Court for the Northern District of California has issued an injunction prohibiting 321 Studios (321) from selling versions of its DVD duplication software. The Court found that 321's "DVD Copy Plus" and "DVD X Copy" violated §1201(a)(2) and §1202(b)(1) of the Digital Millennium Copyright Act (DMCA), given that each of the above programs was primarily designed, produced, and marketed to the public to circumvent embedded DVD copy protection. Both programs came equipped with an unlicensed de-scrambling component to allow users to decrypt the CSS (Contents Scrambling System) encoding and make a copy of the decrypted DVD. In making its findings, the Court ruled that the DMCA does not infringe fair use or constitutional rights of users and does not otherwise exceed the scope of Congressional powers.

On January 9, 2004, the Canadian Federal Court of Appeal allowed an appeal by the Plaintiffs, Realsearch Inc and Dingwall's Machinery & Supply Ltd, from a motion in the Trial Division pursuant to Rule 107 of the Federal Court Rules by the Defendants, Valon Kone Brunette Ltd and BRD Machinery Ltd. The decision on the motion see E-TIPSâ„¢ (Vol 2, No 2, July 3, 2003) had permitted a separation of the issues of patent construction from a trial on the merits of the alleged infringement. In the United States, the claims of a patent are routinely interpreted before trial in claim interpretation hearings, following the US Supreme Court decision in Markman v Westview Instruments.

In Vaquero Energy v Weir, the Alberta Court of Queen's Bench awarded the Plaintiffs general and punitive damages of $75,000 for defamatory statements posted by the Defendant on the Internet.

On February 3, 2004, Senator Donald Oliver reintroduced his anti-spam legislation, Bill S-2. The Bill was originally introduced on September 17, 2003, but died when Parliament was prorogued in November. As noted in an earlier issue of E-Tipsâ„¢ (Vol 2, No 8, September 25, 2003), the Bill, entitled An Act to prevent unsolicited messages on the Internet, aims to establish and maintain a no-spam list, adopt more severe offences for spam involving pornography, fraud, or where children are targeted; erect a regulatory council (where ISP participation would be compulsory); and require the federal Minister of Industry to consult with provincial and international governments on methods to control and reduce spam. Although anti-spam advocates will view Bill S-2 as a positive sign, private members' Bills often fail to become law unless they attract Government support.

In National Technical Systems v Schoneman, the California Court of Appeal has ruled that a "public forum" encompasses an Internet bulletin board. The Court made the finding in the context of an appeal from a trial decision concerning the posting of allegedly defamatory statements about a corporation and its President on an Internet bulletin board.

A recent article by Yuki Noguchi in the Washington Post ("Online Search Engines Help Lift Cover of Secrecy") serves to remind computer users that Internet search engines are able to find information considered by their creators and users to be confidential.

In May 2003, the Canadian Private Copying Collective (CPCC) applied to the Copyright Board of Canada for an order in aid of the enforcement of the Private Copying Tariff and the interim tariff of levies collected by the CPCC for the sale of blank audio recording media in Canada. Specifically, the CPCC asked for an order against certain importers believed not to be in compliance with the Private Copying Tariff.

In the most recent issue of E-TIPSâ„¢ (Vol 2, No 17, February 5, 2004), it was reported that the English Court of Appeal had concluded that in order for information to be "personal data", it must be information that affects a person's privacy. Subsequently, the UK Information Commissioner released a commentary on the Court's decision and on the impact of its interpretation of the Data Protection Act, 1998 (DPA).

On January 1, 2004, the new Limitations Act, 2002 was proclaimed in force, resulting in significant changes to Ontario's law of limitations. Although the entire statute deserves a close review by those in the legal profession, there are several changes worth noting here.

In a decision released January 27, 2004, Justice Pitt of the Ontario Superior Court of Justice dismissed the motion of the defendant Washington Post to stay a libel action brought by the plaintiff, Cheickh Bangoura. This will allow the plaintiff to pursue his claim arising from alleged defamatory statements published on the Internet by the defendant continuously since January 1997.

In Durant v Financial Services Authority [2003] EWCA Civ 1746, the English Court of Appeal has held that in order to be "personal data", information must affect a person's privacy.

On January 21, 2004, the US House Judiciary Committee approved a Bill entitled The Database and Collections of Information Misappropriation Act. If passed, any person who makes available in commerce a qualitatively substantial part of a database generated, gathered, or maintained by another person without authorization would be exposed to civil liability, subject to certain provisos. Plaintiffs would be able to recover actual damages sustained and profits, with courts having the discretionary power to apply an additional damage award up to two times the actual damage amount. There would be exemptions for non-profit, educational, scientific, or research institutions, and government databases would not be affected.

The US Government's new cyber alert system is open for business. A partnership between the Department of Homeland Security's National Cyber Security Division and the private sector, US-CERT represents an effort to develop a credible warning system to aid home users and technology experts alike to defend against cyber incidents and attacks. This is to be accomplished by sending urgent e-mails about major virus outbreaks and other Internet attacks as they occur, along with detailed instructions to help computer users protect themselves.

A Canadian patent is not void if the wrong inventor is named in the application. This was the conclusion of the Federal Court of Appeal recently in 671905 Alberta Inc v Q'Max Solutions Inc.

On January 23, 2004, the US Court of Appeals for the Second Circuit upheld a lower court's ruling in Register.com Inc v Verio Inc granting a preliminary injunction against Verio.

In a recent Japanese court decision, an inventor was awarded more than CDN$252 million as "reasonable remuneration" under Japanese patent law for transferring his rights in an invention to Nichia Corp (Nichia). Shuji Nakamura, now a professor in the US, invented the blue light-emitting diode while employed by Nichia. Estimates are that about 60% of Nichia's annual sales revenue is derived from the invention, now widely used in colour displays on cell phones, personal digital assistants, traffic signals, automobile instruments, and other products.