E-TIPS

In its opinion dated June 15, 2004 (DirecTV, Inc v Treworgy), the US 11th Circuit Court of Appeals affirmed that section 2520 of the Wiretap Act, 1986 (Wiretap Act), does not create a private right of action arising from mere possession of access devices. DirecTV, Inc (DirecTV) brought suit against a Florida resident, Mike Treworgy, who had two pirated access cards for the DirecTV system. DirecTV filed a claim for the illegal possession and use of the cards under Section 2512(a) of the Wiretap Act.

The Federal Court of Canada (Trial Division) has ruled that offering free aviation guides on a web site did not breach the predatory pricing provisions of the Competition Act. In a somewhat unusual move, the plaintiff, Michael Culhane, an aviation author and publisher, brought a civil action based on an alleged breach of the predatory pricing provisions of the Competition Act. Culhane had objected to the decision of the defendant, ATP Aero Training Products Inc, to offer free aviation guides through its web site. The plaintiff claimed that the defendant was engaged in a predatory pricing scheme contrary to s 50(1) of the Competition Act by selling products at unreasonably low prices. As well, the plaintiff contended that the defendant's activities unlawfully interfered with his economic interests. The relief sought included a declaration, a prohibitory injunction and damages.

On January 1, 2004, the US CAN-SPAM Act was enacted to curb the flow of spam. A previous issue of E-TIPSâ„¢ (Vol 2 No 2 March 31, 2004) reported that the effectiveness of the legislation had been called into question by the results of a survey of users of personal and business e-mail. Now e-mail security provider MessageLabs Ltd has released figures showing that spam volume is still on the rise, despite the enactment of the legislation. In May 2004, on average, 76% of inbound e-mails were spam, up from 67% in April.

Earlier this month, Research In Motion (RIM) of Waterloo, Canada, argued its case before the US Court of Appeals for the Federal Circuit against a lower court's decision to stop RIM from selling its popular hand-held radio frequency e-mail device (Blackberry) and pay US$54 million in damages for infringing five patents owned by NTP Inc (NTP), an Arlington, Viginia-based company. The lower court had earlier stayed the injunction order pending the outcome of an appeal, and funds representing damages are being held in escrow.

The world's three largest trade-mark offices recently entered into an agreement to harmonize their practices regarding the identification and classification of goods and services.

The case of Bacardi & Company Limited v Havana Club Holdings SA involved a chain of historical events dealing with the Castro regime and the registration for a Canadian trade-mark, HAVANA CLUB.

Only days after the California State Assembly enacted a package of bills intended to contain rising prescription drug costs and make it easier for Californians to buy cheaper drugs from Canadian pharmacies, legislation has been introduced into the US Senate which, under certain conditions, would legalize drug imports from Canada.

The Ontario Superior Court of Justice has ruled that the use of videotape surveillance evidence recorded by a private investigator does not constitute the collection of personal information under the Personal Information Protection and Electronic Documents Act (PIPEDA).

The Tax Court of Canada has ruled that completing online courses through a US educational institution does not constitute "commuting" for the purpose of qualifying for Canada's tuition tax credits.

The British Columbia Privacy Commissioner has launched an investigation into issues relating to the USA Patriot Act and the privacy of BC residents' personal information involved in the outsourcing of public services to US-linked private sector service providers. The US legislation permits the FBI to seize records from US companies without a court order. But the BC Privacy Commissioner believes that it is unclear whether the law could affect Canadian-based subsidiaries of US corporations that are subject to the US legislation. Specifically, could medical files relating to BC residents be seized by the US government by asserting rights against a US corporation whose Canadian-based subsidiary is a party to a BC outsourcing contract?

A mismatch between the US government attitudes on controlling gambling and the pervasive effects of the Internet have produced another legal dilemma for businesses, both domestic and foreign, that rely on the gambling industry.

On May 21, 2004, in a landmark decision, the Supreme Court of Canada ruled that Monsanto's patent for the genes and cells found in its Roundup-Ready canola was valid, and that Percy Schmeiser, a Saskatchewan farmer who had grown the canola without a licence, had infringed the patent. For the background to the case, see an earlier issue of E-TIPSâ„¢ (Vol 2 No 16 January 22, 2004).

The intersection between industrial design protection and trade-mark protection was highlighted in a recent 2003 Federal Court of Canada decision. In WCC Containers Sales Limited v Haul-All Equipment Ltd (2003 FC 962), the Federal Court Trial Division expunged Haul-All's registration under the Trade-marks Act for a SLOPE BIN CONTAINER DISTINGUISHING GUISE DESIGN. The Court found that the container design (shown below), which Haul-All had sold for many years as an animal-proof refuse bin, was distinctive, but was primarily functional.

On April 29, 2004, the US Congress renewed an amended form of the Internet Tax Freedom Act (47 USC 151), now called the Internet Tax Nondiscrimation Act (108th 2d S 150 ES). The legislation extends application of the tax-exempt status of Internet access until November 1, 2007.

On May 11, 2004, the Minister of Industry announced the formation of a Special Task Force dedicated to the issue of spam. During 2002, a plan to combat spam was developed in concert with stakeholders in the industry, such as ISPs and large corporations. The Special Task Force will now have the responsibility of implementing this plan, which calls for the use of existing and possibly new legislation, along with technical measures developed by the industry, to fight spam.

The Federal Court Trial Division recently prohibited the Minister of Health from issuing a Notice of Compliance (NOC) to Rhoxalpharma Inc in connection with its 25 mg and 50 mg capsules of the drug cyclosporine until the expiry of Canadian Patent No 1,308,656 (the "˜656 Patent). The owners of the "˜656 Patent, Novartis Pharmaceuticals Canada Inc and Novartis AG (Novartis) had commenced the application in response to having received a Notice of Allegation from Rhoxalpharma asserting that its capsules would not infringe the'656 Patent.

On May 13, 2004, Industry Canada published Principles for Electronic Authentication. The Principles are meant to serve as benchmarks for the development, provision and use of electronic authentication services in Canada. They attempt to do this by identifying the functions and responsibilities of participants in authentication processes and providing those participants with a framework to assess and manage the risks in meeting those responsibilities. In addition, the Principles identify security, privacy, disclosure, and complaint handling matters that need to be considered at each stage of the design, development, implementation, and assessment of an authentication process. However, the Principles do not address the liabilities that could be borne by various participants involved in the authentication process. In particular, the Principles do not consider issues of consumer protection or liability.

As noted in the previous edition of E-Tipsâ„¢ (Vol 2 No 24 May 12, 2004), the Canadian Treasury Board Secretariat published Secure Electronic Signature Regulations under the Personal Information Protection and Electronic Documents Act (PIPEDA) and the Canada Evidence Act on May 8, 2004.

An employee of CP Rail, who is also a union local representative, has commenced an action in the Federal Court of Canada to attempt to stop his employer from using video surveillance cameras at its maintenance shop located in Toronto, Ontario (Eastmond v Canadian Pacific Railway and Privacy Commissioner of Canada).

Microsoft has recently released a new digital rights management software, code-named Janus, that will allow users to set expiration dates on digital files such as digital music or movie files.