American Girl, the well-known doll maker, recently lost a domain name battle over AmericanGirl.ca as panelist Bradley Freedman
ruled that the company failed to meet the basic requirements in the
dot-ca dispute resolution policy. The case should have been a slam dunk
as the company's trademark pre-dates the domain name registration, the
domain was being used for a pay-per-click site, and the domain name
registrant did not even respond to the complaint. Yet American Girl
still lost as it failed meet one of the policy's basic requirements of
providing some evidence that the registrant did not have a legitimate
interest in the domain name. In reading Freedman's decision, it is
readily apparent that there was ample opportunity to do so, yet the
company oddly did not take advantage of a CIRA policy that would have
assisted it in making the case. The left Freedman with little
alternative but to conclude:
Policy paragraph 1.1 provides that the purpose of the Policy is to provide a forum in which cases of bad faith domain name registration can be dealt with relatively inexpensively and quickly. Nevertheless, a proceeding under the Policy affects the respective rights of the parties regarding a disputed domain name, and the Policy and Rules expressly require a panel to consider all of the evidence and argument presented in the proceeding and render its decision in accordance with the Policy, the Rules and applicable law. Accordingly, a panel must determine whether a complainant has met its onus regarding each of the elements specified in Policy paragraph 4.1, and if a complainant has failed to do so the panel must dismiss the complaint.
For the reasons set forth above, the Panel is compelled to conclude that the Complainant has failed to satisfy the onus to provide "some evidence" that the Registrant has no legitimate interest in the Domain Name as described in Policy paragraphs 3.4(e) and (f). Consequently, the Complaint cannot succeed.TagsShareMonday January 21, 2013
Today is Internet Freedom Day,
a day to celebrate efforts to ensure an open and free Internet. Coming
on the anniversary of the Wikipedia blackout that successfully stopped
the Stop Online Piracy Act in the United States, it is worth thinking
about the many successes (ACTA, Internet surveillance in Canada),
failures (TPP, digital locks in Canadian copyright law), and tragedies
(Aaron Swartz) that have occurred in the past year.
Last fall, I delivered a keynote address at the University of Saskatchewan for its Technology Week
2012 that focused on these issues. The talk was titled When the Internet Met Copyright and can be viewed via a stream here (sorry no embed available). TagsShareFriday January 18, 2013
Many readers will recall that nearly one year ago, the U.S. government launched
a global takedown of Megaupload.com, with arrests of the leading
executives in New Zealand and the execution of search warrants in nine
countries. Canada was among the list of participating countries as the
action included seizure of Megaupload.com servers located here. While
the failed attempt
(thus far) to extradite Megaupload mogul Kim Dotcom to the U.S. has
attracted the lion share of attention, the U.S. government has quietly
been working to obtain access to all the data stored on seized computers
in other jurisdictions.
Last week, an Ontario court rejected
a request to send mirror-imaged copies of 32 computer servers to
authorities in the U.S., indicating that a more refined order is needed.
Megaupload did not contest the seizure of the computers. It did argue,
however, "that there is an enormous volume of information on the servers
and that sending mirror image copies of all of this data would be
overly broad, particularly in light of the scantiness of the evidence
connecting these servers to the crimes alleged by the American
prosecutors." The company added that the volume of data on the 32
servers was equivalent to 100 laptop computers and that a review of the
content by the court was appropriate.
In response, the judge asked the two parties to refine the proposed
order by limiting what is disclosed to what is relevant to the case. The
the appropriate balance of the state interest in gathering evidence
and privacy interests in information can be struck by an order that the
servers be brought before the court pursuant to s.15 (2) so that the
court can make an order refining what is to be sent. By this, I do not
mean that at this stage the servers must physically be delivered to the
courthouse. The application for a sending order is adjourned without a
fixed return date, returnable on 7 days’ notice. If counsel are unable
to agree as to how the scope of relevant material is to be defined then
the matter may be brought back before a judge of this court for
determination of that issue.TagsShareWednesday January 16, 2013
Canada's anti-spam legislation was back in the news last week as the
government unveiled revised regulations that may allow for the law to
finally take effect next year. Canada is one of the only developed
economies in the world without an anti-spam law and lengthy delays have
created considerable uncertainty.
My weekly technology law column (Toronto Star version, homepage version) notes that calls for Canadian anti-spam legislation date back to 2005, when a
national task force recommended enacting laws to target spam, spyware,
and other online harms (I was a member of the task force). The
government passed the anti-spam law in December 2010, with many
expecting a quick introduction of the accompanying regulations that
would allow the law to take effect. After business groups criticized
draft regulations released in June 2011, however, the government hit the
pause button, leaving the law in limbo.
Read More ...
Critics used the delay to spread fear about "job losses" and
"regulatory red tape", yet the reality is that the battle over the
anti-spam battle boils down largely to a single issue: whether
businesses should be required to obtain explicit, opt-in consumer
consent before sending electronic commercial messages. The law says
they should and much of the intense lobbying for new exceptions is
premised on avoiding this requirement.
The new law unquestionably sets a high bar for consent. It envisions
a marketing framework where consumers reassert some measure of
control over their email in-boxes by opting-in to commercial
messages, rather than being required to opt-out. Moreover, the
law establishes email form requirements to simplify opting-out of
future messages should consumers change their minds and backs the
new framework with stiff penalties for violations the law.
While an opt-in consent system should be relatively uncontroversial
- businesses benefit by sending messages to consumers who clearly
want to receive them - the vociferous criticism makes it plain that
many marketing organizations fear that if Canadians are asked
directly for their email marketing consent, many will decline.
Given those fears, Industry Minister Christian Paradis faced
considerable lobbying pressure to water down the law through the
regulatory process. Earlier this month, he caved to some
demands by introducing a host of new exceptions that limit the
effectiveness of the opt-in model.
For example, the regulations include a broad new exception for third
party referrals that will allow businesses to send commercial
electronic messages without consent based merely on a referral from
a third party. This issue was hotly debated when the law was being
drafted and, at the time, the government rejected claims that such
an exception was warranted.
The new regulations also include an expansive definition for a
"personal relationships" exception that is likely to be used by
organizations to send unsolicited commercial messages based on
limited contact. The flexible definition of personal relationship
may open the door to claims that Facebook "likes" or similar social
media contact is sufficient to constitute a personal relationship.
Industry groups had asked the government to pre-approve existing
consents obtained under PIPEDA, the private sector privacy law,
arguing that obtaining new consumer consents will be
disruptive. The government rightly rejected those requests,
however, since the PIPEDA consents will often have been implied from
consumer activity and not based on an actual, informed consent.
Those businesses concerned by the new consent standards may find
comfort in the assurance that some requirements are unlikely to take
effect until 2017. The law features a lengthy transition
period that will allow businesses to rely on their existing consents
for three years after the legislation takes effect. Assuming the
regulations are finalized in 2013 and the law becomes operational in
2014, businesses will have been given seven years to ask Canadian
consumers if they consent to the use of their personal information
for marketing purposes.
TagsShareTuesday January 15, 2013
In a world where data now moves effortlessly between computers on the
Internet without regard for geographic borders, is the appearance of a
website on a computer screen sufficient for a court to claim that a
trademark has been used in the country? Is the use of a computer server
enough to assert jurisdiction over a non-resident? My weekly technology law column (Toronto Star version, homepage version) notes that two recent
cross-border cases - one Canadian and one U.S. which both pitted a U.S.
company against a Canadian individual - found that it is.
The Canadian case involved a trade-mark dispute over the mark VRBO.
Martin Hrdlicka, a Toronto resident, registered the mark in Canada in
2009. Just over a year later, Homeaway.com, a U.S. company that owns the
popular VRBO.com site, sought to expunge the trade-mark on the grounds
that Hrdlicka was not entitled to register the mark and had no intent to
Homeaway.com's legal challenge was that the company had no operations in
Canada, though many Canadians may have accessed its U.S.-based website.
Trade-mark law requires some use of the mark in Canada, yet the "use"
in this case was largely confined to the availability of the VRBO
website on computer screens.
Read More ...
TagsShareWednesday January 09, 2013
While the Supreme Court of Canada has emphasized the need for actual
use connected to Canada, the Federal Court broke new ground by
ruling that "a trade-mark which appears on a computer screen website
in Canada, regardless where the information may have originated from
or be stored, constitutes for Trade-Marks Act purposes, use and
advertising in Canada."
The December decision has already generated fierce criticism within
the Canadian intellectual property community, which fears that
foreign rights holders could challenge the validity of hundreds of
Canadian trade-marks on the grounds that the marks were used before
registration on the Internet.
similarly raises concerns about overly aggressive
claims based primarily on computer usage. The case involved Jackie
Deiter, a Fort Erie, Ontario resident who worked for the Canadian
subsidiary of MacDermid Inc., a Connecticut-based chemical company.
Deiter lost her job in April 2011, but just before her termination,
she transferred some company files from the company email account
(stored on a computer server in Connecticut) to her personal
account, which was based in Canada. At issue in the case was whether
a Connecticut court could assert jurisdiction over Deiter.
A lower court ruled it could not, concluding that Deiter had
insufficient connections to the state. Late last month, an appellate
court overruled that decision, finding that Deiter may have
physically used computers in Canada (she emailed the documents from
a Canadian-based work computer to a Canadian-based personal
computer), but the fact that the company computer server was based
in Connecticut was enough to meet the jurisdictional requirement.
The Deiter case is sure to raise concerns since the case implies
that mere use of a computer server in the United States may be
sufficient grounds for a U.S. court to assert jurisdiction over
foreign residents. Given the widespread use of U.S.-based Internet
services, it opens the door to many more cases against foreigners
before U.S. courts.
Both the Homeaway.com and Deiter cases involved unsympathetic
litigants - the court sensed that Hrdlicka had registered the VRBO
mark with the hope of selling it for a profit, while Deiter
transferred confidential documents to a personal computer in
violation of company policy - yet the long-term implications of
these decisions is that courts on both sides of the border
apparently stand ready to use the Internet to expand traditional
notions of jurisdictional rules.
Industry Canada unveiled long-awaited revised anti-spam regulations on Friday for the Canadian Anti-Spam Law.
The regulations are in draft form and comments can be submitted to the
government until February 3rd. Given the intense lobbying by business
groups to water down the legislation passed in 2010 and the initial draft 2011 regulations,
it comes as little surprise to find that the proposed regulations
include several significant loopholes and exceptions that undermine the
effectiveness of the law. The key new regulations include:
third party referrals: the regulations include a broad new
exception for third party referrals that will allow businesses to send
commercial electronic messages without consent based merely on a
referral from a third party. This issue was hotly debated when the bill
was being drafted and, at the time, the government rejected claims that
such an exception was warranted. In the face of intense lobbying,
however, the opt-in approach to electronic marketing is being dropped
and replaced by a system that allows for unsolicited commercial
electronic messages based on third party referrals.
Read More ...
personal relationships: the 2011 draft regulations featured a
fairly restrictive definition for the personal relationship
exception that allows for commercial messaging without consent where
there is a family or personal relationship. The new definition is
far broader and is likely to be used by many organizations based on
limited contact. The regulation defines personal relationship as:
those individuals have had direct, voluntary, two-way
communications and it would be reasonable to conclude that the
relationship is personal taking into consideration all relevant
factors such as the sharing of interests, experiences, opinions
and information evidenced in the communications, the frequency of
communication, the length of time since the parties communicated
and if the parties have met in person
legal or juridical obligations: the new regulations exclude
commercial emails that either satisfy legal or juridical
obligations, enforce legal rights, or provide notice of an existing
or pending right.
computer programs: the new regulations include two new
definitions for computer programs that are excluded from the scope
of requirements in the law to obtain express consent when installing
those programs. The new definitions cover efforts by telecom
providers to install programs to "prevent activities that the
telecommunications service provider reasonably believes are in
contravention of an Act of Parliament and which present an imminent
risk to the security of its network" or a program installed "for the
purpose of updating or upgrading the network, by or on behalf of the
telecommunications service provider who owns or operates the network
on the computer systems that constitute all or part of the network."
business-to-business exceptions: the new regulations expand
the scope of business-to-business communications to alleviate
concerns they would be caught by the Act.
While the third party referral and personal relationship regulations
will raise particular concern, the government did reject efforts to
grandfather consents obtained under PIPEDA, the private sector
privacy law. While marketing groups argued that obtaining new
consents would be disruptive, the reality is that the anti-spam law
creates tougher consent requirements (explicit opt-in consent vs.
implied opt-out consent in some instances) and relying on the
weaker, implied PIPEDA consents would be inappropriate.
Moreover, the law already features a lengthy transition period that
will allow businesses to rely on their existing consents for three
years after the legislation takes effect. In other words, despite
the fear mongering about the anti-spam legislation, current customer
lists will be exempted from the new consent requirements until 2017
(assuming the law does not take effect until 2014). Since the law
was passed in 2010, seven years is surely enough time for businesses
to ask Canadian consumers if they consent to the use of their
personal information for marketing purposes.
TagsShareMonday January 07, 2013
Given that few would have predicted that Internet protests last year
would have led to the defeat or delay of legislation in the United
States (the Stop Online Piracy Act) and Canada (Internet surveillance
legislation) as well as spell the end for the Anti-Counterfeiting Trade
Agreement in Europe, a new round of predictions for what lies ahead
amounts to little more than guesswork. With that caveat in mind, my weekly technology law column (homepage version, Toronto Star version) provides a month-by-month look at what 2013 may have in
store for technology law and policy.
January. The government opens the New Year by releasing proposed
anti-spam regulations with promise that the long-delayed law will take
effect by 2014. The regulations leave no one satisfied as they water
down the law with a host of new exceptions and exclusions that limit
requirements for businesses to obtain consent before sending unsolicited
Read More ...
February. The Canadian Radio-television and
Telecommunications Commission conducts a high profile hearing on the
creation of a binding wireless code of conduct. The resulting code
extends far beyond the initial expectations of the major carriers
with new transparency requirements, restrictions on contractual
terms, and obligations to unlock cellphones once a contract has
March. Thousands of Canadians begin receiving letters
alleging copyright infringement from file sharing activities with
demands to settle the claims for $1,500. Rights holders do not
sue those that refuse to settle, however, effectively acknowledging
that a court would be unlikely to award much more than the $100
minimum now found in the Copyright Act.
April. Canada and the European Union conclude a comprehensive
trade agreement as the Canadian government caves to European
pressure on pharmaceutical patent reform. The changes are expected
to add billions to provincial health care costs.
May. Industry Minister Christian Paradis unveils the
long-awaited digital economy strategy with a plan to make Canada a
global leader that can boast of universal, affordable access to
high-speed Internet services. (just kidding - the proverbial Penske
file will remain unfinished in 2013).
June. The copyright world gathers in Geneva as the World
Intellectual Property Organization concludes negotiations on a
treaty to enhance access for the visually impaired. The U.S. and
E.U. offer continued resistance to the treaty with Canada largely
silent throughout the diplomatic talks.
July. The government hits the reset button with prorogation
and a cabinet shuffle. The change effectively kills both Bill C-12
(privacy reform) and C-30 (Internet surveillance).
August. The CRTC announces plans to revisit the issue of new
media regulation during a fall hearing. Despite ongoing pressure for
regulation of online video services such as Netflix, the Commission
retains the exemption for the regulation of new media services.
September. Industry Canada moves forward with its
overdue spectrum auction. The auction rules frustrate incumbents and
new entrants alike, with both claiming that they are unable to amass
sufficient spectrum to offer new, competitive wireless services.
October. The deadline for concluding the Trans Pacific
Partnership negotiations comes and goes without an agreement.
Participating countries, including Canada, maintain there has been
"good progress" in the talks, but leaks suggest a growing divide
over U.S. demands related to intellectual property and investor
November. The University of Toronto and Western University,
the first two Canadian universities to sign an agreement with Access
Copyright in 2011, announce that they will not be renewing those
licences as of 2014. The universities cite reliance on fair dealing
as the reason for the decision.
December. The Supreme Court of Canada releases its decision
in United Food and Commercial Workers, Local 401 v. Alberta
(Attorney General), a case involving the constitutionality of
privacy legislation that was argued before the court in June 2013.
The court upholds the constitutionality of the Alberta privacy
legislation, but sends a clear message that there are instances
where privacy protections must be limited to avoid impeding free
TagsShareThursday January 03, 2013
The Canadian Institutes of Health Research have launched a new open access policy
that took effect on January 1st. The new policy requires CIHR funded
researchers to make their peer-reviewed publications freely available
within 12 months of publication. Moreover, researchers are now required
to deposit certain data immediately upon publication of the research
results. The new policy forces CIHR-funded researchers to publish in
open access journals or ensure that their journal of choice will allow
for open access post-publication.TagsShareWednesday January 02, 2013
Wallace McLean has posted his annual celebration
of public domain day, listing dozens of authors whose work entered into
the public domain in Canada on New Year's Day. Notable names this year
include Nobel Prize winners William Faulkner and Herman Hesse as well
as poet e.e. cummings. The list is particularly notable this year as
Canada is participating in the Trans Pacific Partnership negotiations,
which include U.S. proposals
to extend the term of copyright in Canada to life of the author plus 70
years (from the current life plus 50). If adopted, the change would
mean that no new works would enter the Canadian public domain for two
decades.TagsShareWednesday January 02, 2013
From the remarkable battle over the Stop Online Piracy Act to the
massive public backlash against Internet surveillance in Canada, law and
technology issues garnered headlines all year long. A look back at 2012
from A to Z:
A is for Astral, the Canadian broadcasting giant that was to be sold to
Bell Media for over $3 billion. The CRTC blocked the sale on the grounds
that the companies failed to demonstrate the transaction was in the
B is for Jean-Pierre Blais, the newly appointed chair of the Canadian
Radio-television and Telecommunications Commission. Blais surprised the
industry by adopting a strong pro-consumer approach during his first
months on the job.
C is for the Copyright Modernization Act, the copyright reform bill that received royal assent in June 2012.
D is for Dean Del Mastro, the Peterborough Member of Parliament who raised the spectre of regulating online anonymity.
E is for the European Parliament, which voted overwhelmingly to reject
the Anti-Counterfeiting Trade Agreement after hundreds of thousands of
Europeans protested against it.
F is for FreeDominion.com, an online chat site that defeated a claim of
copyright infringement involving the posting of portions of newspaper
G is for GeoCoder, a small Ottawa company that created a crowd-sourced
database of Canadian postal codes. Canada Post objected to the database,
filing a copyright infringement lawsuit.
H is for the U.S. Department of Homeland Security, which seized
bodog.com, a domain name owned by Canadian online gambling tycoon Calvin
I is for Industry Minister Christian Paradis, who failed to unveil a
digital economy strategy, despite a commitment to do so by year-end.
J is for Jones v. Tsige, a landmark Ontario Court of Appeal decision that recognized a new tort for invasion of privacy.
K is for Keatley Surveying v. Teranet, a proposed class action lawsuit involving copyright claims over land surveys.
L is for levies on microSD cards. After a copyright collective asked the
Copyright Board of Canada to impose new fees on the cards, the
government issued a regulation effectively blocking the request.
M is for McMaster University, one of several Canadian universities that were hit by security breaches.
N is for Nexopia, a Canadian social media service that was found to have
violated privacy laws following a lengthy investigation by the Privacy
Commissioner of Canada.
O is for an open textbook initiative launched by the British Columbia
government that will support the creation of dozens of new freely
available online textbooks.
P is for the constitutionality of privacy legislation, which was thrown
into doubt in United Food and Commercial Workers, Local 401 v. Alberta
(Attorney General), an Alberta Court of Appeal decision.
Q is for the Queen v. Cole, in which the Supreme Court confirmed that privacy rights survive in the workplace.
R is for Rogers v. SOCAN, one of five copyright cases released by the
Supreme Court in July 2012 that shook up the Canadian copyright
S is for the Stop Online Piracy Act, the controversial U.S. legislation
that sparked global protests including a Wikipedia blackout.
T is for TellVicEverything, the grassroots Twitter campaign protesting against Canadian Internet surveillance legislation.
U is for Untied.com, a gripe site about United Airlines run by Jeremy
Cooperstock, a McGill professor. United demanded that Cooperstock take
the site down due to trademark and copyright claims.
V is for Voltage Pictures, which launched proceedings to obtain personal
information on thousands of Canadian Internet users alleged to have
downloaded its films.
W is for a wireless code of conduct, which the major wireless carriers
asked the CRTC to establish after several provinces moved to create
X is for dot-xbox, one of thousands of proposed new domain name extensions.
Y is for Yelp, the review site that hosted criticisms of an Ottawa
restaurant that ultimately led to a criminal libel conviction after the
restaurant owner sought revenge for the negative review.
Z is for Judge Russell Zinn, a federal court judge who confirmed that
the patent for Viagra was invalid days after the Supreme Court voided
the patent for failing to provide sufficient disclosure. TagsShareThursday December 27, 2012