|
Wednesday January 09, 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
use it.
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.
deiter, homeaway.com, jurisdiction, trademark, vrbo Slashdot, Digg, Del.icio.us, Newsfeeder, Reddit, StumbleUpon, TwitterTagsShareWednesday January 09, 2013 |
|
View
|
|
|
Wednesday January 09, 2013 |
Appeared in the Toronto Star on January 6, 2013 as Courts Adopt Aggressive Approach in Cross-Border Internet Jurisdiction Cases
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? 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
use it.
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.
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.
The U.S. decision 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.
Michael Geist holds the Canada Research Chair in Internet and
E-commerce Law at the University of Ottawa, Faculty of Law. He can
reached at mgeist@uottawa.ca or online at www.michaelgeist.ca.
deiter, homeaway, jurisdiction, trademark, vrbo Slashdot, Digg, Del.icio.us, Newsfeeder, Reddit, StumbleUpon, TwitterTagsShareWednesday January 09, 2013 |
|
|
