Laws of .com

Volume VI, Issue 16: October 16, 2008

Google to Appeal German Court Ruling

EchoStar Pays TiVo $104.6 Million in Damages

Bush Enacts Controversial Pro-IP Anti-Privacy Law

Almost 2.7 Million Numbers on Do Not Call List in One Week

U.S. Senate and House of Representatives Permitted to Use YouTube

Spafinder Inc. Wins Dispute Over spafinder.ca

Trade-Mark: Abandonment & 'Expungement'

Google to Appeal German Court Ruling

Google has lost two recent copyright infringement lawsuits brought in Hamburg, Germany by a photographer and artist, respectively. In each case the German court found that Google violated copyrights by displaying thumbnail images of the plaintiffs' works in Google's search results. The Court held that permission of the owner is required in order to display such copies of images, and that the mere fact that the thumbnails are smaller and of lower quality did not matter.

The German decisions differ with the results in the U.S. in the Ariba case and, more recently, the Perfect 10 v. Google decision by the U.S. Ninth Circuit Court of Appeals, which decided that the social value of Google’s ability to search images and return useful results outweighed the limited interest authors had in small copies (this was in spite of there being evidence before the court of the existence of a market for such copies).

Google plans to appeal the rulings.

For additional information, visit:
http://news.cnet.com/8301-1023_3-10064740-93.html

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EchoStar Pays TiVo $104.6 Million in Damages

TiVo Inc., a company that helped pioneer the personal video recorder (PVR), has been in a long-running patent dispute with EchoStar Corp, seller of the Dish Network DVR. TiVo owns a patent on one of the cornerstones of its PVR devices: the ability to record a program on a digital video recorder while watching another one at the same time. At trial in Texas, a jury found that EchoStar, through its set-top box, wilfully infringed TiVo’s patent. The decision was affirmed in multiple appeals. EchoStar appealed to the U.S. Supreme Court, which refused to hear arguments. EchoStar has paid TiVo $104.6 million in damages.

The parties are still awaiting a ruling in a related injunction proceeding over whether EchoStar owes TiVo more damages for failing to deactivate infringing devices.

For additional information, visit:
http://news.cnet.com/8301-10784_3-9917018-7.html

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Bush Enacts Controversial Pro-IP Anti-Privacy Law

U.S. President George W. Bush signed into law on October 13, 2008, a controversial bill which aims to increase the protection of intellectual property. It increases criminal law penalties for piracy and counterfeiting. It also creates a new role of national "intellectual property czar" who will report directly to the president on how to better protect intellectual property rights. Industry groups, such as the Recording Industry Association of America, Motion Picture Association of America, and the U.S. Chamber of Commerce are supporters of this bill. However, public advocacy groups have opposed the bill, stating that its penalties are too harsh and it hinders the fair use of copyrighted material.

For additional information, visit:
http://www.itworld.com/legal/56070/bush-enacts-copyright-law

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Almost 2.7 Million Numbers on Do Not Call List in One Week

Almost 2.7 million telephone numbers were registered on Canada’s national do-not-call list (DNCL) in its first week of operation. Canada’s DNCL commenced operation at midnight on September 30, 2008, and in the first 24 hours, public demand to register telephone numbers was so high that the DNCL’s website and telephone hotline were overwhelmed. It is projected that 60% of Canada’s 27 million residential phone numbers will be registered on the DNCL within two years.

For additional information, visit:
https://www.lnnte-dncl.gc.ca/
http://shorl.com/digeprafradimo

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U.S. Senate and House of Representatives Permitted to Use YouTube

The House Rules Committee and the Senate Rules and Administration Committee recently approved rules that permit members of the U.S. Senate and House of Representatives to post content on YouTube and other third party websites, as long as it is for official purposes. Previously, members could only post content to the .gov domain. Members are now also permitted to provide links to, or embed outside content on, their official government sites, provided that they include an exit notice indicating that the visitor is leaving the government site. The new rules respond to difficulties experienced by members in reaching their constituents online, as occurred, for example, when Congress was considering the recent bailout bill.

For additional information, visit:
http://news.cnet.com/8301-13578_3-10058034-38.html

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Spafinder Inc. Wins Dispute Over spafinder.ca

The Canadian Internet Registration Authority (“CIRA”) has ordered Ontario Spa, a Mississauga-based corporation, to transfer the domain name spafinder.ca to Spafinder Inc. Spafinder Inc., a New York-based corporation, has used the CIPO-registered mark, SPAFINDER, to promote its services since 2001, while Ontario Spa registered the domain name, spafinder.ca, in 2003.

CIRA, in accordance with CIRA Policy, weighed several relevant factors to determine which party had the right to use the domain name in dispute. Such factors included the scope of Spafinder Inc.’s rights in the mark and whether the mark was distinguishable to the extent that it had developed a second meaning; whether spafinder.ca was confusingly similar to the registered mark SPAFINDER; whether the registration was made in bad faith; and whether Ontario Spa had a legitimate interest in the domain name. Ultimately, after considering these factors, CIRA panelist David Lametti found in favour of Spafinder Inc.

For a copy of the decision, visit:
http://www.cira.ca/en/dpr-decisions/00108-spafinder.ca.pdf

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Trade-Mark: Abandonment & 'Expungement'

The Supreme Court of Canada rejected an application for leave to appeal the decision of the Federal Court of Appeal (FCA) in the trade-mark case Cross-Canada Auto Body Supply (Windsor) Ltd. v. Hyundai Auto Canada, A Division of Hyundai Motor America. The trade-marks at issue were originally owned and registered by Hyundai Motor Company, based in Seoul, South Korea. The Applicants, Cross-Canada Auto Body, are re-sellers of automotive parts and accessories, including parts for Hyundai automobiles that bear the Hyundai trade-mark.

At the Federal Court of Canada (FCC) and FCA, Cross-Canada sought to expunge from the Canadian Trade-mark Register five registered trade-marks: HD Design, HD & Hyundai Design, HMC Design, Hyundai, and Sonata, all belonging to Hyundai. The Applicants argued that three of the trade-marks - HD Design, HD & Hyundai Design and HMC Design - have been abandoned, and that the five trade-marks were invalidly registered because they were not distinctive of Hyundai’s wares at the commencement of this action. Hyundai denied all allegations, but admitted that the HD Design trade-mark is not currently being used, although its registration has been regularly renewed annually.

In its judgment, the FCC ordered that the HD Design trade-mark be struck from the Canadian Trade-mark Register. However, the FCC dismissed the remainder of Cross-Canada's application and awarded costs to Hyundai. The FCA upheld the judgment of the FCC. The lesson learned from this case is that assignment of trade-marks should be registered with the Canadian Trade-marks Office immediately after the transfer is executed, and that renewal of trade-mark registration without actual use of the mark does not offer any protection to the registrant.

For a copy of the decision, visit:
http://www.canlii.org/en/ca/scc-l/doc/2008/2008canlii46989/2008canlii46989.html

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