Illegal Downloaders Beware – You Can Run but You Can’t Hide Behind Your ISP: Balancing Privacy Rights against the Rights of Copyright Holders
By Scott Miller, February 24th, 2014
The Federal Court of Canada in Voltage Pictures LLC v. John Doe and Jane Doe (2014 FC 161) has set the ground rules for when an Internet Service Provider (ISP) will be required to hand over to copyright holders the names and addresses of individuals suspected of unauthorized downloading of copyright material such as movies and music.
The court ordered the Ontario based ISP TekSavvy to disclose approximately 2000 customer names and addresses to the U.S. production company Voltage Pictures for the alleged unauthorized downloads of such movies as “The Hurt Locker” and “Dallas Buyers Club”.
In Canada, the Copyright Act provides for statutory damages for non-commercial infringement in the range between $100 and $5000. This range was likely implemented to discourage file sharing lawsuits against individuals. However, it is easy to imagine how with the names and addresses of individuals a simple letter to a suspected downloader of, for example, pornography might be embarrassed into paying a settlement without the copyright holder having to file a lawsuit.
To that end the court was extremely sensitive to both the potential rise of the so called ‘Copyright Trolls’ - plaintiffs who file multitude of lawsuits solely to extort quick settlements and the need to safeguard an individual’s right to privacy.
In order to overcome these issues but also balance the right of the copyright holder, the Federal Court instituted the following safeguards before requiring the ISP to deliver the subscriber names and addresses, including:
- The moving party must demonstrate a bona fide case (a real intend to sue and there is no other improper purpose)
- Disclosure will be only names and address and not phone numbers or email addresses
- The information disclosed shall be used exclusively for the purpose of the lawsuit and will not be disclosed to the public/media
- The letter to the ISP subscribers will include the court order and a statement that ‘no Court has yet found any recipient of the letter liable for infringement’
- The case will be specially managed and a Case Management Judge will approve the demand letter before it is provided to the individuals
- The copyright holder shall pay the legal costs of the ISP before the information is provided
The safeguards and limit on damages might still result in some copyright holders bringing lawsuits to deter the public at large from infringing copyright but the economics suggest this will not open the floodgates to litigation before the Federal Court. Likewise, the safeguards do balance the fear against Copyright Trolls and the potential loss of privacy rights.
For more information, please visit CTV National News website to watch Scott Miller’s commentary given during the CTV news coverage of the case.
MBM Intellectual Property Law Has Moved!
When is an Engineer not Engineering in a Trade-mark?
Scott Miller, February 18th, 2014
In Kelly Properties, LLC v. Canadian Council of Professional Engineers, 2013 FCA 287, the MBM litigation team successfully overturned the Federal Court decision of Canadian Council of Professional Engineers v. Kelly Properties, LLC, 2012 FC 1344 which found the trademark KELLY ENGINEERING RESOURCES unregistrable in association with personnel employment services, namely, providing temporary, temporary to full-time, and full-time employees having specialized technical skills, education and/or training.
The recent Federal Court of Appeal decision is important for two reasons:
- A trade-mark application based on a foreign registration may register regardless of whether a date of first use claimed in a Canadian trade-mark application is correct; and
- Just as a trade-mark which is descriptive is registrable if it is not clearly descriptive - A trade-mark which is potentially misdescriptive is registrable if it is not deceptively misdescriptive.
FOREIGN USE BASIS OF REGISTRATION ALIVE AND STRONG IN CANADA:
The Federal Court of Appeal solidified that where a trade-mark application is based on use in Canada and foreign use and registration, the two are pleaded in the alternative. That is, only one of the basis of the application must be met for the application to be considered for registration. Therefore, if the application is found to be unsupported on one ground, it may still be registered on the basis of the alternate ground for registration.
DECEPTIVELY MISDESCRIPTIVE NOT TO BE DETERMINED BY GUIDELINES
Each of the Provinces and Territories in Canada include legislation that more or less defines the Practice of Engineering to incorporate the professional application of applied science. The engineering legislation also includes a prohibition of the use of the word engineer/engineering in a trademark if the use may lead the public to believe the trademark owner is engaged in the Practice of Engineering.
Kelly Services sought to register the trademark KELLY ENGINEERING RESOURCES in connection with personnel employment services. The Canadian Council of Professional Engineers opposed registration on the basis that only licensed engineers should be able to use the term “engineering” in a trade-mark. The evidence before the Trade-marks Opposition Board (2010 TMOB 224) demonstrated that Kelly Services is a personnel employment company and its KELLY ENGINEERING RESOURCES division employs and places both engineers and non-engineers with technical training (e.g. draftsmen). However, the Trade-marks Officer determined that personnel employment services would not be the type of technical services that one would expect engineers to provide. As such, the Board found the trade-mark neither clearly descriptive nor deceptively misdescriptive.
The Federal Court agreed with the Trade-marks Officer’s decision that KELLY ENGINEERING RESOURCES was not clearly descriptive of personnel employment services, but found the mark deceptively misdescriptive relying heavily on a non-statutory guideline from the Association of Professional Engineers which provided criteria for when human resource or staffing agencies are allegedly engaged in the Practice of Engineering. The guideline was not before the Trade-marks Officer and the Federal Court concluded that the guideline would have materially affected the decision of the Officer. Thus the Federal Court came to its own conclusion without giving deference to the Trade-marks Opposition Board decision.
The Federal Court of Appeal found the guidelines of the Alberta Association that regulates the profession of engineering to be just that, guidelines and not law. The Court accepted MBM’s argument that the guidelines were merely the opinions of the Alberta Engineering Association and its interpretation was irrelevant for the purpose of trade-mark law. Since all statutes to regulate the term “engineer” were before the Trade-marks Opposition Board, the Court found that the trial judge made a palpable and overriding error in admitting evidence that opined on the scope and the interpretation of those statutes.
The Federal Court of Appeal found that the decision of the Trade-marks Opposition Board was reasonable and confirmed that the trade-mark KELLY ENGINEERING RESOURCES is registrable in association with personnel employment services. The Trade-marks Opposition Board correctly considered the mark as a whole, and recognized the family of KELLY marks used in personnel employment services.
The bottom line is even if one presumed that the mark KELLY ENGINEERING RESOURCES was misdescriptive of personnel employment services (which was not the case), it was clearly not deceptively so.
For more information, please contact:
Scott Miller, Partner
New Powers to Combat Counterfeit Products in Canada Likely Around the Corner
New Powers to Combat Counterfeit Products in Canada Likely Around the Corner
Scott Miller, October 30th, 2013
On October 28, 2013 the Government of Canada introduced bill C-8 (Combating Counterfeit Products Act) which, if passed, will significantly improve the fight against counterfeit products in Canada. The bill also includes substantial changes to the Canadian Trade-marks Act. This bill was introduced in the previous session of Parliament but did not proceed when Parliament was prorogued. The bill has been fast tracked and it is expected that it will become law in some form.
Proposed Changes to Stop Counterfeiting:
Currently, in order to stop the importation of counterfeit goods into Canada, a right-holder must proactively obtain a Court order directing that the alleged infringing materials be detected and detained. The process is costly and requires the right-holder have specific information regarding the importation of the alleged infringing materials.
Under the bill both the Trade-marks Act and Copyright Act will be changed to include provisions where the Canada Boarder Services Agency (CBSA) will have increased power to combat counterfeit goods from entering Canada at markedly less cost to the right-holder. A right-holder can file for a standing 2 year ‘Request for Assistance’ with the CBSA which would enable the CBSA to provide the right-holder with samples of suspect products. The right-holder could then use this information to pursue new remedies under the Trade-marks Act or Copyright Act including both indictable and summary convictions with fines upward of $1,000,000 dollars and/or imprisonment of five years.
Proposed Changes to Trade-mark Law:
The proposed definition of a trade-mark is being considerably broadened to include the following: a word, a personal name, a design, a letter, a numeral, a colour, a figurative element, a three-dimensional shape (currently known as a distinguishing guise), a hologram, a moving image, a mode of packaging goods, a sound, a scent, a taste, a texture and the positioning of a sign.
Under the proposed bill, trade-marks for three-dimensional shapes, a mode of packaging goods, sound, scent, taste, and texture will require evidence of distinctiveness at the date of filing.
Under current Canadian trade-mark law, registration of a proposed use trade-mark application may occur after allowance where a declaration of use is filed for the wares/services actually used. For those wares/services not used, the application dies in association with those unused wares/services. Under the bill, an applicant can file a divisional application for those goods/services not used at the time of filing the declaration of use and claim priority to the original application.
For more information, please contact:
Scott Miller, Partner
Another Win for MBM
Another Win for MBM – Federal Court of Canada Overturns Trademark Opposition Board and Recognizes the Overlap Between Alcohol and Tobacco (Cigars)
EMPRESSA CUBANA DEL TABACO dba CUBATABACO et al. v. TEQUILA CUERVO, S.A DE C.V. (2013) FC 1010
Scott Miller and Jonathan Roch, October 8, 2013
Tequila Cuervo filed a Canadian trade-mark application for the trademark LAZARO COHIBA, disclaiming the word LAZARO. The application was based on proposed use for “alcoholic beverages, namely rum”. The application was opposed by Cubatabaco on grounds including that LAZARO COHIBA was not registrable based on the likelihood of confusion with the COHIBA registered trademarks for cigars and tobacco. On September 30, 2008, the Trademark Opposition Board concluded that “in view of the differences between the wares and trades of the parties and the fact that the opponents have not established an extensive reputation for their marks “ that the LAZARO COHIBA trademark was registrable.
Following the Trademark Opposition Board decision MBM was appointed as counsel to Cubatabaco. An appeal of the Board’s decision was filed by application to the Federal Court. The Federal Court overturned the Board’s decision and refused the registration of the LAZARO COHIBA trademark application.
Fame (Extensive Reputation) Demonstrating Without a Survey
MBM was able to demonstrate that the COHIBA trademarks are widely known across Canada by filing new evidence to establish that COHIBA has been referenced in films, television, music and other media, such as print magazines distributed in the United States and Canada. The fame of the COHIBA trademarks was established not by an expensive survey but by creatively revealing that pop media has used COHIBA cigars to demonstrate social status and wealth. The decision is equally important because it recognizes that for some iconic brands, personal ownership or use of the product is not essential to the awareness of the trademark. Click here to view a copy of the decision.
There are multiple ways for trademark professionals to establish confusion. While in some incidents expensive surveys may be necessary that will not always be the case.
Supreme Court Asked to Reconsider Decision to Invalidate Viagra Patent
By Suzanne Hof - November 16 2012
Pfizer Canada Inc. (Pfizer) has asked the Supreme Court of Canada to reconsider its decision to invalidate their Canadian Patent No. 2,163,446, the patent that provided Pfizer with a monopoly for its multi-million dollar erectile dysfunction drug, Viagra.
Pfizer has taken the position that the Court “accidentally granted a remedy in this appeal that exceeds its jurisdiction.” The proceedings in question were initiated as an application under the Patented Medicines (Notice of Compliance) Regulations, the outcome of which is typically not to determine invalidity or infringement, but rather to determine whether a notice of compliance should or should not be granted.
In the present case, the present proceedings were initiated as an application for an order prohibiting Teva Canada Limited from obtaining a notice of compliance for its generic version of Viagra. Pfizer has therefore taken the position that the Supreme Court was acting outside its jurisdiction in its finding of invalidity.
In particular, Pfizer has applied for an order to amend the Supreme Court’s recent judgment “by replacing the words ‘and Patent 2,153,446 is declared void’ with the words ‘the application below is dismissed and the Order of the Federal Court dated June 18, 2009, prohibiting the Minister from issuing notice of compliance to the appellant is hereby set aside’.” In the alternative, Pfizer has applied for a re-hearing on the issue of remedy.
We will, of course, be following these proceedings and posting updates.
The read the previous article on this please visit: If There is No Quid Then There Can Be No Quo - Pfizer's Viagra patent invalidated by Supreme Court of Canada
If you have any questions please contact Suzanne Hof
If There is No Quid Then There Can Be No Quo - Pfizer's Viagra patent invalidated by Supreme Court of Canada
By Suzanne Hof - November 2012
Today, in a unanimous decision, the Supreme Court of Canada sided with Teva Canada Limited in its bid to invalidate Pfizer Canada Inc.’s Canadian Patent No. 2,163,446 (the ‘446 patent), thereby clearing the way for generic companies to manufacture and sell a generic version of the multi-million dollar erectile dysfunction (ED) drug, Viagra.
This decision hinged on the finding that the ‘446 patent did not satisfy the disclosure requirements under Section 27(3) of the Patent Act. In this regard, the Supreme Court overturned the findings of both the Federal Court and the Federal Court of Appeal that the ‘446 patent did, in fact, provide sufficient disclosure.
The question of sufficiency was raised around whether the specification would have enabled the public “to make the same successful use of the invention as the inventor could at the time of his application” because it does not indicate that sildenafil (the active compound in Viagra) is the effective compound. Although the ‘446 patent does state that “one of the especially preferred compounds induces penile erection in impotent males,” there is no indication which of the several specific compounds identified throughout the description of the patent is this “especially preferred” compound, i.e., sildenafil. Nor does the specification state that the remaining compounds identified in the ‘446 patent were found not to be effective in treating ED.
Furthermore, although claims 6 and 7 are each directed to specific single compounds, there is no indication in the specification that claim 7 relates to sildenafil. By omitting any clear statement that the sildenafil is the active compound, the Supreme Court found that:
There was no basis for a skilled person to determine which of Claim 6 and Claim 7 contained the useful compound, further testing would have been required to determine which of those two compounds was actually effective in treating ED.
According to fundamental principles underlying the patent system, adequate disclosure of the invention in the specification is a precondition for the granting of a monopoly to an invention. It is this “bargain”, or quid pro quo, that the Court references (“[i]f there is no quid – proper disclosure – then there can be no quo – exclusive monopoly rights”) in its finding that the patent be deemed invalid.
If you have any questions please contact Suzanne Hof
Please read the UPDATE on this in our on Nov 16, 2012 NEWSFLASH - Supreme Court Asked to Reconsider Decision to Invalidate Viagra Patent
Adam Tracey Joins MBM
Firm Announcement - Adam Tracey Joins MBM
July 23, 2012
We are delighted to announce that Adam Tracey has joined MBM’s Ottawa office. Adam was called to the Ontario bar in 2008 and is a registered Patent and Trade-mark Agent. Adam’s practice includes drafting and prosecuting patent applications in a variety of technical fields, with particular focus in the areas of manufacturing, construction, industrial, agricultural, medical and oil field technologies, as well as providing patentability, freedom-to-operate, infringement and validity opinions.
Adam has considerable experience advising domestic clients on cost-effective IP filing strategies and international clients with respect to strategic IP portfolio management within Canada and practices in the areas of patent and trade-mark law and related IP litigation.
Adam also practices trade-mark law and has experience negotiating and drafting licensing agreements and other commercial contracts. In addition, Adam’s experience brings a strong compliment to our engineering practice team.
To learn more about Adam Tracey please visit his online profile.
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