INNOVATE! HAMILTON

TM Owner Recovers 1017 Confusing Domain Names

In a precedent-setting decisionunder the mandatory Uniform Dispute Resolution Policy for .com domain name registrations, the owner of FREECREDITREPORT.COM was granted an order transferring into its control 1,017 domain name registrations considered confusingly similar to its TM. The registrations were all variations and misspellings of the FREECREDITREPORT.COM trademark or so-called "typosquatting" registrations.

Given that FREECREDITREPORT.COM may be considered a descriptive term on its face, the decision provides a good example of some of the difficulties encountered when attempting to enforce exclusive rights in such a mark.

Descriptive marks are not immediately eligible for protection as TM's. However, they can become eligible for such protection if used exclusively by one party for an extended period of time so that the mark acquires "secondary meaning" as a TM. The fact that the owner managed to get FREECREDITREPORT.COM registered as a TM in the US on this basis was critical to its success in this case.

The USPTO Blogs

The new Director of the USPTO has set up his own blog. The first entry can be viewed here. Comments are welcome although they are subject to editorial approval prior to posting.

The first entry concerns patents, the independent inventor and proposed changes in the US to convert to a "first to file system". The US is one of the few countries in the world that still grants patents to the inventor who was the "first to invent" rather than the first inventor who filed an application for the same invention (ie. "first to file"). As the Director points out, disputes over who was the first to invent only arise where two inventors independently develop the same invention at approximately the same time period. Canada is a "first to file" jurisdiction.

There are also good policy and practical reasons to favour a "first to file" system. Of course, it is controversial as you can see from the comments on the Director's Blog.

Australia: Academics not Universities own Intellectual Property

In a landmark decision that may have broad implications for educational institutions all over the world, an appeal court is Australia has upheld a trial decision which found that individual academics, and not their universities, own intellectual property over their inventions.

In the trial decision, the court found that although academics may have a duty to conduct research under the terms of their employment, this duty does not involve a "duty to invent". Consequently, it found that individual academics, not universities, would usually own intellectual property in their inventions.

Drawing a distinction between "pure research" and the "commercial development of inventions" can be an exceedingly "fine line" as many commercially valuable inventions are derived from so-called pure research. For this reason, some would argue that it's a nonsensical distinction.

One on side, there is the costly equipment made available by universities for the conduct of pure research – most of which is likely paid for by tax dollars – which suggests that universities should have some financial interest in any commercial applications developed. On the other side, there are arguments about academic freedom and the long-standing traditions of universities with respect to intellectual property that are not always in accord with the modern expectations of an employment relationship.

Often Canadian universities have intellectual property policies under which they share the profits with their academics for any commercially valuable inventions developed during their employment. However, the key to the validity of these policies may be whether or not they are incorporated into the employment agreements – most often these are now union negotiated labour agreements in Canada.

Walmart & Union Fight over Colourable Use of TM's

As noted previously in this blog, there are no recognized exceptions (yet) in the Canadian law respecting trademarks and copyright to provide an outlet for freedom of expression. In previous legal wrangling between Unions and TM owners, the Unions have been less than successful in convincing the courts that such an exception should be made. But its a fight that will, no doubt, be fought again and again.

Now the NY Times reports that Wal-Mart is relying on TM law in an attempt to shut down a web site operated by the UFCW which is, of course, trying to recruit union members from Walmart employees.

To my mind, the interesting question is whether a freedom of expression exception should be made for unions who are often in the position of criticizing employers for the collective good of their employees (and arguably the public good). In other words, why should trademark owners be entitled to prohibit any negative associations with their marks if those associations are true or at least "fair"?

Method Patents to be Debated US Supreme Court

The US Supreme Court is set to hear an appeal in the Bilski case and the legal briefs are coming in from the parties themselves as well as multiple interested persons who are making submissions as "friends of the court".

Dennis Crouch of Patently-O posted a good summary on August 10, 2009 of the various briefs filed so far. Check it out.

The debate is, of course, whether so-called "method patents" designed to protect a new process are the proper subject matter for patent protection. In other words, where/how do you draw the line between an abstract idea (ie. not patentable) and applied science (ie. patentable). Interesting stuff as it gets back to the fundamentals...

Dispute Over RNAI Technology

RNA interference, or RNAi is a cutting edge area in biotechnological research. RNAi technology could potentially be used to turn off genes responsible for serious diseases. It may also yield mechanisms for turning on helpful but inactive genes. RNAi technology was the subject of the 2006 Nobel prize winning research by Craig Mello and Andrew Fire. Basic research continues in academic labs, but biotech companies are racing to create commercial drugs based on RNAi.

This exciting and lucrative field has also spawned high stakes litigation in the United States.

Alnylam Pharmaceuticals and the Max Plank Institute have sued the Whitehead Institute for Biomedical Research , MIT, and the University of Massachusetts for allegedly misappropriating intellectual property relating to patent applications for RNAi technology. The case focuses on two patent portfolios based upon research conducted by Tom Tuschl, in cooperation with other leading researchers affiliated with various universities and research institutions, (the Tuschl-I applications and the Tuschl-II applications). The research producing the Tuschl-I and the Tuschl-II applications was conducted over a period several years, during which time researchers joined and left the research team, and researchers moved from between research institutions, assigning their rights in their work to their then current sponsors. Patent rights management agreements exist between various sponsoring research institutions to facilitate protection and licensing of the intellectual property, but the ownership of the Tuschl-I and Tuschl-II does not directly overlap. Attempts to use research conducted for the Tuschl II project to support patentability of the Tuschl-I patent applications has caused Alnylam Pharmaceuticals and the Max Plank Institute (who have rights in only the Tuschl II applications) to seek legal redress for their possible losses resulting from the use of the Tuschl -II research results in the granting of Tuschl-I patents, in respect of which they do not have ownership and from which they cannot derive financial recompense.

For more information on the tangled web before the Suffolk County Superior Court in the Commonwealth of Massachusetts:

http://dockets.justia.com/docket/court-madce/case_no-1:2009cv11116/case_id-123116/

 

ORGANIC CERTIFICATION: New Developments

There have been several new developments in the past month with respect to the federal governments new regulations.

First, a new logo was introduced:

Second, Canada and the US reached an agreement that will allow both Canadian and US producers to export certified organic products into the other jurisdiction without the need for additional certifications. Both the above logo and the USDA Organic seal may be used on certified organic products in both countries.

 

 

For more information on this agreement, visit Canadian Food Inspection Agency web site at: http://www.inspection.gc.ca/english/corpaffr/newcom/2009/20090617e.shtml.

Third, the federal regulations are finally considered to be in force as of June 30, 2009. Under these regulations, agricultural products represented as "organic" (or marked with either of the above logos) must be certified by an accredited body for sale in international and inter-provincial trade. The federal regulations do not apply to agricultural products produced and sold within the same province, but some provinces already have their own regulations and the rest are expected to enact similar regulations in the near future.

A list of Certification Bodies accredited by the Canadian Food Inspection Agency can be found here: http://www.inspection.gc.ca/english/fssa/orgbio/cbliste.shtml

A list of Conformity Verification Bodies can be found here: http://www.inspection.gc.ca/english/fssa/orgbio/cvbliste.shtml.

Americans Coveting our Maple Leaf?

A clothing manufacturer known as American Clothing Associates has filed an application to register a maple leaf design as a TM in Europe. The design mark also includes the letters RW below the leaf design. However, the leaf design does bear a striking similarity to the iconic maple leaf that appears on the Canadian flag, etc.

So far their application has been refused as confusing with Canada's national symbol (protected under international law), but the decision is under further appeal. If interested in a more legal analysis, check out the commentary on the IPKAT blog.

THE DOWNLOAD DECADE

The Globe & Mail has started publishing an ambitious series of articles and multi-media publications documenting the growth of music sharing on the internet and the tangled copyright conundrums raised by this activity.

The series is entitled "The Download Decade". Ironically enough, its available for download from the Internet. Check it out. 

Copyright in Baseball Card Designs

LARRY NEUMEISTER of the Associated Press has an article recently published on salon.com about a new copyright lawsuit alleging infringement of the format of baseball cards. Take a look at it.

The interesting aspect of this case is that the alleged copyright infringement reportedly relates only to the certain elements in the layout for the baseball cards, including:

"a colorful, divided two-tone border, the player's photograph superimposed on a thin white border, the player's autograph toward the bottom of the picture and the use of an image of a baseball on a bottom corner of the card".

Unfortunately, it is not uncommon for businesses to copy design elements from their competitors' advertisements, forms, labels, etc. as a shorthand to getting their products to market. Given the sometimes simple or even obvious nature of these designs, copyright is rarely considered. However, there is no litigant more motivated than a business competitor and the consequences (ie. legal costs and lost profits) are rarely worth the savings on the cost of developing original materials.