David Canton is a business lawyer and trade-mark agent with a practice focusing on technology issues and technology companies.
Boing Boing points to the Small Print Project, a site that collects unusual EULA’s (End User License Agreements).
Examples include a scammer that makes you promise you are not the FTC, and print on edible paper saying you can’t make further use of it.
Of course no EULA I have created for clients would ever show up there!!??
David Canton – for the London Free Press – October 28, 2006
How would you feel if an Internet search engine sold your trademark as a keyword in an online auction and you received nothing from the advertisements triggered from the keywords? What if the use of your trademark as a keyword triggered advertisements of a competitor?
When one does a Internet search, keywords are used to trigger the ads that appear along with the search results. For example, if you do a search on the word “computer,” sponsored links appear for various businesses selling computers. Those businesses pay the search engine owner for those to appear.
Many companies get upset when search engines sell keywords that are trademarks.
For example, computer repair and consulting business Rescuecom filed suit against search engine giant Google.
The controversy involves allegations Google violated U.S. trademark law by selling trademarks as an advertising keyword to competitors via an online advertising auction.
Google was recently granted a victory by a New York court.
Judge Norman Mordue of the Second Circuit ruled Google did not violate any federal laws when it sold trade-marks as ad words on an online advertising auction.
The judge granted Google’s motion to dismiss, which means there was no discovery or trial on the facts. Rescuecom is considering its appeal options.
The decision was based on the fact that a search engine selling keywords is not using the trademark in commerce, and consequently there is no misuse. Because Google does not place a trademark on any goods, containers, displays or advertisements, there is no violation of trademark law.
Even if Rescuecom proved, as it alleged, that Google capitalized on the goodwill and reputation of Rescucom’s trademark by marketing it to Rescucom’s competitors as a keyword in order to generate advertising revenues for Google, or that Rescuecom’s competitors believed Google is authorized to sell its trademark, or that Internet users viewing the sponsored links are confused as to whether the sponsored links belong to or emanate from Rescuecom — none of these facts, alone or together, establish trademark use.
This is a landmark decision for Google. While Google is the only search engine that has been given the nod by the courts, the decision paves the way for other search engines that wish to do the same thing.
The decision does not, however, give the green light to those that want to buy ad words using competitor’s trademarks. It in essence means that those who feel others are misusing their trademarks as ad words must go after the ad word buyers, and not the ad word seller.
ITCanada.ca has an article about the gap between the number of new IT jobs, and the number of IT graduates. It refers to a study that shows the demand for IT grads is far bigger than the supply.
This is consistent with discussions that have taken place within the London tech and education community. Anecdotal evidence suggests there are good job opportunities for grads in certain IT fields.
Those now making decisions about their education who have an interest in IT should consider programs at institutions such as the University of Western Ontario, and Fanshawe College.
David Canton – for the London Free Press – October 24, 2006
Apple Computer has come under fire for attempting to stop others from using certain “pod” words. Trade-mark owners are often in the position of risking the loss of rights to trade-marks if they don’t prevent others from using those marks.
If a trade-mark becomes a generic term for a product, it ceases to be a trade-mark. Trade-marks are valuable. No business wants to lose them.
Some critics suggest Apple is going overboard by aggressively pursuing anyone using the term “Pod” through cease and desist letters.
Apple is the registered owner of the iPod trade-mark. Sales of the portable multi-media device have been wildly successful — giving rise to an entire community that shares, listens and watches their media using the iPod. In the wake of Apple’s success with iPod, the term “podcasting” has developed to mean the recording of an audio file made available on the Internet for downloading to a personal audio/video player.
Apple recently sent a trade-mark cease and desist letter to a site called Podcastready, claiming trade-mark violations. It took the position that the term “myPodder” infringed on its trade-marks and that it causes confusion.
The difficulty is that while legal tests can be cited to determine when a trade-mark is not distinctive in the first place or loses its distinctiveness, they are not always easy to apply in practice.
The response from the podcasting community has been extremely critical of Apple’s approach, suggesting podcasting is not a trade-mark of Apple as it has become part of the vernacular.
Many podcasters suggest any publicity for the term “pod” only serves to bolster the reputation of Apple and Apple products. They suggest any action to dissuade individuals from increasing the popularity of the Apple product only prejudices Apple in the podcasting community.
Whether this particular instance is an Apple trade-mark violation is an important issue for Apple. It faces a real danger in allowing its trade-mark to become part of the vernacular.
The bigger question is whether it is time to reconsider the law in this area.
Perhaps it should be modified to consider the way the Internet and business have developed. Principles restricting use by others that may have made sense decades ago, may not be as workable today.
A trade-mark should clearly not be useable by others for similar wares and services and it’s not in any trade-mark owner’s interest for their trade-mark to become generic or descriptive of a product.
The conundrum the law puts a business in over the need to clamp down on use despite the consequences is not a welcome one.
The term “flog” (fake blog) has been coined in light of the controversy over the blog that on its face appeared to be written by an independent person, but was really created by Walmart’s PR agency. Turns out there were at least 3 different Walmart flogs.
This controversy has been in the press for a couple of weeks, and I’ve avoided mentioning it as it seemed to be getting lots of attention. The term flog is so appropriate, I just had to weigh in on this.
It reminds me of TV ads or infomercials that purport to be real people talking about a product. We all take those with a grain of salt (at least I do – but perhaps being skeptical is just part of my nature being a lawyer) – but even those sometimes have captions indicating they are actors or it is a dramatization.
Given the sheer number of blogs out there, we shouldn’t blindly accept all of them at face value – after all, reputation is earned, not born.
Nonetheless, it strikes me that if a business is going to create a blog to promote themselves, its misleading if they don’t disclose that. It doesn’t do one’s reputation much good when the world finds out what is really going on – unless you subscribe to the “any publicity is good publicity” concept.
To catch up on the facts and issues, take a look at Mathew Ingram’s post
The big news in the privacy front this week is the Ontario Privacy Commissioner’s release of guidelines for secure proof of identity over the Internet – in a whitepaper called 7 Laws of Identity: The Case for Privacy-Embedded Laws of Identity in the Digital Age.
The good news is that it was developed with, and is being supported by Microsoft. The bad news is that it was developed with, and is being supported by Microsoft.
Secure, private proof of identity over the Internet is much needed.
So will this approach work? Only time will tell.
The 7 laws framework is compelling. Let me offer though 7 tests it has to pass to be successful:
1. it must not be easily hackable
2. it must work easy and seamless
3. it must foster trust
4. the solutions must not cause collateral damage
5. no single entity can have excessive control over it
6. it must get past cynicism about Microsoft
7. it must be widely adopted
For more details and some interesting commentary, take a look at the comments by David Fraser and Michael Geist.
Techdirt has a post commenting that the MPAA is looking into ways of making DRM less annoying. Techdirt points out that this Goldilocks DRM (not too restrictive, not completely open) isn’t likely to come about.
The good news is there is an acknowledgement that DRM causes problems – but that’s only part of the issue.
As I see it there are 3 basic issues with DRM. The first is a business issue of whether that kind of control/restrictions on content actually helps the vendor. The second is that DRM tends to be annoying, user unfriendly, and brings unintended problems. The third is that someone always finds a way around it – so the protections are illusory.
While I understand that creators want to be compensated, I’m not convinced that DRM is the way to go about it.
The blogosphere has a couple of mentions about an article on the AppleInsider that points to a recent Apple trade-mark application for “iPhone” in a “Far Eastern” trade-mark office as evidence that Apple is in the final stages of development of its combo cellphone/ipod.
Apple applied for the iPhone trade-mark in Canada in October 2004. Note the Canadian application has been opposed by Comwave Telecom, which has also filed an application for iPhone.
David Canton – For the London Free Press – October 14, 2006
Businesses can accumulate large volumes of both paper and electronic information.
Collecting and retaining too much information can create a storage and logistical nightmare, and possibly violate privacy laws.
So how does a business decide what to keep and when to get rid of it?
Documents must be retained for various reasons. They may be needed to service customers, comply with legal requirements or as evidence in litigation. The best way to manage large volumes of information is to take a systematic approach through a records management policy.
A policy will make document management easier, cheaper and more effective.
A policy will reduce retention and storage costs, cut access time and costs, and foster compliance with statutory retention requirements.
Policies guide employees so the business collects and records only the information it needs, keeps information only as long as it is needed, and uses the information only for the purpose for which it was collected. A policy will help prevent inadvertent destruction of documents while they are still needed.
Confidential information is an aspect of document management that is often overlooked. Many businesses are bound by contract, law, or practice to keep certain information confidential. Special measures may be required for the handling of such information.
The first step in developing a policy is to organize a team to design and implement a records-management system. It should include those at senior levels and those who deal with the information on a routine basis.
The team starts by determining what types of activities the business conducts, the types of information generated and received by the business and how that information is used within the organization.
Once that inventory is done, the team should assess the business’s legislative and regulatory environment, as well as the business’s uses and needs for the information. It also should consider contractual obligations.
An overall review of industry practices and expectations and confidentiality obligations is important to direct the focus of the retention policy.
A retention policy should consider:
* Collection, use, disclosure, format, storage, access and security of documents
* Limiting collection and saving to only what is needed.
* Determining when and how to destroy documents.
* Implementing a mechanism to protect records the business must keep.
* Retrieval, review, and proof if a dispute arises.
Once a retention policy has been established, it must be put in writing and employees must be trained to implement, oversee and instruct other employees in the policy.
Establishment of an effective policy will help allow the business to focus its time and energy on the actual business, rather than the volumes of information associated with it.
Various sources have reported that the DRM in a new TiVo model will in some circumstances, when used with certain equipment, lock one out from viewing or recording certain legitimate content.
That points out one of the problems with DRM – that it often works (doesn’t work?) to restrict perfectly legitimate use that frustrates users. Sometimes there are ways to fix those “glitches”, but it is very annoying and counterproductive. Seems exactly the wrong approach in light of all the talk we have seen lately about the need to make the user experience simpler.
Unless otherwise stated, all original material created by David Canton included in this blog is licensed under a Creative Commons License.
