One of the most controversial aspects of the copyright reform bill is the digital lock provisions, which make it unlawful to break digital locks, even if it is only to exercise a right copyright law actually gives you.

A new US case has limited the effect of the US DMCA digital lock provisions, saying that they don’t prevent one from braking a digital lock to view or use a work.   As Michael Geist points out, that makes the Canadian proposal much tougher than the existing US provisions.

There has been a lot of controversy and debate over whether too many things are patentable, especially in the software and business method areas. 

Many thought the Amazon 1-click patent, which was under review, should not be valid.  The USPTO has, however, confirmed the patent.

Mike Masnick of Techdirt sums it up nicely, with links to further detail.  Mike says:

US Patent Office Decides That One Click Really Is Patentable

from the wow dept

Ladies and gentlemen, we now have confirmation that the USPTO is a joke. After years of back and forth, it has decided, once again, that Amazon’s one-click patent is perfectly valid. This, despite tons of prior art, and basic common sense. We were just wondering what was taking so long for the USPTO to reject the patent. But, of course, it seemed like the USPTO was willing to go out of its way to help keep this patent around. Of course, as some are pointing out, the end result of this patent surviving is that it may be used as example number one for patent reform.

For the London Free Press – March 8, 2010

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U.S. courts may have to decide if a teen’s parody of a popular clothing line is an infringement

The North Face Apparel Co., more commonly known as The North Face, recently filed suit against Jimmy Winkelmann, a 19-year old high school student and his small Missouri clothing company called The South Butt.

North Face’s statement of claim alleges trademark infringement and dilution, among other claims.

North Face sells athletic apparel and gear for runners, rock climbers, snowboarders and others. South Butt sells jackets, T-shirts and other apparel “approved for relaxation purposes only.”

Winkelmann says his intent was not to rip off the North Face, but to offer consumers an alternative.

He came up with the South Butt idea to mock North Face fleece jackets worn by the popular crowd at his school.

In response to North Face’s tagline, “Never stop exploring”, South Butt adopted “Never stop relaxing.”

The North Face’s legal counsel sent Winkelmann a cease and desist letter in August 2009, requesting that he stop using the South Butt name and logo and halt all sales, production and promotion of South Butt products.

According to North Face, the two logos are so similar as to possibly cause “consumer confusion as to the source, sponsorship or affiliation of particular promotions and services that could dilute or tarnish the distinctive quality of the famous and distinctive marks.”

Winkelmann recently filed a trademark application for the South Butt, which the North Face legal counsel also asked him to withdraw.

In response, Winkelmann’s counsel — a friend of Winkelmann’s father, who apparently agreed to represent the teen in exchange for a good bottle of red wine — filed a somewhat irreverent defence.

Mr. Watson, Winkelmann’s legal counsel, stated “the sense of parody employed by Winkelmann within the context of his South Butt undertakings clearly demonstrate a respectful, if not faltering ‘anti-North Face’ posture designed in all respects to distinguish itself from any and all North Face products.”

The defence points out that, to emphasize its position that the marks are unlikely to confuse, the defendant added this to its website: “We are not in any fashion related to nor do we want to be confused with the North Face Apparel Corp. or its products sold under ‘the North Face’ brand. If you are unable to discern the difference between a face and a butt, we encourage you to buy North Face products.”

Unless it is settled, the case will ultimately be decided on the technicalities of U.S. trademark law.

Since one legal tests of trademark infringement is customer confusion, you be the judge: Are the marks confusing enough that customers might think products bearing them are from the same source?

Mike Masnick of Techdirt has published a post that is a chapter he wrote for a book being presented at a conference for the International Association of Entertainment Lawyers (IAEL).

Its worth a read, not only for Mike’s thoughts on new ways for the music industry to make money, but also to consider how that business model might work for other industries. 

Here are some snippets to get a flavour:

It’s no secret that there’s a lot of concern these days about what the music industry will look like going forward — especially from those who work on the label side of the business and have been around for a bit. A variety of things have caused rapid change in the market. Competition from other forms of entertainment, such as the internet, movies and video games, have put more pressure on the industry, as consumers have been presented with significantly more options for their entertainment attention and dollars. And, of course, there’s the ever-present specter of unauthorized file sharing — or, as the industry prefers to call it (accurately or not), “piracy.”

…

However, there is another solution: stop worrying and learn to embrace the business models that are already helping musicians make plenty of money and use file sharing to their advantage, even in the absence of licensing or copyright enforcement.

In simplest terms, the model can be defined as:

Connect with Fans (CwF) + Reason to Buy (RtB) = The Business Model

Sound simple? It is, if you understand the basics — and it can be incredibly lucrative. The problem, of course, is that very few seem to fully understand how this model works. However, let’s go through some examples.

…

This is a business model that’s working now and it will work better and better in the future as more people understand the mechanisms and improve on them. Worrying about new copyright laws or new licensing schemes or new DRM or new lawsuits or new ways to shut down file sharing is counterproductive, unnecessary and dangerous. Focusing on what’s working and encouraging more of that is the way to go. It’s a model that works for musicians, works for enablers and works for fans. It is the future and we should be thrilled with what it’s producing.

For the  London Free Press – January 18, 2010

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Rival service Plurk alleges Microsoft copied as much as 80% of the code used in running the Juku program without permission

Microsoft recently susp-ended its new microblogging site, Juku, after it became clear the site contained code taken without permission from rival startup Plurk, a free social networking and microblogging service based in Canada.

Plurk recently alleged Microsoft copied as much as 80% of the code used in running the Juku program without permission. After investigating, Microsoft confirmed some Juku code had been used without permission and apologized to Plurk.

Though Microsoft admitted the plagiarism, it claimed a Chinese vendor developing the Juku application for MSN China was responsible for copying the code without permission.

“When we hire an outside company to do development work, our practice is to include strong language in our contract that clearly states the company must provide work that does not infringe the intellectual property rights of others . . . we are obviously very disappointed, but we assume responsibility for the situation. We apologize to Plurk and we will be reaching out to them directly to explain what happened and the steps we have taken to resolve the situation,” Microsoft said in a statement.

In response, Plurk co-founder Alvin Woon said, “we are still thinking of pursuing the full extent of our legal options available due the seriousness of the situation . . . basically, Microsoft accepts responsibility, but they do not offer accountability.”

“This event wasn’t just a simple matter of merely lifting code . . . due to the nature of the uniqueness of our product and user interface, it took a good amount of deliberate studying and digging through our code with the full intention of replicating our product-user experience, functionality, and end results. This product was later launched and heavily promoted by Microsoft with its big marketing budget,” Woon said.

This is not the first time Microsoft has apologized for infringing the intellectual property rights of others.

A month before the Juku allegations, Microsoft apologized for another third-party vendor improperly incorporating open-source codes into a Windows 7 download tool. The tool was developed to allow users to more easily load Windows 7 onto thumb drives. Microsoft subsequently withdrew the tool.

The recent allegations about Microsoft have caught many by surprise given that Microsoft has been a leader in the fight against piracy in China and elsewhere.

The lesson for anyone who hires others to create code or other creative works is the importance of having an agreement in place that requires the code to be original.

In the Juku case, it appears the contractor did not abide by that requirement. But having it in place let Microsoft move swiftly to protect its reputation, and show that, while it may be ultimately responsible, it did not intend or condone the copying. It should also give Microsoft some recourse against the contractor.

Its amusing / ironic / puzzling whenever someone who aggressively tries to protects its own copyright, trade-marks, or other intellectual property finds itself on the opposite side.   In other words, they engage in the very behaviour that they find offensive in others.

The latest example is Vanoc (aka the Vancouver Olympics).  Seems that there are a couple of instances where Vanoc has been accused of trying to acquire rights from others that crossed the line.

See the details on Excess Copyright or Techdirt.

For the London Free Press – June 22, 2009

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Registered industrial designs are less well-known than other types of intellectual property protection, but can be a valuable tool in the right circumstances.

A registered industrial design protects unique features of shape, configuration, pattern or ornament applied to an article.

Automakers often obtain industrial design registrations for things like the shape of a grille or taillight. A furniture maker might apply for the design of a chair.

Industrial designs are available for non-utilitarian parts of an object that are new and unique. It’s a feature that appeals to the eye.

Take, for example, a common garden hook that holds a hanging flower basket. The portion that holds the hanging basket is generally a small hook at the bottom of an inverted U-shape. That design is both utilitarian and in common use, so no industrial design could be registered for that for both reasons.

If, however, you wanted to make a unique garden hook with an unusual design that serves no purpose other than decoration, an industrial design registration could be obtained for that unique shape.

Once that registration is obtained, the registrant can stop anyone else from selling a hook that looks like that in Canada for10 years.

It is thus a useful way to brand your product and differentiate it from competing products.

Industrial designs are often thought of as being like a utility patent, which protects useful inventions. Indeed, in the United States, registered industrial designs are known as design patents and are registered within the patent registry.

In reality, industrial designs are more akin to a cross between copyrights and trademarks. A trademark protects words or images used to brand products or services, while copyright prevents the copying of artistic works.

So how does one go about obtaining an industrial design?

The first thing to note is that one cannot register a design more than one year after the design was first made public. And because the goal is to prevent others from selling a similar appearing article, it’s a good idea to make the application before or as soon as possible after the article goes to market.

Applications are made by filing drawings and/or photographs along with appropriate descriptions with the Canadian Intellectual Property Office. The application will be reviewed by an examiner for technical correctness and to determine if anything similar is already registered. The nature of the drawings required can be quite technical.

Anyone who produces tangible goods would be well served to search industrial design registrations before launching their own designs, to ensure that they are not infringing someone else’s design.

Next time you buy something that has a unique shape or design to it, look for the registered industrial design symbol — being a capital D within a circle beside the design owner’s name.

For the London Free Press – March 30, 2009

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Virtual reality was taken to a new level recently when famous guitar manufacturer, Gibson, sued Activision Publishing, Inc., creators of Guitar Hero, alleging that the video game system infringed upon one of its patents.

Specifically, Gibson Guitar Corp. registered U.S. Patent No. 5,990,405 in 1999. This patent covered,”a system and method for generating and controlling a simulated musical concert experience.”

In 2006, Gibson licensed to Activision certain Gibson trademarks for use within the Guitar Hero game.

In January 2008, Activision received a letter from Gibson stating that though the game maker had permission to use Gibson’s trademark, it did not have permission to use Gibson’s patent for simulated musical performances. The letter requested that “Activision obtain a licence under Gibson’s 405 patent or halt sales of any version of the Guitar Hero game software . . . and . . . instrument controllers.”

Activision instead filed a pre-emptive request with the court for a declaration that its top-selling video game did not infringe on Gibson’s patent. Gibson responded to Activision by filing a suit of its own.

In Activision Publishing Inc. vs Gibson Guitar Corp., decided Feb. 26, 2009, the California District Court dismissed the lawsuit and held that Activision had not infringed upon Gibson’s patent. The court made its opinion of the case clear when it held that the allegations brought forth by Gibson, “border on the frivolous.”

Throughout the case, Gibson tried to argue that their patent was infringed and even went as far as to say that, “the ’405 Patent covers any system where a user controls something ‘musical’ with any device.”

The court rejected the argument stating that, “by arguing that any sound made by any controller can potentially be musical, Gibson would have everything in the world — from the buttons of a DVD remote, to a pencil tapping a table — be an ‘actual musical instrument’ within the ’405 Patent.”

Ultimately, the court refused to give the term “musical instrument” such a broad interpretation and instead held that, “no reasonable person of ordinary skill in the relevant arts would interpret the ’405 Patent as covering interactive video games.”

The motivation for the lawsuit may be found in the pre-existing relationship between Gibson and Activision. Industry insiders have suggested that Activision’s decision not to renew the Gibson trademark licence was the motivating factor behind the lawsuit.

In fact, Activision itself, in a letter dated Match 10, 2008, suggested that, “Gibson knew about the Guitar Hero games for nearly three years, but did not raise its patent until it became clear that Activision was not interested in renewing the Licenses and Marketing Support Agreement.”

Whatever the motivation, the California District Court made it clear that the lawsuit was without merit. This decision has now put into question several other outstanding lawsuits Gibson had also commenced against various companies involved in the creation and distribution of Guitar Hero, such as MTV, Harmonix, Electronic Arts, Wal-Mart, Target and K-mart.

For the London Free Press – March 23, 2009

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People often think of adopting trade-marks that describe their product or service. But that results in a weak trade-mark and is not allowed under the Trade-marks Act.

A trade-mark is used to distinguish one company’s products or services from those of another. To achieve that, the Act doesn’t allow registration of a trade-mark that describes the character or quality of the product or service or its place of origin. For example, McDonald’s can register a trade-mark such as “Big Mac”, but can’t register “double cheeseburger.”

Trade-marks that pass the threshold in the Act, but are still somewhat descriptive, are considered weak marks as they don’t do a good job of distinguishing the products of one business from another.

The rule against descriptive trade-marks is illustrated in the recent Federal Court of Appeal decision of Shell Canada Ltd. vs. P.T. Sari Incofood Corp. In this case, Shell challenged the registration of the proposed trade-mark, “JAVACAFE.”

The Indonesian company P.T. Sari wanted to use JAVACAFE in connection with its coffee-related wares, including coffee powder, cooked coffee beans, instant coffee, freeze-dried coffee and granular coffee.

In analyzing JAVACAFE, the Court of Appeal separated the proposed trade-mark into “java” and “cafe”.

It agreed with Shell that “cafe” means “coffee” in French, or that the average French-speaking Canadian would immediately assign that meaning when the word appeared in a trade-mark associated with coffee products.

In considering “java” the court found the word to be defined in the French language as a popular dance, but that it was also understood to be an island known for its coffee production.

To determine whether a proposed trade-mark is too descriptive or whether consumers would be confused by the mark, a court will consider the dictionary meaning of the words. Courts will also consider other evidence such as consumer surveys or even the number of other trade-marks that contain the same word or words.

In conclusion, the Court of Appeal stated that “the trade-mark JAVACAFE is not distinctive of P.T. Sari’s coffee products from the coffee products of others given that it is clearly descriptive of the character, quality or place of origin of the wares with which its association is opposed.”

Since JAVACAFE did not meet the criteria in French, it was not necessary to consider whether the proposed mark was clearly descriptive in the English language.

The ruling on JAVACAFE also highlights the importance of considering a proposed trade-mark’s meaning in different languages.

In Canada, this consideration is limited to English and French. However, for people who wish to use a trade-mark internationally — either now or in the future — it is prudent to consider the mark’s meaning in other languages because many nations have similar trademark law.

This consideration is especially important given today’s global economy and the prevalence of international sales via the Internet.

So when considering what trade-mark to adopt for your products, avoid weak, descriptive marks. Strong, distinctive trade-marks must be memorable, not descriptive.

That’s the title of my Slaw post for today.  It reads as follows:

I just got back from giving a presentation on IP law to a group of accountants, in which I gave a high level view of various forms of intellectual property. I have been asked to give this presentation several times over the years, so thought it might be worthwhile to share the slides.
ip-slides