Archive for the ‘Trade Marks’ category

Intellectual Property Law in Canada: Cases and Commentary

January 12th, 2013

I am pleased to announce the publication of the second edition of my IP casebook Intellectual Property Law in Canada: Cases and Commentary.

Written in collaboration with my partners Steven Mason and Dan Glover, this book  will be of particular interest to private practitioners, in-house lawyers, law students, law professors and librarians. It includes selections from important cases in intellectual property law including very recent cases from the Supreme Court of Canada and other appellant courts to provide the most up to date and instructive set of materials on IP law in Canada. We use it in the IP course we jointly teach at Osgoode Hall Law School in Toronto.

Homeaway.com Decision Threatens to Re-write Trade-mark Law in Canada (But Is it for the Better?)

December 14th, 2012

In a case that could have major ramifications for trade-marks law in Canada, Justice Hughes of the Federal Court has concluded that, when a trade-mark appears on a computer screen website in Canada, regardless where the information may have originated from or be stored, constitutes for Trade-Marks Act purposes, use and advertising in Canada.

This strong conclusion comes from Homeaway.com, Inc. v. Martin Hrdlicka, 2012 FC 1467, a decision released December 12, 2012. In this case, the Applicant sought to expunge a trade-mark registered in 2010 by the Respondent Hrdlicka. On the Application, the Respondent represented himself.

Developments in Computer, Internet and E-Commerce Law (2011-2012)

June 21st, 2012

Here are the slides used in my presentation to the Toronto Computer Lawyers Group earlier today, The Year in Review: Developments in Computer, Internet and E-Commerce Law (2011-2012). It covers significant developements since my talk last spring, Developments in Computer, Internet and E-Commerce Law (2010-2011).

The slides include a summary of the following cases:

Kraft Real Estate Investments, LLC v Homeway.com, Inc. 2012 WL 220271 (D.S.Car. Jan 24, 2012)

Swift v. Zynga Game Network, Inc., 805 F.Supp.2d 904, (N.D.Cal., 2011)

Fteja v. Facebook, Inc., 2012 WL 183896 (S.D.N.Y. 2012)

Grosvenor v. Qwest Corp., 2012 WL 602655 (D.Colo., 2012) 

Social media, intellectual property and the workplace, is there a gap in the law?

April 25th, 2012

I gave a speech earlier today at the Law Society Special Lectures on Employment Law and the New Workplace in the Social Media Age. My talk was entitled,  “Is There a Gap in Intellectual Property Law?”  My slides are shown below.

Developments in Computer, Internet and E-Commerce Law (2010-2011)

June 15th, 2011

Here are the slides used in my presentation to the Toronto Computer Lawyers Group earlier today, The Year in Review: Developments in Computer, Internet and E-Commerce Law (2010-2011). It covers significant developements since my talk last spring.

The slides include a summary of the following cases and statutory materials:

Privacy:

Cite Cards Canada Inc. v. Pleasance, 2011 ONCA 3

Leon’s Furniture Limited v. Alberta (Information and Privacy Commissioner), 2011 ABCA 94

State Farm Mutual Automobile Insurance Company v. Privacy Commissioner of Canada, 2010 FC 736

Nammo v. TransUnion of Canada Inc., 2010 FC 1284

A Masterpiece for Brand Owners – The Supreme Court of Canada makes it easier to enforce your trade-mark

May 26th, 2011

By Brian Edmonds, Beth Macdonald and Dan Glover*

On May 26, 2011 the Supreme Court of Canada released its decision in Masterpiece Inc. v. Alavida Lifestyles Inc., 2011 SCC 27. The Court reversed decisions by the Federal Court and Federal Court of Appeal, and painted a rosier picture for those who seek to protect trade-mark rights in Canada.

Masterpiece started using the trade-mark MASTERPIECE THE ART OF LIVING in Alberta in 2001.  It used the mark in association with retirement residences.  On December 1, 2005 Alavida filed an application to register the trade-mark MASTERPIECE LIVING for use, in brief, with retirement residences.  In the application Alavida indicated that it proposed to commence use of the mark in Canada in the future.  In 2006 it did in fact commenced using the mark in Ontario.

RCMP report details Canada’s serious counterfeiting and piracy problems

September 17th, 2010

The RCMP just published a report surveying the problems posed by counterfeiting and piracy in Canada. Some of the important findings of the report A National Intellectual Property Crime Threat Assessment, 2005 to 2008 are the following:

  • Traditionally viewed as being victimless, Intellectual Property (IP) crime has become a source of health and safety concern in Canada. Health, safety, and economic damages from the consumption and usage of counterfeit goods are being reported on an international scale. Victims of IP crime include, among others, people suffering from life threatening diseases who unknowingly use counterfeit medicines containing little or too many active ingredients, or toxins.

Developments in Computer, Internet and E-Commerce Law (2009-2010)

May 26th, 2010

Here are the slides used in my presentation to the Toronto Computer Lawyers Group earlier today,  The Year in Review: Developments in Computer, Internet and E-Commerce Law (2009-2010). It covers significant developements since my talk last spring.

The slides include a summary of the following cases and statutory references:

Tercon Contractors Ltd. v. British Columbia, 2010 SCC 4

Internet Broadcasting Corporation Ltd. v Mar LLC [2009] EWHC 844 (Ch)

Gammasonics Institute for Medical Research Pty Ltd v Comrad Medical Sysytems Pty Ltd [2010] NSWSC 267 (9 April 2010)

Kingsway Hall Hotel Ltd. v Red Sky IT (Hounslow) Ltd. [2010] EWHC 965

McCarthy Tétrault Co-Counsel: Technology Law Quarterly

November 13th, 2009
Table of Contents
Internet/E-World ………………………………………………………………………. 1
E-COMMERCE …………………………………………………………………………………. 1
BC: Appeal Court Finds No Defamation Liability for Hyperlinking …………………………………..1
US: Linden Lab Aims to Make (Second) Life Easier for IP Owners……………………………………1
SPAM………………………………………………………………………………………….. 3
Canada: Industry Committee Amends Anti-Spam Bill ………………………………………………..3
Technology M&A……………………………………………………………………….. 6
TECH-RELATED M&A …………………………………………………………………………. 6
Canada: GPLv3 and Tech M&A………………………………………………………………………..6
Technology Contracting……………………………………………………………….. 8
TECHNOLOGY AGREEMENTS …………………………………………………………………. 8
Canada: New Protection for Licensees of IP — BIA and CCAA Amendments Come into Force ……..8
Canada: Harmonized Sales Tax — Timing Your Tech Purchases…………………………………… 10
OUTSOURCING ………………………………………………………………………………. 11
Ontario: Ontario Government Issues New Guidelines for Consulting Contracts ………………….. 11
Canada: Responding to RFPs — Tips for Suppliers …………………………………………………. 12
Canada: Value Drivers for IT Outsourcing Deals In An Economic Downturn — Part II …………….. 15
Canada: Immigration 101 for IT Companies Bringing Temporary Foreign Workers to Canada……. 18
Intellectual Property ………………………………………………………………….20
COPYRIGHT………………………………………………………………………………….. 20
US: US Court Rejects File-Sharer’s Fair Use Defence ……………………………………………… 20
Canada: Canadian Government Completes Consultations with Canadians on Copyright Reform … 21
UK: UK Government Issues Final Digital Britain Report……………………………………………. 22
Europe: French Graduated Response Law Passes Constitutional Hurdle………………………….. 24

Recent issue posted @ http://mccarthy.ca/pubs/TLQ_Vol5_Issue3_E_online.pdf. Covers recent developments in Internet, e-commerce, tech M&A, tech contracting,  IP, privacy and communications.

Developments in Computer, Internet and E-Commerce Law (2008-2009)

May 19th, 2009

Presentation given at the Toronto Computer Lawyers’ Group and IT & E-Commerce Section of Ontario Bar Association, on May 19, 2009 in Toronto.

http://www.mccarthy.ca/pubs/TCLG_May_2009_from_2009_Supplement_.pdf