Alberta Privacy Commissioner loses jurisdiction over pending cases

Section 50(5) of the Alberta Personal Information Protection Act states that “An inquiry into a matter that is the subject of a written request referred to in section 47 must be completed within 90 days from the day that the written request was received by the Commissioner”. A decision of the Alberta Court of Appeal held that the Office of the Privacy Commissioner would lose jurisdiction over cases that were not investigated within this time period. It seems strange that an Act adopted to protect individual complainants would deprive them of their remedy based on a delay over which they have no control. The Commissioner plans to appeal.

Apple Likely to Face Legal Challenge Obtaining iPad Trademark

Apple’s recently announced tablet device, as rumors earlier had it, is a multi-touch device poised to challenge digital e-book readers and supposedly fill a niche between handheld cellphone/mp3 devices and netbooks. Apple has unveiled the device as the Apple iPad.

Although it appears that Apple has filed trademark applications in various countries where it is likely to not face any problems, Canada included, that it may face a dispute in the US. The Japanese electronics manufacturer, Fujitsu, says it has been manufacturing and selling a device called iPad since 2002, and that an outstanding trademark application has existed since 2003.

Fujitsu stopped responding to requests by the U.S. Patent and Trademark Office, who declared the name “abandoned,” in April 2009. Fujitsu did, however, begin pursuing the iPad trademark again in June last year. Apple has filed three petitions in hopes of taking the iPad name away from Fujitsu.

Jason Calacanis: most popular online metrics company runs a ‘protection racket’

Accurate third-party audience measures are essential to TV channels, radio stations, and websites. An organization’s reach determines how much money they can charge for advertising and indicates the health of the company to investors. Jason Calacanis, a California-based angel investor, recently wrote a post alleging that the most popular online metrics company is extorting money from advertising-dependent businesses. Comscore provides ratings for websites based on a Nielson-like sampling method. However, if a company buys a $10,000 analysis package from Comscore, they use a more precise tracking method. For start-ups or niche websites, the difference between the two methods can be drastic.

MP Charlie Angus demands more transparency in ACTA negotiations

MP Charlie Angus (Timmins-James Bay) questions the ongoing secrecy surrounding the ACTA negotiations in Guadalajara. He is calling for more transparency in the talks.

Copyright: the rules of the road

An interesting article in the Guardian discussing the problems of “one-size-fits-all” copyright.

We’re trying to retrofit the rules that governed multi-stage rocket ships (huge publishing conglomerates) to cover the activity of pedestrians (people who post quotes from books on their personal blogs). And the pedestrians aren’t buying it: they hear that they need a law degree to safely quote from their favourite TV show and they assume that the system is irredeemably broken and not worth attending to at all.

Federal Court rules proposed mark not to be dissected by sound

The Federal Court of Canada’s recent decision in NPS Pharmaceuticals v. Biofarma (2009 FC 172) is an example of how the issue of trademark law can be brought into the medical world. We are used to hearing about patent cases involving medical innovations, but this case deals with the attempt to register marks related to certain pharmaceuticals.

The main issue of the case revolves around the Trademarks Opposition Board’s decision to dismiss the application of NPS Pharmaceuticals to have the mark ‘PREOS’ registered in association with treatment of bone diseases. The application was rejected because Biofarma’s trademark application with respect to a similar mark had previously been accepted and was pending registration. Biofarma’s proposed marks of ‘PROTOS’ and ‘PROTELOS’ were seen as being too similar to NPS’ ‘PREOS’ label and therefore, NPS’ application had to be rejected in order to avoid public confusion with respect to these similar products (section 6(5) of the Trademarks Act).

It is interesting that the court was willing to accept the perspectives of both patients and professionals, who would both come into contact with these products. A large part of the debate as to whether or not NPS’ proposed mark would cause confusion came down to how consumers would be affected. On a simple visual inspection, the names ‘PREOS’ and ‘PROTOS’/’PROTELOS’ look pretty similar (especially when used as labels for similar products).

NPS argued that consumers pay more attention when purchasing pharmaceuticals, which would lead to less confusion. Based on this premise, NPS tried to submit expert evidence regarding the actual sound by sound impact of the products in question.

Although NPS failed in its argument because the court was not convinced consumers would really consider pronunciation differences when making purchases, I think the most intriguing proposition stemming from this case is how much sounds and syllables can actually affect consumers (whether or not they realize it). Trademark applications that deal with word choice, as opposed to logos and symbols, can come down to simple sound and letter debates.

Perhaps NPS’ argument was too weak to win a trademark application, but that should not take away from the fact that the issue it raises is one deserving of attention. Maybe the court should have taken the opportunity to discuss the merits of sound and/or syllable evidence when it comes to trademark applications disputes.

Non-descriptive marks that successfully distinguish one product from another are the ones that receive trademarks. Unique marks become synonymous with products and provide consumers with a sense of certainty about what they are purchasing. One of the key reasons for trademark protection is to prevent confusion when it comes to consumers purchasing various products. So, the question becomes whether or not a new trademark application will cause confusion.

I think it is a legitimate argument that words can look the same, but have very different impacts either through the words’ meanings or by how different they sound when said aloud. In close cases, similar to the NPS one, I believe sound experts do have valid opinions to contribute. While it may seem too onerous a task to have to consider each individual syllable of a mark and argue its similarity or difference to the potential new mark, it seems relevant to consider whether or not two words sound the same and, if not, would there be confusion if both words enjoyed trademark protection.

Since the issue of confusion necessarily leads to two marks being analyzed for their similarities and differences, it is only fitting that sound analysis be allowed as a factor. I would accept the argument that when consumers purchase products they interact with them visually, but sound also plays a role in marketing goods. Generally, the very reason companies desire trademark protection is because they have developed visually and aurally pleasing marks that they want people to associate with their products.

Hopefully, we will see more trademark cases involving this line of sound and syllable disputes because this is a valid issue in determining whether or not two marks will be confusing.

ACTA talks to resume this week

Negotiations on the Anti-Counterfeiting Trade Agreement (ACTA) are set to resume in Mexico this week. In an article for the Toronto Star, Michael Geist suggests that much of the talk will revolve around a proposed three strikes system that would result in people losing internet access based on three allegations of copyright violation.

Michael notes that, while the three strikes proposal has received a lot of attention focusing on the impact of such a system on internet users, the price of implementing such a system has received relatively little attention. The cost of implementing a three strikes system should not forgotten because this cost will ultimately fall to the consumer. You can click on the link above to read Michael’s full article regarding the proposed ACTA three strikes system.

As O’Brien leaves NBC his recurring characters and bits stay behind

Reuters.com reports that Conan O’Brien’s settlement with NBC will result in NBC retaining the rights to copyrighted and trademarked elements of O’Brien’s shows. This means that if Conan goes on to host a new show with a different network he will have to make do without the recurring characters and bits he used throughout his 16 plus years with NBC.

ONCA denies application of arbitration clause to non-consumer plaintiffs

On Wednesday, the Ontario Court of Appeal upheld a motion to certify class proceedings against Dell Computers. The main issue was the application of a mandatory arbitration clause in the purchase agreement. The Consumer Protection Act invalidated mandatory arbitration causes on July 31, 2005. The court held that this applied to agreements made before July 31, 2005 where the claim to be arbitrated arose after that date. In addition, approximately 30% of the class were non-consumer purchasers. The court refused to grant a partial stay with respect to these proceedings based on two considerations: (1) it would create unreasonable duplication and delay, and (2) given the complexity of the mandated arbitration procedure it was unlikely that any non-consumer claims would be addressed otherwise.

The Linguistic and Trust Functions of Trademarks

[Professor Katz's new paper is freely available on SSRN.]

Modern trademark scholarship and jurisprudence view trademark law as an institution aimed at improving the amount and quality of information available in the marketplace. Under this paradigm—known as the search-costs theory of trademarks—trademarks are socially beneficial because they reduce consumer search costs, and as a consequence provide producers with an incentive to maintain their goods and services at defined and persistent qualities.

Working within this paradigm, my recent paper refines the search-cost theory of trademarks. It highlights an important point whose significance hitherto has largely escaped notice, namely that reducing search costs and providing incentives to maintain quality are distinct functions, although they are related. Read the rest of this entry »