A pair of recent decisions under the Canadian Internet Registration Authority Domain Name Dispute Resolution Policy demonstrate that a trademark owner which fails to obtain a domain name transfer at a first panel hearing may nonetheless achieve a favourable outcome upon a second panel hearing. The cases in question also highlight the importance of submitting carefully prepared evidence that establishes the owner's prior rights to the trademark in Canada.
The Supreme Court recently upheld an injunction requiring Google, a non-party to an infringement action, to remove links to infringing websites from its global search results. The decision represents a powerful statement that Canadian courts of equity have broad jurisdiction to issue injunctions against parties and non-parties alike, including with extraterritorial effect, provided that the injunction would be just and equitable in all of the circumstances of the case.
The Federal Court recently issued rare interlocutory relief to a plaintiff in a trademark case. For over 20 years interlocutory injunctions have been few and far between in the Federal Court (apart from in counterfeiting cases). However, for the past five years the Federal Court has sent informal signals to the IP bar indicating that it would be prepared to issue pre-trial injunctions on suitable evidence of irreparable harm.
The Supreme Court has agreed to hear Google's appeal of a worldwide injunction forcing it to block certain infringing websites from its search results. The appeal raises issues of how to provide meaningful protection of rights over a borderless Internet, while not unduly burdening innocent third parties or preventing access to information.
In a recent decision the Federal Court of Appeal appears to have made a distinct effort to limit the scope of the trial judge's ruling that copying of metatags, including third-party trademarks, does not constitute copyright or trademark infringement. This decision leaves open the possibility of a different result in appropriate future cases.
The Supreme Court recently affirmed that even incidental copies of a work that are made to facilitate broadcasting engage the reproduction right of the Copyright Act and require a licence. This decision emphasises the importance of technological neutrality in interpreting and applying copyright law and the key role courts will have in ensuring that the act does not unfairly benefit or prejudice new and emerging technologies.
The Federal Court has ordered the imprisonment of the principal of a corporation until payment is made of more than C$100,000 in fines, costs and damages awarded in a trademark infringement proceeding and subsequent contempt proceeding. This decision represents a rare exercise of the court's power to enforce civil orders against corporations through imprisonment of an officer and director of the corporation.
A recent '.ca' domain name arbitration decision highlights the growing problem of confusing domain names being registered. Companies can identify domain names that incorporate their trademarks through domain name search providers and receive notice of all new domain name registrations incorporating key terms. This permits companies to review evidence of trademark infringement or impersonation.
A recently released Federal Court decision contains one of the first detailed considerations by a Canadian court of the issues of copyright and trademark infringement via the use of metatags. While not foreclosing entirely the possibility that the use of metatags could constitute copyright or trademark infringement in certain circumstances, the decision suggests that it may be difficult to establish infringement based on the use of metatags alone.
Copying content from the Internet is a lot like picking berries in the wild – it can be easy and tempting, but potentially quite risky. In this regard, photographs and other images are the low-hanging fruit of the Internet because they are so easy to find and copy. A recent decision highlights the potential for liability in Canada when using third-party photographs without permission.
Canada's new notice and notice regime for online copyright infringement is expected to come into force without further amendment or regulation as early as January 2015. The notice and notice regime has been described by the government as a 'made in Canada' solution to copyright infringement on the Internet, and affects internet service providers, hosts, search engine providers, copyright owners and alleged infringers.
The recent decision in Guitar Center Inc v Robert Piperni confirms that a broad definition of 'rights' should apply to brand owners seeking to prove prior trademark rights in Canada. This decision may be of assistance to many non-Canadian brand owners seeking to recover '.ca' domain names registered in bad faith.
The Federal Court of Canada has ordered an internet service provider (ISP) to release the names and addresses of 2,000 subscribers alleged to have illegally downloaded a copyrighted movie. This marks the first decision in which the court has ordered the large-scale production of customer information from a third-party ISP in order to identify potential.
A recent Federal Court decision has clarified the issue of what constitutes proper 'use' of a trademark in association with services via websites based outside Canada. The decision highlights that almost any non-Canadian website available in Canada that advertises a trademark in association with services can potentially support a Canadian trademark registration.
The Federal Court recently ruled in a patent infringement action involving hockey skates. In rendering its decision the court considered for the first time whether prior knowledge of the patent at issue is a requirement for finding a party liable for inducing and procuring infringement.
Over the last several years the Federal Court has implemented various new rule amendments and practice changes to ensure that IP litigation proceeds efficiently. The court's goal is that even the most complex cases may reach a final disposition (eg, a decision following a full trial) within two years of commencement of the proceedings. In keeping with this goal is the recent introduction of a summary trial procedure.