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I N F O R M AT I O N T E C H N O L O G Y N E W S L E T T E R
VOLUME 1, ISSUE 2
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HEADLINES
NETWORKING TECHNOLOGIES, NUDITY AND COPYRIGHT - GOOGLE, INC. V. PERFECT
10, INC.
The Court of Appeals for the Ninth Circuit examined the interplay between copyright law and
certain common Internet practices such as framing, linking, caching and the use of thumbnail
images.
CLOSED LOOPHOLES AND INCOMPATIBILITY - NEW RELEASE OF GENERAL PUBLIC
LICENSE FOR OPEN SOURCE SOFTWARE
The newly released General Public License version three addresses a number of concerns with the
preceding version while introducing a new concern or two.
THE DUTY OF HOSTING COMPANIES AND PASSING OFF ON THE WEB - PANDI V.
FIELDOFWEBS.COM LTD.
A Canadian court examined whether or not a company which hosts web sites may operate a
business which competes with one of its customer's web-based businesses, whether or not the use
of a competitor's trademark as a meta tag is an acceptable practice and the nature of the
relationship between customers and the operators of web-based businesses which sell widely
available goods.
VOICE PRINTING EMPLOYEES AND PRIVACY - WANSINK V. TELUS COMMUNICATIONS
INC.
The court considered whether or not it is a violation of Canadian privacy law for a company to ask
its employees to provide a sample of their voices, and avoided responding to the question of
whether or not it is reasonable for the company to threaten to discipline employees who do not do
so.
DOMAIN NAME VERSUS TRADEMARK - CHEAPTICKETS.CA v. CHEAP TICKETS AND
TRAVEL INC.,
When the registrant of the domain name cheaptickets.ca was sued for infringing two trademarks
based on the words "cheap tickets", it successfully argued that the trademarks were clearly
descriptive, and the trademarks were expunged.
FIVE THINGS EVERYONE SHOULD KNOW ABOUT WEB SITES
This article sets out some basic skills and knowledge which are useful to possess if you have
responsibility for one or more web sites or are asked legal questions relating to web sites from time
to time.
NEWS
WHAT’S HAPPENING AROUND MILLER THOMSON LLP
IP/IT PracticeGroup News and Events
NETWORKING TECHNOLOGIES, NUDITY AND COPYRIGHT - GOOGLE, INC. V. PERFECT 10,
INC. (CASE NUMBER CV-05-04753-AHM (9TH CIR. MAY 16, 2007) (MAY 16, 2007))
Perfect 10, Inc. ("Perfect 10”) alleged that Google, Inc. ("Google") directly and secondarily infringed Perfect 10's
copyrights in certain images of nude models. The allegations were based on the operation of Google Image
Search, a search engine for images. The claim of direct infringement was based on Google Image Search's use
of thumbnails of the copyrighted images. Specifically, using an automated process, Google identifies an image
on a web site, captures a reduced-size and reduced-resolution copy of the image, caches the copy on its
servers, presents the copy in response to user's searches and responds to a user clicking on a search result by
creating a window with two frames: one which displays the search result including the reduced-size image and
one which displays the web site where the full-sized version of the image is located. The allegations of
secondary infringement were -two fold: (i) vicarious infringement based on the existence of and Google's failure
to exercise a practical, legal right to stop or limit others from infringing Perfect 10's copyrights; and (ii)
contributory infringement based on Google's distribution of a product which was not capable of a significant noninfringing use and Google's active encouragement of infringement.
The Court of Appeals concluded that Google was not responsible for displaying the full-sized images when a
user clicked on a search result: the publisher of the web site which incorporated such images was.
Consequently, Google did not directly infringe Perfect 10's copyrights with respect to the full-sized images.
The Court of Appeals found that Google's use of the cached copies of the images was a direct infringement, but
it was also found to be a fair use partly because Google use of the copyrighted images was transformative (i.e.
for a purpose other than the purpose for which Perfect 10 used the images) and of benefit to society.
Perfect 10's claim of vicarious infringement was unsuccessful. Google's contracts with its advertisers did not
amount to a legal right to control their behaviour and Perfect 10 did not identify any other practical means for
Google to do so.
Even though the Court of Appeals concluded that Google's search engine had significant uses beyond assisting
others to infringe copyright, the question of contributory infringement was remanded to the District Court
because it had not considered the following questions: (i) whether or not Google had actual knowledge that
infringing materials were being made available through its search engine; (ii) whether or not there were simple
measures which Google could take to prevent further damage to Perfect 10's copyrighted images; and (iii) if
such measures existed, whether or not Google had failed to implement them.
The decision of the District Court is available at: http://www.ca9.uscourts.gov/coa/newopinions.nsf/
DE8297F56287C0BC882572DC007DACC6/$file/0655405.pdf?openelement.
The decision of the Court of Appeals is available at: http://www.cacd.uscourts.gov/CACD/RecentPubOp.nsf/
ecc65f191f28f59b8825728f005ddf4e/3fdcaed8913a22018825711c005055a5?OpenDocument.
CLOSED LOOPHOLES AND INCOMPATIBILITY - NEW RELEASE OF GENERAL PUBLIC
LICENSE FOR OPEN SOURCE SOFTWARE
The General Public License version 3 (GPLv3), released by the Free Software Foundation on June 29, 2007,
is the latest version of the most widely used "open source" license. It is based on the open source movement
which is predicated on the "free" sharing of source code. Prominent free software programs licensed under the
General Public License include the Linux kernel and the GNU Compiler Collection (GCC).
While the GPLv3 (like General Public License version 2 (GPLv2)) is a license which requires a person who
conveys a covered work (either the original program subject to GPLv3 or a work based on the program) to also
convey the machine-readable corresponding source code under GPLv3, the GPLv3 differs from the GPLv2 in
a number of ways. The GPLv3 includes an express rather than an implied patent license in connection with the
open source code being licensed. Additionally, the GPLv3 includes amendments designed to counter certain
practices. The first practice is "tivoization", designing a product so that it fails if the user makes any changes to
the open source code included in it. Section 11 of the GPLv3 is intended to counter the practice of using
"discriminatory patent licenses". A patent license is "discriminatory" if it prohibits the exercise of, or is conditioned
upon the non-exercise of, one or more of the rights granted under GPLv3.
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It should also be noted that since the GPLv2 contains a clause which requires programs which incorporate code
licensed under the GPLv2 to be licensed under the GPLv2, and the GPLv3 does the same, the licenses are
incompatible. It is not possible to combine code licensed under the GPLv2 with code licensed under the GPLv3
within a single program.
THE DUTY OF HOSTING COMPANIES AND PASSING OFF ON THE WEB - PANDI V.
FIELDOFWEBS.COM LTD., (2007 CANLII 27028 (ON S.C.))
In deciding not to grant an injunction which would have prohibited the defendants from selling footed pyjamas
over the Internet and put the defendants out of business, the Ontario Superior Court of Justice considered the
application of certain legal principles relating to copyrights, non-competition and injunctions in the context of the
Internet-based businesses and held as follows:
(i)
In the absence of an express non-competition agreement or the misuse of confidential information, the
relationship between a web designer who provides hosting services and the designer's clients is not one
which precludes the designer from starting a business which competes with any of its client.
(ii)
It is possible for a vendor to use a web site to pass its wares off as the wares of another vendor, but the
defendants had not done so as their web site did not look similar to the plaintiff's web site and the domain
names associated with each of the sites were not similar.
(iii)
The common practice of using another person's domain name, trade name, trademark or logo as a meta tag
for selling competing wares (unless the name or mark itself is merely descriptive of the wares sold) is not
quite the same as diverting traffic from one trader's door to that of another but objectionable nonetheless.
Still, an injunction which goes beyond a prohibition on the continued use of a domain name, trade name,
trademark or logo is not appropriate.
(iv)
An injunction which prohibits the use of the text taken from the plaintiff's web site rather than one which
prohibits any competition with the plaintiff is a reasonable remedy, but since the current version of the
defendants' web site does not use any text from the plaintiff's web site there was nothing to prohibit even
though an earlier version of the defendants' web site (which used text from the plaintiff's web site) could be
found on the Internet because it had been cached by a search engine.
(v)
The sole case produced by the plaintiff to support its argument that it would suffer irreparable harm if the
defendants were permitted to continue to sell footed pyjamas over the Internet is distinguishable from the
case at hand because the relationship between an Internet-based vendor of products which are widely
available and its clients is an impersonal one based primarily on product features, availability and price and
not on personal service or a long-standing relationship.
VOICE PRINTING EMPLOYEES AND PRIVACY - WANSINK V. TELUS COMMUNICATIONS
INC., (2007 FCA 21 (CANLII))
In 2003, Telus introduced new voice recognition technology entitled "e.Speak". The technology was introduced
as a means of authenticating Telus employees who wished to access and use Telus' internal computer network
when they were not located in one of Telus' premises. Before e.Speak could be used to authenticate an
employee, the employee had to provide a voice sample which was used to generate a voice print (a matrix of
numbers representing unique characteristics of the employee's voice). Telus had no plans to use the voice prints
for any other purpose, and put in place measures to keep voice prints confidential including destroying the voice
prints of individuals when they ceased to be employees. When seeking the consent of its employees to the
collection of voice samples, Telus indicated that it would discipline employees who did not consent and provide
a voice sample, but Telus did not do so.
Four of Telus' employees filed a complaint with the Privacy Commissioner. It alleged that their privacy rights
set out in s. 5(3) of the Personal Information and Protection and Electronic Documents Act ("PIPEDA") (S.C.
2000, c. 5) had been violated. The Privacy Commissioner investigated the complaint and concluded that Telus
had acted in compliance with PIPEDA. The four employees applied for judicial review, which was subsequently
denied by Gibson J. of the Federal Court. This case is an appeal of that decision.
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The appeal was denied. Given the following factors, Telus did not violate PIPEDA: (i) Telus sought consent from
its employees; (ii) Telus did not discipline employees who refused to consent; and (iii) the proposed use of the
personal information was reasonable in the circumstances (i.e. an appropriate balance had been struck between
the privacy interests of Telus' employees and Telus' legitimate business needs).
Additionally, the Privacy Commissioner, the Federal Court and the Court of Appeals agreed that section of
PIPEDA intended to protect employees who are whistleblowers from discipline (section 27.1(1)(b)) does not
protect employees who refuse a reasonable request for consent from their employer. That being said, the Court
of Appeals declined to answer the following questions: (i) does the threat of discipline undermined or vitiated the
consents obtained by an employer from its employees; and (ii) is an employer permitted to discipline an
employee who withholds personal information protected by PIPEDA.
The decision of the Court of Appeals can be found at: http://www.canlii.org/en/ca/fca/doc/
2007/2007fca21/2007fca21.html.
DOMAIN NAME VERSUS TRADEMARK - CHEAPTICKETS.CA V. CHEAP TICKETS AND
TRAVEL INC., (EMALL.CA INC. AND EMALL.CA INC. CARRYING ON BUSINESS AS
CHEAPTICKETS.CA V. CHEAP TICKETS AND TRAVEL INC., 207 FC 635)
In December 2004, Cheap Tickets Travel Inc. ("CTT") initiated a suit alleging that Emall.ca Inc. and Emall.ca Inc.
carrying on business as CheapTickets.ca (collectively, "Emall.ca") was infringing two of CTT's registered
trademarks: (i) "Cheap Tickets"; and (ii) the combination of "Cheap Tickets" with a design. Emall.ca responded
by commencing a proceeding for the expungement of both trademarks based on the following claims: (i) at the
time of their registration, neither trademark was registrable because both were clearly descriptive; and (ii) at the
time of the application, neither trademark distinguished CTT's services from other travel agencies selling
discounted tickets. The first claim relies on section 12(1)(b) of the Trade-Marks Act which provides that a
trademark is registrable if it is not: "clearly descriptive … in the English or French language of the character or
quality of the wares or services in association with which it is used or proposed to be used". The second claim
relies on section 18(1)(b) of the Trade-Marks Act which provides that a trademark is invalid if it "is not distinctive
at the time proceedings bringing the validity of the registration into question are commenced".
Lending credence to the saying, "A good offense is the best defense", the court struck both trademarks. None
of the arguments presented by CTT overcame the court's initial impression that both trademarks were clearly
descriptive of a service the purpose of which was to provide travel services at discounted rates. In response to
CTT's argument that the trademarks were not clearly descriptive because CTT provided other services, the court
stated that a clearly descriptive trademark is still clearly descriptive even if the description is not absolutely
complete or accurate. The court considered the fact that the word "tickets" had been disclaimed in both
trademarks and the word "travel" had been disclaimed in the second trademark, but found the consequences
of restricting the market's use of the word "cheap" inappropriate.
Having found that both trademarks were clearly descriptive, the court did not consider whether or not either had
lost its distinctiveness.
Costs were awarded to Emall.ca.
The original infringement action (Cheap Tickets and Travel (Canada) Inc. v. Emall.ca Inc. et al, 2005 BCSC 815
(CanLII)) can be found at: http://www.canlii.org/en/bc/bcsc/doc/2005/2005bcsc815/2005bcsc815.html .
The application for expungement (Emall.ca inc. (cheaptickets.ca) v. Cheap Tickets and Travel Inc., 2007 FC 635
(CanLII)) can be found at: http://www.canlii.org/en/ca/fct/doc/2007/2007fc243/2007fc243.html.
A motion relating to costs can be found at: http://www.canlii.org/en/ca/fct/doc/2007/2007fc635/2007fc635.html.
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FIVE THINGS EVERYONE SHOULD KNOW ABOUT WEB SITES
1. Who Is The Person Behind the Web Site?
For top level generic domain names such as .com, .net and .org, go to www.internic.net/whois.html or similar
web sites like www.betterwhois.com and enter the domain name for the web site into their search/whois
functions. They may not give you the name of the person or company who registered the domain name, but
they will likely give you the name of the local registrar. If they do, go to the web site of the local registrar and
enter the domain name in question into the local registrar's search function. This should produce the name of
the person or company who registered the domain name for the web site. For country-specific top level domains
(for example, .ca), use Google or another search engine to identify a registrar in the applicable country (for
example, to find a registrar in Canada enter the following key words: "Canada", "domain name" and "registrar")
and then use the local registrar's search/whois function.
2. Content Can Cause Problems
If the content you are incorporating into your web site is not your original content, you almost always need to
get permission to use it. If you use any portion of a popular song (even five seconds) on your web site without
getting the appropriate rights, you could be infringing one or more person’s rights in the song. Not all clip art is
released into the world on the same terms and conditions. For example, some clip art providers prohibit the use
of their images for commercial purposes.
3. Linking
Typically, a text-based link to another party's web site which opens the other web site in a new window is not
problematic. Still, you should check the terms and conditions of the web site to which you wish to link to make
sure that they do not prohibit or restrict links.
Additionally, if you place links to web sites which you do not control on your web site, you should make sure that
the terms and conditions for your web site make it clear that you are not responsible for anything related to those
web sites.
4. Hosting Agreements Come in Different Shapes and Sizes
At its most basic a hosting agreement requires the service provider to provid server or co-location space and a
connection to a network (typically, the Internet). From there, there are many types of services which may also
be purchased such as back-ups, on-site assistance, server management or application management. The
nature of the materials hosted (for example, do they need to be highly available or could they be down a few
hours a month) and the volume of the materials to be hosted also vary from situation to situation.
Basic hosting services for a small web site such as one which provides information about an upcoming family
reunion can be acquired for less than $20.00 per month. The hosting agreement for such services will typically
be short, non-negotiable and very biased in favour of the service provider. Hosting services for a small business'
web site (when the small business does not depend on the web site for any significant portion of its business)
will be somewhat more involved, and the hosting agreement should be more detailed and somewhat less biased
than a basic hosting agreement. For example, it may include some service level commitments and warranties
from the service provider. Hosting agreements for high traffic, high volume, web-based businesses and other
web sites which must be available at least 99.999% of the time tend to be long, detailed and aggressively
negotiated.
5. Terms and Conditions - One Size Does Not Fit All
Although there are elements which are common to most sets of terms and conditions for web sites, there is no
single set of terms and conditions which is appropriate for every web site. There are a number of factors which
affect the contents of these documents including: (i) the types of content forming part of the web site; (ii) the
ways in which visitors to the web site are encouraged to interact with it; (iii) the target audience for the web site;
and (iv) the location of the server on which the web site resides.
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WHAT’S HAPPENING AROUND MILLER THOMSON LLP
INTELLECTUAL PROPERTY AND INFORMATION TECHNOLOGY PRACTICE GROUP NEWS
AND EVENTS
J. Fraser Mann, Elisabeth Symons and J. Andrew Sprague recently joined the IP/IT Practice Group at Miller
Thomson LLP. They advise technology companies and public and private sector organizations on all legal issues
related to technology, including the procurement, development and deployment of technology, license
agreements, outsourcing agreements, telecommunications and network services agreements, use of the
Internet, copyright and privacy law.
Fraser Mann is a frequent speaker on technology law as well as the author of several books and numerous
articles on the subject. He is the past Chair of the Technology Law Committee of the International Bar
Association and is listed as a leading lawyer in technology law by publications such as Chambers Global Guide,
the International Who's Who of Internet and e-commerce Lawyers and Best Lawyers in Canada.
Elisabeth Symons is a frequent contributor to the Information and Technology Law newsletter published by
Carswell and is a co-author of the chapter on copyright in Electronic Commerce - A Practitioner's Guide
(Carswell). She is a Past Chair of the Toronto Computer Lawyers' Group, and is the Program Coordinator for
the Information Technology and E-Commerce Section of the Ontario Bar Association.
Andrew Sprague is the Vice Chair of the Toronto Computer Lawyers' Group and the Advocacy and
Government Relations Liaison for the Information Technology and eCommerce Section of the Ontario Bar
Association. He is also a frequent contributor to the Information and Technology Law newsletter published by
Carswell.
CONTRIBUTORS TO THIS ISSUE:
Paul Brace
[email protected]
905.415.6703
Fraser Mann
[email protected]
416.595.8195
Krystle Ng-A-Mann*
[email protected]
416.595.2962
Andrew Roman
[email protected]
416.595.8604
Elisabeth Symons
[email protected]
416.595.8575
* Student-at-law
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MILLER THOMSON
Toronto/Markham
Paul E. Brace
[email protected]
Donald Brown
[email protected]
Anthony de Fazekas
[email protected]
Eamonn J. Flaherty
[email protected]
M. Stephen Georgas, P.Eng
[email protected]
Eugene J.A. Gierczak, P.Eng
[email protected]
Fraser Mann
[email protected]
J. Andrew Sprague
[email protected]
Elisabeth Symons
[email protected]
Vancouver
Stephen Burri
[email protected]
Eve C. Munro
[email protected]
Damir Karaturovic
[email protected]
LLP
I N F O R M AT I O N T E C H N O L O G Y G R O U P
905.415.6703
416.595.8540
416.595.8603
905.415.6795
416.595.8558
416.596.2132
416.595.8195
416.595.8556
416.595.8575
604.643.1237
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