Protecting Your Internet Domain Name

Sabrina Saltmarsh, B.A. (Hons), J.D.Business Fraud, Business Litigation, Business Torts | Economic Torts, Copyright Infringement, Cyber Fraud, Cyber Risks, Domain Name Disputes, eCommerce | Online Retail, Identity Fraud, Injunction & Specific Performance, Intellectual Property, Internet | Technology, Internet Fraud, Passing Off, Specific Performance, Start-Up Disputes, Technology and Internet, Trademark Infringement, Website Copying0 Comments

In the age of the internet and e-commerce, the domain name of a business holds tremendous value and is often an integral part of the identity of a business. Since a website can only have one domain name on the internet, there is no shortage of disputes which arise over ownership rights of domain names, particularly those closely affiliated with a registered or unregistered trademark. What is Cyber-Squatting? Cyber-Squatting occurs when someone has registered a domain name in which they have no legitimate business interest, and can sometimes involve setting up a fake website for a business. The reason could be that the registrant will then seek to sell the domain name to the legitimate owner of the business or trademark, or their competitor for a profit. Alternatively, it may be to syphon away business leads online to competitors for a fee, or for advertising revenues. Typo-Squatting is similar to … Read More

Supreme Court Considers an ISP’s Right to Costs in Norwich Orders for Copyright Infringement

Peter Neufeld, B. Soc. Sc., J.D.Appeals, Appellate Advocacy, Civil Litigation, Commercial, Copyright Infringement, Intellectual Property, Norwich Order0 Comments

Norwich Orders have become a common tool to detect wrongdoers hiding behind the elusive veil of the internet. Whether the matter is with respect to defamation, intellectual property infringement, or fraud, the equitable remedy of pre-action discovery to compel Internet Service Providers (“ISPs”) to disclose a wrongdoer’s identity can help claimants determine their causes of action before they commence litigation. A question that has been raised, however, is who bears the costs of the Norwich Order? Is it the claimant seeking the Norwich Order or the ISP subject to the equitable remedy? To complicate the matter further, how does this interact with an ISP’s obligations under the “notice and notice” regime pursuant to Canada’s Copyright Act? By way of background, ss. 41.25 and 41.26 of the Copyright Act govern the statutory “notice and notice” regime for alerting alleged copyright infringers in Canada. These sections under the Copyright Act state that … Read More

Court Considers Jurisdiction in Context of Online Sales

Andrew Ottaway, B.A. (Hons.), LL.B.Business Litigation, Civil Litigation, Cross-Border Litigation, Enforcement of Foreign Judgments, Information Technology, Injunction & Specific Performance, Intellectual Property, Internet | Technology, Jurisdictional Challenges, Of Interest to US Counsel, Summary Judgment0 Comments

In Dish v. Shava, 2018 ONSC 2867 (CanLII), plaintiffs obtained judgment in Virginia, including an injunction, against the defendants, who were located in Ontario.  The plaintiffs then brought an action in Ontario seeking recognition and enforcement of the Virginia judgment and injunction in Ontario. On the motion for summary judgment, the Ontario Court considered whether the Virginia Court had exercised jurisdiction based on the Ontario test for jurisdiction: i.e. whether the defendants had a real and substantial connection with Virginia. The defendants owned and operated an interactive, commercial website through which users purchased TV set-top boxes.  The Ontario Court found that the defendants had a real substantial connection to Virginia based on the nature of the business they were operating, specifically: users in Virginia purchased the TV set-top boxes from the defendants’ website.  At least 193 customers with a Virginia shipping address purchased Shava TV product from the Defendants’ distributor … Read More

Mattresses and Slogans and Interlocutory Injunctions, Oh My! (Sleep Country Canada Inc. v. Sears Canada Inc.)

Janice Perri, B.A. (Summa Cum Laude)Brand Protection, Business Law, Business Litigation, Civil Litigation, Commercial, Injunction & Specific Performance, Intellectual Property, Passing Off, Trademark Infringement0 Comments

In Sleep Country Canada Inc. v. Sears Canada Inc., Sleep Country Canada Inc. (“Sleep Country”) was granted an interlocutory injunction against Sears Canada Inc. (“Sears”) to prevent Sears from using their slogan “THERE IS NO REASON TO BUY A MATTRESS ANYWHERE ELSE” while the trade-mark infringement litigation (in which Sleep Country claims Sears’ slogan infringes on Sleep Country’s trade-marked slogan of, “WHY BUY A MATTRESS ANYWHERE ELSE”) is ongoing.   The three-part test set out in RJR-MacDonald v. Canada (Attorney General) was ultimately satisfied. The heart of the case was not on whether this was a serious issue or on the balance of convenience, but rather, on whether irreparable harm was established.   The Court found in favour of Sleep Country’s arguments that confusion, depreciation of goodwill, and loss of distinctiveness would result, as well as, a loss of sales in the minimum 18-24-month period between the time of this hearing and the determination of the … Read More

Supreme Court of Canada Upholds Worldwide De-Indexing Order Against Google

Robert Kalanda, B.A. (Hons.), J.D.Appeals, Brand Protection, Commercial, Commercial Litigation, Counterfeit Goods, Cross-Border Litigation, Cyber Risks, eCommerce | Online Retail, Information Technology, Injunction & Specific Performance, Intellectual Property, Internet | Technology, Of Interest to US Counsel, Technology and Internet0 Comments

The Supreme Court’s recent decision in Google Inc. v. Equustek Solutions Inc. has approved the use of a worldwide injunction directing Google to de-index the defendant’s website used to facilitate the sale of goods in violation of the Equustek’s intellectual property rights. Equustek obtained an interlocutory injunction against the website owner directly, however the defendant left Canada, refused to comply with the order, and continued to sell products on their website from an unknown location. To help prevent or reduce further ongoing harm, Equustek sought for Google to de-index the site, making it less likely that a potential purchaser will discover the infringing website. Google initially agreed to de-index the result from Canadian search results on google.ca, but refused to enforce this order worldwide. It was concerned that the Canadian courts were using Google to usurp the laws of other nations, particularly on free speech issues, and potentially would force Google … Read More

Rogers Denied Costs of Complying with Copyright Infringement Norwich Order

Robert Kalanda, B.A. (Hons.), J.D.Brand Protection, Commercial, Copyright Infringement, Counterfeit Goods, Cyber Security, eCommerce | Online Retail, Injunction & Specific Performance, Intellectual Property, Internet | Technology, Norwich Order, Technology and Internet0 Comments

In the recent decision of Voltage Pictures, LLC v. John Doe, 2017 FCA 97, the Federal Court of Appeal reversed the lower court and denied Rogers its costs of complying with a disclosure order (commonly called a Norwich Order) requiring them to disclose the names and details associated with IP addresses which the plaintiff alleges have infringed its copyrights. At the Federal Court, Rogers was prepared to provide the information, provided they were paid their costs of doing, as is customary for Norwich Orders from non-parties. While on an individual basis the costs may not have been unreasonable, the plaintiff’s concern was that they were pursuing thousands of individual infringers, which would make the cumulative costs of seeking these productions prohibitively expensive. The Federal Court held that the plaintiff did have to provide the amount demanded by Rogers. On appeal, the Federal Court reviewed the relatively new provisions under the Copyright Act which the plaintiff relied on to … Read More

Former Employee Ordered to Transfer Social Media Accounts in Trade-Mark and Copyright Infringement Case

Nick P. Poon, B.Sc. (Hons.), B.A., J.D.Civil Litigation, Commercial, Commercial Litigation, Injunction & Specific Performance, Intellectual Property0 Comments

The Federal Court decision in Thoi Bao Inc. v. 1913075 Ontario Limited involved a former employee of the plaintiff developing and operating a competing online news website that infringed on the plaintiff’s trade-marks and copyrighted content. The plaintiff, Thoi Bao, is a well-known Vietnamese language news company that provides news services throughout Canada in a variety of formats including newspapers, radio, television and online.  The company’s website, www.thoibao.com, provides online content such as news, editorials, opinions, links to other news agency services, self-produced television shows and newscasts. The former employee registered the domain name, www. thoibaotv.com, without the knowledge or consent of the plaintiff and began offering online news services in Canada in the Vietnamese language.  The former employee did not appear to make any effort to conceal his activities because the infringing website prominently used TBTV Online as the website title, streamed webcasts that were produced by the plaintiff, and incorporated … Read More

Supreme Court of Canada To Rule on Scope of Injunction Against Innocent Search Engine

Robert Kalanda, B.A. (Hons.), J.D.Cross-Border Litigation, Enforcement of Foreign Judgments, Injunction & Specific Performance, Intellectual Property0 Comments

On December 6, 2016, the Supreme Court of Canada heard arguments on the appeal of an order of the British Columbia Court of Appeal which ordered Google to de-list certain websites from being accessible from any of its country-specific search engine domains. The defendants were alleged to have engaged in selling online counterfeit products of the plaintiff, contrary to the plaintiff’s intellectual property rights. The British Columbia Supreme Court originally ordered the defendants to cease all sales of counterfeit product on the internet. The defendants did not comply, and have hidden themselves somewhere unknown, such that the plaintiff could not practically use the courts to compel the individuals responsible from ceasing this activity. As an alternative, the plaintiff looked to Google to make the defendant’s websites not appear in search result listings, which would largely effect the same result in that customers searching for the plaintiff’s products will not discover … Read More

Business Dirty Tricks: Unfair Competition: Intentional Interference, Inducing Breach of Contract, Conspiracy and Defamation

David Alderson, LL.B, LL.M (Commercial and Corporate), Q.Arb, Lawyer and ArbitratorAppropriation of Personality, Business Litigation, Business Torts | Economic Torts, Civil Litigation, Commercial, Commercial and Contract Litigation, Commercial Arbitration, Commercial Law, Commercial Litigation, Contract Disputes, Contract Termination, Cross-Border Litigation, Cyber Risks, Fraud, Injunction & Specific Performance, Intellectual Property, Of Interest to US Counsel, Partnerships and Shareholder Disputes, Passing Off, Trademark Infringement0 Comments

Sometimes businesses and their stakeholders act wrongfully in seeking to advance their interests and / or harm competitors. There are often reports of the “dirty tricks” used by those in business to seek to destroy, defeat or diminish the effectiveness of a competitor. These are often unethical tactics, but sometimes such conduct is also wrongful and has been recognized by the common law as actionable in the courts for damages or injunctive or other urgent equitable relief, or prohibited by a statute which provides for a civil monetary remedy or grounds for an injunction. These causes of action have been recognized and provide the basis of lawsuits for harm, loss and damage, and in suitable circumstances, grounds for an immediate injunction or mandatory order prohibiting the further commission of the wrongful acts. In short, wrongful intentional acts causing harm, loss or damage to businesses or their stakeholders may give rise to a cause of action in common law business torts (the so-called … Read More

US Court of Appeals Reverses Lower Court Decision; Re-Opens US Trademark Infringement Claims Against Canadian Operation

Robert Kalanda, B.A. (Hons.), J.D.Civil Litigation, Cross-Border Litigation, Intellectual Property, Jurisdictional Challenges, Of Interest to US Counsel0 Comments

In Trader Joe’s Company v. Hallatt, the United States Court of Appeals for the Ninth Circuit recently overturned a lower court decision which had originally dismissed claims that Mr. Hallatt, a Canadian citizen but permanent resident of the United States, was violating the trademark rights of Trader Joe’s, a popular US grocery store chain, by reselling their products in Canada under the name “Pirate Joe’s” and by using an allegedly confusingly similar store design and motif. Mr. Hallatt’s business involved purchasing Trader Joe’s products in Washington state, transporting them across the border to British Columbia, and re-selling the product to Canadians at a mark-up. Trader Joe’s, which does not carry on business in Canada, sued in Washington state, claiming Mr. Hallatt was infringing on their US trademark rights. They asserted that Hallatt’s actions were damaging their trademark rights under US law. At the lower level, Trader Joe’s claims were dismissed, as … Read More

BC Court Upholds Worldwide Injunction Against Google – Precedence for Online Piracy

Robert Kalanda, B.A. (Hons.), J.D.Injunction & Specific Performance, Intellectual Property0 Comments

In a recent decision from the British Columbia Court of Appeal, the Court upheld an interlocutory injunction that forced Google to prohibit any websites of an alleged distributor of counterfeit goods to appear in Google search results. Google, who is not a party to the action against the defendant, argued that the Court could only prohibit Google from listing the defendant’s websites on “google.ca”, but not on any other international sites run by Google. Google submitted that the Court could not restrain Google in its actions outside of Canada, because (a) the BC Court did not have jurisdiction to make orders about activity in other jurisdictions, and (b) the BC Court did not have jurisdiction over Google. In dismissing the appeal, the Court of Appeal confirmed that as long as the court has jurisdiction over the underlying action (which was not disputed), it will have jurisdiction over any ancillary motions … Read More

‘Innocence of Muslims’ Copyright Decision Highlights Scope of Moral Rights: Canadian vs. US Protections

Robert Kalanda, B.A. (Hons.), J.D.Injunction & Specific Performance, Intellectual Property0 Comments

A recent high-profile United States copyright decision has highlighted the limited scope of protection granted to an artist’s “moral rights” in their creations in the United States, rights which are given broader protections in other countries, including Canada. Court Rejects Actor’s Copyright Claim This week, the 9th Circuit Court of Appeals in the United States issued an en banc decision reversing an earlier decision restraining YouTube from displaying the controversial film Innocence of Muslims. The injunction was based on the copyright claim of actress Cindy Lee Garcia, whose five-second appearance in the film was based on misrepresentations to her that an entirely different film was being produced. Her controversial lines were dubbed over her appearance in post-production without her permission. The Court initially held that Garcia did not sign away her copyright to her performance, and therefore could make a valid copyright infringement claim regarding her performance in the film, and … Read More

Court of Appeal Rejects Apotex’s Claim for Unjust Enrichment

Robert Kalanda, B.A. (Hons.), J.D.Appeals, Civil Litigation, Intellectual Property0 Comments

In the recent decision of Apotex Inc. v. Eli Lily and Company, the Ontario Court of Appeal has dismissed a claim by Apotex, a pharmaceutical company that  produces generic pharmaceuticals. In the case, the defendant Eli Lilly relied upon the PM(NOC) patent regulations to restrict Apotex from entering the market and selling a generic version of a pharmaceutical which was subject to a patent. That patent was ultimately invalidated. Apotex claimed that claimed that Eli Lilly had been unjustly enriched by making revenues of some $70 million as it was wrongfully delayed from entering the market and making revenues itself. It argued that allowing Eli Lilly to retain its monopolistic profits and only pay Apotex its lower lost revenues would result in a windfall to Lilly that encourages patent holders to improperly delay others from entering the market. Ultimately, the Court’s objection to Apotex’s position was that Apotex could not … Read More

London Court of International Arbitration (LCIA) – New Rules Include Expanded Provisions on Emergency Relief

David Alderson, LL.B, LL.M (Commercial and Corporate), Q.Arb, Lawyer and ArbitratorArbitration, Business Litigation, Commercial Arbitration, Commercial Litigation, Copyright Infringement, Cross-Border Litigation, Enforcement of Foreign Arbitral Awards, Enforcement of Foreign Judgments, Fashion Industry, Industrial Design, Injunction & Specific Performance, Intellectual Property, International Sale of Goods, Mareva Injunction, Of Interest to US Counsel, Preservation Orders, Textiles and Apparel0 Comments

The London Court of International Arbitration has announced that its new LCIA Arbitration Rules have been formally adopted by the LCIA Court and the LCIA Board of Directors and will come into effect on 1 October 2014. Article 9B of the new LCIA Arbitration Rules – Emergency Arbitrator provides that in the case of emergency at any time prior to the formation or expedited formation of the Arbitral Tribunal , any party may apply to the LCIA Court for the immediate appointment of a temporary sole arbitrator to conduct emergency proceedings pending the formation or expedited formation of the Arbitral Tribunal. By Article 9.14 of the New Rules, Article 9B does not apply where the parties have concluded their arbitration agreement before 1 October 2014 have not agreed in writing to ‘opt in’ to Article 9B, or the parties have agreed in writing at any time to ‘opt out’ of Article 9B. Reference should be had in this regard to … Read More