Creativity Life Cycles : Canadian Trademark Agent and Lawyer : Joshua MacFadden : MacPherson Leslie & Tyerman Law Firm : Patents, Intellectual Property

On October 30, 2009, the Internet Corporation for Assigned Names and Numbers ("ICANN"), the non-profit corporation which administers and sets policies related to the Internet, domain names, etc., announced the roll-out of internationalized domain names (i.e. domain addresses utilizing non-Latin characters or non-ASCII scripts).

The first phase of the process will commence on November 16, 2009 to allow countries to apply to ICANN for country codes (such as ".ca") in a different character set (i.e. Cyrillic) and further roll-outs will follow in subsequent phases.  To monitor developments in this area please consult the web page developed by ICANN to post updates.

While certainly indicative of the global reach and utilization of the Internet, the incorporation of some 100,000 new character sets to the formerly A-Z format may result in challenges for current owners of domain name registrations (i.e. resulting in confusion between Latin and non-Latin domains) and may result in challenges to software programmers or users of software which are presently hard-coded to recognize only Latin domain addresses.  In either case, the phased roll-out is intended to mitigate substantial concerns in this regard, however, users of accented Latin characters may already be aware that certain software still does not support such usage. 

Notwithstanding the potential challenges of internationalized domains, this development presents great opportunities for brand owners to bolster their online presence and to increase brand recognition among all Internet users utilizing non-Latin characters.  At the same time, however, brand owners are cautioned to carefully monitor Internet activity in order to anticipate and/or resolve potential online confusion - particularly where a non-Latin character may effectively mimic Latin characters specifically to cause the re-direct of web traffic (i.e. to utilize the number "0" as opposed to a capital letter "O") to a competing or entirely unrelated website.

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In a development illustrative of the importance of the Internet and social media to professional athletes and celebrities desiring to control their online image, a novel decision of a United States federal court in California awarded Toronto Raptors forward Chris Bosh control of the domain name chrisbosh.com as well as nearly 800 Internet domain names utilizing the names of college and professional athletes and celebrities including Canada's Steve Nash as well as several current and former Toronto Raptors.  A complete list of the domain names is available at:  http://www.winston.com/siteFiles/Domain_Name_List.pdf.

The award of the domain names follows an earlier award of $120,000 in damages under the U.S. Federal Anti-Cybersquatting Consumer Protection Act for the infringing, unauthorized usage of chrisbosh.com for the benefit of the former owner of the domain (Luis Zavala and his company Hoopology.com) and a request by Bosh's counsel to seek control over the list of domain names which were wrongfully controlled by the defendants.

A company controlled by Bosh, MaxDeal Technologies, has offered to provide the domain names free of charge to their rightful owner following submission of a written request to Hadi@MaxDealTechnologies.com. 

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On July 20, 2009 Industry Canada  commenced a brief consultation period of July 20th through September 13, 2009 to consider amendments and updates to the Copyright Act. 

A website has been launched for consultation on amending the Copyright Act and additional avenues have been announced for the public and stakeholders to contribute comments including an online discussion forum, an online submission centre, town hall meetings in Montreal and Toronto (notably with "limited space available to the public), as well as session round tables currently scheduled as follows:

Schedule of Events
July 20: Vancouver - Round Table
July 21: Calgary - Round Table
July 29: Gatineau - Round Table
July 30: Montreal - Town Hall
August 5: Winnipeg - Round Table
August 27: Toronto - Town Hall

Follow the hyperlinks here to register for the town hall meetings in Toronto or Montreal, or alternatively, log in to the webcasts of the events.

Many readers will recall that the most recent attempt at updating the legislation (the controversial Bill C-61) died with the call of the 2008 election.  Nevertheless, and in view of the rather truncated and summer season efforts to consult on the current initiative, it seems likely that the previous consultation with the public and stakeholders and subsequent public debate throughout that process is likely to inform much of the direction for the current initiative.

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On June 9, 2009 the well-known social networking site Facebook announced the introduction of a new policy to enable users to register personalized usernames as personal URLS in the form:  www.facebook.com/yourname, which will then link to the user's Facebook profile.  Additionally, those administering groups or other Facebook pages may similarly select their own URL for that page.  The initiative starts at 12:01 EDT on Saturday, June 13, 2009 for those whom have signed up with Facebook prior to May 31, 2009 or which have used a particular user profile prior to June 9, 2009.

Additionally, however, the introduction of this policy raises the potential for the adoption of personal URLs which may be confusingly similar or identical to trademarks and brand names thereby resulting in "Facebook squatting".  Anticipating this possibility and, in advance of the Saturday launch, Facebook Inc. has enabled trademark owners to use an on line form to register their trademarks with Facebook in order to prevent third parties from utilize a trademark as part of a URL. 

In order to mitigate against negative repercussions it is advisable that trademark owners register their marks with Facebook in order to avoid potential confusion or negative consequences such as diminished goodwill, it is recommended that you contact Facebook Inc. using the online form or contact our office to arrange for a recordal of your rights.

Should you wish to discuss the implications of this policy on your trademarks please contact us.

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In an interesting development to an earlier story, Facebook Inc. has announced that users of the company’s popular social networking site will have what may well be an unprecedented role in determining the Terms of Use policies governing the site. 

In a seemingly direct response to the negative backlash from Facebook users following the company’s recent attempts to revise its website policies and in an effort to promote a democratic and transparent process for developing new terms of use, company founder and CEO Mark Zuckerberg today announced that two Facebook Groups have been created by Facebook Inc. to enable a "town-hall" forum to permit users to offer feedback on two proposed policies:

1. The Facebook Principles, which define user rights while utilizing the social networking service and which will serve as the underlying policy prior to the implementation of  further applications, policies, etc. by the Company; and
2. The Statement of Rights and Responsibilities, which will replace the existing Terms of Use

Each of these documents will be posted for a month-long comment period closing at 12:01 am PDT on March 29 within which time Facebook Inc. Subsequent to that date, Facebook has indicated that they will republish the two policies along with revisions and comments in response to user feedback. 

Anyone utilizing the website or simply interested in the issues of privacy, copyright and technology law  in the context of user-generated online social networking sites is encouraged to visit the Facebook blog.

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A recent Internet controversy concerning the successful social networking site Facebook highlights the challenges in amending website Terms and Conditions following changes to the web site's Terms of Service have resulted in numerous challenges, questions, and protest groups users over the ownership of user-generated content. 

In a story which broke on the consumer rights advocacy blog, Consumerist.com , Facebook Inc. attempted to clarify its Terms of of Service resulting in confusion concerning the legal implications for the new provisions, particularly where users elect to close or otherwise inactivate a user account.  Whereas both documents essentially provide for a grant of license from a user to Facebook for the use of user-generated content (i.e. photos, videos, posts, applications, etc.), the new agreement deletes a prior clause which read:

You may remove your User Content from the Site at any time.  If you choose to remove your User Content, the license granted above will automatically expire, however you acknowledge that the Company may retain archived copies of your User Content.  [emphasis added]

Effectively, the changes appeared to suggest that Facebook Inc. intended to assert ownership of user content or, at the very least a non-exclusive, perpetual license to continue to use, post and distribute such content even if a user account is closed. 

In an effort to resolve concerns over the issue, Facebook Inc.'s founder and CEO Mark Zuckerberg announced a re-introduction of the earlier agreement while stating on the corporate blog that  "[o]ur philosophy is that people own their own information and control who they share it with... When people share information on Facebook, they first need to grant Facebook a license to use that information so that we can show it to the other people they've asked us to share it with."

Generally speaking, the ownership of user-generated content will be governed by copyright protections and thus such materials are owned by their originating author unless transferred to a third party by way of assignment.  In Canada and many other countries, such a transfer must also include a waiver of moral rights which refer to rights to attribution and rights to protect the integrity of the work.  

This story certainly serves as a cautionary warning to businesses utilizing customer or user-generated content and the challenges which may result when introducing new contractual terms to an existing relationship - particularly one with a wide and online following.  For users of social networking websites this story highlights the need to closely reviewTerms of Use/Service and Privacy Policies in order to gain a full appreciation for the impact of such provisions on your existing legal rights.

 *Facebook and the Facebook Logo are trademarks of Facebook Inc.

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Apple Inc. has once again made a splash at the annual Macworld Expo trade show announcing that is has reached agreement with several major and independent record labels to distribute digital music from the iTunes store without copy protection software known as digital-rights management or DRM. 

In addition to permitting new purchases of DRM-free music, Apple Inc. is allowing customers to "upgrade" their current music library to DRM-free copies for a premium.  As an added bonus, DRM-free music purchases will be available from iTunes in high quality 256 kps encoding in contrast to competitors offering DRM-free purchases in mp3 format.

The announcement does, however, come with a trade-off:  whereas iTunes customers had previously enjoyed flat-rate pricing ($0.99), variable pricing will now be introduced depending on song/artist popularity, date of release, etc.

DRM software, intended to inhibit illegal file sharing, also prevented iTunes customers from sharing purchased music among multiple devices and equipment thereby requiring additional music purchases for use on upgraded, replacement or alternate music devices.  It remains to be seen whether this development is tied to the December 18, 2008 announcement by the Recording Industry Association of America to end the strategy of suing computer users engaging in file swapping and uploading.  

Changes to DRM policies and enforcement practices in the United States will undoubtedly add further complications to the development and introduction of copyright reform legislation in Canada which has been the subject of ongoing negotiation and debate over the appropriate balance between the interests of artists, recording labels and the consuming public amidst tremendous technological advancements and their impact upon the conventional sales and distribution models of the entertainment industry.

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