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					          Toronto Computer Lawyers Group

          The Year in Review: Developments in
                Computer, Internet and
             E-Commerce Law (2009-2010)

                         May 26, 2010


  Barry B. Sookman
  bsookman@mccarthy.ca
  416-601-7949




1270489
                         2




CONTRACTS/IT Contracts
Tercon Contractors Ltd. v. British Columbia,                                               3

2010 SCC 4
 •   Does fundamental breach vitiate a limitation of liability clause?
 •   “It is apparent from the decision that henceforth, parties seeking to avoid
     contractual limitations of liability will have to find the clause inapplicable
     based on its limited intended scope, or by pointing to some paramount
     consideration of public policy sufficient to override the public interest in
     freedom of contact that would defeat what would otherwise be the contractual
     rights of the partiess.”
 •   “As Duff C.J. recognized, freedom of contract will often, but not always, trump
     other societal values. The residual power of a court to decline enforcement
     exists but, in the interest of certainty and stability of contractual relations, it
     will rarely be exercised. Duff C.J. adopted the view that public policy “should
     be invoked only in clear cases in which the harm to the public is substantially
     incontestable, and does not depend upon the idiosyncratic inferences of a few
     judicial minds” While he was referring to public policy considerations
     pertaining to the nature of the entire contract, I accept that there may be well-
     accepted public policy considerations that relate directly to the nature of
     the breach, and thus trigger the court’s narrow jurisdiction to give relief against
     an exclusion clause.”
Internet Broadcasting Corporation Ltd. v Mar LLC                                                           4
[2009] EWHC 844 (Ch)
•   Do limitations of liability and disclaimers survive a deliberate wrongful termination of a contract?
•   (1) There is no rule of law applicable and the question is one of construction.
•   (2) There is a presumption, which appears to be a strong presumption, against the exemption clause
    being construed so as to cover deliberate, repudiatory breach.
•   (3) The words needed to cover a deliberate, repudiatory breach need to be very "clear" in the sense
    of using "strong" language such as "under no circumstances...".
•   (4) There is a particular need to use "clear", in the sense of "strong", language where the exemption
    clause is intended to cover deliberate wrongdoing by a party in respect of a breach which cannot, or
    is unlikely to be, covered by insurance. Language such as "including deliberate repudiatory acts by
    [the parties to the contract] themselves..." would need to be used in such a case.
•   (5) Words which, in a literal sense, cover a deliberate repudiatory breach will not be construed so
    as to do so if that would defeat the "main object" of the contract.
•   (6) The proper function between commercial parties at arm's length and with equal bargaining
    power of an exemption clause is to allocate insurable risk, so that an exemption clause should not
    normally be construed in such cases so as to cover an uninsurable risk or one very unlikely to be
    capable of being insured, in particular deliberate wrongdoing by a party to the contract itself (as
    opposed to vicarious liability for others).
•   (7) Words which in a literal sense cover a deliberate repudiatory breach cannot be relied upon if
    they are "repugnant”.
Gammasonics Institute for Medical Research Pty Ltd v                             5
Comrad Medical Sysytems Pty Ltd [2010] NSWSC 267
(9 April 2010)
• Is a software download a good?
• “In this case, the plaintiff submitted that it is productive of injustice if
  consumers purchasing software in the form of CDs or DVDs, either sold in
  retail shops or via the internet, are protected by the statutory warranties
  in the Sale of Goods Act, whereas consumers who download the same
  software directly from the internet or from a supplier, (as was the case
  here), would not. Accepting that to be the case, rectifying that injustice
  or perceived injustice in this case, is a matter deserving of a legislative
  review of the operation of the Sale of Goods Act rather than judicial
  intervention.”
• “Although her Honour found that the Sale of Goods Act did not apply, she
  was nonetheless satisfied that the common law terms as to fitness for
  purpose and merchantable quality should be implied in accordance with
  the well settled test for implication”.
Kingsway Hall Hotel Ltd. v Red Sky IT (Hounslow) Ltd.                                  6
[2010] EWHC 965
•   “Pursuant to S14 of the Sale of Goods Act 1979, a term is to be implied into
    the contract that Entirety would be fit for the purpose for which it was
    bought, namely that the system would increase revenue and occupancy levels
    and would allow quicker check-in and check-out, including accurately
    processing groups and making changes to group reservations while preserving
    the accuracy of the system. I am satisfied that Entirety was not fit for the
    purpose for which it was sold.
•   Pursuant to Section 4 of the Supply of Goods and Services Act 1982 a term is
    to be implied into the contract that the goods were of satisfactory quality.
    Entirety did not meet the standard that a reasonable person would regard as
    satisfactory, taking into account any description of the goods, the price and
    all other circumstance so as to satisfy S4(2A )of the 1982 Act.
•   Kingsway was entitled, as they did, to reject Entirety which, as delivered,
    was not of satisfactory quality or fit for its purpose. They were entitled to do
    so after giving Red Sky every opportunity to improve Entirety, so that it
    would become of satisfactory quality and fit for its purpose.”
                                                                                                        7
BSkyb Ltd v HP Enterprise Services UK Ltd [2010]
EWHC 86 (TCC) (26 January 2010)
•   “BSkyB has won at least a substantial part of its £709 million (US$1.15 billion) lawsuit against
    EDS, over a failed £48 million customer system implementation...
•   The lawsuit alleged that EDS, now owned by HP, had fraudulently misrepresented itself in a
    sales pitch in 2000 for the system, leaving Sky to pick up the pieces and take on heavy costs as
    it implemented the system itself. EDS, on the other hand, said Sky did not know what it
    wanted, and kept introducing new requirements, making it difficult to deliver...
•   The judgement is expected to change the legal basis for sales pitches and contracts. It is likely
    to mean that IT services companies will have to be very careful about what they suggest they
    are able to do during sales meetings, as they may be held accountable even if discussions are
    informal.
•   The judgement took 17 months to reach from the end of the trial in July 2008, partly because
    it is seen as setting a precedent, and also because hundreds of paper files and thousands of
    emailed documents were dragged up to substantiate and counter the claims.
•   Nigel Roxburgh, former research director at the National Outsourcing Association, previously
    told Computerworld UK that if the case is upheld in favour of BSkyB, "it could lead to a real
    scratching of heads, particularly among lawyers".
•   "If other representations become more important than contracts themselves, it could indicate
    that contracts effectively have no value," he said. It also potentially risks Entire Agreement
    Clauses, which exist in most supplier contracts and insist that only terms in the contract are
    legally binding, rather than any other representations.” IT World Jan 27, 2010
Griffin v. Dell Canada Inc., 2010 ONCA 29                                                                          8

•   Are arbitration clauses enforceable in consumer contracts?
•   The appeals involve a proposed class action arising from the sale of allegedly defective Dell notebook
    computers. Dell’s standard-form sales agreement contains a clause requiring that all disputes be submitted
    to arbitration.
•   S7 CPA, which applies “despite any agreement or waiver to the contrary” states “any term or
    acknowledgment in a consumer agreement or a related agreement that requires or has the effect of
    requiring that disputes arising out of the consumer agreement be submitted to arbitration is invalid insofar
    as it prevents a consumer from exercising a right to commence an action in the Superior Court of Justice
    given under this Act.”
    “Consumer contracts tend to be contracts of adhesion where the suppliers of services and sellers of goods
    are in a position to impose their own terms unilaterally. Both academic research and the common sense
    reflected by the findings of the motion judge in this case indicate that suppliers and sellers regularly insert
    arbitration clauses in order to defeat claims rather than out of a genuine desire to arbitrate disputes with
    consumers. Such disputes often involve small claims that are not individually viable. Such claims only
    become viable if they can be aggregated by way of a class proceeding.”
    “In my view, it would not be reasonable to separate the consumer from the non-consumer claims. We
    should, therefore, refuse a partial stay and allow all the claims to proceed under the umbrella of the class
    proceeding.
    Granting a stay of the non-consumer claims would lead to inefficiency, a potential multiplicity of
    proceedings, and added cost and delay. This would be contrary to the Courts of Justice Act, s. 138, which
    provides that “[a]s far as possible, a multiplicity of legal proceedings should be avoided”, and contrary to
    the jurisprudence on the reasonableness of partial stays under s. 7(5) of the Arbitration Act.”
                                                                                        9
Amendments to BIA and CCAA (in force as of Sept. 18, 2009)
 •   S65.11(7) BIA “If the debtor has granted a right to use intellectual property
     to a party to an agreement, the disclaimer or resiliation does not affect the
     party’s right to use the intellectual property — including the party’s right
     to enforce an exclusive use — during the term of the agreement, including
     any period for which the party extends the agreement as of right, as long
     as the party continues to perform its obligations under the agreement in
     relation to the use of the intellectual property.
 •   S32(b) CCAA “If the company has granted a right to use intellectual
     property to a party to an agreement, the disclaimer or resiliation does not
     affect the party’s right to use the intellectual property — including the
     party’s right to enforce an exclusive use — during the term of the
     agreement, including any period for which the party extends the
     agreement as of right, as long as the party continues to perform its
     obligations under the agreement in relation to the use of the intellectual
     Property.”
 •   What does “use” mean; does IP include all common law and statutory
     rights; rights to distribute; does it apply to affiliates; does it apply outside
     of Canada?
                        10




Electronic Agreements
Tracfone Wireless, Inc. v Anadisk LLC 2010 WL
565392 (S.D.Fla. Feb 18, 2010)
• Are shrink-wrap agreements enforceable?
• “In Florida and the federal circuits, shrinkwrap agreements are valid
  and enforceable contracts...”
• “The outside retail packaging of TracFone's Phones contain
  conspicuous lasnguage restricting the use of the Phones for TracFone
  Prepaid Wireless service and prohibits the consumer from tampering
  or altering the software or hardware in the phone. The language
  provides in part “[b]y purchasing or opening this package, you are
  agreeing to these terms and the terms and conditions of service in
  the enclosed user guide.” Accordingly, an enforceable contract exists
  between the parties as to Defendants' use of the Phones and
  Defendants have breached the parties' contract by, inter alia,
  purchasing TracFone Prepaid Phones with the specific intent to
  reflash or unlock the phones and ship the phones outside of the
  United States.”
Defrontes v Dell Inc. 984 A.2d 1061
(Sup.Ct.RH.Isld.2009)
• “After reviewing the case law pertaining to so-called “shrinkwrap”
  agreements, we are satisfied that the Pro-CD line of cases is better
  reasoned and more consistent with contemporary consumer
  transactions...
• We therefore decline to adopt the minority view, as urged by plaintiffs,
  that a contract is fully formed when a buyer orders a product and the
  seller accepts payment and either ships or promises to ship. Instead,
  formation occurs when the consumer accepts the full terms after
  receiving a reasonable opportunity to refuse them. Yet in adopting the
  so-called “layered contracting” theory of formation, we reiterate that
  the burden falls squarely on the seller to show that the buyer has
  accepted the seller's terms after delivery. Thus, the crucial question in
  this case is whether defendants reasonably invited acceptance by making
  clear in the terms and conditions agreement that (1) by accepting
  defendants' product the consumer was accepting the terms and
  conditions contained within and (2) the consumer could reject the terms
  and conditions by returning the product.”
Defrontes v Dell Inc. 984 A.2d 1061
(Sup.Ct.RH.Isld.2009)
• “In reviewing the language of the terms and conditions
  agreement it cannot be said that it was reasonably
  apparent to the plaintiffs that they could reject the
  terms simply by returning the goods. We believe that
  too many inferential steps were required of the
  plaintiffs and too many of the relevant provisions were
  left ambiguous. We are not persuaded that a
  reasonably prudent offeree would understand that by
  keeping the Dell computer he or she was agreeing to
  be bound by the terms and conditions agreement and
  retained, for a specified time, the power to reject the
  terms by returning the product.”
                                                                                     14
Major v McCallister (Miss.CT.App. Dec 23, 2009)
• Are browse-wrap agreements enforceable?
•   “The legal effect of online agreements may be ‘an emerging area of the
    law,’ but courts still ‘apply traditional principles of contract law and focus
    on whether the plaintiff had reasonable notice of and manifested assent to
    the online agreement.’”
•   “ServiceMagic’s site was a browsewrap -- i.e., one where users need not
    ‘click’ to accept the website terms. Instead, browsewraps indicate in some
    fashion that use of the site constitutes acceptance of its terms of service...
    uphold browsewraps if the user “has actual or constructive knowledge of a
    site's terms and conditions prior to using the site.”
•   ServiceMagic did put ‘immediately visible notice of the existence of
    license terms’ -- i.e., ‘By submitting you agree to the Terms of Use’ and a
    blue hyperlink -- right next to the button that Appellant pushed. A second
    link to those terms was visible on the same page without scrolling, and
    similar links were on every other website page....
•   For these reasons, Appellant’s contention that the website terms were so
    inconspicuous that a reasonably prudent internet user could not know or
    learn of their existence, or assent to them without a ‘click,’ is
    unconvincing.”
DC Laboratories, Inc. v. Hach Co., 2009 WL                           15

2605270 (C.D.Ill.,Aug 25, 2009)
• “the Court finds that the Terms were conspicuous enough... It is
  undisputed that the Terms were hyperlinked on three separate
  pages of the online Plate order process in underlined, blue,
  contrasting text... Further evidence of the Terms'
  conspicuousness is the fact that they were brought to attention
  by being specifically referenced in the final order step which
  read: “STEP 4 of 4: Review terms, add any comments, and
  submit order,” and was followed by a hyperlink to the Terms...
  Though PDC does not state whether or not they read the Terms,
  it is inconsequential to the Terms' conspicuousness
  or PDC's accent thereto. See Druvan v. Jagger, 508 F.Supp.2d
  228, 237 (S.D.N.Y. 2007) (where the court found that the
  plaintiff was bound to online terms regardless of whether she
  actually read them).”
Hines v. Overstock.com, Inc. 668 F.Supp.2d 362                               16
(E.D.N.Y. 2009)
• “In ruling upon the validity of a browsewrap agreement, courts consider
  primarily ‘whether a website user has actual or constructive knowledge of a
  site's terms and conditions prior to using the site.’”
• “In the instant case, it is clear that Plaintiff had no actual notice of the
  Terms and Conditions of Use. Defendant has also failed to show that
  Plaintiff had constructive notice. The Hawkins Affidavit...[or] refute
  Plaintiff's sworn statement that she was never advised of the Terms and
  Conditions and could not even see the link to them without scrolling down
  to the bottom of the screen-an action that was not required to effectuate
  her purchase. Notably, unlike in other cases where courts have upheld
  browsewrap agreements, the notice that “Entering this Site will constitute
  your acceptance of these Terms and Conditions,” was only available within
  the Terms and Conditions... Hines therefore lacked notice of the Terms and
  Conditions because the website did not prompt her to review the Terms
  and Conditions and because the link to the Terms and Conditions was not
  prominently displayed so as to provide reasonable notice of the Terms and
  Conditions.”
Tradecomet.com LLC v Google, Inc. 2010 WL
779325 (S.D.N.Y. Mar. 5, 2010)
•   Are click-wrap agreements enforceable?
•   “The agreements at issue here are “clickwrap arrangements” in which users
    of Google's AdWords program are required to agree to the proffered terms in
    order to use the program.”
•   “The Second Circuit “regularly enforce[s]” forum selection clauses as long as
    ‘the existence of the clause was reasonably communicated to the parties.’”
•   “District courts in this Circuit have found that clickwrap agreements that
    require a user to accept the agreement before proceeding are “reasonably
    communicated” to the user for purposes of this analysis.”
•   “Google bears the burden of demonstrating that it reasonably communicated
    the forum selection provision to TradeComet...Google offers testimony and
    screenshots showing the status of TradeComet's AdWords accounts to support
    its contention that TradeComet accepted the August 2006 Agreement and
    that it had to click through the text of that agreement to do so...”
    (emphasis added)
•   See also, Universal grading Services v eBay, Inc. 2009 WL 2029796 (E.D.N.Y.
    June 10, 2009)
Scherillo v. Dun & Bradstreet, Inc. 684
F.Supp.2d 313 (E.D.N.Y.2010.)
• “Directly below this text box there is more text that reads: “I
  have read and AGREE to the terms and conditions shown above.”
  Immediately adjacent to this text is a much smaller, empty box
  (“the terms and conditions check box”). Also at the bottom of the
  page is another box containing the phrase “Complete
  Registration” (“the Complete Registration box”). Clicking on this
  box completes the user's registration. McDonald testified that if a
  user clicks on the Complete Registration box without checking the
  terms and conditions check box, the user is unable to complete
  registration and is returned to the registration page.
• “plaintiff's primary contention is that he did not actually consent
  to the clause, and he sought to show that it was possible for him
  to unknowingly and involuntarily “check” the terms and
  conditions check box.”
Scherillo v. Dun & Bradstreet, Inc. 684
F.Supp.2d 313 (E.D.N.Y.2010.)
• “the Court finds plaintiff's testimony that he did not realize
  he had checked the box accepting the terms and conditions
  not to be credible... to accept plaintiff's theory, the Court
  would have to find that plaintiff hit two keys accidentally-
  the space bar and the return key-and that he was then
  involuntarily and unexpectedly sent to the next screen
  where he nonetheless proceeded to enter his credit card
  information and complete the purchase of the report. This
  alleged chain of events is simply not credible. The Court
  finds that plaintiff knowingly and voluntarily “checked” the
  terms and conditions box and assented to the clause.”
• See also, Appliance Zone, LLC v Nextag, Inc. 2009 WL
  5200572 (S.D. Inc. 2009)
Scherillo v. Dun & Bradstreet, Inc. 684
F.Supp.2d 313 (E.D.N.Y.2010.)
• “The fact that plaintiff had to “scroll” through a text box to
  get to the provision containing the forum selection clause does
  not affect the Court's analysis. Instead, this Court concludes
  that forum selection clauses are “reasonably communicated”
  to a webpage user even where a user simply has to scroll down
  a page to read the clause...
• A person who checks the box agreeing to the terms and
  conditions of a purchase on an internet site without scrolling
  down to read all of the terms and conditions is in the same
  position as a person who turns to the last page of a paper
  contract and signs it without reading the terms-namely, the
  clause is still valid. In sum, the Court concludes that the
  forum selection clause was reasonably communicated to the
  plaintiff.”
LTVN Holdings LLC v. Odeh 2009 WL
3736526 (D.Md.2009)
• “Mr. Odeh asserts that because he clicked “register”
  only once, the forum selection clause does not bind
  him. He argues that, by contrast, the defendants in
  Field agreed to the forum selection clause every time
  they accessed the plaintiff's online database over the
  course of four years. But a party need not assent to an
  agreement multiple times in order for a contract to be
  enforceable... In Field, the fact that the defendants
  agreed to the website's terms of use each time they
  accessed the plaintiff's online database reinforced the
  court's conclusion that the defendants had consented
  to personal jurisdiction, but it was not dispositive.”
Brodsky v. Match.com LLC 2009 WL
3490277 (S.D.N.Y. Oct. 28, 2009)
• “Prior to continuing and completing Match's subscription and
  payment process, each subscriber to Match.com, including
  Brodsky and other putative class plaintiffs, must check a box
  on the website affirming “I agree to the Match.com terms of
  use,” which statement is hyperlinked to a complete copy of
  the 11-page User Agreement. The first paragraph of the User
  Agreement states: “If you object to anything in this Agreement
  or the Match.com Privacy Policy, do not use the Website or the
  Service.”
• “it is clear that the forum selection clause in Match's User
  Agreement is reasonably communicated and mandatory, and
  that it covers the claims involved here-i.e., it is presumptively
  enforceable.”
Brodsky v. Match.com LLC 2009 WL
3490277 (S.D.N.Y. Oct. 28, 2009)
• “It is perfectly reasonable and legitimate for Match-in operating a
  website and service accessible to users anywhere in the country-
  to have decided that any disputes about its website and services
  should be litigated in Texas, the State in which it is
  headquartered and where all of its employees reside. Indeed, as a
  website and service provider, Match would appear to have no
  practical alternative than to include a forum selection and choice
  of law clause in its User Agreement, since otherwise Match could
  potentially be subject to suit in any of the fifty states arising from
  its website or service. Accordingly, because Match's forum
  selection clause meets the standard for presumptive
  enforceability under well-settled law and plaintiffs have failed to
  make the strong showing required to overcome that presumption,
  we shall give effect to the forum selection clause.”
Miller v. Facebook, Inc., No. 09-02810                    24

(N.D. Ga. Jan. 15, 2010)

• “Even if the court were to assume without deciding
  that the TOU was a contract of adhesion, striking the
  forum selection clause could wreak havoc on the
  entire social-networking internet industry. If this
  court were to determine that the forum selection
  clause contained in Facebook's TOU was
  unenforceable, the company could face litigation in
  every state in this country and in nations around the
  globe which would have potential adverse
  consequences for the users of Facebook's social-
  networking site and for other internet companies.”
National Auto Lenders, Inc. v. SysLOCATE, Inc.
2010 WL 527866 (S.D.Fla.Feb. 10, 2010)
• “Defendants argue that Plaintiff is contractually bound by the
  venue and mediation/arbitration clauses in the May
  Agreements. I disagree. The individuals that accepted the May
  Agreements did not have legal authority to bind Plaintiff.”
• “I find that the elements needed to establish an apparent
  agency relationship were not established in this case.
  Plaintiff's actions did not create the appearance that two non-
  executives at NAL were authorized to contractually bind
  Plaintiff to the May Agreements. Plaintiff's executives...
  specifically told Defendants that they were NAL's decision
  makers and solely authorized to enter into agreements on
  NAL's behalf... it was unreasonable for Defendants to believe
  that the individuals who accepted the May Agreements were
  authorized to do so.”
Carimate v. Ginsglobal Index Funds 2009 WL
3233538 (C.D.Cal.Sept.30, 2009)
• Do e-mail exchanges satisfy statutes of frauds?
• Defendants contend that the emails fail to satisfy Delaware's Statute of
  Frauds which requires that agreements “not to be performed within the
  space of one year ... be reduced to writing, or some memorandum, or
  notes thereof, are signed by the party to be charged therewith, or some
  other person thereunto by the party lawfully authorized in writing.”
• “Here, in response to Plaintiff's February 18, 2008 email confirming
  Plaintiff's understanding on passing worldwide sales through HIG,
  Defendant Ginsberg responded, “Yes I agree with your comments re
  splitting all future initiatives using Hindsight Investment entity-no
  problem.” The email signatures clearly identify the parties.FN6”
• “FN6. Delaware statutes make clear that an email with the sender's name
  satisfies the signature requirement of the statute of frauds. See 6 Del. C.
  § 12A-107(a) (“A record or signature may not be denied legal effect or
  enforceability solely because it is in electronic form.”)”
Thomas & Anor v BPE Solicitors (A Firm) [2010]
EWHC 306 (Ch) (19 February 2010)
• When is an e-mail received?
• “The general rule is that the acceptance of an offer is not effective
  until communicated to the offeror. The "postal rule" is an anomalous
  exception to the general rule, which is limited to its particular
  circumstances. It does not apply to acceptances made by some
  "instantaneous" mode of communication (Chitty on Contracts,
  30th edn, paragraph 2-050). This was decided in Entores Ltd v Miles
  Far East Corporation [1955] 2 QB 327 as regards communications by
  telex. At page 334, Denning LJ said that in such a case, "The contract
  is only complete when the acceptance is received by the offeror".
  Contrary to the claimants' submissions, in my view the same principle
  applies to communication by email, at least where the parties are
  conducting the matter by email, as the solicitors were in this case.
  However, that does not conclude the question, because issues may
  remain as to when the email in question was received (and also
  whether it was received)”.
Thomas & Anor v BPE Solicitors (A Firm) [2010]
EWHC 306 (Ch) (19 February 2010)
•   “Once one sets aside the "postal rule" as inapplicable to email
    communications, the question whether an email acceptance is effective when
    it arrives, or at the time when the offeror could reasonably be expected to
    have read it, is not a straightforward one, and does not appear to be settled
    by authority. On the basis that it must be resolved by reference to the
    intentions of the parties, by sound business practice and in some cases by a
    judgment where the risks should lie (Brinkibon at page 42), the answer does
    however appear to me to be clear in the present case. In the context in which
    the 18:00 email was sent—that is a transaction which (as the earlier emails
    show) could have been completed that evening—I do not consider that 18:00
    was outside working hours. The email was available to be read within working
    hours, despite the fact that Mr Cusack had in fact gone home. For that
    reason, I would have held that were the defendants to have accepted the
    Rickerbys undertaking by Mr Dew's email, then as a matter of law such
    acceptance would have been effective upon the receipt of the email at or
    about 18:00. However, as I have held, they did not do so, nor were they
    negligent in that regard.”
•   See, John Gregory “When Is Email Received?” bit.ly/bR7xF6
               29




INTERNET LAW
Grant v. Torstar Corp., 2009 SCC 61
• Do journalists, bloggers and other publishers have a public
  interest responsible communication defense to defamation
  claims?
• “The defence of public interest responsible communication is
  assessed with reference to the broad thrust of the publication in
  question. It will apply where: A. The publication is on a matter of
  public interest and: B. The publisher was diligent in trying to
  verify the allegation, having regard to: (a) the seriousness of the
  allegation; (b) the public importance of the matter; (c) the
  urgency of the matter; (d) the status and reliability of the source;
  (e) whether the plaintiff's side of the story was sought and
  accurately reported; (f) whether the inclusion of the defamatory
  statement was justifiable; (g) whether the defamatory
  statement’s public interest lay in the fact that it was made rather
  than its truth (“reportage”); and (h) any other relevant
  circumstances.”
Grant v. Torstar Corp., 2009 SCC 61
•   “A second preliminary question is what the new defence should be called. In
    arguments before us, the defence was referred to as the responsible
    journalism test. This has the value of capturing the essence of the defence in
    succinct style. However, the traditional media are rapidly being
    complemented by new ways of communicating on matters of public interest,
    many of them online, which do not involve journalists. These new
    disseminators of news and information should, absent good reasons for
    exclusion, be subject to the same laws as established media outlets. I agree
    with Lord Hoffmann that the new defence is “available to anyone who
    publishes material of public interest in any medium”: Jameel, at para. 54.
•    A review of recent defamation case law suggests that many actions now
    concern blog postings and other online media which are potentially both more
    ephemeral and more ubiquitous than traditional print media. While
    established journalistic standards provide a useful guide by which to evaluate
    the conduct of journalists and non-journalists alike, the applicable standards
    will necessarily evolve to keep pace with the norms of new communications
    media. For this reason, it is more accurate to refer to the new defence as
    responsible communication on matters of public interest.”
Crookes v. Newton, 2009 BCCA 392, (leave to SCC
granted)
•   Is a hyperlink a publication for defamation purposes?
•   “the mere fact that he hyperlinked the impugned sites does not make him a
    publisher of the material found at the hyperlinked sites...
•   hyperlinking may, in some cases amount to publication by the person creating the
    link. If it is apparent from the context in which the hyperlink is used that it is
    being used merely as a bibliographical or similarly limited reference to an original
    source, without in any way actively encouraging or recommending to the readers
    that they access that source, then..I accept that this would not amount to
    publication.
•   It is not sufficient, however, for the creator of a hyperlink to simply depose that
    he intended the link to be in the nature of a “footnote” in order to avoid liability
    for publication... More significant factors would include the prominence of the
    hyperlink, any words of invitation or recommendation to the reader associated
    with the hyperlink, the nature of the materials which it is suggested may be found
    at the hyperlink (for example, if the hyperlink obviously refers to a scandalous, or
    obscene publication), the apparent significance of the hyperlink in relation to the
    article as a whole ”and a host of other factors dependant on the facts of a
    particular case.”
Metropolitan International Schools Ltd. v Designtechnica
Corp [2009] EWHC 1765 (QB) (16 July 2009)
•   Is a search engine liable for publishing defamatory statements?
•   “It is fundamentally important to have in mind that the Third Defendant has
    no role to play in formulating the search terms...There being no input from
    the Third Defendant, therefore, on the scenario I have so far posited, it
    cannot be characterised as a publisher at common law. It has not authorised
    or caused the snippet to appear on the user's screen in any meaningful sense.
    It has merely, by the provision of its search service, played the role of a
    facilitator.”
•   “Analogies are not always helpful, but there will often be resort to analogy
    when the common law has to be applied to new and unfamiliar concepts.
    Here, an analogy may be drawn perhaps with a search carried out in a large
    conventional library. If a scholar wishes to check for references to his
    research topic, he may well consult the library catalogue. On doing so, he
    may find that there are some potentially relevant books in one of the bays
    and make his way there to see whether he can make use of the content. It is
    hardly realistic to attribute responsibility for the content of those books to
    the compiler(s) of the catalogue. On the other hand, if the compilers have
    made an effort to be more informative, by quoting brief snippets from the
    book, the position may be different.”
Metropolitan International Schools Ltd. v Designtechnica
Corp [2009] EWHC 1765 (QB) (16 July 2009)
•   “The next question is whether the legal position is, or should be, any different once the Third
    Defendant has been informed of the defamatory content of a "snippet" thrown up by the
    search engine. In the circumstances before Morland J, inGodfrey v Demon Internet, the
    acquisition of knowledge was clearly regarded as critical. That is largely because the law
    recognises that a person can become liable for the publication of a libel by acquiescence; that
    is to say, by permitting publication to continue when he or she has the power to prevent it. As
    I have said, someone hosting a website will generally be able to remove material that is
    legally objectionable. If this is not done, then there may be liability on the basis of
    authorisation or acquiescence.”
•   “There is a degree of international recognition that the operators of search engines should put
    in place such a system (which could obviously either be on a voluntary basis or put upon a
    statutory footing) to take account of legitimate complaints about legally objectionable
    material. It is by no means easy to arrive at an overall conclusion that is satisfactory from all
    points of view. In particular, the material may be objectionable under the domestic law of one
    jurisdiction while being regarded as legitimate in others.”
•   “It may well be that the Third Defendant's "notice and take down" procedure has not operated
    as rapidly as Mr Browne and his client would wish, but it does not follow as a matter of law
    that between notification and "take down" the Third Defendant becomes or remains liable as a
    publisher of the offending material. While efforts are being made to achieve a "take down" in
    relation a particular URL, it is hardly possible to fix the Third Defendant with liability on the
    basis of authorisation, approval or acquiescence.”
R. v. Morelli, 2010 SCC 8
• Does a person possess pornography contrary to the Criminal Code when
  browsing on the Internet?
• “merely browsing a website or viewing images onscreen does not
  constitute possession. Neither does creating a bookmark on one’s
  computer establish possession over the content of the Website:
  bookmarks merely provide quick and easy access to the indicated
  Websites. Indeed, clicking on a bookmark may simply disclose that
  material previously on the Website has been removed; that material
  previously absent has been added; that the Website address is no longer
  valid — or that the Website no longer exists at all.
• Accordingly, in order to commit the offence of possession (as opposed to
  the offence of accessing), one must knowingly acquire the underlying
  data files and store them in a place under one’s control. The presence of
  the icons might arouse suspicions regarding possession, but it does not
  alone support a reasonable inference that the appellant not only
  accessed the website and knowingly viewed illegal images located there,
  but also took the underlying data file into his control by saving it to the
  hard drive, or otherwise.”
R. v. Morelli, 2010 SCC 8
• “It is difficult to imagine a more intrusive invasion of
  privacy than the search of one’s home and personal
  computer. Computers often contain our most intimate
  correspondence. They contain the details of our
  financial, medical, and personal situations. They even
  reveal our specific interests, likes, and propensities,
  recording in the browsing history and cache files the
  information we seek out and read, watch, or listen to on
  the Internet.
• It is therefore difficult to conceive a s. 8 breach with a
  greater impact on the Charter-protected privacy
  interests of the accused than occurred in this case.”
Review of the Internet traffic management practices of Internet
service providers, Telecom Regulatory Policy CRTC 2009-657, Oct.
21, 2009)
•   “With respect to ISPs’ disclosure of technical ITMPs to their retail customers,
    the Commission considers that such disclosure should adequately inform
    consumers about ITMPs and the impact such practices have on retail Internet
    services.
•   In light of the above, the Commission directs all primary ISPs, as a condition
    of providing retail Internet services, to disclose to their retail customers,
    clearly and prominently on their websites, information related to their
    technical ITMPs. The ISP must also reference its online disclosures in relevant
    marketing materials, customer contracts, and terms of service. Online
    disclosure should include the following information: why ITMPs are being
    introduced;
•   who is affected by the ITMP;
•   when the Internet traffic management will occur;
•    what type of Internet traffic (e.g. application, class of application, protocol)
    is subject to management; and
•    how the ITMP will affect a user’s Internet experience, including the specific
    impact on speeds.”
Bill C-22 An Act respecting the mandatory reporting of Internet child
                                                                        38
pornography by persons who provide an Internet service

• The proposed legislation would apply to suppliers of Internet
  services to the public, including those who provide electronic mail
  services, internet content hosting services, and social networking
  sites. It would require them to:
• Report, to a designated agency, tips they receive regarding Web
  sites where child pornography may be available to the public;
  and,
• Notify police and safeguard evidence if they believe that a child
  pornography offence has been committed using an Internet
  service that they provide.
• Failure to comply with the duties under the legislation would
  constitute an offence punishable by graduated fines.
• Bill at http://ow.ly/1OMDx; Backgrounder: Protecting children
  from online sexual exploitation at http://ow.ly/1IRTX
                                                            39
Notice Paper, May 25, 2010 - INTRODUCTION OF
GOVERNMENT BILLS http://ow.ly/1OatI
• May 20, 2010 — The Minister of Industry — Bill entitled
  “An Act to promote the efficiency and adaptability of
  the Canadian economy by regulating certain activities
  that discourage reliance on electronic means of
  carrying out commercial activities, and to amend the
  Canadian Radio-television and Telecommunications
  Commission Act, the Competition Act, the Personal
  Information Protection and Electronic Documents Act
  and the Telecommunications Act”.
• May 20, 2010 — The Minister of Industry — Bill entitled
  “An Act to amend the Personal Information Protection
  and Electronic Documents Act”.
                        40




Internet Jurisdiction
Lucasfilm Ltd & Ors v Ainsworth & Anor [2009] EWCA Civ                                       41

1328 (16 December 2009)
• Can a foreign claim for copyright infringement be adjudicated in a domestic forum?
• “Firstly we think that the two-fold rule in Moçambique applies to such
  claims... Infringement of an IP right...is essentially a local matter involving local policies
  and local public interest. It is a matter for local judges.
• Secondly enforcement may involve a clash of the IP policies of different countries...
• Thirdly... Extra-territorial jurisdiction will involve (and does here) a restraint on actions
  in another country – an interference which prima facie a foreign judge should avoid...
• Fourthly if national courts of different countries all assume jurisdiction there is far too
  much room for forum-shopping, applications for stays on forum non conveniens grounds,
  applications for anti-suit injunctions and applications for declarations of non-
  infringement.
• Fifthly it is quite clear that those concerned with international agreements about
  copyright have refrained from putting in place a regime for the international litigation of
  copyrights by the courts of a single state...
• Sixthly all of the other considerations which we have mentioned and which led the Court
  of Appeals in Voda to decline jurisdiction over foreign patent claims apply equally to
  enforcement of a foreign copyright here.”
Lucasfilm Ltd & Ors v Ainsworth & Anor [2009] EWCA Civ                                 42
1328 (16 December 2009)
 • To enforce a foreign judgement, UK law requires that the judgment debtor be
   present in the foreign country at the time proceedings are commenced.
 • “Therefore, does the use by Mr Ainsworth or his company of the
   website...amount to such presence?
 • …The question... is whether for current purposes the internet or a website are
   fundamentally different from other matters which have enabled business persons
   to present themselves and their products where they are not themselves
   present: such as advertisements, salesmen, the post, telephone, telex and the
   like. We do not believe so...
 • On the contrary, it might be said that the sheer omnipresence of the internet
   would suggest that it does not easily create, outside the jurisdiction or
   jurisdictions in which its website owners are on established principle already to
   be found, that presence, partaking in some sense of allegiance, which has been
   recognised by our jurisprudence and rules of private international law as a
   necessary ingredient in the enforceability of foreign judgments.”
 • *Note under Pro Swing Inc. v. Elta Golf Inc., 2006 SCC 52 the result would be
   different in Canada.
Editions du Seuil v Google Inc, Tribunal de Grande                                      43
Instance de Paris 3ème chambre, 2ème section Ruling of
December 18, 2009
• Does French law apply to acts of scanning books in the US and by transmitting
  snippets to France?
• French law applies to the acts of digitization and publication of extracts.
• “But seeing that the law applicable to non-contractual liability in tort complex is
  the state where the harmful event occurred; this place means that both the fact
  that the damage that that place of realization of the latter;
• in this case, it is undisputed that the disputed works of French authors to be
  scanned with excerpts available to users on French national territory, that also
  should be noted that besides the fact that the court is the French court, the
  plaintiffs are companies established in France for the Editions du Seuil company or
  subsidiary of a French company for the other two, as well as stakeholders
  volunteers empowered to defend the interests of authors and publishers of French
  are of French nationality, that Google France has its headquarters in France, that
  the domain name to access the site www.books.google.fr has an extension. "en"
  and that this site is written in French ;
• it follows from all of these elements that France is the country having the closest
  connection with the dispute, which justifies the application of French law contrary
  to the contentions of the defendants;”
Columbia Pictures Industries Inc v Fung 2:06-cv-
05578-SVW-JC (C.D. Cal. May 20, 2010)
•   What is the scope of the US Copyright Act to claims for infringement that
    involves foreign elements?
•   “this Permanent Injunction enjoins the conduct of Defendants wherever they
    may be found, including without limitation in Canada.
•   The Court further clarifies that this injunction covers any acts of direct
    infringement, as defined in 17 U.S.C. § 106, that take place in the United
    States. To the extent that an act of reproducing, copying, distributing,
    performing, or displaying takes place in the United States, it may violate 17
    U.S.C. § 106, subject to the generally applicable requirements and defenses
    of the Copyright Act. As explained in the Court’s December 23, 2009 Order,
    “United States copyright law does not require that both parties be located in
    the United States. Rather, the acts of uploading and downloading are each
    independent grounds of copyright infringement liability.”...Each download or
    upload of Plaintiffs’ copyrighted material violates Plaintiffs’ copyrights if
    even a single United States-based user is involved in the “swarm” process of
    distributing, transmitting, or receiving a portion of a computer file
    containing Plaintiffs’ copyrighted content.”
Banyan Tree Holding (P) Limited v Reddy CS (OS)
No. 894/2008 (H.C.Delhi. Nov. 23, 2009)
• “Question (ii): In a passing off or infringement action, where the
  defendant is sought to be sued on the basis that its website is
  accessible in the forum state, what is the extent of the burden on
  the Plaintiff to prima facie establish that the forum court has
  jurisdiction to entertain the suit?
• Answer: ... in order to show that some part of the cause of action
  has arisen in the forum state by the use of the internet by the
  Defendant the Plaintiff will have to show prima facie that the said
  website, whether euphemistically termed as “passive plus” or
  “interactive”, was specifically targeted at viewers in the forum state
  for commercial transactions. The Plaintiff would have to plead this
  and produce material to prima facie show that some commercial
  transaction using the website was entered into by the Defendant with
  a user of its website within the forum state resulting in an injury or
  harm to the Plaintiff within the forum state.”
Sheppard & Anor, R v [2010] EWCA Crim 65 (29
January 2010)
•   Do domestic criminal laws apply when there are foreign elements?
•   “The conduct the relevant provisions of the Act seek to prevent is the
    dissemination of material intended or likely to stir up racial hatred...The reality is
    that, as expressed by the judge, almost everything in this case related to this
    country... this is where the material was generated, edited, uploaded and
    controlled. The material was aimed primarily at the British public. The only
    "foreign" element was that the website was hosted by a server in Torrance
    California and, as the judge observed, the use of the server was merely a stage in
    the transmission of the material.”
•   “The English Courts have decisively begun to move away from definitional
    obsessions and technical formulations aimed at finding a single situs of a crime by
    locating where the gist of the crime occurred or where it was completed. Rather,
    they now appear to seek by an examination of relevant policies to apply the
    English criminal law where a substantial measure of the activities constituting the
    crime take place in England, and restricts its application in such circumstances
    solely to cases where it can seriously be argued on a reasonable view that these
    activities should on the basis of international comity not be dealt with by another
    country.”
•   For Canada, see Libman v. The Queen, [1985] 2 S.C.R. 178
          47




PRIVACY
PIPEDA Case Summary #2009-010 Report of Findings - Assistant                                              48
Commissioner recommends Bell Canada inform customers about
Deep Packet Inspection
•   “At issue in the first place is whether any information that Bell is collecting or using for the
    purposes of DPI can be considered personal information.”
•   “We ascertained from our investigation that Bell assigns its subscribers a dynamic IP address
    when a Sympatico subscriber connects to the network. Bell has indicated that it binds each
    dynamic IP address to an invariable “subscriber id” that can be traced back to an individual
    Sympatico subscriber. In this way, Bell can determine which Sympatico subscriber is associated
    with a dynamic IP address at a given time. Given that Bell can link its Sympatico subscribers,
    by virtue of their subscriber ID, with Internet activities (in this case, type of application being
    used) associated with their assigned IP addresses, in my view, IP addresses in this context are
    personal information.
•   We have not seen any evidence to indicate that Bell can link IP addresses not associated with
    Sympatico subscribers with an identifiable subscriber. Therefore, in the circumstances, Bell
    cannot be said to be collecting or using personal information with respect to IP addresses
    belonging to non-Sympatico subscribers.”
•   “Bell’s answer to the question “What is Deep Packet Inspection (DPI) and what does it have to
    do with Internet traffic management?”, located on its “Network management” web page is not
    accurate. Our investigation revealed that through DPI, Bell collects IP addresses and can
    associate them with a subscriber id for its own Sympatico subscribers; in my view, this is
    “personal information”.”
Johnson et al. v. Microsoft Corp. (W.D. Wash., June              49
2009)
• IP addresses are NOT personally identifiable information.
• Microsoft’s EULA prohibits Microsoft from transmitting
  “personally identifiable information” from the user’s
  computer to Microsoft without the user’s consent.
• “In order for “personally identifiable information” to be
  personally identifiable, it must identify a person. But an
  IP address identifies a computer, and can do that only
  after matching the IP address to a list of a particular
  Internet service provider’s subscribers. Thus, because an
  IP address is not personally identifiable, Microsoft did not
  breach the EULA when it collected IP addresses.
  Plaintiffs’ contract claim on that ground must fail.”
                                                                                                  50
EMI Records & Ors -v- Eircom Ltd, [2010] IEHC 108
 •   Is an IP address “personal data” under the Irish Data Protection Act 1988 which defines
     “personal data” as “Data relating to a living individual who is or can be identified either
     from the data or from the data in conjunction with other information that is in, or is likely
     to come to into, the possession of the data controller.”
 •   The IP addresses collected by rights holders did not personally identify any living person
     who is infringing their copyright.
 •   “Nothing in these provisions changes one basic fact. Neither DetectNet, or any similar
     service of detection, nor any of the plaintiffs whose copyright material is being infringed
     would ever know through this process that the infringer is a particular person living in a
     particular place in Ireland. What they do know is that a particular IP address has been
     involved in the downloading. An IP address is the number given to a computer from an
     internet service provider when it receives internet access. The IP number electronically
     identifies the user of the internet. Banks of numbers for IP addresses are produced by an
     international organisation and these, in turn, are provided to internet service providers.
     One can find out by looking at the IP number, I understand, who the internet service
     provider is. What internet service provider is given what bank of thousands or millions of IP
     numbers is not kept a secret anywhere. Since each internet service provider will have, in
     turn, many thousands of customers, one is not moving much closer to finding out the
     identity of an internet abuser by knowing the copyright infringing IP address was assigned
     to that company. That number will probably give you no more than an indication of the
     domicile of the computer...”
PIPEDA Case Summary #2009-013 Publisher collected and used                      51
e-mail addresses for marketing without consent
• The complainant was perturbed by the number of unsolicited e-mails
  he received from a publisher marketing a Canadian directory of
  funding sources. Even when he asked the company to remove his
  various e-mail addresses from its list, the company continued to send
  him messages. For its part, the company contended that the
  complainant’s business e-mail address was not personal information
  and that, in any event, his e-mail addresses were publicly available.
• The addresses at issue in this complaint are business e-mail addresses.
  Thus, pursuant to section 2, they are the complainant’s personal
  information.
•    The company asserted that, by putting one’s e-mail address on a web
    site, one is making it available to the public. However, as the Assistant
    Commissioner explained, this does not make it “publicly available” as
    defined in the Regulations, nor does it follow that the individual has
    given his or her implied consent to receiving marketing messages.
R. v. Cuttell, 2009 ONCJ 471                                                                      52

•   Is subscriber information personal information?
•   “The starting point for an assessment of the subscriber information in this case is that it
    provided the link between Mr. Cuttell’s identity and some very personal details of his
    lifestyle as revealed in his shared folder. As a result, I find that Mr. Cuttell did have a
    reasonable expectation of privacy in his subscriber information.
•   In this case where there is no evidence of any contract or agreement regarding disclosure of
    subscriber information between Bell and Mr. Cuttell, the reasonable expectation of privacy
    remains. It may be that in other cases, the police are able to determine that there is a
    specific agreement between a subscriber and his or her ISP indicating that there is no
    reasonable expectation of privacy for disclosure of certain information, and as such a police
    request would not amount to a search. This has to be determined on a case by case basis.
•   Whenever there is a reasonable expectation of privacy in this context, there is a search and
    s.8 of the Charter applies. A warrantless search is presumed to be unreasonable. This
    analysis is not altered by PIPEDA, nor does PIPEDA create a new search power. Similarly,
    where there is a reasonable expectation of privacy and the ISP acts as an agent of the state,
    the police cannot shield their actions behind the third party’s consent and avoid Charter
    scrutiny.
•   The search without a warrant for subscriber information in this case was unreasonable, and
    as the Crown concedes, the subsequent warrant cannot be sustained. I therefore find a
    violation of s. 8 of the Charter.
Carter v. Connors, 2009 NBQB 317
• Do individuals have to disclose ISP and social network usage in
  litigation?
• “The Respondent has claimed an individual privacy right with respect
  to her general Internet use records as well as her social network use
  records on the Internet social network site Facebook maintained by
  her service provider Bell-Aliant.”
• “It is clear from these judgments that the success of an application
  to retrieve an individual’s electronic computer data principally
  depends upon the degree of intrusion into the private lifestyle
  choices and electronic activity of the Internet user as well as the
  probative values of the information sought.”
• A separate issue concerns the likelihood that third party privacy
  rights may be affected by any disclosure. Third party privacy rights
  are to be given special attention when those third parties are not
  parties to the legal proceedings.”
Carter v. Connors, 2009 NBQB 317
• “In this instance I believe that the probative value of the information
  requested is of such a level that its disclosure will not infringe upon a
  reasonable expectation of privacy. That is so because the information
  sought is not, at least at this stage of proceedings, information that could
  qualify as revealing very personal information over which most right
  thinking Canadians would expect a reasonable expectation of privacy. Put
  another way, it does not reveal: ‘intimate details of the lifestyle and
  personal choices of the individual.’”
• Having said that, it appears clear that this may be only the first of more
  questioning by The Defendant’s counsel, Mr. Morrison, of the Plaintiff
  with respect to her general Internet and specific Facebook usage at the
  examination for discovery. If the questioning attempts to delve deeper
  into the Plaintiffs lifestyle as it pertains to these subjects, relevancy and
  privacy, it will require a re-examination of the reasonable limits of such
  questioning. For example, included in that assessment will be the extent
  to which an individual may claim a reasonable expectation of privacy in
  the use of social networking site electronic data.”
                                                                               55
Warman v. Fournier et al, 2010 ONSC 2126
• Issue is the test for disclosure of the identity of anonymous bloggers.
• “The fundamental premise of Norwich Pharmacal is that, where privacy
  interests are involved, disclosure is not automatic even if the plaintiff
  establishes relevance and the absence of any of the traditional categories
  of privilege.”
• Given the circumstances in this action, the motions judge was therefore
  required to have regard to the following considerations: (1) whether the
  unknown alleged wrongdoer could have a reasonable expectation of
  anonymity in the particular circumstances; (2) whether the Respondent
  has established a prima facie case against the unknown alleged
  wrongdoer and is acting in good faith; (3) whether the Respondent has
  taken reasonable steps to identify the anonymous party and has been
  unable to do so; and (4) whether the public interests favouring disclosure
  outweigh the legitimate interests of freedom of expression and right to
  privacy of the persons sought to be identified if the disclosure is
  ordered.”
• See also, York University v Bell Canada Enterprises, 2009 CanLII 46447
  (ON..C.)
Boring v Google Inc. 2010 WL 318281
(3rd.Cir.Jan 28, 2010)
• “To state a claim for intrusion upon seclusion, plaintiffs must allege
  conduct demonstrating “an intentional intrusion upon the seclusion of
  their private concerns which was substantial and highly offensive to a
  reasonable person, and aver sufficient facts to establish that the
  information disclosed would have caused mental suffering, shame or
  humiliation to a person of ordinary sensibilities.”
• “No person of ordinary sensibilities would be shamed, humiliated, or
  have suffered mentally as a result of a vehicle entering into his or her
  ungated driveway and photographing the view from there... the privacy
  allegedly intruded upon was the external view of the Borings' house,
  garage, and pool-a view that would be seen by any person who entered
  onto their driveway, including a visitor or a delivery man. Thus, what
  really seems to be at the heart of the complaint is not Google's fleeting
  presence in the driveway, but the photographic image captured at that
  time. The existence of that image, though, does not in itself rise to the
  level of an intrusion that could reasonably be called highly offensive.”
• Google liable for trespass for Street View, however.
EU Telecom Directive (October 22, 2009)                                      57
(“Cookie Directive”)
 • Article 5(3) “Member States shall ensure that the storing of
   information, or the gaining of access to information already stored, in
   the terminal equipment of a subscriber or user is only allowed on
   condition that the subscriber or user concerned has given his or her
   consent, having been provided with clear and comprehensive
   information, in accordance with Directive 95/46/EC, inter alia about
   the purposes of the processing. This shall not prevent any technical
   storage or access for the sole purpose of carrying out the transmission
   of a communication over an electronic communications network, or as
   strictly necessary in order for the provider of an information society
   service explicitly requested by the subscriber or user to provide the
   service.”
 • Applies to “storing of information, or the gaining of access to
   information already stored, in the terminal equipment of a
   subscriber”, i.e. cookies, spyware
                                                                                          58
EU Telecom Directive (October 22, 2009)
(“Cookie Directive”)
 •   Recital 66 “Third parties may wish to store information on the equipment of a
     user, or gain access to information already stored, for a number of purposes,
     ranging from the legitimate (such as certain types of cookies) to those involving
     unwarranted intrusion into the private sphere (such as spyware or viruses). It is
     therefore of paramount importance that users be provided with clear and
     comprehensive information when engaging in any activity which could result in
     such storage or gaining of access. The methods of providing information and
     offering the right to refuse should be as user-friendly as possible. Exceptions to
     the obligation to provide information and offer the right to refuse should be
     limited to those situations where the technical storage or access is strictly
     necessary for the legitimate purpose of enabling the use of a specific service
     explicitly requested by the subscriber or user. Where it is technically possible
     and effective, in accordance with the relevant provisions of Directive 95/46/EC,
     the user's consent to processing may be expressed by using the appropriate
     settings of a browser or other application. The enforcement of these
     requirements should be made more effective by way of enhanced powers
     granted to the relevant national authorities.”
 •   Will it apply to Canadian sites collecting information from EU residents?
                                                                                         59
Behavioral Advertising
 •   Lots of action since FTC released Staff report: Self regulatory Principles for
     Online Advertising (7 principles for online behavioral advertising) Feb 2009.
     http://www.ftc.gov/os/2009/02/P085400behavadreport.pdf
 •   Self regulatory Principles for Online Advertising July 2009, produced by the
     marketing-media industry and includes the American Association of Advertising
     Agencies (AAAA), the Association of National Advertisers (ANA), the Direct
     Marketing Association (DMA), and the Interactive Advertising Bureau (IAB), the
     Council of Better Business Bureaus (BBB).
 •   The Principles apply to online behavioral advertising, defined as the collection
     of data online from a particular computer or device regarding Web viewing
     behaviors over time and across non-affiliate Web sites for the purpose of using
     such data to predict user preferences or interests to deliver advertising to that
     computer or device based on the preferences or interests inferred from such
     Web viewing behaviors. The Principles do not apply to a Web site’s collection of
     viewing behavior solely for its own uses. Contextual advertising also is not
     covered by the Principles as it delivers advertisements based on the content of
     a Web page, a search query, or a user’s contemporaneous behavior on the Web
     site.
                                                                                                     60
PIPEDA Case Summary #2009-008 Report of Findings into the
Complaint Filed by CIPPIC against Facebook Inc (July 22, 2009)
 •   The complaint against Facebook by the Canadian Internet Policy and Public Interest Clinic
     (CIPPIC) comprised 24 allegations ranging over 12 distinct subjects. These included default
     privacy settings, collection and use of users’ personal information for advertising purposes,
     disclosure of users’ personal information to third-party application developers, and
     collection and use of non-users’ personal information.
 •   On four subjects (e.g., deception and misrepresentation, Facebook Mobile), the Assistant
     Commissioner found no evidence of any contravention of the Act and concluded that the
     allegations were not well-founded. On another four subjects (e.g., default privacy settings,
     advertising), the Assistant Commissioner found Facebook to be in contravention of the Act,
     but concluded that the allegations were well-founded and resolved on the basis of
     corrective measures proposed by Facebook in response to her recommendations.
 •   On the remaining subjects of third-party applications, account deactivation and deletion,
     accounts of deceased users, and non-users’ personal information, the Assistant
     Commissioner likewise found Facebook to be in contravention of the Act and concluded that
     the allegations were well-founded. In these four cases, there remain unresolved issues
     where Facebook has not yet agreed to adopt her recommendations. Most notably, regarding
     third-party applications, the Assistant Commissioner determined that Facebook did not have
     adequate safeguards in place to prevent unauthorized access by application developers to
     users’ personal information, and furthermore was not doing enough to ensure that
     meaningful consent was obtained from individuals for the disclosure of their personal
     information to application developers.
                                                                            61
Privacy Commissioner Letter to Google Inc.
Chief Executive Officer April 19, 2010

 • “we are increasingly concerned that, too often, the privacy rights of
   the world’s citizens are being forgotten as Google rolls out new
   technological applications. We were disturbed by your recent rollout
   of the Google Buzz social networking application, which betrayed a
   disappointing disregard for fundamental privacy norms and
   laws. Moreover, this was not the first time you have failed to take
   adequate account of privacy considerations when launching new
   services.”
 • “Unfortunately, Google Buzz is not an isolated case. Google Street
   View was launched in some countries without due consideration of
   privacy and data protection laws and cultural norms. In that instance,
   you addressed privacy concerns related to such matters as the
   retention of unblurred facial images only after the fact, and there is
   continued concern about the adequacy of the information you provide
   before the images are captured.”
Google Analytics (Germany)                          62



 • German federal and state data protection
   authorities say they may levy fines against
   companies who use Google Analytics to
   gather detailed usage stats without the
   explicit consent of visitors.
 • Possible €50,000 fine for violators.
 • See, Achtung! Google Analytics is illegal, say
   German government officials November,
   2009.
Privacy Commissioner launches public consultations on emerging            63
technologies to focus on online tracking, profiling and targeting of
consumers by business (January 18, 2010)

  • In the practice of online consumer tracking, data about the
    browsing habits of individuals is collected through digital markers
    such as cookies. Additional data may be gathered using other
    technologies, such as deep packet inspection and the global
    positioning systems (GPS) common in many mobile communications
    devices.
  • Individuals themselves, moreover, volunteer significant amounts of
    personal information, especially through their participation in
    social networking sites, such as Facebook, MySpace and LinkedIn,
    and other popular web-based services such as foursquare.
  • Personal data can be collated and mapped against other types of
    information to generate detailed personal profiles. Such profiles
    are valuable to marketers and other enterprises that want to target
    products or services to people of a particular demographic or with
    specific purchasing preferences.
                                                                        64
Office Privacy Commissioner and Cloud Computing

   There are also privacy-specific issues inherent in the cloud
   infrastructure: Jurisdiction, Creation of new data, Security, Data
   intrusions, Lawful access, Processing, Misuse of data, Data
   permanence, Data ownership Privacy Commissioner: Reaching for
   the Cloud(s) (March 29, 2010)
   Privacy Commissioner Notice of Consultation and Call for
   Submissions on Cloud Computing (February 11, 2010) The aim of
   this consumer consultation is to learn more about cloud computing
   technology, explore its privacy implications, and find out what
   privacy protections Canadians expect with respect to cloud
   computing. The consultation is also intended to promote debate
   about the impact of these technological developments on privacy,
   and to inform the next review process for the Personal Information
   Protection and Electronic Documents Act (PIPEDA).
Poliquin v. Devon Canada Corporation,                                65
2009 ABCA 216 (Alta.C.A.)

• Can an employee be dismissed for cause because he or she uses an
  employer’s computer and Internet access to view and transmit
  pornographic and racist materials in violation of a company’s Code of
  Conduct?
  “It is important to situate a document like the Code of Conduct in the
  larger workplace context. Employers have the right to set the ethical,
  professional and operational standards for their workplaces. Doing so
  not only falls within an employer’s management rights, it also
  constitutes an integral component of corporate good governance. The
  workplace is not an employee’s home; and employees have no
  reasonable expectation of privacy in their workplace computers. It
  therefore follows that while employers may permit employees limited
  personal use of workplace computers, the employer is entitled to
  restrict the terms and conditions on which that use may be
  permitted. Devon did just that...”
Poliquin v. Devon Canada Corporation,                                         66
2009 ABCA 216 (Alta.C.A.)
  “In summary, an employee’s misuse of a workplace computer for
  pornographic or racist purposes negatively affects an employer’s professional,
  ethical and operational integrity. Employers are not required to tolerate the
  misuse of their computers and Internet access any more than they are
  required to put up with serious incidents of dishonesty by employees. When
  an employee steals money from an employer, the theft and resulting damage
  is at least confined to that employee. But where dissemination of
  pornographic or racist material using the employer’s computer or Internet
  access is concerned and especially where the employee’s e-mail address
  includes the employer’s identity, this is not necessarily so. In the information
  technology world today, e-mail can be disseminated to many inside and
  outside an organization with the click of a mouse. Accordingly, the harm
  done may well be far more serious and pervasive. This reality substantially
  increases the risks to employers flowing from the misuse of their equipment
  and Internet access for improper purposes. For these reasons, an employer is
  entitled not only to prohibit use of its equipment and systems for
  pornographic or racist purposes but also to monitor an employee’s use of the
  employer’s equipment and resources to ensure compliance.”
                                                                                67
Bill S-4: An Act to amend the Criminal Code (identity
theft and related misconduct) (in force jan 8, 2010)

• The amendment create several new Criminal Code offences specifically
  targeting those aspects of identity theft that are not already covered by
  existing provisions. Essentially, they focus on the preparatory stages of
  identity theft by making it an offence to obtain, possess, transfer or sell
  the identity documents of another person.
•    Illegally Possessing or Trafficking in Government Documents e.g., social
    Insurance Number card, driver’s licence, health insurance card, birth
    certificate, death certificate, passports.
• Use, trafficking, or possession of forged documents.
• Identity Theft and Identity Fraud: identity theft refers to the preliminary
  steps (e.g., the collection and possession of another person’s identity
  information) and identity fraud constitutes the subsequent deceptive use
  of such information in connection with crimes like personation, fraud or
  abuse of credit card data.
                                                                               68
Bill S-4: An Act to amend the Criminal Code (identity theft
and related misconduct) (in force Jan 8, 2010)

• The amendments include a new definition of “identity information” and
  establish three new offences that target the early stages of identity
  theft:
• (a) obtaining and possessing identity information of another person with
  the intent to use the information deceptively, dishonestly or
  fraudulently in the commission of a crime;
• (b) trafficking in identity information of another person, an offence that
  targets those who transfer or sell information to another person with
  knowledge of or recklessness as to the possible criminal use of the
  information; and
• (c) unlawful possession or trafficking of certain government-issued
  identity documents relating to another person, either genuine or forged.
• These offences all carry a five year maximum term of imprisonment.
  See, Order Fixing January 8, 2010 as the Date of the Coming into Force
  of the Act, http://ow.ly/1IRQQ.
            69




Copyright
                                                                               70
SOCAN v. Bell Canada, 2010 FCA 123
• Scope of fair dealing exception for research on Internet.
• The word “research” in section 29 is not limited to “scientific”,
  “economic”, or “cultural” endeavours.
• Research can include an activity in which a “consumer is searching for an
  object of copyright that he or she desires and is attempting to locate and
  wishes to ensure its authenticity and quality before obtaining it.”
• The Court agreed with the Board that “[l]istening to previews assists in
  this investigation” and that the streaming of the previews was research
  for a fair dealing purpose.
• The Court also accepted that on the evidence before it that the dealings
  were also fair
• See also, United States v. American Society of Composers, Authors and
  Publishers, (In re AT&T Wireless), 599 F.Supp. 2d 415 (S.D.N.Y. 2009);
  Video Pipeline v. Buena Vista Home Entertainment Inc. 342 F.3d 191
  (3rd.Cir.)
Telstra Corporation Limited v. Phone Directories Company Pty                    71
Ltd. [2010] FCA 44 (8 February 2010)
• Copyright in yellow and white pages directories.
• A claim of authorship in database can arise when a person (an author)
  determines how a database will function and be expressed.
• The independent intellectual effort expected in making those determinations
  might go to the originality of the particular form of expression of the work
  (namely, the database).
• Telstra was unable to prove who the authors of the computer program it used
  to compile the directories were or that it was the owner of the intellectual
  property rights in the computer programs.
• It was also not proved that the individuals who had entered information in the
  database had contributed anything which was original. All information was
  dictated either by the computer programs used by Telstra, or by rules which
  also dictated the information in the database.
• Telstra was also unable to establish authorship in the rules.
• Accordingly, Telstra was unable to claim any copyright in its databases by
  virtue of either the computer programs or the rules and its copyright claim
  failed.
RecordTV Pte Ltd v MediaCorp TV Singapore Pte Ltd                              72

[2009] SGHC 287
• Whether for profit companies that operate Internet DVR services for
  television programming are liable for copyright infringement.
• Who makes copies: Following the reasoning in Cartoon Network LP v CSC
  Holdings Inc 536 F 3d 121 (2nd Cir 2008), the court held that “If the end-user
  is the maker of this time-shifted recording for the purposes of the VCR, it
  must remain that the end-user is the maker of the recording in the context of
  the DVR, remote or local.”
• Who communicates the programs to the public: “The key question is this:
  where exactly do the end-user’s volition and control cease to operate? ...
• The line, therefore, has to be drawn somewhere, and I think it sensible that
  it be drawn once the end-user has properly exercised his volition in making a
  choice. In other words, while I accept and have accepted that the end-user is
  the one who has control over what programmes to record, the subsequent
  transmission of that content would be effected by a process governed
  entirely by the plaintiff.”
                      73




Online File Sharing
Roadshow Films Pty Ltd v iiNet Limited (No. 3) [2010]                          74
FCA 24 (4 February 2010)
• The court made a number of important rulings about the liability arising
  from the use of BitTorrent networks.
• Seeders and peers that make music available for sharing are infringers
  under Australia’s making available right.
• The transmission of copyright files as part of a BitTorrent swarm
  constitutes a transmission (communication) to the public by participants
  in the stream and is infringing.
• A peer that downloads a copyright file over an unauthorized BitTorrent
  network infringes the reproduction right of the copyright owner.
• There can be liability for the transmission over a BitTorrent network even
  if some part of the transmission occurs outside of Australia.
• Operators of BitTorrent sites are probably liable for copyright
  infringement for having authorized infringement.
• An ISP that simply provides internet connectivity to subscribers does not
  by that act alone authorize the subscriber’s infringing activity.
Twentieth Century Fox Film Corporation v. Newzbin Ltd.,                               75
[2010] EWHC 601 (Ch) (29 March 2010)
•   English court found the operators of the Usenet Newzbin service to be liable
    for organizing and making hyperlinks to movies available to premium
    subscribers.
•   The Court found liability based on authorizing acts of infringement by its
    members, procuring, encouraging and entering into a common design with its
    members to infringe, and communicating the claimants’ copyright works to
    the public, namely, the defendants’ members.
    “For all these reasons I am entirely satisfied that a reasonable member would
    deduce from the defendant's activities that it purports to possess the
    authority to grant any required permission to copy any film that a member
    may choose from the Movies category on Newzbin and that the defendant has
    sanctioned, approved and countenanced the copying of the claimants' films,
    including each of the films specifically relied upon in these proceedings.”
    “In all these circumstances, I believe the question I have identified admits of
    only answer. The defendant has indeed procured and engaged in a common
    design with its premium members to infringe the claimants' copyrights.”
Arista Records LLC v Usenet.com Inc. 91 USPQ2d 1744              76
(S.D.N.Y.2009)

• Operators of Usenet.com site found liable for directly
  infringing the distribution right. “...contrary to
  Defendants’ contentions, here their service is not
  merely a ‘passive conduit’ that facilitates the exchange
  of content between users who upload infringing content
  and users who download such content; rather,
  defendants actively engaged in the process so as to
  satisfy the ‘volitional-conduct’ requirement for direct
  infringement.”
• Plaintiffs also successful in establishing liability for (1)
  inducement of copyright infringement, (2) contributory
  copyright infringement and (3) vicarious copyright
  infringement.
                                                                                       77
EMI Records & Ors -v- Eircom Ltd, [2010] IEHC 108
•   “In dealing with this aspect of data protection entitlement, I feel I must return, for
    a moment, to some basic principles of law. There is fundamental right to copyright
    in Irish Law. This has existed as part of Irish legal tradition since the time of Saint
    Colmcille. He is often quoted for his aphorism: le gach bó a buinín agus le gach
    leabhar a chóip (to each cow its calf and to every book its copy). The right to be
    identified with and to reasonably exploit one’s own original creative endeavour I
    regard as a human right. Apart from legal tradition, the rights now enshrined in the
    Copyright and Related Rights Act, 2000 were, under their previous legislative
    incarnation, identified in Phonographic Performance Ireland Limited v. Coady,
    [1994] I.R. 504 by Keane J. at 511 has having a pre-legislative origin and super-
    legislative effectiveness as part of the unenumerated fundamental rights under the
    Constitution”..
•   “The internet is only a means of communication. It has not rewritten the legal
    rules of each nation through which it passes. It is not an amorphous extraterrestrial
    body with an entitlement to norms that run counter to the fundamental principles
    of human rights. Since the early days of the internet, and increasingly as time has
    gone on, copyright material has been placed on world wide web by those with no
    entitlement to share it. There, it is downloaded by those who would normally have
    expected to pay for it. Among younger people, so much has the habit grown up of
    downloading copyright material from the internet that a claim of entitlement
    seems to have arisen to have what is not theirs for free.”
                                                                                              78
EMI Records & Ors -v- Eircom Ltd, [2010] IEHC 108
•   “The courts under the Constitution are obliged to supply, even in the absence of
    legislative intervention, appropriate remedies for the undermining of rights within
    the scheme of fundamental law that the Constitution represents. As has often been
    said, the powers of the courts in that regard are as ample as the Constitution
    requires. I am therefore obliged by Constitutional imperative to protect, as best I
    can, the rights of copyright owners from unjust attack or, where that sort of attack
    has taken place, to vindicate their rights through an appropriate order. There is
    ample expression of statutory remedies in the laws passed by the Oireachtas under
    the Constitution. Section 37 of the Copyright and Related Rights Act 2000 provides
    that the owner of the copyright in work has the exclusive right to undertake or
    authorise others to make that work available to the public. This legal entitlement is
    being flagrantly violated by peer-to-peer illegal downloading. I can see no other way
    of looking at the problem. More than one of the conditions in s.2A of the Data
    Protection Act, 1988 as amended is met as to both the legitimate interests of
    Eircom, as a responsible company, and that of the community in general. The most
    important of those interests is that of abiding by the law. It is completely within the
    legitimate standing of Eircom to act, and to be seen to act, as a body which upholds
    the law and the Constitution. That is what the court expects of both individuals and
    companies. That expectation is derived from the rights protected under the
    Constitution and the general pact which the people of Ireland mutually made in
    founding a legal system, as the Preamble to the Constitution clearly declares, that
    is dedicated to attaining true social order...”
Columbia Pictures Industries Inc v Fung 2:06-cv-                                      79

05578-SVW-JC (C.D. Cal. Dec. 21, 2009)
• Inducement: The argument that bittorrent sites like Isohunt are nothing but
  content neutral search engines like Google was dismissed by the court holding
  that “the evidence of Defendant’s intent to induce infringement is overwhelming
  and beyond reasonable dispute”. This finding was backed up by detailed findings
  about messages to users, assistance to users, and the implementation of
  technical features, which were all intended to induce direct infringement by site
  users. The court also found that the defendants’ business model depended on
  massive infringing uses of the plaintiffs’ copyright materials.
• Territoriality “However, United States copyright law does not require that both
  parties be located in the United States. Rather, the acts of uploading and
  downloading are each independent grounds of copyright infringement liability.
  Uploading a copyrighted content file to other users (regardless of where those
  users are located) violates the copyright holder’s § 106(3) distribution right.
  Downloading a copyrighted content file from other users (regardless of where
  those users are located) violates the copyright holder’s § 106(1) reproduction
  right… Accordingly, Plaintiffs need only show that United States users either
  uploaded or downloaded copyrighted works; Plaintiffs need not show that a
  particular file was both uploaded and downloaded entirely within the United
  States.”
                                                                               80
Arista Records, LLC v Lime Wire Group 2010 WL
1914816 (S.D.N.Y.2010)
• There was “overwhelming evidence that LimeWire engaged in purposeful
  conduct that fostered infringement” to support liability based on
  inducement.
• “LimeWire has engaged in purposeful conduct that fostered
  infringement, with the intent to foster such infringement.
  LimeWire distributes its software LimeWire, and (1) is aware that
  LimeWire’s users commit a substantial amount of copyright infringement;
  (2) markets LimeWire to users predisposed to committing infringement;
  (3) ensures that LimeWire enables infringement and assists users
  committing infringement; (4) relies on the fact that LimeWire enables
  infringement for the success of its business; and (5) has not taken
  meaningful steps to mitigate infringement.”
• The court found LimeWire vicariously liable the infringements of its users
  based on substantial evidence that LimeWire “had the right and ability to
  limit the use of its product for infringing purposes, including by (1)
  implementing filtering; (2) denying access; and (3) supervising and
  regulating users.”
 Sony BMG Music Entertainment v Tenenbaum, 2009 WL          81
4547019 (D.Mass. Dec 7, 2009).

• The defendant “mounted a broadside attack that
  would excuse all file sharing for private enjoyment.”
  He argued that all a defendant needs to show is that he
  did not make money from the files he downloaded or
  distributed-i.e., that his use was “non-commercial”.
• “It is a version of fair use so broad that it would
  swallow the copyright protections that Congress
  created, defying both statute and precedent.”
• Court held that allowing fair use for any non-
  commercial file sharing would be harmful to rights
  holders and undermine legitimate markets for sound
  recordings.
BREIN v MININOVA. B.V., DISTRICT COURT OF UTRECHT,                              82
26 August 2009
• The District Court:
• “5.1. issues a declaratory judgment that Mininova is acting unlawfully by
  enabling, inducing and profiting from infringements of the copyrights and
  neighbouring rights of the entitled parties affiliated with Brein;
• 5.2. orders Mininova to take such measures within three months after the
  service of this judgment to ensure that no torrent links are offered on its
  platform regarding which there should be a valid doubt as to whether they
  contain copyrighted works or works protected by neighbouring rights, the
  disclosure of which has not been authorised by the entitled parties;
• 5.3. orders that if, after three months after the service of this judgment,
  torrent links are offered on Mininova’s platform, the titles of which are
  identical or similar to titles of works appearing on a list of titles of
  copyrighted works or works protected by neighbouring rights provided by
  Brein... Mininova will incur a penalty of EUR 1,000 to Brein for each
  automatic reference to such an infringing file or per day that such a
  reference is offered, such at the discretion of Brein, at a maximum of
  EUR 5,000,000.00;”
Louis Vuitton Malletier, S.A. v. Akanoc Solutions, Inc.           83
(N.D. Cal. March 19, 2010)
• A service provider was given notices of direct infringement
  occurring on dozens of websites hosted on the defendants’
  servers.
• The hosting provider forwarded the notices to its customers
  but these were ignored. The hosting provider was sued for
  contributory infringement and was found liable.
• The court distinguished the liability of service providers
  which do not own or operate equipment and those service
  providers that do. In those cases, according to the court, if
  the operator learns of specific infringing material available
  on its systems and fails to purge such material, the operator
  knows of and contributes to direct infringement.
                 84




Other IP Cases
Autodesk, Inc v Dassault Systems Solidworks Corp.
2009 WL 5218009 (N.D.Cal. Dec. 31, 2009)
•   “No one has ownership of file extension designations under the Lanham Act because such
    designations are inherently functional. Any programmer or computer user anywhere is free to
    designate file extensions as they see fit, without worrying about trademark violations. File
    extensions are functional, and functional uses cannot be trademarked. To rule otherwise
    would invite a clog on commerce, given the millions of software applications. The limited
    universe of extension permutations would soon be encumbered with claimants and squatters
    purporting to own exclusive rights to file extensions.”
•   “the primary purpose of a file extension is to tell the computer the type of the file it is
    handling. A computer is not a consumer. Its “reading” of the file extension is not in connection
    with a commercial transaction. It doesn't care who made the file format it is trying to read.
    Whether the proper terminology for this use is a “functional use” or “non-trademark use,” a
    file extension is not actionable under trademark law.”
•   “This remains true even if computer users associate a particular file extension with a
    particular manufacturer (e.g. “.xls” with Microsoft, “.pdf” with Adobe, or for argument's sake,
    “.dwg” with Autodesk). While there is no question that a file extension could serve a
    tangential purpose of communicating the source of the file or file format, this effect-in the
    vast majority of instances-would be incidental. The primary function of a file extension to
    both a computer and its user is to identify a file or file type. Even if the function were solely
    to identify the format in which the contents are stored, that would still be a functional use.
    Functional uses are not protected under trademark law.”
Tiffany (NJ) Inc. v eBay Inc. 600 F.3d 93
(2nd.Cir.2010)
• “eBay appears to concede that it knew as a general
  matter that counterfeit Tiffany products were listed
  and sold through its website...Without more, however,
  this knowledge is insufficient to trigger liability under
  Inwood. The district court found, after careful
  consideration, that eBay was not willfully blind to the
  counterfeit sales. That finding is not clearly erroneous.
  eBay did not ignore the information it was given about
  counterfeit sales on its website.”
• See, also L’Oreal SA v eBay International AG [2009]
  EWHC 1094 (Ch) ) 22 May 2009)
Tiffany (NJ) Inc. v eBay Inc. 600 F.3d 93
(2nd.Cir.2010)
• “It is true that eBay did not itself sell counterfeit Tiffany goods; only
  the fraudulent vendors did, and that is in part why we conclude that
  eBay did not infringe Tiffany's mark. But eBay did affirmatively
  advertise the goods sold through its site as Tiffany merchandise. The
  law requires us to hold eBay accountable for the words that it chose
  insofar as they misled or confused consumers.
• eBay and its amici warn of the deterrent effect that will grip online
  advertisers who are unable to confirm the authenticity of all of the
  goods they advertise for sale...We rather doubt that the
  consequences will be so dire. An online advertiser such as eBay need
  not cease its advertisements for a kind of goods only because it
  knows that not all of those goods are authentic. A disclaimer might
  suffice. But the law prohibits an advertisement that implies that all
  of the goods offered on a defendant's website are genuine when in
  fact, as here, a sizeable proportion of them are not.”
Google France v Louis Vuitton Malletier, Official
Journal of the European Union 22.5.2010
•   “Article 5(1)(a) of First Council Directive 89/104/EEC of 21 December 1988 to
    approximate the laws of the Member States relating to trade marks and
    Article 9(1)(a) of Council Regulation (EC) No 40/94 of 20 December 1993 on
    the Community trade mark must be interpreted as meaning that the
    proprietor of a trade mark is entitled to prohibit an advertiser from
    advertising, on the basis of a keyword identical with that trade mark which
    that advertiser has, without the consent of the proprietor, selected in
    connection with an internet referencing service, goods or services identical
    with those for which that mark is registered, in the case where that
    advertisement does not enable an average internet user, or enables that user
    only with difficulty to ascertain whether the goods or services referred to
    therein originate from the proprietor of the trade mark or an undertaking
    economically connected to it or, on the contrary, originate from a third
    party.”
•   “An internet referencing service provider which stores, as a keyword, a sign
    identical with a trade mark and organises the display of advertisements on
    the basis of that keyword does not use that sign within the meaning of Article
    5(1) and (2) of Directive 89/104 or of Article 9(1) of Regulation No 40/94.”
Patents

•Bilski?
•Amazon?
Silvaco Data Systems v. Intel Corp. 2010 WL 1713241                                   90

(Cal.App. 6 Dist.2010)
•   “One clearly engages in the “use” of a secret, in the ordinary sense, when
    one directly exploits it for his own advantage, e.g., by incorporating it into
    his own manufacturing technique or product. But “use” in the ordinary sense
    is not present when the conduct consists entirely of possessing, and taking
    advantage of, something that was made using the secret. One who bakes a
    pie from a recipe certainly engages in the “use” of the latter; but one who
    eats the pie does not, by virtue of that act alone, make “use” of the recipe in
    any ordinary sense, and this is true even if the baker is accused of stealing
    the recipe from a competitor, and the diner knows of that accusation. Yet
    this is substantially the same situation as when one runs software that was
    compiled from allegedly stolen source code. The source code is the recipe
    from which the pie (executable program) is baked (compiled). Nor is the
    analogy weakened by the fact that a diner is not ordinarily said to make
    “use” of something he eats. His metabolism may be said to do so, or the
    analogy may be adjusted to replace the pie with an instrument, such as a
    stopwatch. A coach who employs the latter to time a race certainly makes
    “use” of it, but only a sophist could bring himself to say that coach “uses”
    trade secrets involved in the manufacture of the watch.”
Silvaco Data Systems v. Intel Corp. 2010 WL 1713241                     91

(Cal.App. 6 Dist.2010)

  “Strong considerations of public policy reinforce the common-
  sense conclusion that using a product does not constitute a “use”
  of trade secrets employed in its manufacture. If merely running
  finished software constituted a use of the source code from which
  it was compiled, then every purchaser of software would be
  exposed to liability if it were later alleged that the software was
  based in part upon purloined source code. This risk could be
  expected to inhibit software sales and discourage innovation to an
  extent far beyond the intentions and purpose of CUTSA. We
  therefore decline to hold that under the circumstances alleged
  and shown here, the mere execution of a software product
  constitutes “use” of the underlying source code for purposes of a
  misappropriation claim”.
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