Header graphic for print

Technology Law Source

Mapping the evolving legal landscape

Changes are coming for trademark registration holders in Canada

Posted in Intellectual Property, Trademarks

In late 2015 or early 2016, significant changes will occur in Canada under the Canadian Trade-Marks Act. Entities holding a Canadian trademark registration that has a renewal date close to this time period will face issues regarding the renewal term period and potential fee increases.

Under the current provisions of the Canadian Trade-Marks Act, registrations are valid for a period for 15 years. The Canadian Trademark Office has indicated that registrations having a renewal date before the change will renew for a period of 15 years. Registrations with a renewal date after the change will have 10-year terms. In that the exact date of the change is not yet known, any Canadian trademark registration having a renewal date from about September 2015 to about April 2016 could have either a 15-year or 10-year renewal period, depending on when the change is enacted. Continue Reading

Supreme Court decision likely to affect TTAB proceedings

Posted in Intellectual Property, Trademarks

Early in December 2014, the U.S. Supreme Court heard oral arguments in B&B Hardware, Inc. v. Hargis Industries, Inc. At issue are inconsistencies by the 12 regional federal courts appeal in giving preclusive effect in trademark infringement cases to a denial by the Trademark Trial and Appeal Board (TTAB) of an application to register a trademark in an opposition action. Issue preclusion prevents a party to a lawsuit from re-litigating an issue once it has been decided in a previous case where the party was given a full and fair opportunity to litigate the issue. The issue here is “likelihood of confusion.”

B&B owns a U.S. registration for the trademark SEALTIGHT. When Hargis applied to register SEALTITE, B&B opposed the registration. The TTAB held for B&B. B&B then sued Hargis in district court, alleging trademark infringement. The district court found that the TTAB’s ruling for B&B did not have preclusive effect on the district court case. B&B appealed to the Eighth Circuit. The Eight Circuit held that the TTAB and the district court used different tests to reach their findings of a likelihood of confusion, so refused to apply issue preclusion. B&B appealed to the Supreme Court. Continue Reading

Sony Data Hack: “You Can’t Lose What You Ain’t Never Had”

Posted in Copyright, Information Technology, Intellectual Property, Privacy, Trademarks

Back in the 1960’s, legendary bluesman Muddy Waters wrote a song called “You Can’t Lose What You Ain’t Never Had.”

Now, it is Sony Pictures that is singing the blues, as damages continue to mount following the cyber attack on its data networks just before Thanksgiving. A shadowy group with possible connections to the North Korean government has claimed responsibility for the hack, which, to date, has resulted in exposure of Sony intellectual property (e.g., movie scripts), trade secrets (e.g., film budgets), employee personal information (e.g., employee and former employee home addresses and social security numbers) and other sensitive information (e.g., actor travel aliases and phone numbers).

I’m no cybersecurity expert, but I’m at the point where I seriously doubt any currently available data security technology is totally hack-proof. Who knows, there may have been precious little that Sony could have done to prevent the loss of its intellectual property and trade secret information to determined hackers. Let’s face it, some of the most highly sophisticated corporations and government agencies have been victimized by cyber attacks in the last year. But the same really can’t be said for their employee data.

Continue Reading

What have you done with your data?

Posted in Information Technology, Privacy

Companies have moved in droves to allow hosting partners to store their mission critical applications — along with valuable business information, trade secrets and customer data — in the cloud. Saving money is great, but do you know where all of your data is at all times, and, more importantly, how secure is it? Every cloud deployment should go “eyes-open” into the cloud. No matter where your data is, you are responsible for it and you will be held accountable for a breach in security of the data.

No company should enter into a contract without considering the following, at the very least:

1. Where is the data being stored, meaning where are the servers (computers) physically located?
This means, be specific in your contracts: “All Customer Data will be housed in Provider’s servers located in Columbus, Ohio” (or wherever your Provider tells you they are).

2. Does your provider use offshore (i.e. outside the continental United States) data centers, or does it access U.S. data centers from offshore?
You may wish to state in your contract that: “If Provider intends store any Customer Data or to provide any services under this Agreement from an offshore location or through offshore personnel, Provider will provide all relevant information to Customer and obtain Customer’s prior written approval.” Why is this? Is off-shore data less secure? Not necessarily, but it may not be possible to get your data back from an international location. Continue Reading

Take steps to protect your privacy this shopping season

Posted in Privacy, Social Media

The holiday season is upon us and by the end of the year, Americans will have spent approximately $600 billion shopping in stores and online. By now, most consumers are aware of a broad range of risks associated with the holidays. We try not to leave packages in our cars in the mall parking lot, and we are careful with our credit card information. We have learned, sadly, how to spot charity scams. And even though it is sometimes tempting, we generally adhere to the warning that “if something looks too good to be true, it probably is.”

In all this — assuming we are not too exhausted from baking cookies, decorating the house and attending countless holiday parties — we may notice that we’re receiving coupons after looking at a company’s website. Or a catalog arrives in the mail after visiting a store, which seems odd because we barely walked through the door and never gave anyone an address. And our favorite social media site keeps showing that purse, watch or power tool we’ve been thinking about buying. Continue Reading

Texas Federal Court decision illustrates need for BYOD policies

Posted in Information Technology, Privacy

Saman Rajaee was a salesman for Design Tech Homes. He used his personal iPhone to connect to his employer’s Microsoft Exchange Server, which allowed him to access his work-related email, contacts and calendar from his phone. Design Tech did not have a BYOD policy. When Rajaee’s employment terminated, Design Tech remotely wiped his phone, which deleted all of his data, including personal emails, texts, photos, personal contacts, etc.

Rajaee sued under the federal Stored Communications (SCA) and Computer Fraud and Abuse Acts (CFAA) as well as raising various state law claims. Design Tech moved for summary judgment on the federal claims. On the SCA claim, the court held, based on Fifth Circuit precedent, that information an individual stores to his hard drive or cell phone is not in electronic storage within the meaning of the statute. Continue Reading

Immigration reform may help out tech companies

Posted in Information Technology

Our colleagues at Employer Law Report recently discussed how President Obama’s immigration reform measures could affect tech companies whose workforces include non-U.S. residents with H-1B visas. According to a memo from the Department of Homeland Security, the visa application and approval process may become easier for employers and their highly skilled workers. Read more

FTC’s focus on “patent trolls” not limited to competition concerns

Posted in Other Articles

The FTC sent a message to “patent trolls” earlier this month, though how well that message will resonate remains to be seen. On Nov. 6, the FTC’s Bureau of Consumer Protection concluded its investigation into MPHJ Technology Investments, LLC’s practices involving its so-called “inquiry letters” by agreeing to accept a consent order. The consent order addresses two sets of misrepresentations contained in various letters that MPHJ sent to alleged infringers of MPHJ patents. First, the FTC found that MPHJ misrepresented that they had sold a substantial number of licenses within a certain price range; second, they misrepresented that they intended to initiate a lawsuit if they did not receive a response from the letters’ addressees.

The FTC outlines in its complaint how MPHJ and Farney Daniels, P.C., MPHJ’s attorneys, engaged in a three-stage campaign to promote and sell licenses for then-recently purchased patents. Farney Daniels and MPHJ had signed a written agreement splitting the proceeds of the letter campaign. In the first stage, they sent approximately 16,465 letters to small businesses (between 20 and 99 employees) that did business in veterinary services, lawn and garden services, building maintenance services or medical laboratories. The letters informed each business that it was likely infringing patents by using common office equipment. Next, they sent a second wave of letters to most of those same businesses, once again informing them of their likely infringement, but this time also offering to license the patent. The letter stated that MPHJ needed to hear back within two weeks. Finally, letters were sent on Farney Daniels’s letterhead that referenced the first two letters and threatened litigation for patent infringement if the business did not respond within two weeks. Each of the Farney Daniels’s letters contained a nine-page complaint alleging a cause of action for patent infringement. Nearly 4,870 small businesses received a letter from Farney Daniels. Evidently, MPHJ and Farney Daniels had no intentions of actually filing the complaints. Continue Reading

Breaking down new gTLDs by the numbers

Posted in Domain Names, gTLDs, Intellectual Property, Trademarks

The Internet Corporation for Assigned Numbers and Names continues to be sluggish in delegating new gTLDs this month, delegating no new gTLDs since our last post. But ICANN has made a dent this year in the 1,930 gTLD applications submitted, delegating 432 new gTLDs to date. Of those 1,930 applications, 1,157 are proceeding through the new gTLD program and 341 have been withdrawn.

Are new gTLDs selling?

More than 3 million second-level domains have been purchased in new TLDs, but of those 3 million, nearly two-thirds are parked domains, i.e., registered internet domain names which are not associated with any services. A total of 62,666 new second-level domain registrations were purchased within the last week, at an average of nearly 9,000 a day.

Top 10 gTLDs in terms of registrations:

Rank

New domain

No. of registrations

1

.xyz

700,817

2

.berlin

153,170

3

.club

131,418

4

.realtor

84,621

5

.wang (net)

82,837

6

.guru

75,460

7

.nyc

55,905

8

.oyc

54,387

9

.london

48,852

10

.photography

47, 766

Continue Reading

gTLD update: Are ICANN and the gTLD program suffering from jetlag?

Posted in gTLDs, Intellectual Property, Trademarks

ICANN has given 34 gTLDs the green light to launch since our last gTLD update. Only 14 new gTLDs were launched in the month of October, and only 21 were delegated in total for the month of September. These numbers are strikingly low compared with the rapid-fire delegation the Internet community witnessed through the summer. The following list represents the small batch of gTLDs that have been delegated by ICANN since Sept. 15, 2014:

  • .sydney
  • .bloomberg
  • .energy
  • .delivery
  • .taipei
  • .emerck
  • .band
  • .yoga
  • .crs
  • .abogado
  • .rip
  • .wedding
  • .poker
  • .alspace
  • .allfinanz
  • .ibm
  • .forsale
  • .vermögensberatung (financial advice)
  • .vermögensberater (financial advisor)
  • .pyc (Russian)
  • .tui
  • .dvag
  • .pohl
  • .work
  • .casa
  • .budapest
  • .world
  • .fly
  • .nexus
  • .channel
  • .prof
  • .gle
  • .zip
  • .cal
  • .chrome

This sluggish behavior also is demonstrated with the small number of gTLDs currently entering or in the sunrise phase this month.

These gTLDs are in the queue for launching: Continue Reading