Atlanteknology - Technology News for Atlantic Canada

The Dirt Shirt - The dirt is flying

On Tuesday (June 12) CBC Radio 1 ran an article about a small company on Prince Edward Island that is having some trade-mark troubles. The article, in written form, is here.

The background is this – (if I get it wrong please let me know) A chap had an idea back in the 1990’s that he would sell t-shirts stained with PEI’s distinctive red soil. The process at the time was quite simple – throw some white t-shirts in a garbage can with some soil, and stir with a paddle. The resulting shirt was called the “Dirt shirt”. The gentleman did not, unfortunately, seek to register the name “dirt shirt” as a trade-mark. In the interview he said it was because his only source of cash at the time was a $300 Canadian Tire credit card and a $2000 loan from his parents.

I actually still have one of the original dirt shirts I am proud to say.

Fast forward a number of years and the shirts are becoming popular. What happens? Well, as you can imagine, some of the other players in the tourism industry decided it was a good idea to make their own shirts stained red from the soil of PEI. Now, by itself this is not an issue. However, two problems emerged (in the mind of the “dirt short” owner). One, the competitors used names which were similar in name or style to the name “dirt shirt”. Two, the competitors did not use real soil to create the colouring in the shirts. They used dye.

Ultimately there was litigation.

Now, the CBC article appeared to be a fairly one sided description of the events and I am not going to weight in with my opinion but I will say this about the whole dirty mess (pun intended) – spending the money in the early days to do something right can be worth its weight in gold later on. If our entrepreneur had registered the phrase “dirt shirt” in the early days (and assuming it was permitted) he might not have found himself in the position he is in today. The Trade-marks Act provides some useful tools for dealing with alleged trade-mark infringement.

This is not to say that the common law (non legislation based law created by judges) does not provide some remedies – it does. However, without getting into the legalese of it all, the bottom line is that it is a far superior position to be in if you do acquire a registered trade-mark.

Now, hindsight is almost always 20/20. There is no way the guy could have known in the beginning that his business would be successful or that he would run into legal issues over the name. Having said that, had he sought help from a trade-mark lawyer, he may well have figured out how to make it happen (the trade-mark registration that is).

This has always been one of the points of this blog – to spread awareness. The reality is that there are tons of useful websites out there which discuss the topic of trade-marks and the Canadian Intellectual Property Office’s should be your starting point.

Making informed decisions – that is what it is all about.

Good luck to the “dirt shirt” man. Maybe I will frame mine and put it in my office as a discussion piece.

Photosynth

Ok, this is the most amazing demonstration of software I have ever seen, without exception. It is truly incredible and not just in a techie kind of way.

Go here and watch this 7 minute video. It is a broadcast of a presentation by a software designer, where he demonstrates his software. The software in essence "links" all pictures which it captures, forming a seamless network. The effect is amazing.

Watch the video - you will not be disappointed, even if it is Microsoft.

Spyware and Spam – They both begin with S – Coincidence?

I read two separate but related stories today.

The first: Over objections from Internet companies and online advertisers, the U.S.A. House of Representatives approved a bill touted as an antispyware measure, a move that  sets the stage for a political showdown in the Senate later this year. By a 368-48 vote, with 43 of the opposing votes coming from Republicans, the House endorsed the Spy Act, which is broader and more regulatory than a second bill that was backed by politicians from Silicon Valley. The more regulatory version approved yesterday  proposes punishments for anyone who slips code onto computers without authorization in an attempt to "impair" a machine's security features, to transmit personal information about the machine's user without the user's knowledge, or to commit other federal crimes such as identity theft.

Perhaps the law makers should read some of the laws already in existence. Much of what is proposed can already be accomplished using other means. An “A” for effort however.

The second: Five of the largest ISPs in the USA are to start charging businesses for guaranteed delivery of their emails, in a bid to combat spam. Goodmail Systems, which provides a service called CertifiedEmail, announced on Thursday that it had signed up Comcast, Cox Communications, Time Warner Cable's Road Runner and Verizon as customers. Emails certified using the system are marked with a blue ribbon to show they come from a trusted source, thus bypassing spam filters — a privilege which will cost the sender a quarter of a US cent per email.

A great idea in my view. Kind of like registered mail or courier services. But what about the spam filters individuals businesses or users have in place?

G stands for Google...or is it Grokster?

I am reading the recent (handed down on 16 May 2007) case of Perfect 10 v. Google - which is a case about thumbnails. No, not the type on your hand, but the type you see when you find images on the Internet. The case goes like this. If you use Google to search for images, and in particular images of nudity and the like, you will undoubtedly find illegal copies of copyrighted pictures. Perfect 10 operates a site whereby, for a monthly fee, users can view and download such images. There are many sites like it. And, of course, those same images are also available on the websites of businesses which have, without license, obtained copies.

Using Google, you can see thumbnail sized copies of those images and when you click on the thumbnail you will get taken to a site where you can obtain the full sized copy.

Perfect 10 sued Google alleging direct copyright infringement in the mere act of displaying the thumbnails. In the first round, it obtained an injunction against Google and the Court agreed that Google had infringed Perfect 10's copyright in the images. But the Court decided that Google was not liable for what was called "contributory infringement". That is, Google did not, in a way which created liability, facilitate copyright infringement by allowing end users to obtain illegal copies.

On appeal, the Appeal Court reversed the findings, holding that Google's displaying of thumbnails did not infringe copyright but that Google might (and I emphasize might) be liable for contributory infringement. The Court referred the matter back to the lower Court for a ruling on this point.

The Appeal Court approved of the recent Grokster case, and stated:

. . . Google could be held contributorily liable if it had knowledge that infringing Perfect 10 images were available using its search engine, could take simple measures to prevent further damage to Perfect 10’s copyrighted works, and failed to take such steps.

Now, this is interesting in and of itself but also because of a tiny tibdit buried in the decision - apparently Perfect 10 had been sending Google cease and desist letters for a period of three years before it finally filed an action against Google. Part of the analysis the lower Court will take when it re-examines the issue is whether Google should have created a workaround in that three year period. So, on a very superficial level, it shows that the cease and desist letter is an important tool to defend one's rights, but, like any other tool, it has a time and place.

On a more substantive level, this will be an interesting case because of its broad implications for Google. You can find just about anything on Google - from pirated software, movies, and pictures to books and articles which will allow you to do all of this. If Perfect 10 ultimately wins on this point (contributory infringement) you can bet Google will appeal.

The great marijuana chocolate bar caper.....

You sometimes see images of trade-marks emblazoned on tee-shirts or other goods and the trade-mark has been altered in some significant way but still bears a faint resemblance to the original.

Well, an entrepreneur in California has taken the practice to a new level by selling chocolate bars and other types of candy in wrappers bearing a resemblance to various products sold by Hershey. The difference between your average Kit-Kat bar and the “KeefKat” is that the KeefKat has been laced with THC – the active ingredient in marijuana. It seems the entrepreneur ran a business selling various products relating to marijuana. (Image from  www.abclocal.go.com)

Hershey has sued him, not for trade-mark infringement – there is little likelihood the average person would be confused and think that Hershey was seeking such things – but for dilution of its trade-marks. In Canada, it is called depreciation of goodwill.

The difficulty here is that the defendant company is not actually using any of Hershey’s trade-marks. In that sense the case is similar to an earlier case where Louis Vuitton sued a company called Haute Diggity Dog for using the mark “Chewy Vuiton” together with an interlocking C and V similar to Louis Vuitton’s interlocking V and T.

Louis Vuitton lost. The only difference in this case is the association with an illegal drug. Whether that creates an opportunity to find against the defendant business will be interesting to see.

In a recent Supreme Court of Canada case, Mattel had sued a restaurant owner over the use of the name “Barbie” claiming, among other things, that the “Barbie” trade-mark was famous and that the use of the mark by the restaurant would depreciate the goodwill in the name. The Supreme Court of Canada ruled that, when looking at all the circumstances, there was no infringement because there was no confusion. The average consumer would not believe that Mattel was running a family restaurant. It is a slightly different set of circumstances than those in the KeefKat case in that the restaurant was using the same name (Barbie) that Mattel had trade-marked. Here it is a parody which is being used.

An interesting side note to the story is that the Internet has spread the story far and wide and now many more people are aware of the wacky candy than might otherwise be. There are different ways of acting to preserve rights and it is increasingly becoming obvious that a splashy lawsuit or cease and desist letter might not always be the best way to accomplish the stated goal of policing and maintaining the integrity of a trade-mark. All of which is not to say that trade-mark owners should do nothing when they see other parties use their marks, only that the twenty kilogram mallet might not be the best solution.