In this blog we discuss a number of internet-based “dirty tricks” that competitors or others may deploy and which may have serious adverse consequences for you or your business. I also briefly mention the types of remedies which may be available to those victimized in this way. Confusingly Similar Domain Names In today’s modern web-based commercial world, it is more important than ever to ensure that potential customers and returning customers are properly connected with your website domain name, and to use domain names that are well-branded and associated with your business. It is not uncommon for competitors, cyber-squatters, or other persons to obtain control of domain names that are confusingly similar to your trademarks, business names, or your domain name. Then there is a real risk that users seeking your website are instead directed elsewhere by that confusingly similar domain name. Recovering a Domain Name In order to recover … Read More
Domain Name Disputes, Counterfeit Websites, Fake Bad Reviews and Remedies
I discuss here a number of internet-based “dirty tricks” that competitors or others may deploy and which may have serious adverse consequences for you or your business. I also briefly mention the types of remedies which may be available to those victimized in this way. Confusingly Similar Domain Names In today’s modern web-based commercial world, it is more important than ever to ensure that potential customers and returning customers are properly connected with your website domain name, and to use domain names that are well-branded and associated with your business. It is not uncommon for competitors, cyber-squatters, or other persons to obtain control of domain names that are confusingly similar to your trademarks, business names, or your domain name. Then there is a real risk that users seeking your website are instead directed elsewhere by that confusingly similar domain name. Recovering a Domain Name In order to recover (transfer to … Read More
Judgment Against Anonymous Blogger – Service on Pseudonym
In the recent decision of the Ontario Superior Court of Justice, Theralase Technologies Inc. v. Lanter, 2020 ONSC 205, (“Theralase Technologies Inc.”) the court granted judgment in libel against anonymous and unidentified bloggers. In his reasons, Justice Myers held that the court has jurisdiction to grant judgment against unidentified defendants, despite the fact that the plaintiffs and the court do not know the defendant’s name, for defamatory statements published on the internet, “where a form of service can reasonably be expected to bring court proceedings to the attention of an unidentified defendant at whom the litigation finger has been appropriately pointed…” While noting that nothing in the Rules of Civil Procedure anticipates final judgments being granted against unidentified defendants, because civil proceedings generally involve claims and judgments in personam (against a person), the court observed that there are many cases started with placeholder names like “John Doe” pending the identification of … Read More
Court Considers Jurisdiction in Context of Online Sales
In Dish v. Shava, 2018 ONSC 2867 (CanLII), plaintiffs obtained judgment in Virginia, including an injunction, against the defendants, who were located in Ontario. The plaintiffs then brought an action in Ontario seeking recognition and enforcement of the Virginia judgment and injunction in Ontario. On the motion for summary judgment, the Ontario Court considered whether the Virginia Court had exercised jurisdiction based on the Ontario test for jurisdiction: i.e. whether the defendants had a real and substantial connection with Virginia. The defendants owned and operated an interactive, commercial website through which users purchased TV set-top boxes. The Ontario Court found that the defendants had a real substantial connection to Virginia based on the nature of the business they were operating, specifically: users in Virginia purchased the TV set-top boxes from the defendants’ website. At least 193 customers with a Virginia shipping address purchased Shava TV product from the Defendants’ distributor … Read More
Lowering the Threshold of Trademark Infringement? (United Airlines, Inc. v. Cooperstock)
Since December 17, 1998, United Airlines has been using the website www.united.com, it’s brand name and logo has been used since August 2010, and the design and artwork of the website has stayed relatively the same since 2006 (para 4). United Airlines has a variety of trademarks associated with these services. Cooperstock operated www.untied.com and in 2011 he redesigned the graphics, in a manner similar to the design of the United Website, which was adjusted in 2012 to match changes made by United on their website in 2012 (though with a sad-face added on the United logo for example) (para 10). In United Airlines, Inc. v. Cooperstock, the Court found that Cooperstock infringed United’s trademarks. Trademark infringement occurs when “a trademark or a confusingly similar mark [is used], without the consent of the trademark rights holder, in association with wares or services” (para 29). This case provides an interesting decision regarding the specific element of infringement under … Read More
Lost in Cyberspace : Legal causation in the age of AI and driverless cars
One day, in the immediate future, you might very well witness this scene from your office window. A lawyer jaywalks across a Toronto street to avoid being late for a firm risk management committee meeting. While she does so, she texts her colleague in Calgary with instructions on containing the legal liabilities arising from a northern Alberta oil plant shut-down that has already occurred in the future (a reality of simultaneity across locally-logged events across a multi-timezone world) after an eco-terrorist hacked into the plant heating system. It is at this moment that she is struck by an autonomous delivery van. The van was travelling the wrong way down a one-way street because the city transportation department had not uploaded a temporary change to traffic direction to accommodate a condo developer. An algorithm built into the telephone service to warn the lawyer of oncoming traffic fails to alert her because the … Read More
Supreme Court of Canada Upholds Worldwide De-Indexing Order Against Google
The Supreme Court’s recent decision in Google Inc. v. Equustek Solutions Inc. has approved the use of a worldwide injunction directing Google to de-index the defendant’s website used to facilitate the sale of goods in violation of the Equustek’s intellectual property rights. Equustek obtained an interlocutory injunction against the website owner directly, however the defendant left Canada, refused to comply with the order, and continued to sell products on their website from an unknown location. To help prevent or reduce further ongoing harm, Equustek sought for Google to de-index the site, making it less likely that a potential purchaser will discover the infringing website. Google initially agreed to de-index the result from Canadian search results on google.ca, but refused to enforce this order worldwide. It was concerned that the Canadian courts were using Google to usurp the laws of other nations, particularly on free speech issues, and potentially would force Google … Read More
Supreme Court of Canada Narrowly Rules Facebook’s Jurisdiction Clause Unenforceable
Facebook, and most other large social media and internet companies, set out in their terms of use that users of their services must bring any litigation disputes in the jurisdiction of their choice. However, in Douez v. Facebook, the Supreme Court of Canada has recently held, in a 4-3 decision, that Facebook could not enforce that clause against the plaintiff, a British Columbia woman complaining that their use of her photo and name in advertising breached her rights under British Columbia’s Privacy Act. Notably, the Privacy Act specifically requires that any action under that statute “must be heard” by the British Columbia Supreme Court. The majority held that while a jurisdiction clause is ordinarily enforceable, it could not be enforced in this instance as doing so would violate public policy, since the quasi-constitutional rights the statute provides and the exclusive jurisdiction to BC courts it requires means that the statute ought to be interpreted … Read More
The Importance of Brand Protection
In many cases, a business’s brand, reputation, and goodwill, can be its most important assets. Customers will visit, re-visit, and refer others to a business because of the reputation created through its successful branding initiatives and quality products and services. Therefore, it is important for any business to be aware of the tools available to protect their brand from being devalued or misused by others. Some of these tools are preventative, such as by registering a trademark with CIPO. the USPTO, or other national trademark offices, and by ensuring the proper assignments or licences are set out in any contracts with any designers or users of your trademarks. The copyrights for creative works can be registered, while fashion designers can seek protection of their creations as an industrial design. Unfortunately, the more successful a trademark or brand, the more likely it is to be used by copycats, counterfeiters, and competitors to drive business … Read More
Superior Court Refuses to Strike Adware Breach of Privacy Claims
In Bennett v Lenovo, the plaintiff alleged breach of contract, breach of the implied condition of merchantability, the tort of intrusion upon seclusion, and breach of provincial privacy laws as a result of the factory installation of an alleged adware program “Virtual Discovery” on certain Lenovo laptops. The Court allowed the claim to proceed on three of the causes of action, dismissing only the breach of contract claim. The plaintiff asserted that the Virtual Discovery program intercepted a user’s internet traffic to analyze it and display targeted advertising to the user based on that analysis. The plaintiff claimed that these actions were a breach of his privacy, was a vulnerability that exposed his information to third party hackers, and caused the laptop to be unfit for any online use, as well as negatively impacting performance and battery life. The defendant asserted that the claims had no chance of success and should be … Read More
Data Breach Claims in U.S. and Canadian Courts
As data breaches become more and more prevalent, customers are finding themselves at greater and greater risk of having their personal information improperly disclosed or stolen. When it does happen, thousands or millions of users may be exposed to identity theft. A recurring question for the courts is, in the absence of actual identity theft, how does one quantify the damages of this “increased risk” when the risk has not actually materialized? This question has been looked at by both Canadian and American courts, and they have arrived at similar but distinct positions. United States In the United States, standing to commence a lawsuit is governed by Article III of the Constitution, and requires the plaintiff to have suffered an “injury in fact”. Equally importantly, where there is no such standing, class proceedings where no actual damages have been sustained are not normally certified. The application of this to data … Read More
Ontario Court Given Jurisdiction over Internet Defamation Claim
A recurring issue in online defamation cases is the proper jurisdiction where a claim should be commenced. In many cases, the people who read the allegedly defamatory statements will be located across the planet, meaning that a publisher of such materials may find themselves having to defend claims brought far away from their actual home jurisdiction. In Goldhar v. Haaretz.com et al., Justice Faieta allowed an Ontario claim to continue for allegedly defamatory statements posted online by an Israeli-based newspaper organization. The defendants brought a motion to have the plaintiff’s claim stayed, arguing that the action should be heard in Israel, as the majority of the publication of the article was in Israel, and only 200-300 persons in Canada read the English online article. The court ultimately concluded that it did have jurisdiction over the defendants, and the plaintiff’s claim could continue in Ontario. By finding that at least some … Read More
MtGox Bitcoin Bankruptcy Comes to Ontario
MtGox was reportedly the largest exchange for the digital current “bitcoin“. MtGox was forced to suspend trading in bitcoin after a massive digital theft or disappearance of the bitcoin it held. As a result, MtGox declared bankruptcy in Japan. Canadian customers of MtGox brought a class action for the value of their bitcoins. MtGox’s bankruptcy trustee applied for recognition of the Japanese bankruptcy proceedings in Canada as the “foreign main proceeding” under the Canada Bankruptcy and Insolvency Act. Recognition of the Japanese bankruptcy proceedings as foreign main proceeding would have the effect of automatically “staying” (blocking) the Ontario class action. The Court found that the Japanese bankruptcy proceeding was the foreign main proceeding because, among other things, MtGox had no offices, subsidiaries or assets in Canada, it was organized under Japanese law, its headquarters were in Japan, and its main bank accounts were in Japan. The Court stayed the Ontario class … Read More
Summary Judgment in Wrongful Dismissal Action in IT Sector
The plaintiff in Wellman v. The Herjavec Group Inc., 2014 ONSC 2039, whose employment with the defendant was terminated without cause after one week short of a year, was granted summary judgment and found to be entitled to damages from the defendant for wrongful dismissal on the basis of a reasonable notice period of four months. The parties had agreed that the issue of a reasonable notice could be properly considered on a motion for summary judgment and the court agreed that such a motion is more proportionate, more expeditious less expensive means than a trial to achieve a just result (citing Hryniak v. Mauldin, 2014 SCC 7) In considering the issue the court considered the: Bardal factors; the age of the employee (including when considering mitigation it is reasonable to assume that at the plaintiff’s age there could have family responsibilities that might make him less mobile); length of service (just one factor to be taken … Read More