June 2008

Red Cross Lawsuit Settled

By In Foreign Protection, Protection & Enforcement

In an earlier post discussing the protection of the Red Crystal in Canada, we noted that the American arm of the Red Cross movement had been sued by Johnson & Johnson over its licensing of the iconic red cross emblem to for-profit companies for use on commercial products.

In a pair of court decisions–one released last November and in a second released in in mid-May–the court dismissed the bulk of Johnson & Johnson’s claims that the American Red Cross could not use the symbol in commercially competitive activities.

On Tuesday, the parties announced that they had settled the outstanding matters in their dispute. Though the terms of settlement were not released, both the American Red Cross and Johnson & Johnson will continue to use the emblem in conjunction with their endeavors.

New .CA Whois Policy Now In Place – With A Twist

By In Domain Name Disputes, Domain Names, Protection & Enforcement

In a recent post, we reviewed the pending changes to the .CA Whois policy. On June 10, 2008, those changes were implemented. The biggest change is the cloaking of most of the Whois information for individual registrants, regardless of whether the domain names of such registrants are being used for commercial, unlawful or other purposes. In response to concerns of both law enforcement officials and the owners of intellectual property rights, CIRA has also implemented special procedures to permit the disclosure of personal information about individual .CA Registrants, provided various requirements are met.

For intellectual property owners, those requirements are numerous, including that the Requestor must have a good faith “Dispute” (as defined) in process with the Registrant, the Requestor must agree to provide CIRA with whatever supporting documentation CIRA may require from time to time, the Requestor must have attempted to send a message to the Registrant through the Interested Party Contact Procedure no less than 14 days prior to this request with no resolution of the Dispute.

The term “Dispute” is exhaustively defined and requires that a Requestor reasonably believe in good faith that a Registrant’s domain name and/or its content (presumably this reference to content is to content of a website that the domain name in question links to, rather than the content of the domain name itself) infringes the Requestor’s registered Canadian trademark, copyright or patent or registered Canadian (Federal or Provincial) corporate, business or trade name. A Dispute can also involve the use of the Requestor’s personal information without their knowledge or consent to commit identity theft.

From “Hockey Night” to Trademark Fight?

By In Branding, Protection & Enforcement

Much has been written in the Canadian popular press in the last week respecting “The Hockey Night in Canada Theme”, sometimes called “The Hockey Theme” – the familiar music which has accompanied broadcasts of the Canadian Broadcasting Corporation’s “Hockey Night in Canada” telecasts nearly every Saturday night during the hockey season, for the last 39 years. The music is well-known to most Canadians, hockey-lovers or not: it is frequently referred to “Canada’s Second National Anthem.”

Late last week, it appeared that negotiations to renew the recently expired license agreement between the CBC and Copyright Music and Visuals (agent for the rights-holder, Dolores Claman) fell through: Copyright Music and Visuals announced the CBC had elected not to renew their license, ending their long relationship with Claman. The popular press quickly picked up on the news: articles bemoaning the end of the long and storied history of the song on the CBC filled the weekend papers; hockey fans on radio call-in shows and on the internet grieved the loss of the song; Facebook groups were organized to prepare petitions for the “Preservation of the Hockey Night in Canada Theme”.

With a new week, came new hopes: on Monday morning, the CBC announced it had appointed a well-known entertainment lawyer to assist it in making a deal for a new licensing arrangement. Then, in a somewhat surprising move, rival network CTV (owner of the popular TSN and RDS sports stations) announced it had “saved” the song, completing a deal that, according to press reports, gives it the right to use the song “in perpetuity” in association with its NHL hockey broadcasts, as well as in association with its hockey coverage as part of the 2010 Olympics and Paralympic Winter Games. Read more