Professional Documents
Culture Documents
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
parties.”
• “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 Systems 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
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
language 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
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, in Godfrey 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
Internet Jurisdiction
Lucasfilm Ltd & Ors v Ainsworth & Anor [2009] EWCA Civ 40
PRIVACY
PIPEDA Case Summary #2009-010 Report of Findings - Assistant 47
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 48
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.”
49
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 50
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 51
Copyright
71
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 72
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 73
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.”
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)
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