On May 4^th, the Ontario Bar Association presented “Intellectual Property Issues in a Non-IP Context”. This conference brought together professionals from several practice areas, such as criminal law, insurance law and employment law. The focus of the conference was to draw attention to the variety of IP issues that exist within many areas of the law.

The program began with an informative overview of IP law presented by the Program Chairs, Mala Joshi and Paul Lomic, both associate lawyers at Ridout & Maybee LLP.  All of the presentations were extremely informative; however, one in particular stood out to me: Antonio Turco, an Associate at Blake, Cassels & Graydon LLP, gave a presentation about “Intellectual Property and the Internet”. Mr. Turco began his presentation by discussing some of the broad issues in IP law and the internet, such as the policy goal of balancing the goals of content owners with those of internet users. An example discussed in the presentation was that of use of user-generated content which also incorporates copyright material, such as people creating videos of themselves to put on YouTube which incorporate songs that are copyrighted. This is a good demonstration of the need to balance the rights of the user to post videos of themselves on the internet with the rights of the copyright owner to determine how their work is used.  

Mr. Turco also discussed the rise of “cybersquatting”, which is an attempt to capitalize on the goodwill of a business or trade-mark through the registration of an identical or confusingly similar domain name. This may be done with the intent, or desire, to re-sell the domain name to the trade-mark owner. It is important to remember that there are no filters to registering domain names. This is different from trade-marks, which must go through an approval process by the Registrar of Trade-marks. As a remedy, domain names are only able to be cancelled or transferred once the name has been registered.

One of the most interesting topics of the day was Mr. Turco’s discussion of generic Top Level Domain names (gTLDs). Currently, there are 21 generic top-level domain names, including <.com> and <.org>.  In 2008, the board of the Internet Corporation for Assigned Names and Numbers (ICANN), a private sector, non-profit corporation that coordinates the naming system on the internet, decided to expand the available gTLDs in order to better achieve their goal of promoting competition and choice.  Under ICANN’s “Expansion Plan”, any public or private established entity from anywhere in the world can submit an application for a new gTLD; however, the entity will have to show that they have the organizational and financial capabilities to manage the gTLD. Mr. Turco discussed how it is expected that applicants will apply for targeted strings, such as a geographic location (i.e. <.nyc> for New York City) or registered trade-marks (i.e. <.disney>). Applications will be subject to an evaluation process and can be objected to on the grounds that the proposed gTLD is offensive, or is confusing with another string. It is hoped that this Expansion Plan will curb cybersquatting; however, it has also been argued that the new gTLDs will merely create more domain names that trade-mark owners will have to try and protect from cybersquatters.  

After hearing about the range of intellectual property issues which are interlaced through several areas of law, it was very clear that IP law has far reaching implications for both businesses and individuals. The conference was extremely informative and I felt very fortunate to have had the opportunity to attend.

Posted in Domain Names, Trademarks