We have compiled a list of issues we have been called upon to address over the last few years relating to Online Business, together with a few examples brought to our attention by legal cases or handled by colleagues in other firms. By making you aware of these issues, we hope to enable you to avoid mistakes made by others.
- Domain Name Problems – Our client, a well-established Canadian business with a Registered Canadian Trademark, decided to offer their products online. Their website was successful. In addition to Canadian customers, they received a number of orders from foreign customers, most notably from the United States. Our client discovered that there was a competing business with a similar Registered United States Trademark, when they were served with documents indicating they had been sued in the State of California.
- Domain Name Rip-offs – Our client became aware of a domain name that was being operated by a competitor. The domain name was identical except the suffix (.com, .ca, .org) differed. A consumer who typed the domain name in error was directed to the competitor’s website.
- Website Content Problems – Our client hired a professional website designer to prepare their corporate website. Our client discovered that the website designer had populated the website with photos pulled off the internet, when they received a letter demanding compensation for use of the photos from a photo licensing agency.
- Problems Changing Website Designers – Our client was not happy with his website designer and decided to change to a different website designer. The former website designer refused to cooperate with the transition and asserted “moral rights” purporting to object to changes that were proposed for the website unless further compensation was paid.
- Website Rip-offs – Our client received a call from a customer suggesting that he check out a competitor’s website. Our client discovered that the competitor has copied the content of the website word for word. Everything but the name and domain name was the same.
- Overzealous Website Optimization – Our client hired a consultant to increase traffic to their company website, by an “optimization” process that would see them move up the rankings of search engines, such as GOOGLE. Our client discovered that the consultant had used competitors Trademarks as hidden metatags, when a cease and desist letter was received from a legal firm.
- Linking and Framing – The Case of Century 21 Canada Partnership v Rogers Communications Inc contains a discussion as to when a connection to another website is permissible and when such connection is not permissible.
- Responsibility for Content of Material to which Link provided – There are defamation cases indicating that you can be liable for defamation under certain circumstances, if you knowingly provide a link to defamatory material.
- Privacy – In order to function, many commercial websites must collect customer names, credit card particulars, delivery addresses and other personal information. There are privacy laws regarding providing “Privacy Statements” regarding the collection of personal information and disclosure of what you intend to do with such information. The consideration is complicated by the fact that you will be operating in a number of jurisdictions in which laws may differ.
- Take Down Rules – Some sites allow users to post content. In order to avoid liability for objectionable content “Take Down Rules” must be provided. The Take Down Rules provide a mechanism for a third party to object to posted content and had the content taken down.
- Product Claims – There is consumer protection legislation in most jurisdictions to protect the public against false, inflated or untested claims. Beware, if you do not have objective data to back up your product claims. The consideration is complicated by the fact that you will be operating in a number of jurisdictions in which laws may differ.
- Comparative Advertising – In order to use comparative advertising without risking legal action, a strict set of rules must be adhered to. The consideration is complicated by the fact that you will be operating in a number of jurisdictions in which laws may differ. Canada is not a liberal jurisdiction for comparative advertising and legal advice is strongly recommended.
- Aftermarket Products – You are not permitted to use the Trademarks of others to promote your business. However, with aftermarket products, it is sometimes difficult to explain that the product is intended as a replacement component for a FORD truck, or an accessory that fits onto a FORD truck without actually using the FORD brand name.
- Email Communication – As persons interact with your website you may have an opportunity to compile a mailing list of email addresses. There are “anti-spam” laws being passed in a number of jurisdictions. As you compile your mailing list of email addresses, it is recommended that you obtain the necessary permissions that will take you outside of “anti-spam” laws.
- Prizes and Promotions – It may seem like a good idea to increase traffic to your website through prizes and promotions. However, you must take care as there are some types of activities that require gaming licenses in some of the jurisdictions in which you will be operating.
Disclaimer: This checklist is intended to highlight issues. The checklist is not intended to apply to specific circumstances or constitute legal advice. The checklist may not be exhaustive, as it only represents issues which have been brought to our attention over the last few years. If you require legal advice regarding a specific issue, we recommend that you either contact our office or a reputable Intellectual Property legal firm.