Insights on Canadian Technology and Intellectual Property Law

YouTube, Facebook, Netflix liable to pay for music in Canada rules Copyright Board

Posted in Copyright, Intellectual Property
Barry Sookman

On Friday, the Copyright Board released a decision and certified two SOCAN tariffs, Tariffs 22.D.1 (Internet – Online Audiovisual Services) and 22.D.2 (Internet – User-Generated Content). The years covered by the tariffs are 2007-2013.

The tariffs were certified based on agreements reached between SOCAN and objectors. Between the objectors and other entities which filed submissions, the heavyweights affected by the tariffs participated including Apple, Yahoo!, YouTube,  Netflix, Facebook, Cineplex, the members of the Canadian Association of Broadcasters (CAB), and the Canadian ISPS Rogers, Bell, and Shaw.

The decision of the Board is important. Its significance extends to both the issues its reasons expressly addressed as well as to those issues which its reasons are implicitly based on. Some of the important findings are summarized below. Continue Reading

CASL Guidance for Registered Charities

Posted in Anti-Spam
Meghan WatersRahim Esmail

Canada’s Anti-Spam Legislation (“CASL”), which came into force on July 1, 2014, is considered to be the toughest commercial electronic messaging (“CEM”) legislation in the world, with substantial fines for violations (including fines up to $10 million for organizations).

While CASL’s prohibition on sending CEMs (without adhering to prescribed consent, form and unsubscribe requirements) applies to all organizations, the regulations exempt CEMs sent by a registered charity (as defined under Canada’s federal Income Tax Act) where the primary purpose of the CEM is to raise funds for the charity.

Registered charities making efforts to comply with CASL have had difficulty determining the scope of the fundraising exemption because of ambiguity with respect to the meaning of the words “primary purpose” and the fundraising activities untended to be covered by the exemption. Continue Reading

Canada Patent Litigation: Federal Court Rules “Enhanced Disclosure” Requirement for Sound Prediction Applies Only To “New Use” Patents

Posted in Intellectual Property, Patents
Sanjaya MendisDavid Tait

On July 2, 2014, Mr. Justice Rennie of the Federal Court released his judgment and reasons in Astrazeneca Canada Inc v. Apotex Inc., 2014 FC 638 dismissing AstraZeneca’s action for infringement and granting Apotex’s counterclaim for a declaration that Canadian Patent 2,139,653 (the “‘653 Patent”) is invalid. This patent relates to AstraZeneca’s successful drug NEXIUM® (esomeprazole).

Justice Rennie found the invention of the ‘653 Patent was novel and non-obvious, but nevertheless invalidated the patent for promising an improved therapeutic profile which was not soundly predicted.

While Justice Rennie canvassed a number of legal issues, his holding regarding the so-called “enhanced disclosure” requirement for sound prediction is particularly interesting as it represents a landmark ruling in the evolution of sound prediction law in Canada. His analysis on the issue is found at paragraphs 139-161 of the decision. Continue Reading

Services Matrec inc. c. CFH Sécurité inc.

Posted in Contracting/Outsourcing
Cristel Chabot-Lapointe

En février dernier, la Cour d’appel du Québec a rendu une décision comportant des implications majeures relativement à l’interprétation des contrats de services risquant très certainement de modifier la façon dont ces contrats sont rédigés et négociés. Bien qu’il soit admis que les dispositions du Code civil du Québec applicables aux contrats nommés, dont le contrat de services, soient de nature supplétive, la question de savoir ce qu’il advient lors de la reconduction du contrat au-delà du terme prévu intialement demeurait sans réponse. Dans Services Matrec inc. c. CFH Sécurité inc. la Cour d’appel doit déterminer si une renonciation à l’article 2125 du C.c.Q. permettant au client de résilier unilatéralement le contrat de services continue d’avoir effet alors que le contrat initial a été reconduit entre les parties. Continue Reading

Interim Injunctive Relief Against Google as a Tool to Enforce Intellectual Property Rights Worldwide

Posted in Intellectual Property
Sean Griffin


Following the decision last month in which Google Inc. (“Google”) was ordered by the European Union’s Court of Justice to “forget” certain personal information[1], the Supreme Court of British Columbia (the “Court”) issued an interim injunction on June 13, 2014 against Google to remove certain websites from its worldwide Internet search engines. This interim injunction is part of an underlying action launched by Equustek Solutions Inc., a company that manufactures and sells complex industrial networking devices, (“Plaintiff”) against Datalinks and related companies (“Defendants”).

In the underlying action, the Plaintiff claimed that the Defendants, while distributing the Plaintiff’s products, stole some of its trade secrets in order to design and manufacture competing products. Despite several Court orders prohibiting the Defendants from selling the competing products, they continued offering it through a complex network of websites. Continue Reading

The Aereo Decision – Canadian Content?

Posted in Copyright, Intellectual Property
Daniel G.C. Glover

Careful observers of the United States Supreme Court’s 6-3 decision yesterday in American Broadcasting Cos., Inc. et al v. Aereo, Inc. may have detected a small Canadian flavour in the majority’s reasoning. As will be revealed, this was no coincidence, and McCarthy Tétrault played a small role by filing an amicus brief on behalf of a coalition of international rights holders and copyright scholars that drew the Court’s attention to the need to interpret the US Copyright Act in a technologically neutral way, as similar copyright laws have been construed by the Supreme Court of Canada and the European Court of Justice to conform to international copyright treaty law.[1] Continue Reading

You can stay anonymous: SCC recognizes a privacy interest in protecting anonymity on the Internet

Posted in Privacy
Charles MorganRoland Hung

On June 13, 2014, in a landmark privacy ruling, the Supreme Court of Canada (“SCC”) in R v Spencer[1] (“Spencer”) unanimously recognized that, in addition to confidentiality and control of the use of personal information, there may be a privacy interest in protecting anonymity in the context of internet usage. In this decision, the SCC decided that a person has a reasonable expectation of privacy associated with Internet activities and that the “lawful authority” exemption in PIPEDA does not create a basis to provide such information to the police unless the police actually demonstrate that they have the requisite lawful authority to require the disclosure, such as pursuant to a warrant or court order. Continue Reading

Federal Court Dismisses Notion that Patents Should be Given Only One Interpretation for All Purposes

Posted in Intellectual Property, Patents
Sanjaya MendisSteven Tanner


In a pair of simultaneously released decisions on June 13, 2014, Justice O’Reilly allowed Allergan’s applications (the “Applications”) prohibiting the Minister of Health from issuing NOCs to Cobalt (now “Actavis”) (2014 FC 566) and Apotex (2014 FC 567) to market their generic versions of LUMIGAN RC® until the expiry of Canadian Patent 2,585,691 (the “‘691 Patent”) in 2026.

Allergan was represented by Andrew Reddon, Steven Mason, Steven Tanner and Sanjaya Mendis of McCarthy Tétrault LLP.


Allergan originally marketed a 0.03% bimatoprost (“Bp”) containing formulation for treating glaucoma called LUMIGAN, which Justice O’Reilly referred to as “old Lumigan”.  Despite its potency, old Lumigan caused some dose-dependent side effects.  Allergan subsequently developed an enhanced bimatoprost formulation which it marketed as LUMIGAN RC®, which Justice O’Reilly referred to as “new Lumigan”.

Remarkably, new Lumigan contained only 1/3 the concentration of Bp as old Lumigan (0.01% vs. 0.03%), but was able to maintain comparable efficacy for treating glaucoma.  The inventors of the ‘691 Patent were able to achieve this result through an inventive formulation.

Both Cobalt and Apotex sought early market entry to sell their respective generic versions of new Lumigan prior to the expiry of the ‘691 Patent, which gave rise to the Applications described herein.  Both cases engaged the same claims of the ‘691 Patent.  Both second persons raised similar issues, which were addressed by Justice O’Reilly. Continue Reading

PM(NOC) Proceedings: Apotex defeats Bayer’s Canadian patent on oral contraceptive YAZ

Posted in Intellectual Property, Patents
David Tait

On June 4, 2014 Justice Roger Hughes of the Federal Court released his public reasons for dismissing Bayer’s prohibition application against Apotex in respect of its generic YAZ tablets on the basis that Apotex’s non-infringement allegation was justified. His confidential judgment was issued on May 7, 2014 and Apotex received its NOC the very next day. The term of Bayer’s patent was not set to expire until August 31, 2020. For the full written decision see: Bayer Inc. et al. v. Apotex Inc. et al. 2014 FC 436.

Although not determinative, this decision addresses the somewhat contentious issue of whether the eligibility of a patent for listing on the patent register can be raised at the hearing of a prohibition application. In his reasons, Justice Hughes expresses the view that the PM(NOC) Regulations are “arcane enough”, stating that it “is time to put the matter to rest.” He found that eligibility can be raised at the hearing; however, Justice Hughes went further when explaining his reasons for doing so. Continue Reading

Canadian Trademarks: Cathay Pacific wins battle over “Asia Miles” versus “Air Miles”

Posted in Intellectual Property, Trade-marks
David Tait

On June 11, 2014 Justice O’Reilly of the Federal Court released his decision relating to the registerability of the trademark “Asia Miles” in light of opposition from Air Miles International.

The trade-marks opposition board had upheld Air Miles International’s opposition to the registration of “Asia Miles”.  Justice O’Reilly, on an application for judicial review, interfered with the Board’s findings and sent it back for reconsideration.

For the full written decision see: Cathay Pacific v. Air Miles International, 2014 FC 549.

This decision is important to the law of trademarks for the following reasons:

  1. Use of a mark includes use by authorised licensees in Canada.
  2. A licence to use a mark need not be in writing.
  3. Distinctiveness may be acquired through use of a mark in Canada by a licensee.
  4. Distinctiveness can indeed reduce the likelihood of confusion.
  5. A lack of evidence of actual confusion during a period of parallel use of allegedly confusing marks is relevant to the likelihood of confusion.