snIP/ITs

Insights on Canadian Technology and Intellectual Property Law

CASL’s inscrutable computer program provisions to be tackled by CRTC

Posted in Anti-Spam
Barry Sookman

With the computer program sections of Canada’s anti-spam/anti-malware law (CASL) coming into force in January 2015, the CRTC has now started reaching out to the public for questions they want guidance on in FAQs or bulletins. I attended such a session last week (on September 9, 2014) at an IT.CAN Public Affairs Forum Roundtable. The attendees were Dana-Lynn Wood (Senior Enforcement Officer, Electronic Commerce Enforcement, CRTC) Kelly-Anne Smith (Legal Counsel, Legal Sector CRTC), and Andre Leduc (Manager of the National Anti-spam Coordinating Body, Industry Canada). Continue Reading

Granting Trademark Protection to the Design and Layout of Retail Stores

Posted in Intellectual Property, Trade-marks
Cristel Chabot-Lapointe

On July 10, 2014 the Court of Justice of the European Union (the “CJEU”) issued its decision in Apple Inc. v. Deutsches Patent und Markenamt[1] and recognized the possibility to register a three-dimensional representation of the design and layout of a retail store as a Community Trade Mark.

In May 12, 2010, Apple Inc. (“Apple”) filed two applications for marks that are described mainly as the design and layout of a retail store.[2] The United States Patent and Trademark Office (the “USPTO”) granted registration on January 22, 2013. The trademarks are each represented by a three-dimensional representation of the front and inside of an Apple store. One of the representations is in black and white and the other is in colour and includes steel gray, light brown and black. Both trademarks were registered in association with services within Class 35 of the Nice Classification system which includes “retail store services featuring computers, computer software, computer peripherals, mobile phones, consumer electronics and related accessories and demonstrations of products relating thereto.” Continue Reading

“Objectively Reasonable” and Privacy: Recent Developments

Posted in Privacy
Roland Hung

The ubiquitous and rapidly-evolving nature of technology has recently necessitated serious consideration of our “reasonable expectation of privacy.”  This concept is at the core of Canadian privacy law. In particular, the concept is a key part of the Charter test for s. 8, the right to be secure against unreasonable search and seizure. The Supreme Court of Canada (“SCC”) grappled with these questions in R v Cole[1] and R v Vu[2], and more recently, the British Columbia and Ontario Courts of Appeal applied these Charter principles to couriered packages and USB keys in R v Godbout[3] and R v Tuduce[4], respectively. Continue Reading

When Does an Employer own Copyright in a Photograph Made by an Employee?

Posted in Copyright, Intellectual Property
Keith Rose

An employee takes a photograph of a customer on the employer’s premises.  The employee has a signed employment agreement which states that all materials developed during the term of the contract are property of the employer.  The employer obtains a copy of the photograph and uses it in social media.  Later, the employee is terminated for cause.

The former employee sues for copyright infringement and, in the case of Mejia v. LaSalle College International Vancouver Inc., 2014 BCSC 1559, wins.  (The case also involved wrongful dismissal and defamation claims which were unsuccessful.) Continue Reading

SAGD Patents and Applications in Canada

Posted in Intellectual Property, Patents
Timothy EllamSteven TannerAllyson Hopkins

INTRODUCTION

In 1979, Dr. Robert Butler and his research team filed a Canadian patent application for the oil recovery technology known as Steam Assisted Gravity Drainage (“SAGD”).  Over thirty years later, SAGD technology has become a formative oil-recovery process, with over two hundred patent applications filed in Canada relating to SAGD technology.

SAGD operations have increased primarily due to its potential to enhance bitumen recovery.[1]  Patent applications have been filed in respect of many aspects of SAGD technology, including the orientation of the wells, the composition of the wells themselves, and the infrastructure that is required to process the bitumen recovered from the producing wells.

This article reviews the growth in patent applications relating to SAGD technology since its inception. Continue Reading

B.C. Supreme Court Breathes Life Into New Breed of Potential Pharma-Related Class Action Whereby Innovator Profits Are At Risk

Posted in Intellectual Property, Patents
David TaitSteven TannerBrandon Kain

In Canada, innovator drug companies can protect their market exclusivity from generic copycats by asserting patents against the generic manufacturer in litigation under the PM(NOC) Regulations. Until now, the consequences of losing PM(NOC) litigation was the potential payment of damages to the generic whose market access was delayed by the litigation. These so-called “section 8 damages” are limited to the actual loss suffered by the generic during that specific period of delay. Public policy is such that the profits earned by the innovator during that period cannot, however, be disgorged pursuant to section 8 of the PM(NOC) Regulations. Continue Reading

Third Party’s Right to Use Official Mark in a Domain Name Upheld: BC Court of Appeal Rejects ICBC’s Claim of Trade-mark Infringement

Posted in Uncategorized
Lisa Martz

Third Party’s Right to Use Official Mark in a Domain Name Upheld: BC Court of Appeal Rejects ICBC’s Claim of Trade-mark Infringement  

On July 22, 2014, the B.C. Court of Appeal dismissed the claim of B.C.’s provincial auto insurer, the Insurance Corporation of British Columbia (ICBC), that a personal injury lawyer’s registration and use of domain names incorporating its official mark “ICBC” violated the Canadian Trade-Marks Act. 

In Insurance Corporation of British Columbia v. Stainton Ventures Ltd., 2014 BCCA 296 the Court held that the domain names <icbcadvice.ca> and <icbcadvice.com> did not infringe ICBC’s rights as internet users will recognize that the term “icbc” in the domain names does not necessarily mean that they are associated with ICBC and might just refer to the subject matter of the websites to which they resolve.  Continue Reading

The Enforcement Begins: Highlights of the CRTC FAQ Updates on CASL

Posted in Anti-Spam
Roland Hung

CASL came into effect on July 1, 2014, including the provisions for sending commercial electronic messages (“CEM”) (section 6) and installing computer programs (section 8).   Since July 1, 2014, it is reported that the CRTC has received more than 1,000 complaints.  Hence, awareness of this new law is spreading quickly, and as such so should attempts by organizations to become compliant.

The CRTC FAQs on Canada’s new Anti-Spam Legislation (“CASL”) were updated on July 4, 2014.  We covered the revisions made to the FAQs in May 2014 in a previous blog post.  The updated FAQs contain further clarifications, which pertain to questions we have been receiving from organizations about interpretation and compliance.  Highlights of the updated FAQs are below.

Notably, this revision contains important updates describing the consent and identification requirements for sending CEMs, clarifying the application of CASL section 6 in social media communications and for political parties as well as registered charities, and expanding on CASL section 8.  The revised FAQs also outline the enforcement principles behind CASL.  However, it is important to note that the FAQs are not “law.”  They are a useful resource for interpreting CASL and its regulations, but they are not a substitute for the actual “law”.      Continue Reading

Intrusion Upon Seclusion Part 2: Implications for Businesses Across Canada

Posted in Privacy
Roland Hung

Recently, my colleagues Sean Griffin and Ann-Elisabeth Simard considered the Evans v Bank of Nova Scotia (“Evans”) decision wherein the Ontario Supreme Court (the “Court”) certified a class action proceeding for allegations concerning a breach of privacy rights through the tort of intrusion upon seclusion first set out in Jones v Tsige (“Jones”).  You can access his blog here.

Evans has set a precedent for the low threshold required to be met for certification in class actions concerning breaches of information privacy. In this blog, we will canvass the implications of the Evans decision on organizations in various provinces and how organization can mitigate the risks of a class action resulting from a privacy breach. Continue Reading

Beware Hubris – Janssen’s infringement of AbbVie’s patent gets enjoined by the Federal Court

Posted in Uncategorized
Fiona LegereDavid TaitAndrew Reddon

Justice Roger T. Hughes of the Federal Court of Canada granted AbbVie the first-ever limited injunction against a branded pharmaceutical company infringing a branded competitor’s patent.  The injunction followed Justice Hughes’ earlier finding that AbbVie’s patent was valid and infringed by Janssen through the promoting, offering for sale, and selling in Canada of Janssen’s biologic product, Stelara, for the treatment of psoriasis.

This injunction is important because it affirms that:

  1.  A permanent injunction will normally follow a finding that a patent is valid and infringed.
  2.  The three-part RJR Macdonald test for interlocutory injunctions does not apply in the case of a permanent injunction.  Continue Reading