snIP/ITs

Insights on Canadian Technology and Intellectual Property Law

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

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

Facts

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