snIP/ITs

Insights on Canadian Technology and Intellectual Property Law

Fair, Reasonable and Non-Discriminatory: UK Patent Court Enjoins Huawei from using Standard Essential Patents Owned by a Non-Practicing Entity

Posted in Intellectual Property, Patents
Bart NowakFiona Legere

On April 4, 2017, the Honorable Justice Birss of the High Court of Justice (Chancery Division) issued his decision in Unwired Planet International v Huawei Technologies, [2017] EWHC 711 (Pat). The decision provides a comprehensive review of the application of Fair, Reasonable and Non-Discriminatory (FRAND) principles to the licensing of Standard Essential Patents (SEPs). Continue Reading

Information location tool and fair dealing copyright defenses rejected: Trader v CarGurus

Posted in Copyright, Intellectual Property
Barry Sookman

If you’ve ever shopped for a used car, you likely know the two popular services, autotrader.ca and CarGurus. In a decision released earlier this week in Trader v CarGurus, 2017 ONSC 1841, Trader (the owner and operator of autotrader.ca) was awarded statutory damages of $305,604 against CarCurus for infringements of its copyrights in photographs of vehicles. The decision written by Justice Conway of the Ontario Superior Court contains some important interpretations of the Copyright Act including in relation to the scope of the new making available right, the copyright defenses for information location tools and fair dealing, and the calculation of statutory damages. Continue Reading

LOT Network

Posted in Intellectual Property, Patents
Fiona LegereMarissa Caldwell

In a previous blog post, we briefly discussed the LOT Network’s initiative in in the fight against patent assertion entities (PAEs), more commonly known as patent trolls. Since the publication of that post, the LOT Network has overhauled its member agreement and published new information and statistics on how the program is working to protect companies from PAEs We have provided below a brief summary of some of the key changes. Continue Reading

Australian Regulator Issues Guidance on Use of Distributed Ledger Technology: The View from Canada

Posted in Fintech, Regulatory Compliance
Maureen Gillis

In an effort to help regulated entities and interested parties evaluate whether the use of distributed ledger technology (DLT) would enable them to meet their regulatory obligations and to fast-track its discussions with stakeholders, the Australian Securities and Investments Commission (ASIC) has released an information sheet, “Evaluating Distributed Ledger Technology” (INFO 219), offering guidance for entities licensed by ASIC and start-ups that are “considering operating market infrastructure, or providing financial or consumer credit services” using DLT or blockchain.

Noting the “intense interest in DLT” ASIC is seeing from a wide range of financial services market players in recent years, DLT’s deployment in a broadening array of use cases, and the anticipated “exponential” growth in the applications of DLT over time, the information sheet sets out the regulatory considerations regarding the use of DLT that ASIC has identified to date. Continue Reading

A Canadian Perspective: Proposed Amendments to Delaware’s General Corporation Law Would Enable Use of Blockchain

Posted in Fintech, Regulatory Compliance
Maureen GillisShane C. D'SouzaLaure Fouin

On March 13, 2017, the Council of the Corporation Law Section of the Delaware State Bar Association released proposed legislation that would amend Title 8 of Delaware’s General Corporation Law (DGCL) to permit Delaware corporations to use blockchain technology to create and manage corporate records.

Currently, stock ledgers in Delaware corporations are typically maintained by a corporate secretary or transfer agent, who manually updates the ledger upon receipt of notification of a transfer of share ownership. The proposed amendments would permit Delaware corporations to use electronic networks or databases, such as distributed ledgers, to administer corporate records and track share ownership and transfers. Continue Reading

Drug testing in Canadian patent suit not permitted to be used in foreign litigation

Posted in Intellectual Property, Litigation, Patents
Kaitlin SoyeDavid Tait

In a rare case where drug samples were given under consent in an NOC proceeding Novartis sought, but was denied, to use these samples in a related litigation in Portugal (2016 FC 1091).

Samples are rarely provided in NOC proceedings. Nevertheless, production may be compelled if samples were provided to the Minister as part of the drug submission (Patented Medicines (Notice of Compliance) Regulations (SOR/93-133), s. 6(7)). This was not the situation in this case where Mylan consented to producing the samples, subject to the existing protective order. Continue Reading

Misguided Policy: CASL’s Private Right of Action for Competition Act Reviewable Conduct

Posted in Anti-Spam
Donald HoustonJonathan Bitran

While much has been written about the impending CASL private rights of action, less has been said about the new private right of action CASL will tack on to the Competition Act for misrepresentations in electronic messages. ‎

The new CASL private right of action for reviewable conduct under section 74.011 of the Competition Act is an aberration, which will be inconsistent with and offensive to the current regime by which the Competition Act addresses deceptive marketing practices.  It will make misrepresentations in electronic messages the only such reviewable conduct which will be subject to private damage claims, and it will expose legitimate advertisers to potentially significant damage claims for immaterial misrepresentations that cause no harm.  We urge the relevant decision-makers to reconsider this very bad idea before it comes into force on July 1, 2017. Continue Reading

Website operator jailed for distributing copyright infringing copies of musical works: R v Evans

Posted in Copyright, Intellectual Property, Litigation
Barry Sookman

Is operating a website that provides links to torrent websites which facilitates unauthorized downloading of musical works a criminal offence? If so, can the operator of such sites expect jail time as punishment for this crime? In a recent decision of the English and Wales Court of Appeal in Evans, R. v [2017] EWCA Crim 139 (14 February 201), the accused, Mr Evans, was convicted of two offences of distributing infringing copies of musical works and was sentenced to 12 months in prison for these crimes. Continue Reading

Blockchain applications may be caught by Ontario’s securities law

Posted in Fintech, Regulatory Compliance
Shane C. D'SouzaRene Sorell

The Ontario Securities Commission (OSC) has issued a press release advising stakeholders that Ontario securities law may apply to any use of distributed ledger technologies (DLT), such as blockchain, as part of financial products or service offerings.

The OSC emphasized that it is keen to support the innovative potential of DLT because, among other things, DLT has the potential to increase transparency and efficiencies in the capital markets. However, because of DLT’s novelty, the OSC encourages business to speak to the OSC about securities law and investor protection requirements that may apply.

The OSC has cautioned that “[p]roducts or other assets that are tracked and traded as part of a distributed ledger may be securities, even if they do not represent shares of a company or ownership of an entity.” In other words, Ontario’s securities law may apply to initial coin or token offerings and DLT-based virtual currencies.

If you are considering capital market applications of DLT/blockchain, please contact the authors of this post to discuss whether Ontario’s securities law may apply.

This post appeared previously on the Canadian Securities Regulatory Monitor.

For more information about our firm’s Fintech expertise, please see our Fintech group’s page.

TPMs Are Alive and Well: Canada’s Federal Court Awards Nintendo $12.7-million in Damages

Posted in Copyright, Intellectual Property, Litigation
Barry SookmanDaniel G.C. Glover

Five years ago, Canada enacted legal protection for technological protection measures (TPMs) as part of the Copyright Modernization Act. The Federal Court has now  rendered the first decision  interpreting  these important rights. In short, the court  made it clear that legal protection for TPMs were meant to foster innovation in the creative industries and that businesses blatantly engaging in industrial scale TPM circumvention activities will be dealt with harshly by the courts.

In Nintendo of America Inc. v. King & Go Cyber Shopping (2005) Ltd., 2017 FC 246 (docket here; decision available soon on the Federal Court website and CanLII), Mr. Justice Campbell of the Federal Court rendered a decision awarding Nintendo $12.7-million in statutory and punitive damages plus costs and interest against the second respondent, Go Cyber Shopping (2005) Ltd. Continue Reading