snIP/ITs

Insights on Canadian Technology and Intellectual Property Law

CASL Enforcement: Much Ado About Nothing?

Posted in Anti-Spam
Kirsten Thompson

Was it all for nothing? CASL, I mean.

The mad rush towards the July 1, 2014 deadline, the thousands (in many cases, hundreds of thousands) of dollars spent on compliance, the escalating salvo of shrill e-entreaties to please, please, please provide consent.

All the hype, all the fuss and….nothing. Was it Y2K all over again?

Complaints

From the perspective of organizations, the eerie calm may indeed be reminiscent of those first few seconds past midnight on January 1, 2000. For the CRTC, however, the regulatory wheels have been furiously churning for months. Unlike Y2K, the first few hours after July 1, 2014 saw the CRTC online spam reporting go live, with newly hired (news reports variously reported 15 and 30 new employees) ready to start processing complaints. And complaints there were.

Speaking on July 4, 2014, the CRTC’s chief compliance and enforcement officer Manon Bombardier told media that over one thousand complaints had been submitted in the first two days. By July 9, 2014 that number was up to 12,000. By the end of July, it was edging past 50,000. By October 7, 2014, 120,000 irate Canadians had filed complaints.

Will all of these complaints be investigated? Even the CRTC has acknowledged that is unlikely. It has promised that all complaints will be reviewed, but will be selective when it decides whether a complaint will be investigated. Continue Reading

Impending Lapse of PIPA Creates Uncertainty

Posted in Privacy
Roland Hung

On November 15, 2013, the Supreme Court of Canada struck down the Alberta Personal Information Protection Act (“PIPA”) in Alberta (Information and Privacy Commissioner) v United Food and Commercial Workers, Local 401, 2013 SCC 62 (“United Food”), and despite a one-year stay to allow for necessary amendments, delay on the part of the Alberta government has caused PIPA’s lapse to become an inevitability.

The SCC found that sections of PIPA violated the right to freedom of expression enshrined in s. 2(b) of the Canadian Charter of Rights and Freedoms (the “Charter”). Further, the SCC found PIPA unconstitutionally overbroad in that it deemed “virtually all personal information to be protected regardless of context,” thus infringing the right to freedom of expression in a manner disproportionate to the government’s objective (United Food at para 25). Continue Reading

Canada and the EU Successfully Conclude CETA: What It Means to the Pharmaceutical Industry

Posted in Intellectual Property, Patents
Sanjaya MendisSteve Mason

On September 26, 2014, Prime Minister Harper announced that Canada and the European Union have successfully concluded negotiations on a new trade agreement, the Comprehensive Economic and Trade Agreement (CETA) that was five years in the making, and publicly released the consolidated text of the agreement.

CETA is deeper in substance and broader in scope than any other such agreement in Canadian history, significantly affecting all economic areas, including the pharmaceutical sector.

The CETA chapter on intellectual property is of particular interest to the pharmaceutical industry, because it will introduce into Canada for the first time:

  • additional (sui generis) patent protection for pharmaceutical products; and
  • effective rights of appeal for Patented Medicines (Notice of Compliance) (PM(NOC)) litigants Continue Reading

Bitcoin accepted here? Funding M&A transactions by way of Bitcoin

Posted in E-Commerce, M&A/Finance
Ana Badour

There is no denying the increasing popularity and notoriety of the virtual currency Bitcoin.  Bitcoin market capitalization currently stands in the billions of dollars, with over 13 million Bitcoins having been mined and made available for circulation.  An increasing number of merchants, including Dell, have begun accepting payment by way of Bitcoin.  The list of goods and services that have been purchased with Bitcoin now includes university tuition, airline tickets, cars, and pizza delivery.  Some companies have started paying employees in Bitcoins.  Canada in particular has been a world leader in Bitcoin ATM’s: the first Bitcoin ATM in the world was installed in Vancouver and a number of Bitcoin ATMs have now been installed in other Canadian cities.  Canada also stands second, behind the US, in global rankings in the amount of venture capital invested in Bitcoin companies according to a recent study by the Montreal Economic Institute.  Will funding M&A transactions by way of Bitcoins in Canada be next? Continue Reading

Technological neutrality and copyright: Supreme Court grants leave to clarify scope in CBC v SODRAC

Posted in Copyright, Intellectual Property
Barry Sookman

The Supreme Court granted leave to appeal on September 4, 2014 in another copyright case, Canadian Broadcasting Corporation / Société Radio-Canada v. SODRAC 2003 Inc. The appeal is from the decision of the Federal Court of Appeal which ruled that broadcasters must pay royalties for ephemeral recordings in accordance with the 1990 decision of the Supreme Court in Bishop v. Stevens.

In the Court of Appeal, CBC argued that Bishop v Stevens was no longer good law, having been overruled by a series of decisions of the Court which had, in various circumstances, made references to the principle of technological neutrality in construing the Copyright Act. CBC particularly relied on the decision of the Supreme Court in ESA v SOCAN which it contended had fundamentally changed the well established law that broadcasters payment of royalties to communicate works to the public did not affect their obligations to also pay royalties in respect of reproductions made to effect the communications. Continue Reading

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