On March 3, McCarthy Tétrault partner Steven Mason filed an Amicus brief in the United States Supreme Court in the high profile Aereo case in support of the broadcasters and studio appellants who are challenging Aereo’s business model of re-transmitting TV broadcasts over the Internet without paying retransmission royalties. The brief argues that the international, bi-lateral and multilateral treaties the United States agreed to requires US courts to provide a broad technologically neutral right of communication to the public that would fully cover Aereo’s service.
The brief is signed by a “who’s who” of international rights holders, including the International Federation of the Phonographic Industry (IFPI), the International Confederation of Music Publishers (ICMP), International Confederation of Societies of Authors and Composers (CISAC), International Federation of Actors (FIA), International Federation of Film Producers Associations (FIAPF), International Federation of Musicians (FIM), International Video Federation (IVF), national associations in Canada, the United Kingdom and Australia, and leading international copyright scholars from around the world including McCarthy Tétrault partner Barry Sookman. The Amici and their counsel which included co-counsel David Carson, the former General Counsel of the US Copyright Office and now IFPI’s global head of legal policy was assisted by Dan Glover an IP partner also at McCarthy Tétrault.
It is very unusual for a Canadian law firm to file a brief in the United States Supreme Court as only U.S. lawyers can appear before the court. However, McCarthy Tétrault litigator Steven Mason previously practiced IP litigation in California and is admitted to the Bar of the U.S. Supreme Court.
McCarthy Tétrault’s IP Litigation Group is recognized as one of Canada’s leading practices defending patents, trademarks, trade secrets, copyright, industrial designs and other intellectual property assets across a broad range of industries.
The number of Canadian businesses accepting virtual currencies as a form of payment is growing. Bitcoin is emerging as the most popular of these new currencies – none of which are subject to a central authority. Governments, including Canada’s federal government, are starting to take note, expressing opinions on the applicability of domestic laws and proposing new regulations. It is still early days for virtual currencies, however, and uncertainty remains. Before your business decides to accept Bitcoin as a form of payment, consider the practical and legal risks outlined below.
Complying with Anti-Money Laundering and Anti-Terrorist Financing Regulations
Compliance with the Proceeds of Crime (Money Laundering) and Terrorist Financing Act is a central concern for many businesses considering accepting Bitcoin as a form of payment, especially businesses that deal with large sums of money.
For the moment, the Financial Transactions and Reports Analysis Centre of Canada (FINTRAC) does not permit virtual currency brokers to register as money services businesses, having decided that virtual currency brokers are not money services businesses under the Proceeds of Crime (Money Laundering) and Terrorist Financing Act. As a result of this position, it is uncertain how or if the reporting requirements FINTRAC imposes for traditional forms of currency will apply to Bitcoin. This is especially salient given the high profile illicit activity that has been associated with Bitcoin, in addition to the growing use of Bitcoin for large transactions (for example, in Vancouver, one real estate developer has begun to accept Bitcoin for deposits). For now, some businesses are regulating themselves, with at least one Canadian Bitcoin broker attempting to distance itself from illegal activity by processing only small transactions. Continue Reading
McCarthy Tétrault is delighted to announce that Euromoney Legal Media Group’s Benchmark Canada named partners Andrew Reddon and Steven Mason as Canada’s Intellectual Property Litigators of the Year – Patents. The award is in recognition of Mr. Reddon and Mr. Mason’s exceptional knowledge of patents and superior trial skills. The pair’s recent successes include their representation of AbbVie in its patent infringement case against Janssen related to AbbVie’s Canadian patent on anti-IL-12 antibodies. This was Canada’s first antibody engineering trial, and the action was the first in Canada dealing with the scope of protection for the new class of drugs known as “biologics”. Mr. Reddon and Mr. Mason also recently successfully assisted Merck in recovering more than C$180 million in damages and interest for Apotex’s infringement of Merck’s Canadian lovastatin patent – possibly the largest patent damages award in Canada to date.
Benchmark Canada also honoured McCarthy Tétrault with three National Impact Case awards:
Benchmark Canada applies research, peer reviews and interviews with litigators and theirs clients to identify award-winning litigators and firms. Read more about the awards here.
While 2013 was not a seminal year for Canadian copyright cases when compared to 2012, there were certainly some memorable decisions which provide a worthwhile read by any standards. The following is a sampling of some of the most interesting cases of the year. A fuller description of the below decisions can be found in Barry Sookman’s paper which was recently presented at the Law Society of Upper Canada’s 18th Annual Intellectual Property Law: The Year in Review program. A link to the paper can be found on Sookman’s blog.
The most important copyright case of the year was the Supreme Court of Canada decision of Cinar Corporation v Robinson, 2013 SCC 73. The Supreme Court used the platform of a dispute between competing children’s cartoons to flesh out several important issues in copyright law. The Supreme Court agreed with the creator of the children’s television show “The Adventures of Robinson Curiosity” that another television show, “Robinson Sucroë”, had infringed his copyright through its use of similar characters and environment. Some of the major holdings included: (1) the Copyright Act only protects original expression in a work of art and not mere ideas, stock devices, or elements in the public domain; (2) infringement will likely only result if a substantial part of the quality of the work has been copied; (3) determining substantiality requires a “qualitative and holistic” approach; (4) the extent of the similarities are more important than the extent of the differences; (5) the similarities should be assessed from the perspective of the “intended audience for the works at issue”; and (6) damages can be assessed under principles analogous to those used in assessing damages for defamation. Continue Reading
In 2013 the Federal Court experienced a surge in patent infringement actions. Whereas 48 patent infringement actions were filed in 2012, that number rose to 101 in 2013. Part of that increase came about because of growth in the oil and gas patent infringement sector. Put simply, oil and gas companies were more agressive at enforcing their patent rights in 2013.
This blog is a review of oil and gas patent litigation in the year 2013. Specifically, we review each of the decided Federal Court cases released during the past calendar year, and provide an overview of the newly filed Federal Court cases in the oil and gas industry.
Before diving into the review, a quick note is warranted on the selection of Federal Court cases to the exclusion of provincial cases. This methodology was selected for both practical and pragmatic reasons.
On the practical side, reviewing Federal Court and Federal Court of Appeal filings and decisions is straigthforward. Each Court maintains a searchable website which allows for quick identification of patent cases in the oil and gas sector. There is no good way to uncover all provincially filed cases because the provinces do not maintain similar searchable database of filed cases. Continue Reading
The UK Defamation Act 2013 (the “Act”) came into effect on January 1, 2014. This Act includes a variety of reforms to the UK law of defamation, including codification of the defence of “Publication on a matter of public interest”; however, for Canadian website operators, the most important change is likely to be a new defence against operator liability for third-party defamatory content.
Under section 5 of the Act, website operators now have a complete defence against liability in the UK for defamatory content posted by third parties, provided that the complainant is able to identify the poster. Under subsection 5(4), this means that the complainant must have sufficient information to be able to bring court proceedings against the poster.
By contrast, anonymous (or pseudonymous) content is subject to what amounts to a non-mandatory notice-and-takedown scheme, defined in The Defamation (Operators of Websites) Regulations 2013 (the “Regulations”). The Regulations are complex; they attempt to define a complete procedure for responding to formal complaints. In a nutshell, the operator must forward the notice to the poster within 48 hours. The poster then has five calendar days to respond. Continue Reading
On January 28, 2014, the Government of Canada signalled its intent to transform its intellectual property regimes by tabling five intellectual property law treaties in Parliament. If implemented into domestic law, these treaties would harmonize Canada’s trade-mark, patent and industrial design legislation with its major trading partners. Following a 21-sitting-day waiting period, the Government will be able to introduce legislation to implement these treaties. Such legislation will transform important aspects of the trade-marks practice in Canada, and will lead to significant changes in the industrial designs field as well.
Some key points and concerns about the treaties include the following:
- The Madrid Protocol allows trade-mark owners to file a single “international application” that can mature into a bundle of national registrations. However, filing the international application does not guarantee protection in all the listed countries, because individual member countries still have the means to refuse an application or to allow an opposition against the applied for mark. Madrid will also likely require the Canadian Trade-marks Office to accelerate certain procedures, as the standard time limit for notifying a refusal is 12 months, though it is extendable to 18 months on request by a member country. A full description of the Madrid System is provided by WIPO here. Continue Reading
2013 was a very active year in the tech sector in Canada. Some of the leading developments over the last year are summarised below.
Tech Transactions – Turbulent Year for BlackBerry (Fairfax transaction)
2013 was a turbulent year for the Canadian leader of the telecommunications industry. It started with a change of name, from Research in Motion Ltd. to BlackBerry, in order to rebrand the company and to be more successful on the stock market. A few months later, BlackBerry publicly announced that it was reviewing its strategic alternatives for the future. In November, BlackBerry received an investment of U.S. $1 billion from Fairfax Financial Holdings Limited (“Fairfax“) and other institutional investors. Further to the transaction, Fairfax has become the largest shareholder of BlackBerry and changes were made to the management of the company. For more information on this transaction, please see our new release on the Fairfax transaction.
Temporary Foreign Workers — Outsourcing
On December 31, new amendments were introduced by the Canadian government to the Temporary Foreign Worker Program to better protect these workers and to ensure that Canadians are the first to be considered for jobs. The new amendments include tougher requirements for Labour Market Opinions and give more inspection powers to the government. These new amendments will have to be reviewed carefully by companies outsourcing their IT services offshore and will require added diligence regarding the hiring practices of service providers with a global staffing model. It would not be surprising to see more companies having recourse to outsourcing services enacting codes of conduct on hiring practices, conducting audit of their service providers’ hiring practices and including representations and warranties in their outsourcing contracts in relation to the hiring of temporary foreign workers. For more information on outsourcing and temporary foreign workers, please see our blog recapping the topics canvassed during the 2013 tech summit. Continue Reading
On January 24, 2014, the District Court released its reconsideration opinion again dismissing a previously-dismissed proposed antitrust class action against GSK and Teva under the “rule of reason” test set down in the 2012 U.S. Supreme Court’s Actavis decision.
In doing so, the Court made some important statements about Actavis:
- It does not allow scrutiny of all patent settlements with anticompetitive potential.
- It requires scrutiny only of patent settlements that contain “reverse payments”.
- A “reverse payment” must include the exchange of money.
GSK and Teva had settled patent litigation over LAMICTAL (lamotrigine) tablets, which are used to treat epilepsy and bipolar disorder. The patent in issue expired in 2008. According to the patent settlement, Teva was permitted to sell generic tablets prior to patent expiry. GSK also agreed not to launch its own authorized generic version of LAMICTAL during a certain period of exclusivity. The plaintiff alleged the settlement violates antitrust law. There was, however, no transfer of money under the settlement.
The Court previously dismissed the proposed class action under the plaintiff-friendly K-Dur analysis because there was no transfer of money. In reconsidering, the Court found that Actavis did not change the outcome. The Court thereby gave a narrow interpretation of “reverse payment” as requiring the exchange of money, despite two other decisions supposedly reading Actavis as applying to non-monetary patent settlements (see: In re Lipitor and In re Nexium).
* Ryann Atkins is an Articling Student at McCarthy Tétrault.
Target recently acknowledged that it suffered a massive security breach over the holiday season between November 27 and December 15. The result of the breach was that over 110 million credit and debit accounts which include customer names, credit and debit card numbers, card expiration dates and the three-digit security codes were stolen.
It was discovered during the investigation into the breach that the security breach was caused by a sophisticated malware that had the ability to infect individual point of sale devices, monitor data processes on the devices, then transmit the data outside of the retailer. The sophistication of the malware caused the U.S. Homeland Security to issue a warning to retailers.
Similarly, Neiman Marcus also recently reported it was the victim of a breach caused by malware that stole in at least 1.1 million credit and debit cards over the course of several months.
In the wake of massive security breaches reported by Target and Neiman Marcus, now may be a good time for businesses, in particularly, retailers, to re-acquaint themselves with the applicable Canadian statutory framework for the protection of personal information as well as implement or update policies and procedures around breach detection and notification. Continue Reading