snIP/ITs

Insights on Canadian Technology and Intellectual Property Law

Permitted Exclusive Use of English Trademarks in Québec: Magasins Best Buy Ltée, Costco Wholesale Canada Ltd. et al v. Québec

Posted in Regulatory Compliance
Sophie Gupta

For any business seeking to sell its products or offer its services in the Province of Québec, the carrying out of such activities and the way in which such businesses operate generally are profoundly affected by the enduring linguistic restrictions imposed by the Québec Charter of the French Language[1] (the “Charter”). Adopted by the Québec National Assembly in 1977, the Charter’s stated objective is to safeguard the quality and influence of the French language in both the workplace and as the language of commerce. In the area of business and commerce, the Charter requires that business names, packaging labeling, the publication of brochures, catalogues and other similar documents, as well as the display and use on public signs and posters and in commercial advertising, be in French and, where permitted by the Charter, if also in another language other than French, that the French portion be at least equal to that of the other language or, in the case of commercial advertising, public signs and posters, that French be predominate.

The Charter, however, together with the Regulation Respecting the Language of Commerce and Business[2] (the “Regulation”), do provide for a number of exceptions. Among them is the exception set out at section 25(4) of the Regulation which allows for recognized “trade-marks” within the meaning of the Trade-marks Act[3] to appear on public signs and posters and in commercial advertising in a language other than French, except where a French version has been registered. Continue Reading

Social Media and Disclosure in Litigation: Garacci v Ross

Posted in Social Media
Roland HungFrances Candy

Overview

Information disseminated through social media platforms such as Facebook and LinkedIn is of growing utility in litigation matters. Evidence obtained from social media accounts by way of discovery preservation and production orders has significantly strengthened the positions of litigating parties. This should come as no surprise as individuals routinely “post” messages, thoughts, pictures and experiences on these platforms, leaving a wake of evidence in the process.

There has been marked development in this area of law in Canadian jurisprudence. To date, Courts and Tribunals have, among other things, ordered the preservation and production of entire social media accounts, dismissed wrongful dismissal claims based in part on the disparaging nature of comments posted online, and considered social media evidence against claims of the loss of enjoyment of life and the inability to work. However, the Courts are cognizant of the private nature of this information and have been careful to balance the probative value of this evidence against the privacy interest of the social media user. Generally, the Courts have resolved this tension by making a determination of how “private” the social media account is through the application of a number of factual indicia.

In the recent case, Garacci v. Ross, the Ontario Superior Court refused to grant an order requiring a plaintiff in a personal injury case to produce approximately 1,100 photographs from the private portion of her Facebook account.[1]  This case informs civil litigants of the view that courts may take respecting the relevance of and obligation to disclose information available on social media websites.  While the plaintiff in Garacci escaped disclosure of her private “photo album”, the court only arrived at this conclusion after a very thorough investigation of the relevance of the photographs. The court suggests that the threshold for establishing relevance of information on social media websites is not high. Continue Reading

Hot Off the Press – Doing Business in Canada: Navigating Opportunities for Investment and Growth

Posted in Anti-Spam, Consumer Protection, E-Discovery

If your organization is currently thinking about establishing or acquiring a business in Canada, the newest edition of Doing Business in Canada, written by McCarthy Tétrault, will prove to be a valuable resource. The guide provides a broad overview of the legal considerations that non-residents should take into account to help ensure their success as they enter into a business venture in Canada. Each section offers timely information and insightful commentary on different areas of law.

The book includes a chapter on information technology, with sections on:

  • export control of technology
  • consumer protection
  • anti-spam and anti-spyware
  • cyber-libel
  • criminal law

After downloading the interactive PDF or eBook, we encourage you to consult one of our lawyers for a more comprehensive analysis of the legal implications of your proposed venture.

Patent Law Historical Observations: Oil and Gas

Posted in Intellectual Property, Patents
Timothy EllamSteven Tanner

We recently posted an article reviewing the year past in oil and gas patent litigation.  We analyzed new Federal Court cases and issued decisions and provided commentary on future implications.  You can read that article here.

This article continues that analysis by looking backwards in time; specifically to oil and gas patent litigation for the years 2009-2012.  What conclusions can be drawn if we look at a 5-year window of time?

The short answer is that 2013 was as busy a year for oil and gas patent litigation as the previous four years combined.

For the 2009-2012 timeframe there were twelve patent cases filed in the Federal Court and Federal Court of Appeal relating to oil and gas patent litigation.  Six oil and gas patent infrinement decisions were rendered by the Federal Court and Federal Court of Appeal in that same timeframe. Continue Reading

Hyperlinks Not a Copyright Infringement, According to the Court of Justice of the European Union

Posted in Copyright, Intellectual Property
Roland HungRachel Ries

Overview

In Svensson v Retriever Sverige AB, the Court of Justice of the European Union (the “CJEU”) recently ruled that hyperlinks to freely available Internet content do not amount to a copyright infringement.

The Svensson case involves a dispute between journalists and a media search service company.  Svensson, Sjögren, Sahlman and Gadd (the “Journalists”) wrote and held copyrights to press articles which were published in the Göteborgs-Posten newspaper and on its website.  Retriever Sverige AB (“Retriever”) operated a website that provides its clients with hyperlinks to articles published by other websites.

The Journalists brought an action in Stockholm District Court, seeking compensation for the harm they suffered as a result of Retriever’s hyperlinks which redirected users to the Journalists’ press articles.  The Stockholm District Court rejected the Journalists’ application, and the Journalists appealed to the Svea Court of Appeal.  The Svea Court of Appeal stayed the proceedings and referred the matter to the CJEU. Continue Reading

Ontario Superior Court Revisits and Broadens Jones v Tsige

Posted in Privacy
Roland HungRachel Ries

In the recent case, Hopkins v Kay, the Ontario Superior Court of Justice recently declined to strike a claim for the tort of intrusion upon seclusion. In doing so, the court appears to have broadened the scope of the tort of intrusion upon seclusion as set out in Jones v Tsige. Companies should be aware of the broadening of the tort of intrusion upon seclusion and take steps to prevent such intrusion.

Background

In January 2012, the Ontario Court of Appeal released Jones v Tsige, in which it held that there is a tort of intrusion upon seclusion in Ontario. Sharpe JA, writing for the court, canvassed jurisprudence from the US and Commonwealth countries and determined that, to reflect the technological changes of modern times, there must be a tort of intrusion upon seclusion. Sharpe JA adopted the elements of the cause of action from The American Law Institute’s Restatement (Second) of Torts (2010):

  • the defendant’s conduct must be intentional or reckless;
  • the defendant must have invaded, without lawful justification, the plaintiff’s private affairs or concerns; and
  • a reasonable person would regard the invasion as highly offensive causing distress, humiliation or anguish.

Notably, proof of damage is not a necessary element of this intentional tort. [For more on Ontario’s Jones v Tsige decision, see this article.]

More recently, in Demcak v Vo, the British Columbia Supreme Court confirmed that there is no common law tort of invasion of privacy in that province. [For more on British Columbia’s Demcak v Vo decision, see this article.] Continue Reading

CASL Applies To You Even If You Aren’t In Canada

Posted in Anti-Spam, Consumer Protection, Regulatory Compliance
Barry SookmanPuneet Soni

CASL is the toughest law of its kind in the world and Canadian organizations are awakening to many major challenges they will face when trying to comply with this legislation.  However, non-Canadian organizations should not overlook the Act’s extra-territorial application and its effect on their respective operations.

CASL’s requirements far exceed those in other countries. Rather than targeting false and misleading e-mails or those sent in violation of an opt-out request such as in the U.S., or limiting the restrictions to direct marketing messages as in the EU, CASL goes much farther. It does the same thing with its “ban all” approach to “malware”. To the extent that other countries have civil laws that regulate distributing computer programs without consent, they target malware, spyware or similar threats, not programs that are also completely innocuous as CASL does.

For many organizations, compliance will require development of new databases, modification of computer systems, changes to websites, user interfaces, and contracting processes and disclosures of information. Continue Reading

Service Performance Remedies In Outsourcing Agreements: Lessons To Learn From State of Indiana v. IBM

Posted in Contracting/Outsourcing, Technology License Agreement
David Crane

For a customer of outsourcing services, it is crucial that the outsourcing services agreement include well-drafted, clear and specific remedies to address vendor service performance failures that will have a material impact on the customer.  A good example of what can happen when a service agreement is deficient in this area are the recent decisions in the ongoing litigation between the State of Indiana and IBM over a ten-yearperiod, $1.3 billion contract for IBM to modernize and manage the State of Indiana’s welfare system.

Less than three years into the ten-year contract, the State terminated the contract for cause citing IBM’s performance issues. The parties subsequently sued each other alleging breach of contract. The primary issue in dispute was whether or not the State was properly entitled to terminate its agreement with IBM for material breach (i.e. for cause). The State sought over $170 million in damages, and IBM sought almost $100 million in damages. Continue Reading

McCarthy Tétrault files brief in U.S. Supreme Court

Posted in Copyright, Intellectual Property

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.

Legal Implications of Accepting Bitcoin as Payment

Posted in Consumer Protection, Regulatory Compliance
Rahim EsmailEmily MacKinnonTerry Gao

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