snIP/ITs Insights on Canadian Technology and Intellectual Property Law

Author Archives / Barry B. Sookman

Subscribe to posts by Barry B. Sookman

Worldwide de-indexing order against Google upheld by Supreme Court of Canada

Posted in Privacy, Social Media, Technology License Agreement

The Supreme Court of Canada released a landmark decision today ruling that Canadian common law courts have the jurisdiction to make global de-indexing orders against search engines like Google. In so, ordering, the Court in Google Inc. v. Equustek Solutions Inc., 2017 SCC 34 underlined the breadth of courts’ jurisdiction to make orders against search engines to stem illegal activities on the Internet including the sale of products manufactured using trade secrets misappropriated from innovative companies.… Continue Reading

CASL Private Right of Action delayed and Government to review CASL

Posted in Anti-Spam

CASL in its present form was a big mistake. The private right of action (PRA) which was scheduled to come into effect July 1, 2017 would have compounded the adverse effects of this flawed, overly-broad, indefensible, and likely unconstitutional law. See,  CASL’s private right of action.

The Government strongly signaled today that it is prepared to fix or at least mitigate some of the excessive elements of the CASL regime. This is something that every sector of the Canadian public including charities, not-for profit and educational institutions, private individuals, small, medium and large businesses, retailers, publishers, financial institutions, technology … Continue Reading

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

Posted in Copyright, Intellectual Property

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 … Continue Reading

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

Posted in Copyright, Intellectual Property, Litigation

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

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

Posted in Copyright, Intellectual Property, Litigation

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 … Continue Reading

CASL’s private right of action

Posted in Anti-Spam

Canada has the most onerous anti-spam/anti-malware law (CASL) in the world. In less than a year, July 1, 2017, it is going to become even worse. That’s when the private right of action (PRA) comes into force.

Since its inception, the anti-spam and anti-malware portions of the Act (ss.6-9) have been enforced by the CRTC. But when the PRA becomes law organizations big and small including charities, small businesses and even children marketing their first lemonade stands – and their officers, directors and agents – could become liable for millions of dollars in penalties.

Organizations throughout the country … Continue Reading

The year in review: developments in computer, internet and e-commerce law (2015-2016)

Posted in Defamation, E-Commerce, Intellectual Property

On June 14, I gave my annual presentation to the Toronto computer Lawyers’ Group on “The year in review in Computer, Internet and E-Commerce Law”. It covered the period from June 2015 to June 2016. The developments included cases from Canada, the U.S. the U.K., and other Commonwealth countries.

The developments were organized into the broad topics of: Technology Contracting, Online Agreements, Privacy, Online/Intermediary Liability/Responsibility, Copyright, and Trade-marks and Domain names.

The cases referred to are listed below. My slides can be viewed after the case listing. These and many other cases will be added to my 7 volume book … Continue Reading

EU-US Privacy Shield: Agreement in Principle on Framework To Replace Safe Harbour

Posted in Privacy

Regular readers of this blog will be aware that, last fall, the Court of Justice of the European Union struck down the Safe Harbour framework which permitted the lawful transfer of personal information from the EU to the US through a self-certification model.  Negotiations between the European and US authorities to update or replace the framework were already underway prior to this decision, but the Court’s intervention raised the stakes dramatically.  The Article 29 Working Party (WP29) had set a deadline of the end of January after which European Data Protection Authorities (DPAs) might begin coordinated enforcement actions against organizations … Continue Reading

Technological neutrality, technological neutrality, technological neutrality: CBC v SODRAQ

Posted in Copyright

The Supreme Court released a landmark judgment yesterday in the closely watched case, Canadian Broadcasting Corp. v. SODRAC 2003 Inc., 2015 SCC 57. The 7-2 judgment of the Court was delivered by Rothstein J (with whom McLachlin C.J., Cromwell, Moldaver, Wagner, Gascon and Côté JJ agreed).

The judgment established the following principles.… Continue Reading

Data Transfers from EU to US “unlawful”; EU Signals Enforcement Actions Possible After January, 2016

Posted in Privacy

On Friday, October 16, 2015, the Article 29 Working Party (“WP29”) released a statement on the decision of the Court of Justice of the European Union (“CJEU”) in the case Schrems v Data Protection Commissioner (C-362-14), the landmark decision which invalidated the decision of the European Commission underpinning the Safe Harbour framework by which personal information was permitted to move from the EU to the United States.… Continue Reading

Europe’s Top Court Invalidates ‘Safe Habour’ Data Transfer Framework

Posted in Privacy, Regulatory Compliance

On October 6, 2015, the Court of Justice of the European Union (“CJEU”) declared that the US-EU Safe Harbour framework is invalid, striking it down in the highly anticipated case of Schrems v. Data Protection Commissioner. The decision is effective immediately, with far-reaching and widespread implications for entities with multinational data flows.

Since EU data protection laws purport to apply to the processing of personal data regardless of whether the individuals affected are EU citizens or not, or are physically present in the EU or not, the potential impacts of this decision go beyond those organizations with … Continue Reading

Safari workaround claimants to get their day in UK court against Google: Google Inc v Vidal-Hall

Posted in Privacy

The ‘Safari workaround’ has cost Google millions. In 2012, it paid a civil penalty of US$22.5 million to settle charges brought by the US FTC that Google misrepresented to users of the Safari browser that it would not place tracking cookies or serve targeted advertisements to those users. In 2013 it paid US$17 million to settle US state consumer-based actions brought by State AGs.

Google was also sued over the Safari workaround in the UK by individuals claiming that Google was liable for the tort of misuse of private information and for breach of the UK Data Protection Act 1998 … Continue Reading

The “Right to be Forgotten” Guideline from the Article 29 Working Party

Posted in Privacy

In the landmark ruling in Google Spain SL, Google Inc. v Agencia Española de Protección de Datos, Mario Costeja González (case no. C-131/12, May 13, 2014), the Court of Justice of the European Union (CJEU) recognized that search engines are controllers of the personal information they process. As such, they have the obligation, in appropriate cases, to de-list links to personal information in their search results.

The Gonzales decision left open questions about the scope of the duty and the criteria to be used in determining what links must be delisted, something which Google, data protection authorities, and others had … Continue Reading

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

Posted in Copyright, Intellectual Property

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 … Continue Reading

CASL’s inscrutable computer program provisions to be tackled by CRTC

Posted in Anti-Spam

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

YouTube, Facebook, Netflix liable to pay for music in Canada rules Copyright Board

Posted in Copyright, Intellectual Property

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 … Continue Reading

Notice and notice regime under C-11 coming into force

Posted in Copyright, Privacy

The Government announced today that the notice and notice regime established under C-11 is coming into force. The delay in bringing these provisions into force was a consultations on possible regulations that the regime permitted. The Government announced that the provisions are coming into force without regulations.

The regime permits copyright owners to send notices to internet service providers and other internet intermediaries claiming infringement of copyright. The notices must be passed on by these service providers to their users. Because there are no regulations, the notices must be processed and passed on by the internet intermediaries without any fees … Continue Reading

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

Posted in Anti-Spam, Consumer Protection, Regulatory Compliance

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 … Continue Reading

Copyright Law – Year in Review

Posted in Copyright, Intellectual Property

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 … Continue Reading

SCC Strikes Down Alberta Privacy Legislation on Speech Grounds

Posted in Privacy

This morning, the Supreme Court of Canada released Alberta (Information and Privacy Commissioner) v. United Food and Commercial Workers, Local 401, 2013 SCC 62, an important decision relating to the intersection of freedom of expression and protection of privacy and, in the process, struck down Alberta’s Personal Information Protection Act, SA 2003, c. P-6.5 ( “PIPA”). At issue were the privacy rights created by the PIPA and the right to free expression, which is constitutionally enshrined as section 2(b) of the Canadian Charter of Rights and Freedoms (the “Charter”).

The case arose from a strike in 2006, at … Continue Reading

Making social networks remediate defamation enabled by their platforms: McKeogh v Facebook

Posted in Social Media

Overview

Recently, the Irish High Court came up with a novel solution in a social media defamation case involving an unfortunate young student who was grossly defamed when certain persons wrongly identified him as the man seen in a video posted on YouTube exiting a taxi in Dublin without paying the fare.[1] The decision illustrates the difficulties an innocent person who is defamed on social media can face when trying to have the material removed, particularly where the Internet intermediaries who may have the ability to help refuse to cooperate. In this case the High Court ordered the experts … Continue Reading

Originality and Cartoon Characters – Supreme Court to Hear Cinar/Robinson Copyright Cases

Posted in Copyright

The Supreme Court recently granted leave to appeal in four copyright cases arising from the decision of the Quebec Court of Appeal in the France Animation v. Robinson, 2011 QCCA 1361 case. Robinson alleged that Cinar’s cartoon Robinson Sucroë was a copy of his own work Robinson Curiosité. The trial judge found infringement and the Court of Appeal upheld the judgment, in part, but reduced the damages award.

The cases canvass many copyright issues including:

  • the application of the standard of originality to partially completed work
  • the test for infringement when there has been substantial alterations and improvements
Continue Reading

Cloud Computing, the B-10 Outsourcing Guideline and OSFI

Posted in Contracting/Outsourcing

Recently, the Office of the Superintendent of Financial Institutions (OSFI) released a memorandum reminding federally-regulated financial institutions (FRFIs) that OSFI’s revised Guideline B-10 “Outsourcing of Business Activities, Functions and Processes” applies to new technology-based outsourcing arrangements, including cloud computing.

In the short memorandum, OSFI:

  • acknowledged that these new technology-based services may offer opportunities and benefits for FRFIs but cautioned FRFIs that they need to consider and manage the risks associated with the unique features of these services (including issues surrounding location of records.)
  • reminded FRFIs that the expectations in the Guideline apply to these services.

The Guideline sets … Continue Reading

Suing for Snooping – Privacy Intrusion Actionable in Ontario

Posted in Privacy

In Jones v. Tsige, the Court of Appeal for Ontario recently ruled that there is a tort of “intrusion upon seclusion” in this province and awarded $10,000 in damages to a woman whose banking records were surreptitiously accessed by a fellow employee.

Is there is a Tort of Inclusion upon Seclusion in Ontario? Adapting the Law to the Digital Age

In its reasons, the Court of Appeal reflected on technological change and its impact on privacy. In particular, it noted that Internet and digital technology have changed the way we capture, store and retrieve information – we are storing … Continue Reading