snIP/ITs Insights on Canadian Technology and Intellectual Property Law

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Internal Technology Transfer Gone Wrong: Composite Technologies Inc. v. Shawcor Ltd., 2017 ABCA 160

Posted in Intellectual Property, Litigation

Intellectual property is transferrable. And you should be careful with how you transfer your IP among your corporate family, especially if it constitutes the principal value in your business – and in your life’s work!

One IP owner in Alberta had the misfortune of making a transfer to a subsidiary which he eventually allowed to be dissolved. When it came time to assert his ownership rights in the technology in a court, his suit was summarily dismissed as meritless.

Recently, the Alberta Court of Appeal ruled that this outcome was correct.… Continue Reading

CRTC Extends Direct Regulation to Resellers of Telecommunications Services

Posted in Regulatory Compliance, Telecommunications

With relatively little fanfare, on January 17, 2017, the Canadian Radio-television and Telecommunications Commission (CRTC) issued a regulatory policy imposing new direct regulatory obligations on Telecommunications Service Providers (TSPs) in Canada.

Historically, the CRTC’s direct regulatory powers have applied to “Canadian carriers”, who are the owners (or operators) of the physical telecommunications infrastructure in Canada.

The CRTC’s authority over non-carrier TSPs, who do not own that infrastructure was, until recently, more tenuous. In the absence of a direct statutory authority to impose conditions on non-carrier TSPs, the CRTC instead required Canadian carriers to impose certain requirements (such as the obligation … Continue Reading

Copyright Infringement Class Action Over University Course Packs Certified in Quebec: Copibec c. Université Laval

Posted in Copyright, Intellectual Property, Litigation

On February 8, 2017, the Quebec Court of Appeal certified a class action by Copibec against Université Laval, for copyright infringement.

This decision overturns a Superior Court ruling from 2016, which would have dismissed the claim on the basis that Copibec did not satisfy the eligibility requirements under the province’s Code of Civil Procedure for an association to bring a class action on behalf of its members.

Copibec is a collective management organization representing book publishers, visual artists, and newspaper and periodical authors and publishers in Quebec.

Copibec alleges that, in 2014, Université Laval declined to renew its license agreement … Continue Reading

New Rules for US DMCA Agent Registration

Posted in Copyright

One of the central features of the U.S. Digital Millennium Copyright Act (or DMCA)for online service providers is the combination of the Notice and Takedown regime and the corresponding Safe Harbour provision. Provided that online service providers properly carry out their obligations under these provisions, including by promptly removing infringing content when they receive compliant notices, they are shielded from liability for copyright violations by their users.

This system has critics among service providers, right holders, and users. But it has underpinned the explosion of user content-based services ranging from Facebook and YouTube to small community bulletin boards.

A critical … Continue Reading

7 Practical Lessons from CRTC’s First CASL Enforcement Decision

Posted in Anti-Spam

Although CASL has been in force since July 1, 2014, the Canadian Radio-Television and Telecommunications Commission (“CRTC”) has conducted its investigations and levied its penalties in a generally non-public manner. Until now, the CRTC’s Compliance and Enforcement branch had publicly commented on only one Notice of Violation (“NoV”) under CASL. We understand that an undisclosed number of other NoVs have been issued without public comment.

All other public CASL enforcement actions have taken the form of negotiated “undertakings” which are forms of settlements reached in confidential, closed door negotiations with the enforcement branch. This atmosphere of secrecy has made … Continue Reading

From Broadcasting to Telecommunications and Everything in Between: Reflections on the Recent New Developments in Communications Law and Policy Conference

Posted in Privacy, Regulatory Compliance, Telecommunications

We recently attended the 18th Biennial National Conference: New Developments in Communications Law and Policy, a national symposium of the Law Society of Upper Canada and the Entertainment Media and Communications Law section of the Canadian Bar Association.  This conference is always a stimulating and fascinating opportunity to share thoughts with colleagues in the Canadian communications sector.  This year’s event was no exception.… Continue Reading

“Do Not Call” means Do Not Call: CRTC Enters into MOU with FTC on Spam and Unsolicited Telecommunications

Posted in Anti-Spam, Regulatory Compliance, Telecommunications

On March 24, 2016, the Canadian Radio-television and Telecommunications Commission (“CRTC”) signed a memorandum of understanding (“MOU”) with the United States Federal Trade Commission.[1]  This MOU is an effort by Canada and the United States to work together on anti-spam enforcement measures, and expressly refers to unsolicited telecommunications, unsolicited commercial electronic messages (spam), and other unlawful electronic threats (e.g., malware and botnets).… Continue Reading

Marrakesh Treaty Implementation Bill Revived in Parliament

Posted in Copyright, Intellectual Property

In June 2015, the previous Conservative government tabled legislation to implement the Marrakesh Treaty to Facilitate Access to Published Works for Persons Who Are Blind, Visually Impaired, or Otherwise Print Disabled. However the bill was introduced shortly before the summer break and, as it turned out, Parliament was dissolved before the legislature returned.

On March 24, 2016, the new Liberal government tabled a substantially identical bill, now known as C-11.

As was the case for its predecessor, the bill broadens the existing exception in section 32, including by removing the exclusion of large print books and by expressly … Continue Reading

McCarthy Tétrault and IP Osgoode Co-host FinTech IP Symposium

Posted in Intellectual Property, Patents, Startups

On March 9, McCarthy Tétrault and IP Osgoode jointly hosted a symposium titled Effective IP Strategy to Drive Innovation in the Financial Services Sector.  This event brought together academics, business people, and lawyers for a discussion of how technological change is transforming the financial service sector and pushing incumbents and disruptors alike to think carefully about their IP strategies.

After introductory remarks from Barry Sookman and Giuseppina D’Agostino, the event set a brisk tempo and covered a lot of ground in two short hours.  The discussion was organized around three panels.

The first panel, moderated by Matt FlynnContinue Reading

Judicial Redress Act Grants European Citizens Legal Redress for Privacy Breaches in Transatlantic Data Sharing

Posted in Privacy

On Wednesday, February 10, 2016, the US took a step towards assuaging privacy concerns regarding transatlantic data transfers when the House passed a bill granting European citizens recourse to US Courts to protect treatment of their personal data. Now heading to President Obama for signature, the Judicial Redress Act would give European citizens the right to pursue legal action against certain US agencies in American courts if their personal data has been mishandled when used by the US in criminal and terror investigations. As the EU and US work out a framework to replace Safe Harbour in light of concerns … Continue Reading

We Want Your Feedback! snIP/ITs Reader Survey

Posted in Uncategorized

Thanks for reading!  snIP/ITs continues to be one of McCarthy Tétrault’s most popular blogs, and we appreciate your attention.  But we are always looking for ways to improve.

So we want your feedback.  Please consider completing our short reader survey.  We are interested to know what topics you would like to see more (or less) of in the future.  (None of the questions involve personal or demographic information, but respondent IP addresses will be recorded.)… Continue Reading

CRTC CASL Compliance and Enforcement Update

Posted in Anti-Spam, Regulatory Compliance

On February 10, 2016, Lynne Perrault and Dana-Lynn Wood of the CRTC provided the latest in what is becoming a series of CASL briefings, which the presenters described as part of an “on-going dialogue” with industry. The CRTC now has a year and a half of enforcement experience under its belt for the Commercial Electronic Messages (CEMs) provisions of CASL, so this presentation focused on patterns and issues that have emerged in that period, and some guidance in response to those issues.  However, the presenters took some pains to note that the guidance offered was not intended to be prescriptive … 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

Online Trust Alliance IoT Trust Framework Nears Release

Posted in Privacy, Regulatory Compliance

Throughout 2015, the Online Trust Alliance (“OTA”) (a U.S.-based non-profit organization which originated in 2005 as an informal industry working group drawn largely from the technology and marketing communities) has been working on a so-called “Trust Framework” for the Internet of Things. An earlier post covered the release of the first discussion draft in August.

After a public comment period, the OTA issued a “last call” draft in October, and followed up with a “pre-release” draft on December 3, 2015.

Although this draft is described as “pre-release”, the OTA’s consultation process for the framework appears to be over now. … Continue Reading

CRTC Executes CASL Warrant as Part of Botnet Take-down

Posted in Anti-Spam

On December 3, 2015, the CRTC issued a release announcing its first-ever execution of a warrant under the Canadian anti-spam law (commonly known as “CASL”), as part of a coordinated international effort to disrupt a major botnet family.

The effort also involved law enforcement and cybersecurity authorities in the U.S., Europe, and Asia, as well as Microsoft and other private sector actors including ESET.

The target botnet family, known as “Dorkbot”, can be exploited to capture personal information (particularly passwords) from users of compromised PCs, to send out spam, or to participate in distributed denial of service … Continue Reading

Online Trust Alliance releases draft “Trust Framework” for the Internet of Things

Posted in Privacy, Regulatory Compliance

By some estimates, there were more than 2 wireless networked devices for every person on the planet in 2014. The multiplier is expected to reach 5 by the year 2020.

This explosive proliferation of networked technology offers remarkable opportunities, but also inspires concern that the connected future may result in ubiquitous, inescapable, surveillance of every aspect of our lives. Legislators and regulators around the world are grappling with the implications of this technology for the ability to protect personal privacy interests and the practical problems of applying legal regimes originally developed in a very different era.

Against this backdrop, … Continue Reading

Unusable Copies and Copyright Infringement

Posted in Copyright, Intellectual Property

Copyright law offers up a panoply of interesting questions, which often verge on the philosophical. One such question is: if one tries to make a copy of something, but the copy is defective and useless, has one made a copy at all? According to a recent decision of Master Hanebury, of the Court of Queen’s Bench of Alberta, the answer could be yes.… Continue Reading

W3C Releases Draft Do-Not-Track Compliance Standards

Posted in Privacy

In today’s Internet, advertising is ubiquitous. It is the main source of revenue for many web sites and services. It is also the subject of increasing scrutiny by privacy advocates and regulators, as advertisers and ad networks develop ever-more sophisticated means to track and profile users in the quest to optimize their effectiveness.

In Canada, online behavioural advertising (sometimes referred to as interest-based advertising) has been the subject of significant attention from the Office of the Privacy Commissioner. The Office recently released a research report on the subject, concluding that many organizations and web sites are not fully-compliant with the … Continue Reading

BC Privacy Act Does Not Oust Facebook’s Forum Selection Clause: BC Court of Appeal

Posted in Privacy, Social Media

How do operators of global services deal with the panoply of legal systems around the world? One common strategy relies on choice of law and forum selection clauses in Terms of Use agreements. These clauses purport to determine in advance what law will apply to disputes and where they will be heard. Canadian courts tend to enforce such agreements, on the basis that the parties are generally best-placed to decide for themselves how to govern their affairs. Such agreements promote certainty, which courts (and parties) usually finds comforting.

However, local laws sometimes modify or invalidate these kinds of agreements. For … Continue Reading

Bill C-65: Canada Moves to Implement the Marrakesh Treaty

Posted in Copyright, Intellectual Property

On June 8, 2015, the Minister of Industry introduced Bill C-65, with the short title Support for Canadians with Print Disabilities Act. This Bill amends provisions of the Copyright Act dealing with exceptions intended to facilitate access to alternate format works by the visually impaired and other persons with so-called “print disabilities”. These changes are intended to implement (and enable Canada to accede to) the Marrakesh Treaty, as announced in the federal budget. (See pp. 21, 281, 286.)

The proposed amendments broaden the exception in section 32, including by removing the exclusion of large print books … Continue Reading

CASL Reduced Legitimate Email as Much as “Spam”: Cloudmark Study

Posted in Anti-Spam

As part of its 2015 Q1 Security Threat Report, the network security firm Cloudmark has released an empirical analysis of email traffic in Canada, following the coming-into-force of Canada’s anti-spam law (informally known as “CASL”). The results show that CASL has had a measurable effect on email in Canada, but the effect may not be what the government intended.

Average monthly email volumes received by Cloudmark customers in Canada declined by 29%, but the percentage of received email that Cloudmark assessed as “spam” actually increased, albeit by an insignificant amount (from 16.5% to 16.6%). In other words, the … Continue Reading

I Know You Know, Because I Told You So: Effective Notice of Infringement

Posted in Copyright, Intellectual Property

Copyright infringement is normally a factual question – it doesn’t matter whether one intended to copy a substantial part of someone else’s original expression if, in fact, one did so[1] – but there are circumstances where the alleged infringer’s state of mind does matter.  Knowledge is relevant to secondary infringement under s. 27 of the Canadian Copyright Act, or to the assessment of statutory damages under s. 38.1, for example.  Willful infringement may also be relevant to the applicable limitation period, to the assessment of costs or punitive damages, or to piercing the corporate veil.… Continue Reading

New Year, New Border Enforcement Measures in Effect

Posted in Copyright, Intellectual Property, Trade-marks

On December 31, 2014, the Canada Gazette published an order proclaiming into force sections 2, 5 and 6, subsection 7(6) and sections 43, 44 and 60 of the Combating Counterfeit Products Act, c. 32, S.C. 2014, as of January 1, 2015.  The Act itself received Royal Assent on December 9, 2014.

The principal effect of this order is to bring into force new border enforcement measures intended to combat the importation or exportation of trade-mark or copyright-infringing goods.[1]  These measures involve three main features:

  • Prohibitions on importation and exportation of infringing copies or goods[2] under the Copyright
Continue Reading