snIP/ITs Insights on Canadian Technology and Intellectual Property Law

Category Archives: Technology License Agreement

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Canadian Trademark Law Adapts to Online Software Licence Sales

Posted in Intellectual Property, Technology License Agreement, Trade-marks

The online sale of a software licence constitutes a “use” in relation to a good for the purposes of Canadian trademarks. This was the recent holding of the Federal Court of Canada in Specialty Software v Bewatec, 2016 FC 223. This decision strengthens trademark protection for software in Canada and demonstrates that courts will adapt legal concepts to modern technology. Here, the traditional model of purchasing software on tangible media, such as a CD-ROM, is simply outdated. Software as a service (SaaS) offerings have greatly increased in recent years with the explosion of cloud computing, which essentially provides … Continue Reading

PHIPA Does Not Preclude the Recourse to Common Law for Health Privacy Violations

Posted in Privacy, Technology License Agreement

Facts

‘‘With the click of a mouse, personal health records can be accessed by those who have a legitimate interest in properly treating a patient – or they can be accessed for an improper purpose.’’

These were the opening words of the Ontario Superior Court in the case of Hopkins v. Kay[1] where Representative Plaintiffs sought to bring a class action suit against a hospital and other defendants, alleging that approximately 280 patient records of the Peterborough Regional Health Centre (the ‘‘Hospital’’) were intentionally and wrongfully accessed by the Hospital’s staff and others.

The Plaintiffs based their claim on … Continue Reading

Mere Compliance With Privacy Requirements By Corporations may no Longer be Enough

Posted in Privacy, Technology License Agreement

Introduction

The Office of the Privacy Commissioner of Canada (‘‘OPC’’) recently published a research paper entitled ‘‘Privacy and Cyber Security: Emphasizing privacy protection in cyber security activities’’ in which are outlined the common interests and tensions between privacy and cyber security. The report sets out key policy indications with a view to generating dialogue on cyber security as an important element of online protection, while acknowledging that cyberspace governance is a global issue.

Context

The OPC bases its report on the following factual premises. As technologies facilitating access to the Internet have become increasingly entrenched in everyday life, … Continue Reading

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

Posted in Contracting/Outsourcing, Technology License Agreement

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 … Continue Reading

“Only Following Orders” No Defence: B.C. Court of Appeal Holds Employees Personally Liable for Their Participation in Breach of Technology License

Posted in Technology License Agreement

In the case of XY, LLC v. Zhu, 2013 BCCA 352¸ the B.C. Court of Appeal has confirmed that employees of a company can be personally liable for the breach of a technology license agreement by their employer. The Court held that employees who continue to carry out low level tasks even after they become aware of their employer’s dishonest conduct may avoid liability; employees  who knowingly assist their employer in carrying out a fraud can be personally liable for the damages caused by the company’s conduct.

The plaintiff XY, LLC was formed to bring to market technology that … Continue Reading