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By Richard Stobbe

Browsewrap, clickwrap, clickthrough, terms of use, terms of service, EULA. Just what are we talking about and how did we get here?

In Nguyen v. Barnes & Noble, Inc., 2014 WL 4056549 (9th Cir. Aug. 18, 2014) the US Ninth Circuit wades into the subject of online contracting. Law professor Eric Goldman (ericgoldman.org) argues that these terms we’re accustomed to using, to describe ecommerce agreements, only contribute to the confusion. The term “browsewrap” derives from “clickwrap”, which is itself a portmanteau derived from the concept of a shrinkwrap license. As one court described it in 1996: “The ‘shrinkwrap license’ gets its name from the fact that retail software packages are covered in plastic or cellophane shrink wrap, and some vendors… have written licenses that become effective as soon as the customer tears the wrapping from the package.”

The enforceability of a browsewrap – it is argued – is based not on clicking, but on merely browsing the webpage in question. However, the term browsewrap is often used in the context of an online retailer hoping to enforce its terms, in a situation where they should have used a proper click-through agreement.

In Nguyen, the court dealt with a claim by a customer who ordered HP TouchPad tablets from the Barnes & Noble site. Although the customer entered an order through the shopping cart system, Barnes & Noble later cancelled that order. The customer sued. The resulting litigation turned on the enforceability of the online terms of service (TOS). The court reviewed the placement of the TOS link and found a species of unenforceable browsewrap - the TOS link was somewhere near the checkout button, but completion of the sale was not conditional upon acceptance of the TOS.

There is a whole spectrum upon which online terms can be placed. At one end, a click-the-box agreement (in which completion of the transaction is conditional upon acceptance of the TOS) is generally considered to be valid and enforceable. At the other end, we see passive terms that are linked somewhere on the website, usually from the footer, sometimes hovering near the checkout or download button.  In Nguyen, the terms were passive and required no active step of acceptance. The court concluded that: “Where a website makes its terms of use available via a conspicuous hyperlink on every page of the website but otherwise provides no notice to users nor prompts them to take any affirmative action to demonstrate assent, even close proximity of the hyperlink to relevant buttons users must click on —without more — is insufficient…”

This leaves open the possibility that browsewrap terms (where no active step is required) could be enforceable if the user has notice (actual or constructive) of those terms.

In Canada, the concept was most recently addressed by the court in Century 21 Canada Limited Partnership v. Rogers Communications Inc., 2011 BCSC 1196 (CanLII). In that case, there was no active click-the-box terms of use, but the “browsewrap” terms were nevertheless upheld as enforceable, in light of the circumstances. Three particular factors convinced the court that it should uphold the terms: 1. the dispute did not involve a business-to-consumer dispute (as it did in Nguyen). Rather the parties were “sophisticated commercial entities”. 2. The defendants had actual notice of the terms. 3. The defendants employed similar terms on their own site.

The lessons for business?

The “browsewrap” is a passive attempt to impose terms on a site visitor or customer. Such passive terms should not be employed where the party seeking to enforce those terms requires certainty of enforceability. Even where there is a “conspicuous hyperlink” or “notice to users” or “close proximity of the hyperlink”, none of these factors should be relied upon, even if they might create an enforceable contract in special cases. Maybe it is time to retire the term “browsewrap” and replace it with “probably unenforceable”.

Now, do you still want to rely on a browsewrap agreement?

Related Reading: Online Terms – What Works, What Doesn’t

Calgary – 07:00 MST

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By Richard Stobbe

Last summer, Google was ordered by a Canadian court to de-index certain offending websites which were selling goods that were the subject of an intellectual property (IP) infringement claim (Equustek Solutions Inc. v. Jack, 2014 BCSC 1063 (CanLII), see our earlier post: Court Orders Google to Remove Site from Worldwide Search Results).

The underlying dispute involved a trade-secret misappropriation and passing-off claim by a manufacturer against a rival company. Google appealed the lower court decision. In Equustek Solutions Inc. v. Google Inc., 2014 BCCA 295 (CanLII), the BC Court of Appeal has rendered a decision.

Google applied for a stay of the original injunction on a number of grounds, including the argument that the original order was “unprecedented in Canadian law”, the order was “overly broad”, and that the order will have a “direct and irreversible impact” on Google. Google argued that it would suffer “irreparable harm” for two reasons: first, Google customers would be impacted, although it was not clear how exactly; and second, Google argued that this Canadian court order would open the floodgates to other similar orders against Google in other jurisdictions.

The appeal court acknowleged the importance of the case, musing that “the order of the court below raises profound issues as to the competence of Canadian courts to issue global injunctions that affect what content users around the world can access on the Internet.”

However, after balancing the arguments, the Court of Appeal did not grant the stay, so the injunction remains in place.

There are a few interesting points about this decision:

• Although Google was not a party to the original lawsuit (remember, it was an IP dispute between two rival manufacturers) and no-one claimed anything against Google itself, Google took the extraordinary step of undertaking to pay damages to Equustek, for damage it might suffer if the injunction was lifted. Google said it would track traffic to the offending websites (which it is supposed to de-index) and disclose that information to Equustek. If Equustek lost profits as result of traffic to these sites, then Google would make good the damages.
• Equustek counter-argued that this was cold comfort, asking: “What value is it to have the right to sue Google for damages?”  If access to the offending websites was not blocked by Google, said Equustek, then Equustek would still face the burden of proving damages, and then suing Google for those damages, and in the meantime its intellectual property would continue to be devalued.

The appeal will go ahead, and while the appeal is underway, the order against Google will remain. This is one to watch.

Calgary – 07:00 MST

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By Richard Stobbe

If you are a start-up considering the crowdfunding route, let’s talk. Here are a few tips to consider:

• IP: Most crowdfunding portals require extensive disclosure of the start-up’s business plans and product prototypes. That makes sense – after all, investors want to know what they’re investing in. The start-up should consider the scope of disclosure in light of intellectual property issues. Will the technical info, drawings, or descriptions constitute a public disclosure of the company’s inventions, and if so, this may impact patentability, in Canada or the US or other important markets. Consider patent issues, and also make sure you mark your trademarks and display copyright notices where appropriate.
• Securities Laws: Raising money from investors? In Canada, perhaps the best way to approach the issue is not to ask “is crowdfunding legal?“. Rather, decide what you want to accomplish and then make sure your efforts are compliant with current laws. Every company must comply with securities laws. An offering to sell shares requires a prospectus or an exemption, and there are a number of exemptions which may be suitable for your start-up. “Crowdfunding” is a nebulous term, and depending on how it is implemented, it may run afoul of current securities laws, or it may be so cost-prohibitive to your start-up that you will choose a different path. The crowdfunding exemption is being developed. Some provinces (such as Saskatchewan) have implemented rules permitting equity crowdfunding. Other provinces such as Alberta are considering such rules.
• Corporate Issues: As equity crowdfunding rules become more mature, you should consider the implications. Let’s say the rules permit equity crowdfunding in your province. You want to raise $1.5 million (which is the maximum under the proposed Crowdfunding Exemption).  Let’s say each investor kicks in $2,500 for shares in the company (which is the maximum single investment under the proposed Crowdfunding Exemption). That’s 600 shareholders. That means 600 people (most of whom are total strangers) own a piece of your company. Next, you want to raise $2 million from venture capital investors. How will VCs view your company if they are joining 600 minority shareholders? Equity crowdfunding may be a great option for your start-up, it may be the way to get your product to market. Or it may be a bad fit in light of your long-term strategy. Either way, you should go in with your eyes open so you know what you are signing up for.

Get some practical advice as you consider your financing options.

Calgary – 07:00 MST

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By Richard Stobbe

A Canadian company, Vrvana, Inc. is seeking $350,000 through Kickstarter, to finance its development of a virtual reality headset marketed as the Totem. Vrvana has elected to pursue a reward-based crowdfunding model. For example, minimal donations of $15 come with a newsletter subscription and event invitations. The top end contribution of $8,000 will net a Totem VR headset and a dinner date with the team of engineers.

Crowdfunding attracts headlines and cash, but in Canada the rules and laws surrounding equity crowdfunding are still in development. The securities or equity-based model of crowdfunding refers to small investments in exchange for securities – which has a broad definition meant to capture shares in the start-up company, including pref shares or convertible securities, non-convertible debt securities, or units of a limited partnership. In plain terms, a company could use this method of crowdfunding to raise money by selling a piece of the company, rather than selling products or services.

In Canada, a number of provinces are considering some varation of crowdfunding rules, either for a “Crowdfunding Exemption” or a “Start-up Exemption” or both. Ontario, B.C., Manitoba, Quebec, New Brunswick and Nova Scotia are considering the exemptions. Alberta is considering the public comments, but has not formally published any proposed rules.

Here are the highlights of the proposed Start-up Exemption for crowdfunding in a number of Canadian provinces.

• There is a cap. The start-up can only raise a  maximum of $150,000 under each offering.
• The distribution cannot remain open for more than 90 days.
• There is a limit on the number of times the company can go back to the trough each year – the exemption only be used twice each calendar year.
• The offering document must disclose the minimum and maximum offering size.
• One crowdfunding offering at a time. A start-up cannot have two concurrent offerings.
• The offering materials must be made available to potential investors through a regulated portal (like Kickstarter), which will also be subject to rules.
• Investor are restricted on what they can contribute – there is a cap of $1,500 for each investment under the exemption.
• Securities are subject to an indefinite hold period.
• There are other restrictions, such as the requirement for the start-up to file a report of distribution within 30 days of the closing of the distribution.

The proposed Crowdfunding Exemption is a variation, with a few notable differences: it would have higher thresholds and would be open to both reporting issuers and non-reporting issuers:

• The company would be able to raise up to $1.5 million during every 12 month period.
• Investors could invest up to $2,500 per single investment, with an aggregate cap of $10,000 per calendar year.

Remember this is currently proposed, but not yet “legal”. The comment period closed in June, 2014, and Canadian securities regulators are considering comments. Rule changes will not likely come into effect until 2015. However, Saskatchewan has already launched its Equity Crowdfunding Exemption which is similar to the Start-up Exemption summarized above.

In the US, the 2012 Jumpstart Our Business Startups Act (JOBS Act) promised new rules on equity crowdfunding. While the federal rules have not yet been finalized, equity crowdfunding is currently allowed in a number of states that have passed “intrastate” rules. For example, a Maryland company may raise funds from Maryland investors. A dozen US states are considering such rules. Make sure you get US legal advice if you are considering crowdfunding from US investors.

This is a complex area of law, and the current landscape is more splintered than harmonized. If you are a start-up, get some practical advice as you consider your financing options.

Calgary – 07:00 MST

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By Richard Stobbe

While our last post dealt with the creation of photographs and other works of authorship by primates, robots and divine beings, this story is a little more grounded in facts that you might see in the average work day.

When an employee takes a photograph, who owns copyright in the image?

In Mejia v. LaSalle College International Vancouver Inc., 2014 BCSC 1559, a BC court reviewed this question in the context of an employment-related complaint (there were other issues including wrongful dismissal and defamation which we won’t go into). Here, an instructor at LaSalle College in Vancouver took a photograph, and later alleged that the college infringed his copyright in the picture after he discovered that it was being used on LaSalle’s Facebook page.

The main issue was whether the picture was taken in the course of employment. The instructor argued that the photograph was taken during his personal time, on his own camera. He tendered evidence from camera metadata to establish the details of the camera, time and date. He argued that s. 13(3) of the Copyright Act did not apply because he was not employed to take photos. He sought $20,000 in statutory damages. The college argued that the photo was taken of students in the classroom and was within the scope of employment, and copyright would properly belong to the college as the employer, under s. 13(3) of the Act.

The court, after reviewing all of this, decided that the instructor was not hired as a photographer. While an instructor could engage in a wide variety of activities during his employment activities, the court decided that “the taking of photographs was not an activity that was generally considered to be within the duties of the plaintiff instructor, and there was no contractual agreement that he do so.” It was, in short, not connected with the instructor’s employment. In the end, the photograph was not made in the course of employment. Therefore, under s. 13(1) of the Copyright Act, the instructor was the first owner of copyright, and the college was found to have infringed copyright by posting it to Facebook.

Calgary – 07:00 MST

By Richard Stobbe

I know this story crested a few weeks ago, but who can resist it? A famous 1998 Molson Canadian ad posed a Canadian version of the infinite monkey theorem. The cheeky ad, showing a seemingly endless array of monkeys on typewriters, sidestepped the more important question about whether the monkeys as authors would enjoy copyright protection over the works they created.

A wildlife photographer’s dispute with Wikimedia over ownership of photographs taken by primates in Indonesia has brought international attention to this pressing issue. The “Compendium of U.S. Copyright Office Practices, Third Edition” now explicitly states that photographs by monkeys are not eligible for copyright protection. Nor are elephant-paintings deserving of copyright. “Likewise,” the Compendium notes dryly, “the Office cannot register a work purportedly created by divine or supernatural beings.” Robots are also out of luck.

There is no word on whether Canada is directly addressing this question.

Calgary – 09:00 MST

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By Richard Stobbe

Two software companies wanted to integrate their software products. The relationship soured and one of the parties – McHenry – purported to terminate the Software Licensing and Development Agreement and then launched a lawsuit in the Federal Court in the US, claiming copyright infringement and breach of contract. The other party – ARAS – countered by invoking the mandatory arbitration clause in the software agreement. The US court compelled the parties to resolve their dispute through arbitration in Vancouver. After the arbitration, the arbitrator’s decision was appealed in the BC Supreme Court. In that appeal, McHenry sought a “sealing order” asking the BC court, in effect, to order confidentiality over the March 26, 2014 Arbitration Award itself. This is because ARAS, who prevailed at arbitration, circulated the arbitration award to others.

In the recent decision (McHenry Software Inc. v. ARAS 360 Incorporated, 2014 BCSC 1485 (CanLII)) the BC Supreme Court considered the law of “sealing orders” and confidentiality in the context of a dispute between two software companies.

The essence of McHenry’s complaint was that the arbitrator’s award should be treated confidentially, since it contained confidential and sensitive information about the dispute, which could harm or disadvantage McHenry in its negotiations with future software development partners.

The court reviewed the legal principles governing sealing orders. A “sealing order” is simply court-ordered confidentiality over court records or evidence. While there is a presumption in favour of public access in the Canadian justice system, there are times when it is appropriate to deny access to certain records to prevent a “serious risk to an important interest” as long as “the public interest in confidentiality outweighs the public interest in openness”. (To dig deeper on this, see: Sierra Club of Canada v. Canada (Minister of Finance), 2002 SCC 41 (CanLII), 2002 SCC 41.)

If you were hoping for a handy three-part test, you’re in luck:

1. First, the risk in question must be real and substantial, and must pose a “serious threat” to the commercial interest in question.
2. The interest must be tied to a public interest in confidentiality. The SCC said: “a private company could not argue simply that the existence of a particular contract should not be made public because to do so would cause the company to lose business, thus harming its commercial interests.” Courts must remember that a confidentiality order involves an infringement on freedom of expression, so it should not be undertaken to satisfy purely commercial interests.
3. Third, the court must consider whether there are any reasonable alternatives to a confidentiality order, or look for ways to restrict the scope of the order as much as possible in the context.

Ultimately, the BC Court was not sympathetic to McHenry’s arguments for a sealing order. If McHenry was so concerned about the confidentiality of these proceedings, the court argued, then McHenry would not have launched a lawsuit against ARAS in the US Federal Court, where there is no confidentiality. In pursuing litigation, McHenry filed numerous documents in the public record, including its Arbitration Notice, its Statement of Claim in the Arbitration and its petition in the BC Court proceedings, some of which contained potentially sensitive information.

“Moreover,” the court continued, “there is no general principle that the confidentiality of arbitration proceedings carries over to court proceedings when the arbitration is appealed. On the contrary, such court proceedings are generally public.”

This case serves as a reminder of the confidentiality issues that can arise in the conext of a dispute between software companies, both in arbitration proceedings and in the litigation context. Make sure you seek experienced counsel when handling the complex issues of confidentiality, sealing orders and licensing disputes.

Calgary – 07:00

By Richard Stobbe

You can’t get a trade-mark registration for a word that will deceive consumers. Put into legalese, section 12 of the Canadian Trade-marks Act says a trade-mark is not registrable if it is either “clearly descriptive or deceptively misdescriptive … of the character or quality of the wares or services in association with which it is used or proposed to be used…”

If a trade-mark applies the word “MILK” to a non-dairy product, can that be considered deceptively misdescriptive? This question came up in the trade-marks opposition case of Dairy Farmers of Canada v Cytosport, Inc., 2014 TMOB 148 (CanLII), in which the Dairy Farmers of Canada opposed the registration of the marks the trade-marks MONSTER MILK and MONSTER MLK for use with “Dietary and nutritional supplements for use in athletic training, namely for improving body strength and building muscle, excluding ready to drink beverages.”

The Dairy Farmers essentially argued that the average consumer would believe that the drinks sold under the brand MONSTER MILK would contain “real milk”. In a wide-ranging analysis, which covered the Food and Drug Act, to consideration of Nourishing Coconut Milk Shampoo, as well as references to “milk” in the Oxford Dictionary, the Board ultimately decided that the average consumer would not be deceived, since it would not be apparent which meaning of milk would apply in the case of the MONSTER MILK brand.

This case illustrates the importance of strong affidavit evidence in opposition proceedings: here, the applicant submitted evidence from dictionary meanings, Google search results, and shopping excursions to show common uses of the word MILK in association with other non-dairy products.

Calgary – 07:00 MST

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By Richard Stobbe

The online fine print – those terms and conditions that you agree to when you buy something online – it really does matter where those terms are placed in the checkout process. A recent US case illustrates this point. In Tompkins v. 23andMe, Inc., 2014 WL 2903752 (N.D. Cal. June 25, 2014), the court dealt with an online checkout process for DNA testing kits sold by 23andMe. When completing a purchase, customers were not presented with any mandatory click-through screen for the transaction to complete. There was a passive link at the footer of the transaction page, something the court dismissed as a “browsewrap”, which was ineffective to bind the customers. In other words, the Terms of Service were not effective at that point in the transaction.

In order to obtain test results, however, customers were obliged to register and create an account with 23andMe. In this (post-sale) registration process, a mandatory click-through screen was presented to customers, not once but twice. The court decided that this second step was valid to bind the customers who purchased the DNA testing kits.

While this shows that courts can take a position that is sympathetic to online retailers, this should not be taken as an endorsement of this contracting process. In my view, the better approach would be to push customers through a mandatory click-through screen at both stages. This is particularly so in a case like 23andMe, where the first transaction is for sale of a product (the kit) and the second step relates to a service (processing test results). The two, of course, are intertwined, but the double click-through reduces risk and plugs the holes left by the single click-through. For example, a customer may buy a kit and never create an account, or use a kit without have purchased it. As the court notes: “it is possible for a customer to buy a DNA kit, for example, as a gift for someone else, so that the purchasing customer never needs to create an account or register the kit, and thus is never asked to acknowledge the TOS.”

We can speculate on why the click-through appeared at the second account-creation step, and not the first kit-purchasing step. Sometimes, the purchasing process is modified over time due to changes in marketing or sales strategies. Perhaps the company broke a unified transaction process, which ended with account-creation, into two separate steps after market research or customer feedback. When something like this happens, it is important to repeat the legal review, to ensure compliance with e-commerce best practices.

Calgary – 07:00 MST

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By Richard Stobbe

An American photojournalist, Ms. Leuthold, was on the scene in New York City on September 11, 2001. She licensed a number of still photographs to the CBC for use in a documentary about the 9/11 attacks. The photos were included in 2 versions of the documentary, and the documentary was aired a number of times betwen 2002 and 2004. We originally wrote about this in an earlier post: Copyright Infringement & Licensing Pitfalls. The court found that the CBC had infringed copyright in the photographs in six broadcasts which were not covered by the licenses. Though Leuthold claimed damages of over $20 million, only $20,000 was awarded as damages by the court.

In Leuthold v. Canadian Broadcasting Corporation, 2014 FCA 174, the Federal Court of Appeal upheld an award of double costs against Leuthold. Early in the litigation process, the CBC had formally offered to settle for $37,500 plus costs. Ms. Leuthold did not accept the CBC’s offer and went to trial where she was awarded $20,000. Ms. Leuthold’s total recovery was substantially less that the amount of the CBC’s offer. When this happens, a plaintiff can be liable under Rule 420 for double costs, which was awarded in this case. Double costs amounted to approximately $80,000 in these circumstances, which means Ms. Leuthold is liable for about 4 times the amount of the damage award. Although Ms. Leuthold objected that such a disproportionate costs award was “punitive”, the court concluded:

“The sad fact of the matter is that litigation produces winners and losers; that is why it is such a blunt tool in the administration of justice. But justice is not served by allowing persons who have imposed costs on others by pursuing or defending a claim which lacks merit to avoid the consequences of their behaviour. Such a policy would be more likely to bring the administration of justice into disrepute than the result in this case.”

For copyright litigation and licensing advice, contact the Field Law Intellectual Property & Technology Group.

Calgary – 07:00 MST

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By Richard Stobbe

In a recent decision by the British Columbia courts (Equustek Solutions Inc. v Jack , 2014 BCSC 1063), Google has been ordered to de-index a website selling goods that were the subject of intellectual property (IP) infringement claims. While this may seem quotidian – after all, Google does comply with de-indexing requests on a regular and voluntary basis – this decision has broader implications for several reasons. This decision is the first Canadian decision to compel Google to delist a website after the so-called “right to be forgotten” case in the EU, and while that case involved personal privacy rights rather than IP rights, both cases have far-reaching implications for Google’s role in providing a practical remedy for an aggrieved party. This is a role that Google has resisted, but cannot avoid in light of its ever-expanding presence in the lives of individuals and the affairs of business.

The underlying dispute involved a trade-secret misappropriation and passing-off claim by a manufacturer against a rival company. Specifically, the plaintiff Equustek alleged that a competing product known as GW1000 was an unauthorized knock-off, built using trade secrets of the plaintiff. The plaintiff Equustek won an initial order barring sales of the offending GW1000 product and then engaged in a time-consuming process of chasing the defendant to obtain some meaningful and practical remedy. This involved repeated requests to Google to block hundreds of specific individual webpages and URLs from Google Canada search results, a game that the court described as “whac-a-mole”. Finally the plaintiff sought an order compelling Google to de-index the defendant’s sites from all Google search results worldwide. The resulting order is important for a number of reasons:

1. In order to make its order, the court had to assert jurisdiction over Google Inc. rather than the Canadian subsidiary Google Canada. In coming to this decision, the B.C. court relied in part on the EU “right to be forgotten” case. Interestingly, the court commented that the California choice-of-law clauses in Google’s various user agreements and advertising contracts did not prevent the Canadian court from asserting jurisdiction. This is due to the fact that this dispute did not arise out of any contract-related claims. Rather, the court found that it had scope to make an order (with extra-territorial reach) over Google (a non-party) under its inherent jurisdiction under the Law and Equity Act.
2. The court also commented on the fact that Google is not merely a passive site, but rather it conduct active and ongoing business with British Columbia companies and individuals.
3. The court found that blocking individual URLs was not as effective as blocking so-called “mother sites”. In effect, the court agreed that Google’s current practice of voluntarily complying with individual requests to block specific URLs does not provide an effective remedy. This will certainly be cited in future website blocking cases.
4. Regarding Google’s role, the court commented that “Google is an innocent bystander but it is unwittingly facilitating the defendants’ ongoing breaches of this Court’s orders. There is no other practical way for the defendants’ website sales to be stopped.”

After renewing the traditional criteria for assessing the merits of an injunction application, the court granted the order. Google is appealing this decision.

Calgary – 07:00 MST

By Richard Stobbe

On October 14 and 15, 2014, I will be presenting on “Drafting IT Agreements” at the Essentials of Commercial Contracts (Calgary) Conference. This conference will discuss the legal and business framework of commercial contracts, negotiations and practical drafting tips.

The session on information technology (IT) contracting will review key considerations in IT licensing and service agreements, various models for licensing software, the overlap between licenses and service agreements, service level metrics and remedies for non-compliance, the use of  Statements of Work in IT agreements, as well as related issues: privacy, vendor lock-in, third party and open source software.

For more information, contact me or click on the link above.

Calgary – 05:00 MST

By Richard Stobbe

Canada and the USA. We enjoy the world’s longest undefended border… a border that unfortunately does not screen spam.

If you are an American attorney with US clients doing business in Canada, then you should be aware of a few things, like our lack of imaginative legislative acronyms, such as the CAN-SPAM Act (from Controlling the Assault of Non-Solicited Pornography And Marketing) (…or while we’re at, who can forget the Preventing Real Online Threats to Economic Creativity and Theft of Intellectual Property (PROTECT-IP) Act, or the Enforcing and Protecting American Rights Against Sites Intent on Theft and Exploitation (E-PARASITE) Act).

Secondly, you should be aware that Canada’s incoming anti-spam law, known unimaginatively as CASL (Canada’s Anti-Spam Law) is coming into force next week, on July 1, 2014. Here are some pointers for US counsel:

• Remember, an organization’s compliance with CAN-SPAM does not necessarily mean compliance with CASL. This is because of a number of important points of departure between the two laws. Canada’s law has been described as among the strictest internationally.
• CASL broadly covers all “commercial electronic messages” and is not restricted to email, as is the case with CAN-SPAM. Thus, CASL is broad enough to capture text messages, social media messaging and other forms of electronic messages.
• CAN-SPAM permits a “negative option” approach to consent, in which toggle consent boxes can be pre-clicked and the user has the ability to opt out by “un-clicking”. CASL prohibits such an approach and requires express consent with an opt-in mechanism.
• Statutory penalties under CASL are more severe (up to $10 million for organizations, and up to $1 million for individuals), and the law also establishes a broader private right of civil action (which will come into effect in the future).
• Lastly, CASL does provide for personal liability for directors and officers.

For more information on the application of this law to American businesses, contact Field Law.

Calgary – 07:00 MST

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By Richard Stobbe

The Supreme Court puts it mildly in its opening line: “The Internet raises a host of new and challenging questions about privacy.”

One of those questions is whether an IP address can be considered personal information. An internet protocol (IP) address is the unique numeric identifier of a particular computer and, in a wider sense, can be any node or point in the internet generally. In the recent case of R. v. Spencer, 2014 SCC 43, the Supreme Court of Canada (SCC) considered whether there is a reasonable expectation of privacy in ISP subscriber information including IP address information.

In this case, police identified the IP address of a computer that someone had been using to access child pornography.  Police approached the ISP and obtained the subscriber information associated with that IP address. At this point, no warrant was issued. This led them to the accused  and a warrant was issued for a search of his residence. The accused was charged and convicted. The SCC indicated that in this case, there was a reasonable expectation of privacy in the subscriber information, including the IP address.

Since the search of the subscriber info was obtained without a warrant, the search violated the Charter. While a warrant was eventually issued for a search of the accused’s residence, that warrant could not have been obtained without the original (warrantless, unconstitutional) search of the ISP subscriber information. Since the original search was unconstitutional, it follows that the search of the residence was also unconstitutional. This all leads to the exclusion of the evidence found at the residence.

Nevertheless, the SCC said that, even in light of all of the above points, the “police conduct in this case would not tend to bring the administration of justice into disrepute.”  The court concluded, in essence, that excluding the evidence would be worse than allowing that unconstitutional search. The admission of the evidence was therefore upheld.

A few key points to note:

• Terms of Use and Privacy Policies are carefully reviewed and taken into account by the court in these cases.
• In this case Shaw was the ISP. Shaw’s Privacy Policy said that “Shaw may disclose Customer’s Personal Information to: . . . a third party or parties, where the Customer has given Shaw Consent to such disclosure or if disclosure is required by law…”  The initial warrantless search by the police was not “required by law” (in the sense that it was merely a request and police had no way to legally compel compliance). This contributed to the court’s conclusion that there was a reasonable expectation of privacy on the part of the accused.
• This contrasts with the decision by the Ontario Court of Appeal in R. v. Ward 2012 ONCA 660, where the court held that the provisions of PIPEDA were a factor which weighed against finding a reasonable expectation of privacy in subscriber information. That was another child pornography case. In that case, the ISP was Bell, whose terms said “[Bell Sympatico will] offer full co-operation with law enforcement agencies in connection with any investigation arising from a breach of this [Acceptable Use Policy].” There was no reference to disclosures “required” by law.  In that case, the accused has a subjective expectation of privacy, but that expectation was not objectively reasonable in light of his criminal activities.
• Consider reviewing your privacy policies and your organization’s ability to disclose subscriber information in light of these decisions.

By Richard Stobbe

If the term “CASL compliance” is giving you a nervous twitch, you’re not alone. Many small and medium-sized businesses in Canada are scrambling to prepare for Canada’s Anti-Spam Law (CASL), whose official title says it all – especially the part about “efficiency and adaptability” (take a deep breath before you read “An Act to promote the efficiency and adaptability of the Canadian economy by regulating certain activities that discourage reliance on electronic means of carrying out commercial activities, and to amend the Canadian Radio-television and Telecommunications Commission Act, the Competition Act, the Personal Information Protection and Electronic Documents Act and the Telecommunications Act“).

Two weeks from today, on July 1st, the first stage of the new law will come into force. The implied consent provisions in Section 66 create a transitional period.

For a period of three years after July 1, 2014, consent is implied for all “commercial electronic messages” (CEMs) if the sender and the recipient have a pre‐existing business or non-business relationship and that relationship previously included the exchange of CEMs.  Consent can be withdrawn by the recipient at any time during that three‐year period. Note that “commercial electronic messages”, “existing business relationship” and “existing non-business relationship” all have special definitions in the legislation.

While this transitional period only lasts for 36 months, it allows a sender of CEMs to rely on prior relationships that reach back in time. The regular implied consent provisions only permit a sender to rely on a two-year window – in other words, implied consent depends on an existing relationship during the two-year period before the CEM is sent (or only 6-months in some cases).

In recent information sessions, the CRTC has indicated that the Section 66 transition provisions do not impose those two-year or 6-month rules: “So what Section 66 does is during that transition period of three years, the definitions of existing business relationship and existing non-business relationship are not subject to the limitation period, which are six months and two years that would otherwise be applicable. So in theory, if you meet the definition of existing business relationship or existing non-business relationship and there’s the communication of CEMs between the individuals, you could go back 25 years in theory.” [Link to transcript.]

Don’t think the transitional period lets you off the hook. Every organization should be preparing for CASL for a July 1st start date. If you need assistance on reviewing the scope of your obligations, how the law applies, and how the transitional provisions might apply to your organization, contact us.

Calgary – 07:00 MST

By Richard Stobbe

Okay, so maybe it’s neither as romantic as Gershwin’s “An American in Paris“, nor as historical as Mark Twain’s “A Connecticut Yankee in King Arthur’s Court,” but many US lawyers do find themselves facing legal issues in Canada. US practitioners who deal with Canadian legal matters must take note of a few common pitfalls. In this series, we review some of the most common misconceptions and flag a number of important tips in the area of cross-border intellectual property law:

• Copyright Law – both countries are party to the Berne Convention for the Protection of Literary and Artistic Works and both copyright regimes cover the same basic categories of protection. In Canada, the Copyright Act protects original literary works, dramatic works (including choreographic works), musical and artistic works, computer programs, performances, sound recordings and communication signals. The scope of protection the USA is roughly the same.

.       A few tips on copyright:

• The term of protection in Canada the life of the author plus 50 years. In the US, the term of copyright is based on the author’s life plus 70 years. There are variations that will impact the duration of protection, but that important distinction is worth noting.
• If a work is protected by copyright in Canada, it can benefit from protection in the US under the Berne Convention, and vice versa.
• Under the American DMCA, a notice-and-takedown system was implemented for the treatment of copyright infringement claims online. In recent amendments to the Canadian Copyright Act, a so-called notice-and-notice regime has been created. While these provisions are not in force, they are expected to be in force in January 2015.  Once implemented, a notice of online infringement would trigger an obligation to pass along notice of infringement, but not necessarily an obligation to takedown the allegedly infringing material. Under this system, there are penalties for failure to forward the notice of infringement.
• The concept of “works made for hire” does not appear in the Canadian Copyright Act. Employers in Canada, or US employers of Canadian employees, can rely on a provision (Section 13(3)) which stipulates ownership of works that are created in the course of employment are owned by the employer.
• Joint ownership of copyright is handled differently in Canada and the US – let’s use software as an example. In Canada, generally speaking, a co-owner of copyright cannot license the rights to the software without the consent of the other co-owner, whereas in the US, a co-owner can license without consent.

For advice on cross-border intellectual property issues, contact Canadian counsel at Field Law.

Calgary – 07:00 MST

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By Richard Stobbe

Does your organization have “intellectual assets”? Regardless of what your organization does – whether it is a service-based business, or in the manufacturing sector, whether it is driven by cloud-based software or bricks-and-mortar locations, whether it is a multinational or a local start-up – chances are good that you can start to list the intellectual capital that has value in your organization. What do we mean by “intellectual assets”? There are many definitions, but one broad definition is simply “knowledge that has value in your organization”, and it can encompass:

1. Human know-how and intellectual capital – the unwritten expertise, experience, concepts and technical knowledge that employees have in their heads; and
2. Intellectual assets, including registered and unregistered intellectual property (IP) – this includes the codified or “captured” knowledge that adds to your organization’s value, such as trade secrets that might be captured in internal processes, manuals, design specifications, software source-code and other unpublished know-how, as well as the value represented by:
   • Patents (including Canadian and international applications and issued patents);
   • Copyright-protected works (including published and unpublished written works);
   • Trademarks (including logo designs, registered and common law marks);
   • Industrial designs, and other forms of registered intellectual property.

Some organizations are better at managing and obtaining value from their intellectual assets. What are the best practices for the management of these assets? In this series, we’ll review current best practices for management of intellectual assets as a competitive tool. Experts in the area of intellectual asset management have identified several layers or tiers of sophistication in the handling of such assets. Therefore, while a start-up inventor may certainly learn from the approach of Apple, Inc., each organization must look at best practices from the perspective of their organization, their resources and their stage of development. As a starting point, the following three steps lay the groundwork for future steps of IP management and value creation:

1: Conduct an Audit

The first step in any organization that is new to intellectual asset management is to conduct a review of existing assets. This is also a great exercise for organizations whose IP portfolio may be evolving – perhaps through recent growth, acquisitions, internal research and development (R&D) or divestiture. This step seeks answers to issues such as:

• What does the organization own, and what is merely licensed? What are the gaps in intellectual assets?
• Review unpatented inventions, patent applications, issued patents.
• Review software developed by or for the organization.
• Identify trade-secrets, focusing on non-public information that adds specific value to the organization, including intangibles such as customer lists, processes, early-stage prototypes, and strategic plans.
• What non-disclosure agreements or confidentiality obligations has the organization agreed to?
• Is the organization party to any IP licenses (in- or out-licenses)? Are there any co-development or joint venture agreements that involve IP creation?
• Identify the organization’s trademarks, logos and brands. Note registered and unregistered marks in use by the organization in different jurisdictions.

This audit or portfolio review process may start as a simple list, and may evolve into a more detailed table or spreadsheet. It may involve more sophisticated tracking systems which are maintained with IP counsel, to track patent maintenance fees and deadlines.

2: IP Education

An organization must also educate its personnel on the strategic importance of intellectual property within the organization.

This is a process of raising awareness and providing education about the different types of intellectual property and the organization’s policies related to these assets. This must involve the leadership of the organization and it may even trickle down to “front line” personnel. It should involve the integration of intellectual property strategy into overall business strategy, or if that IP strategy is already in place, it may involve internal education sessions and policies, such as confidentiality and invention disclosure policies. In some cases, it involves a process of educating professional advisors about the strategic role of IP in the organization.

IP counsel can play an important role to provide education, and to be a resource for developing internal policies, reviewing agreements, and drafting contractual provisions.

3: Implementing “Make versus Buy” Decisions

The next step can certainly happen in tandem with the other steps of IP portfolio analysis, and IP education. Many organizations are continuously innovating in their industry as they seek to gain and maintain their competitive advantage. However, not all organizations have the capacity to innovate internally. A medium-sized company may not have the R&D strength of its competitor, but it may still use strategic decisions to leverage the value of intellectual assets and gain an edge over competitors. Ultimately, the decisions on how to innovate involve a “make versus buy” decision. Through a screening process, an organization can weigh the various factors that influence its decision to pursue an innovation opportunity. At this stage, the organization is looking at factors such as:

• Are ideas and inventions emanating from within the organization? This is certainly enhanced when the IP education and awareness is part of the organization’s culture.
• What is the value of these ideas and inventions, as against the cost of developing the idea to a commercial product?
• Is this a core or non-core function for this organization?
• Is it more cost-effective for the organization to internally develop this as a product or innovation, to pay someone else to develop it, or to license it in from another company?
• If it is internally developed, is IP protection available, and what type of protection will it be? Is it eligible for patent protection?

Here is one example of how these different pieces may fit together:

Let’s say an organization has reviewed and listed its trade secrets during an intellectual asset audit. In the course of this process, it learned that trade secrets formed an important part of the organization’s competitive advantage, but there was a lack of any internal confidentiality policies, nor was there any invention or idea disclosure process. With the help of counsel, it developed an internal confidentiality policy, as well as a modest reward system for idea disclosures. The CEO directed IP counsel to provide a lunch-and-learn session for employees, including those in the sales team. Employees were educated about their role in the organization’s value-chain, and the importance of maintaining secrecy over confidential information and innovative ideas. After the education sessions, someone in sales came forward to describe an idea for product improvement based on recent feedback from customers. This idea was filtered through the company’s “make versus buy” decision process, leading to a product improvement which was determined to be patentable. This patentable improvement blocked competitors from adopting this product change. The company’s confidentiality policy emphasized the importance of maintaining secrecy over the improvement until the patent application was filed and the product improvement was released for sale.

To discuss the importance of intellectual assets within your organization, contact Richard Stobbe in our Intellectual Property and Technology Group.

Calgary – 07:00 MST

Field Law sponsored the Canadian Lawyer magazine’s in-house general counsel roundtable, moderated by Jennifer Brown: see this link. The participants – from the University of Calgary and technology-driven companies Pason Systems Corp. and Trican Well Services – discuss how risk management is addressed in their organizations.

Calgary – 07:00 MST

By Richard Stobbe

A recent survey of the top patent producing corporations in Canada (see this link, courtesy of our colleagues at IPPractice.ca) shows a few interesting trends:

• Despite its fall from grace over the past 4 or 5 years, BlackBerry remains among the top innovators in the country.
• The top five patentees in Canada all make a significant investment in departments that focus on purely on research and development (R&D):
• BlackBerry (419 patents),
• Qualcomm (329 patents),
• Schlumberger (183 patents),
• Procter & Gamble (164 patents),
• LG Electronics (147 patents)
• Innovators in the oil-and-gas/energy sector are not leading the pack, but are well-represented in the top tier: Schlumberger (183 patents), Baker Hughes (121 patents) and Halliburton Energy Services (105 patents), all of whom provide services to companies in the extraction / production sector.
• Innovation in mature consumer sectors – led by BlackBerry, Qualcomm, Procter & Gamble, LG Electronics, General Electric, Microsoft and Honda – is typically incremental in nature. This is a sector where protection for incremental improvements (as opposed to quantum leaps forward) can play an important role in maintaining a competitive edge.

Review your patent strategy with the Field Law Intellectual Property and Technology Group.

Calgary – 07:00 MT

By Richard Stobbe

A recent EU decision by the Court of Justice of the European Union (CJEU) has generated a lot of press since it involves a high profile company – Google – and a tantalizing concept of a “right to be forgotten”. The story stems from the efforts by a Spanish man to compel Google to remove search results that referred to the man’s prior financial history – in fact the references were to bankruptcy-related notices published by a Spanish newspaper years earlier. The online newspaper publication remains in place, but the CJEU’s decision touches on the indexing and display of the results in a Google search, which refer back to that online newspaper publication.

So what does this mean for Canada?

There has, as far as I am aware, no equivalent privacy-related decision relating to removal of search results by search engines in Canada. However, there are analogous rights in Canada for individuals to compel an organization to correct or delete personal information. And that would apply to the organization that has “collected, used or disclosed” the personal information.

In Canada, PIPEDA does contemplate the correction of personal information, the withdrawal of consent, and the deletion of personal information that has been collected. Those provisions still require the individual to make a request or a complaint in order to get a remedy.

In that sense the EU organization (in the EU context) in Google’s position then has to decide on the merits of that request or complaint, so the “right” may be subject to the interpretation of these subjective questions by a Google employee, considering all the different criteria that the EU decision has listed.

In Canada (in the PIPEDA context), the organization does not have to make the same kinds of assessments or value judgements – the question is simply whether the individual is withdrawing consent, or correcting information.

In the EU, the organization has to decide if “in all the circumstances” the info appears to be “inadequate, irrelevant or no longer relevant, or excessive” which requires the exercise of a lot more judgement. And more scope for disagreement.

How this is handled by Google, and how it may influence Canadian decisions on requests for removal of personal information, remains to be seen.

Calgary – 07:00 MST