Sookman tclg year_in_review_2011

McCarthy Tétrault Advance™
Building Capabilities for Growth

Toronto Computer Lawyers Group
The Year in Review: Developments in
Computer, Internet and
E-Commerce Law (2010-2011)

Barry B. Sookman
bsookman@mccarthy.ca
416-601-7949 June 15, 2011
McCarthy Tétrault LLP / mccarthy.ca 10398714
1

Privacy

McCarthy Tétrault LLP / mccarthy.ca
2

Citi Cards Canada Inc. v. Pleasance, 2011 ONCA 3

¬ “Personal information” is defined in s. 2(1) of the Act. It
“means information about an identifiable individual.”
¬ “This is a very elastic definition, and should be interpreted in
that fashion to give effect to the purpose of the Act. There
can be no doubt that financial information pertaining to a
debtor, collected and used by a financial institution in the
course of a mortgage transaction – including the particulars
of, and the balance owing on the debtor’s mortgage – is
“information about an identifiable individual.” Current
mortgage balances are not information that is publicly
available.”

3

Leon’s Furniture Limited v. Alberta (Information and
Privacy Commissioner), 2011 ABCA 94
¬ The “identifiable individual” term has two components. Firstly, the individual
must be “identifiable”. Generic and statistical information is thereby excluded,
and the personal information (here the relevant number) must have some
precise connection to one individual. Secondly, the information must relate to
an individual. Information that relates to objects or property is, on the face of
the definition, not included. The key to the definition is the word “identifiable”.
¬ “Further, to be “personal” in any reasonable sense the information must be
directly related to the individual; the definition does not cover indirect or
collateral information. Information that relates to an object or property does not
become information “about” an individual, just because some individual may
own or use that property.”
¬ Driver’s licence numbers are PI but licence plate numbers are not.
¬ “The respondent [Privacy Commissioner] is not empowered to direct an
organization to change the way it does business, just because the respondent
thinks he has identified a better way. So long as the business is being
conducted reasonably, it does not matter that there might also be other
reasonable ways of conducting the business.”

4

State Farm Mutual Automobile Insurance Company
v. Privacy Commissioner of Canada, 2010 FC 736

¬ Is the collection of evidence by an insurer acting for one of its insured in the
defence of a third party tort action a “commercial activity” within the meaning
of PIPEDA?
¬ “I conclude that, on a proper construction of PIPEDA, if the primary activity or
conduct at hand, in this case the collection of evidence on a plaintiff by an
individual defendant in order to mount a defence to a civil tort action, is not a
commercial activity contemplated by PIPEDA, then that activity or conduct
remains exempt from PIPEDA even if third parties are retained by an
individual to carry out that activity or conduct on his or her behalf. The primary
characterization of the activity or conduct in issue is thus the dominant factor
in assessing the commercial character of that activity or conduct under
PIPEDA, not the incidental relationship between the one who seeks to carry
out the activity or conduct and third parties. In this case, the insurer-
insured and attorney-client relationships are simply incidental to the primary
non-commercial activity or conduct at issue, namely the collection of evidence
by the defendant Ms. Vetter in order to defend herself in the civil tort action
brought against her by Mr. Gaudet.”

5

Nammo v. TransUnion of Canada Inc., 2010 FC 1284

¬ “TransUnion’s suggestion that a breach may be found only if an
organization’s accuracy practices fall below industry standards is
also untenable.” “There is no defence of practical necessity set out
in PIPEDA.”
¬ “PIPEDA does not require that personal information be completely
accurate, complete, and up-to-date; rather, it requires that personal
information be as accurate, complete, and up-to-date “as is
necessary for the purposes for which it is to be used.” Thus, it is
the use that the information is put to that dictates the degree of
accuracy, completeness, and currency the information must have...
Informed, reliable and objective decisions require that the
information on which the decisions are based meets a high
standard of accuracy, completeness and currency.”

6

Damage Awards Under PIPEDA

¬ Nammo v. TransUnion of Canada Inc., 2010 FC 1284
“In Vancouver (City) v Ward, 2010 SCC 27, the Supreme Court...
addressed the different goals of awarding damages for
a Charter breach; these include compensation, for which loss is
relevant, but also vindication and deterrence, for which loss is not a
determinative factor.”
¬ “In my view, the same reasoning applies to a breach of PIPEDA, which
is quasi-constitutional legislation.... Applying the Supreme Court’s
reasoning in Ward to PIPEDA applications before this Court indicates
that both the question of whether damages should be awarded and the
question of the quantum of damages should be answered with regard
to whether awarding damages would further the general objects of
PIPEDA and uphold the values it embodies. Furthermore, deterring
future breaches and the seriousness or egregiousness of the breach
would be factors to consider.”

8

9

Can claims be brought for losses arising from
privacy breaches?
¬ In re Hannaford Bros. Co. Customer Data Security Breach Litigation 4 A.3d 492
(Sup, Ct. Me. 2010) (Data breach where customer data was stolen. No claim for
time spent to avoid foreseeable harm w/o physical harm, economic loss, or identity
theft.) Also, Paul v Providence Health System 240 P.3d 1110 (2010)
¬ Doe 1 v. AOL LLC 719 F.Supp.2d 1102 (N.D.Cal. 2010) (Data breach. “the Court is
persuaded that Plaintiffs' allegations are sufficient to demonstrate standing for
purposes of seeking injunctive relief. The Complaint alleges that AOL engages in a
practice and policy of storing search queries containing confidential information, and
that it has taken no steps to ensure that such information is not disclosed again in
the future.”)
¬ LaCourt v. Specific Media, Inc. 2011 WL 1661532 (C.D.Cal. Apr. 28, 2011)
(Collecting browsing histories. “Ultimately, the Court probably would decline to say
that it is categorically impossible for Plaintiffs to allege some property interest that
was compromised by Defendant's alleged practices.”
¬ Claridge v. RockYou, Inc. 2011 WL 1361588 (N.D.cal. Apr. 11, 2011) (Data
breach. “although the court has doubts about plaintiff's ultimate ability to prove his
damages theory in this case, the court finds plaintiff's allegations of harm sufficient
at this stage to allege a generalized injury in fact.”)

10

Jones v. Tsige, 2011 ONSC 1475

¬ The central issue in this case is whether there is a tort for invasion of
privacy.
¬ “While it is certainly the case that in Euteneier, the plaintiff was not
suing on the basis of an intentional tort, the extent to which privacy
rights are enforceable at law was squarely before the court for
purposes of determining the content of the duty of care owed by the
police to the plaintiff while in custody. In my view, the inescapable
conclusion, put quite plainly by the Court of Appeal in paragraph 63
of that decision, is that 'there is no “free standing' right to
...privacy...at common law.””
¬ “I would also note that this is not an area of law that requires “judge-
made” rights and obligations. Statutory schemes that govern
privacy issues are, for the most part, carefully nuanced and
designed to balance practical concerns and needs in an industry-
specific fashion.”

11

CTB v. News Group Newspapers Ltd & Anor [2011]
EWHC 1326 (QB)
¬ “Mr Spearman argues ...that in effect privacy injunctions (and no doubt other forms
of injunction also) have ceased to serve any useful purpose in the age of the
Internet. Not only can information be put out on various networks from within this
jurisdiction, but it can obviously be done also by anyone who wishes in other
jurisdictions.”
¬ ”Should the court buckle every time one of its orders meets widespread
disobedience or defiance?”
¬ ”the law nowadays is required to protect information in respect of which there is
a reasonable expectation of privacy...” “It is fairly obvious that wall-to-wall
excoriation in national newspapers, whether tabloid or "broadsheet", is likely to be
significantly more intrusive and distressing for those concerned than the availability
of information on the Internet or in foreign journals to those, however many, who
take the trouble to look it up. Moreover, with each exposure of personal information
or allegations, whether by way of visual images or verbally, there is a new intrusion
and occasion for distress or embarrassment. Mr Tomlinson argues accordingly that
"the dam has not burst". For so long as the court is in a position to prevent some of
that intrusion and distress, depending upon the individual circumstances, it may be
appropriate to maintain that degree of protection. The analogy with King Canute to
some extent, therefore, breaks down.”

12

City of Ontario, Cal. v. Quon, 130 S. Ct. 2619
Do employees have reasonable expectations of privacy in work owned
devices?
¬ “Rapid changes in the dynamics of communication and information
transmission are evident not just in the technology itself but in what
society accepts as proper behavior. As one amici brief notes, many
employers expect or at least tolerate personal use of such equipment by
employees because it often increases worker efficiency.”
¬ ”Cell phone and text message communications are so pervasive that
some persons may consider them to be essential means or necessary
instruments for self-expression, even self-identification. That might
strengthen the case for an expectation of privacy... And employer
policies concerning communications will of course shape the reasonable
expectations of their employees, especially to the extent that such
policies are clearly communicated.”
¬ “A broad holding concerning employees' privacy expectations vis-à-vis
employer-provided technological equipment might have implications for
future cases that cannot be predicted.”

13

R. v. Cole, 2011 ONCA 218

“I conclude that the appellant had a reasonable
expectation of privacy from state intrusion in the
personal use of his work computer and in the
contents of his personal files on its hard drive.
However, his expectation of privacy was modified. He
had no expectation of privacy with respect to access
to his hard drive by his employer’s technician for the
limited purpose of maintaining the technical integrity
of the school’s information network and the laptop.”

14

Sparks v. Dubé, 2011 NBQB 40

¬ Court made a preservation order and injunction compelling
Erica Sparks: 1) to preserve the entire contents of her personal web
page(s) on Facebook, and 2) to participate in making copies.
¬ Plaintiff’s lawyer was ordered to contact the plaintiff and, without
disclosing the nature of the subject matter schedule a meeting with
her at a location convenient to access and download data from the
Internet and reduce it to usable form.
¬ Upon meeting with the plaintiff the solicitor had to apprise her of the
terms and conditions of the order.
¬ Immediately upon disclosure of the terms and conditions of the
order the plaintiff, in the presence of the solicitor, was required to
create permanent tangible records of her web page(s) on Facebook.
¬ Order made ex parte!

20

Bill C-28 Fighting Internet and Wireless Spam Act
¬ FISA will impede start-up businesses from launching in Canada.
¬ FISA will impede Canadian businesses from developing new marketing
models over the Internet.
¬ FISA will deter suppliers of service providers, including outsourcing and cloud
service providers, from operating with or maintaining facilities in Canada.
¬ FISA will deter foreign businesses from offering their products to Canadians
via the Internet, mobile and other communications networks.
¬ FISA will impose costs and restrictions on Canadian businesses that their
competitors outside Canada will not have to bear.
¬ FISA contains very strong incentives for Canadian businesses to confess
wrong-doing, even in cases of questionable or trivial conduct, thereby
tarnishing the reputation of legitimate businesses in circumstances where the
offending conduct is not significant.
¬ FISA will chill legitimate commercial speech and thereby undermine
fundamental values protected by the Charter of Rights and Freedoms. See
Rethinking FISA, http://www.barrysookman.com/2011/05/25/rethinking-fisa/

22

New UK Cookie Regulations
¬ Privacy and Electronic Communications Regulations put into place on May 26, 2011 to
implement EU “Cookie Directive”.
¬ 6 (1) Subject to paragraph (4), a person shall not store or gain access to information
stored, in the terminal equipment of a subscriber or user unless the requirements of
paragraph (2) are met.
¬ (2) The requirements are that the subscriber or user of that terminal equipment (a) is
provided with clear and comprehensive information about the purposes of the storage of, or
access to, that information; and (b) has given his or her consent.
¬ (3) Where an electronic communications network is used by the same person to store or
access information in the terminal equipment of a subscriber or user on more than one
occasion, it is sufficient for the purposes of this regulation that the requirements of
paragraph (2) are met in respect of the initial use.
¬ “(3A) For the purposes of paragraph (2), consent may be signified by a subscriber who
amends or sets controls on the internet browser which the subscriber uses or by using
another application or programme to signify consent.
¬ (4) Paragraph (1) shall not apply to the technical storage of, or access to, information (a)
for the sole purpose of carrying out the transmission of a communication over an
electronic communications network; or (b) where such storage or access is strictly
necessary for the provision of an information society service requested by the subscriber
or user.

25

New UK Cookie Regulations

¬ ICO Guidelines @ http://ow.ly/5gJnT
¬ Organizations have 12 months to phase in the new system, but are
expected to take steps to comply within this period.
¬ “At present, most browser settings are not sophisticated enough to allow
you to assume that the user has given their consent to allow your website
to set a cookie. Also, not everyone who visits your site will do so using a
browser. They may, for example, have used an application on their mobile
device. So, for now we are advising organisations which use cookies or
other means of storing information on a user’s equipment that they have to
gain consent some other way.“
¬ Standards may be different in other jurisdictions where company has an
“establishment”.
¬ Third-party cookies create special issues – ICO requires that users be
made aware of what is being collected and by whom.

26

Developments in India

¬ New privacy regs issued in April 2011 and prescribed how PI may be collected
and used by virtually all organizations in India
¬ Regs appear to apply to info of both Indian residents and foreign nationals
¬ This means that transaction or sales calls must conform to Indian standards
¬ Appears to apply to controllers, processors and intermediaries touching PI
¬ Sensitive PI involves heightened obligations, including prior consent by letter,
fax, or e-mail
¬ No exceptions on basis of necessity
¬ Right to withdraw consent
¬ Officer must be nominated to deal with grievances
¬ Security control measures must be documented and may be audited
¬ Subjects have right to review and correct data
¬ Failure to comply can result in jail term of up to 3 years or fine of approx. $4,500

27

Contracts and Electronic
Agreements

28

Seidel v. TELUS Communications Inc., 2011 SCC 15

¬ Issue: whether British Columbia Business Practices and Consumer
Protection Act (BPCPA) renders arbitration clause void.
¬ The choice to restrict or not restrict arbitration clauses in consumer
contracts is a matter for the legislature.
¬ Absent legislative intervention, the courts will generally give effect to the
terms of a commercial contract freely entered into, even a contract of
adhesion, including an arbitration clause.
¬ Section 172 is clearly designed to encourage private enforcement in
the public interest. It was open to the legislature to prefer the vindication
and denunciation available through a well-publicized court action to promote
adherence to consumer standards.
¬ The legislature understood that the policy objectives of s. 172, would not be
well served by a series of isolated low-profile, private and confidential
arbitrations.
¬ All other causes of action including breach of Trade Practices Act and
common law claims subject to arbitration clause.
29

AT&T Mobility LLC v. Conception, 2011 WL 1561956
(U.S. Sup. Ct. 2011)

¬ Issue: whether AT&T’s consumer contracts requiring
arbitration and precluding class arbitration were enforceable
under the US the FAA.
¬ Court reversed 9th Circuit which held such clauses
unconscionable, overruling California’s Discover Bank rule.
¬ “The overarching purpose of the FAA...is to ensure the
enforcement of arbitration agreements according to their terms
so as to facilitate streamlined proceedings. Requiring the
availability of classwide arbitration interferes with fundamental
attributes of arbitration and thus creates a scheme inconsistent
with the FAA.”

30

Evans v. Linden Research, Inc., 2011 WL 339212
(E.D.Pa. 2011)
¬ Validity of forum selection and arbitration clauses.
¬ “[F]or any claim related to this Agreement or our Service, excluding claims for
injunctive or other equitable relief, where the total amount sought is less than
ten thousand U.S. Dollars ($10,000 USD), either we or you may elect at any
point in or during a dispute or proceeding to resolve the claim through binding
nonappearance-based arbitration.... [T]he arbitration shall be conducted at the
option of the party seeking relief, by telephone, online or based solely on
written submissions.... [T]he arbitration shall not involve any personal
appearance by the parties or witnesses unless otherwise mutually agreed by
the parties ... [A]ny judgment on the award rendered by the arbitrator may be
entered in any court of competent jurisdiction.”
¬ Clause valid because:
¬ Either party had option to elect arbitration for claims under $10k.
¬ There was no requirement to appear in the selected venue as claims could
be adjudicated by phone, on-line, or by written submission.
¬ The arbitrator was not a preselected mandatory arbitrator.

31

St-Arnaud v. Facebook Inc., 2011 QCCS 1506
¬ With respect to paragraph 3 of article 3148 C.C.Q., the grounds that a
damage was suffered in Quebec would give jurisdiction to the Superior
Court of Quebec even though Facebook has no link to Quebec, other than
the fact that the website is accessible in Quebec.
¬ “You will resolve any claim, cause of action or dispute ("claim") you have
with us arising out of or relating to this Statement or Facebook exclusively
in a state or federal court located in Santa Clara County.”
¬ “It is obvious that all Users agreed to be continually bound by Facebook's
Terms of Use. St-Arnaud could only gain initial access to the website by
clicking on an icon labelled "Sign Up" where immediately below it was
clearly written. By clicking Sign Up, Users indicate that they have
read and agreed to the Terms of Use and Privacy Policy... Once St-
Arnaud joined the website, every time he wanted to log into it, he would
need to either remain logged in or access the website login page, which
always includes a link to the Terms. Moreover, every time St-Arnaud would
access the website, he would find a link to the Terms at the bottom of every
page available onFacebook, including his own personal page....The
Jurisdiction Clause is binding upon St-Arnaud and the Members of the
Group.”

32

Grosvenor v. Qwest Communications Intern., Inc.,
2010 WL 3906253 (D. Colo. 2010)
¬ “The Qwest Subscriber Agreement and the Arbitration Clause do
not appear on the same scroll down box or page as the “I Accept”
and the “I Do Not Accept” buttons...the Subscriber Agreement is
referenced by the Legal Agreements page but it is not expressly
incorporated into the Clickwrap Agreement”.
¬ “As presented, the Clickwrap Agreement does not clearly
incorporate the Subscriber Agreement by reference and to reach
the arbitration clause requires the user to leave the installation
program, log onto the Internet (if possible), navigate to the proper
page, and read the Subscriber Agreement, then return to the
installation program's scroll down window to read the remaining
ten pages of the High-Speed Internet Modem Installation Legal
Agreement before choosing whether to agree to the terms... This
creates an ambiguity regarding recourse in the event of a dispute.
These circumstances demonstrate a genuine issue of fact.”

33

Roling v. E*Trade Securities, LLC, 756 F. Supp. 2d
1179 (N.D. Cal. 2010)

¬ Is a term in an online brokerage agreement that permits
E*TRADE to modify its fee structure at any time by posting
a modified structure on its Web site and requires customers
to check E*Trade's website for modifications enforceable?
¬ “In sum, E*Trade is unable to cite to any case, whether
under New York law or California law, that undercuts
plaintiffs' allegation that a contractual provision that allows
a party to unilaterally change the terms of the contract
without notice is unenforceable.”

35

Patco Const. Co., Inc. v. People’s United Bank,
2011 WL 2174507 (D.Me. May 27, 2011)

“In addition, by virtue of the posting online of the Modified eBanking
Agreement, Patco effectively agreed to monitor its commercial accounts
daily. While Patco protests that it did not actually ever see the Modified
eBanking Agreement and thus was never properly notified of its existence
or bound by it... the Bank reserved the right, in the Original eBanking
Agreement, to modify the terms and conditions of that agreement at any
time effective upon publication...There is no dispute that Patco reviewed
and agreed to the terms of the Original eBanking Agreement....The online
publication of the Modified eBanking Agreement hence was binding
upon Patco. See, e.g., Harold H. Huggins Realty, Inc. v. FNC, Inc., 575
F.Supp. 2d 696, 708 (D.Md. 2008) (unilateral modification of Internet-based
service contract held effective when prior agreements permitted
modification at any time and stated that modifications would be effective
after they were posted for 30 days).”

36

Is violation of website terms or computer use policy
a criminal or civil offense?

¬ Computer Fraud and Abuse Act (CFAA) and States laws e.g. California
Computer Crime Law, Cal. Penal Code §502.
¬ Accessing a protected computer (website) “knowingly” without
authorization, or exceeding authorized access to a protected computer,
involves a risk of violating a number of federal and state statutes creating
penal sanctions and private causes of action.
¬ U.S. v. Nosal 2011 WL 1585600 (9th. Cir. Apr 28, 2011) (“under the CFAA,
an employee accesses a computer in excess of his or her authorization
when that access violates the employer's access restrictions, which may
include restrictions on the employee's use of the computer or of the
information contained in that computer.”) Also,United Stats v. Rodriguez,
628 F. 3d 1258, (11th Cir. 2010)
¬ Facebook, Inc. v. Power Ventures, Inc. 2010 WL 3291750 (N.D.cal.2010)
(Requires something more e.g. circumvention of technical or code based
barriers.)

37

Distinct Fortune Ltd. v. Hyndland Investment Co. Ltd.
[2010] HKEC 2013

¬ Does SMS message satisfy HK Conveyancing and Properties
Ordinance.
¬ The plaintiff submitted that the CPO should be given an updated
construction by making allowances for social and technological changes;
that SMS was in a visible form and was a personal way of
communication by electronic means; that the principal function of a
“signature” is to demonstrate an authenticating intention of the signor
and the sending of an SMS should constitute the signing of it by the
sender.
¬ ”On the question of signature, I think the SMS is not a signed
document... I agree with leading counsel of the defendant that there is
not even the expression of “(sd.)”. If the clicking of the send button
would amount to the signing of the SMS, then all SMS and emails are
signed documents. This cannot be right.”

41

Contract and License Issues

43

De Beers UK Ltd. v. Atos Origin It Services UK Ltd.
[2010] EWHC 3276 (16 December 2010)

¬ “In my judgment, the demands made by Atos, particularly in the e-mail of
2 June 2008, did not reflect its contractual entitlement and, in putting
them forward, it was not undertaking to continue to perform the Contract.
For a start, what Atos was willing to do was "to complete the project on a
time and materials basis at our own internal standard rates". That is an
expression of an intention to complete the work on different terms, not
upon the terms originally agreed. Second, this offer was itself subject,
amongst other things, to DB's agreement to waive any claim that it may
have against Atos in relation to Atos's delivery to date. That also was
something upon which Atos had no right to insist.
¬ The fact that Atos repeatedly asserted its willingness and wish to
complete the project is neither here nor there. There is a very significant
difference between being willing to complete a project, and being willing
to fulfil a contract. Atos may have been genuinely prepared to do the
former, on its own terms, but that was itself inconsistent with a
willingness to do the latter.”

44

Baidu, Inc. v. Register.com, Inc., 2010 WL
2900313 (S.D.N.Y.2010)
¬ Will limitation of liability clauses be effective to exclude damages resulting
from cyber-attacks?
¬ “New York courts will decline to enforce a contractual limitation or waiver of
liability clause when there is wilful or grossly negligent or recklessly indifferent
conduct.”
¬ Baidu alleged sufficient facts to give rise to a plausible claim of gross
negligence or recklessness:
¬ Register failed to follow its own security protocols and essentially handed
over control of Baidu's account to an unauthorized Intruder, who engaged
in cyber vandalism.
¬ Register failed to follow its own security protocol.
¬ “The attack by the Intruder was reasonably foreseeable—it was precisely
because these cyber attacks are foreseeable that the security measures were
adopted... Baidu... did not waive its claims for gross negligence or
recklessness.”
48

Patents and Trade-marks

50

Amazon.com, Inc. v. Attonrey General of Canada,
2010 FC 1011

¬ Commissioner had ignored “fundamental differences between the foreign
and the domestic regimes” as they pertained to patents and ignored
“Canadian legal principles altogether”.
¬ Commissioner has no discretion to deviate from the Canadian patent law
and its interpretation by the Courts.
¬ The Commissioner erred in adopting a policy role inconsistent with
established Canadian legal principles.
¬ The Commissioner’s reasons for excluding business method patents can
no longer be a barrier to obtaining a patent for a business method in
Canada.
¬ There is no requirement that eligible subject matter exhibit a “technical
character” or that it support a “technical contribution”.

51

Microsoft Crop. V I4I Limited Partnership 564
U.S. __ (2011)

¬ The Court rejects Microsoft’s contention that a defendant need only
persuade the jury of a patent invalidity defense by a preponderance of
the evidence. There, tracing nearly a century of case law, the Court
stated, inter alia, that “there is a presumption of [patent] validity [that
is] not to be overthrown except by clear and cogent evidence”.
¬ New evidence supporting an invalidity defense may carry more weight
in an infringement action than evidence previously considered by the
PTO.
¬ The Court is in no position to judge the comparative force of the
parties’ policy arguments as to the wisdom of the clear and
convincing-evidence standard that Congress adopted.

52

Board of Trustees of Leland Stanford Junior University v.
Roche Molecular Systems, Inc., 563 U.S. ___(2011)

¬ ”Since 1790, the patent law has operated on the premise that rights in an
invention belong to the inventor. The question here is whether the
University and Small Business Patent Procedures Act of 1980—
commonly referred to as the Bayh–Dole Act—displaces that norm and
automatically vests title to federally funded inventions in federal
contractors. We hold that it does not.”
¬ “Stanford's reading of the phrase “invention of the contractor” to mean “all
inventions made by the contractor's employees” is plausible enough in the
abstract; it is often the case that whatever an employee produces in the
course of his employment belongs to his employer. No one would claim
that an autoworker who builds a car while working in a factory owns that
car. But, as noted, patent law has always been different: We have
rejected the idea that mere employment is sufficient to vest title to an
employee's invention in the employer. Against this background, a
contractor's invention—an “invention of the contractor”—does not
automatically include inventions made by the contractor's employees.”

54

Copyright

59

Upcoming in Supreme Court

Supreme Court granted leave to appeal:
¬ Tariff 22 – is a download a communication to the public.
¬ Tariff 22 – is an internet preview a fair dealing for
research purposes.
¬ K-12 –fair dealing in the K-12 educational sector.

63

Harmony Consulting Ltd. v. G.A. Foss Transport Ltd.,
2011 FC 340
¬ Computer programs that are dictated by the operating system or reflect common
programming practices are not original expression and will not receive copyright protection.
¬ Compilation of computer program elements can be protected by copyright.
¬ Minor fixes to a program which are not original are not protected by copyright.
¬ Program features developed using MS Access “wizard” not original or protectable.
¬ A nunc pro tunc copyright assignment does not satisfy the writing requirements for
assignments where there was no original intention to transfer the copyright.
¬ Section 13(3) of (which vests copyright in works to employers) applies to officers, directors
and employees.
¬ Use of software, without more, outside the scope of a license e.g., more seats than
licensed, is not copyright infringement.
¬ Making modifications to software which include opening a file, making changes and
resaving the file is not a reproduction.
¬ Making a back-up copy does not involve making a reproduction.
¬ How many errors can one court judgment contain?

64

Google v Copiepresse et al, Brussels Court of
Appeal (9th Chamber) May 5, 2011

The decision canvasses many issues including
¬ the choice of law to apply to evaluate the claims of infringement,
¬ whether Google’s caching of news articles is infringement,
¬ whether the transmission of article titles and short extracts violates
the reproduction and communication to the public rights,
¬ whether Google News violates the moral rights of authors,
¬ whether statutory fair dealing defenses apply,
¬ whether Google can rely on implied licenses from publishers and
authors to publish Google News, and
¬ whether intermediary safe harbors are available under Belgium law
for providers of these services. See, Is Google News legal?
http://www.barrysookman.com/2011/05/17/is-google-news-legal/

72

Kernal Records Oy v. Mosley, 2011 WL 2223422
(S.D.Fla. Jun. 7, 2011)

“We hold that publishing AJE on a website in Australia was an
act tantamount to global and simultaneous publication of the
work, bringing AJE within the definition of a “United States
work” under § 101(1)(C) and subject to § 411(a)'s registration
requirement. Gallefoss elected to publish AJE on the Internet
and the legal consequences of that decision must apply.
Plaintiff was therefore required to register AJE prior to seeking
judicial enforcement of its copyright rights.”

76

Slides available @ barrysookman.com and
mccarthy.ca

78

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Suite 3300, 421 7th Avenue SW Le Complexe St-Amable
Calgary AB T2P 4K9 1150, rue de Claire-Fontaine, 7e étage
Tel: 403-260-3500 Québec QC G1R 5G4
Fax: 403-260-3501 Tel: 418-521-3000
Toll-Free: 1-877-244-7711 Fax: 418-521-3099
Toll-Free: 1-877-244-7711
TORONTO
Box 48, Suite 5300 UNITED KINGDOM & EUROPE
Toronto Dominion Bank Tower 125 Old Broad Street, 26th Floor
Toronto ON M5K 1E6 London EC2N 1AR
Tel: 416-362-1812 UNITED KINGDOM
Fax: 416-868-0673 Tel: +44 (0)20 7489 5700
Toll-Free: 1-877-244-7711 Fax: +44 (0)20 7489 5777

OTTAWA
Suite 200, 440 Laurier Avenue West
Ottawa ON K1R 7X6
Tel: 613-238-2000
Fax: 613-563-9386
Toll-Free: 1-877-244-7711

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