US Amended Rule 41 Now In Force US Amended Rule 41 Now In Force

Privacy
February 22, 2017February 22, 20172017-02-23
On December 1, 2016, an amendment to Rule 41 of the United States Federal Rules of Criminal Procedure, which regulates legal search and seizure, came into force.  The amended Rule 41, which now allows for remote-access searches, reads:
Deeth Williams Wall http://www.dww.com/articles/us-amended-rule-41-now-force

BC Court of Appeal Finds Using Trademarks as Keywords in Internet Advertising Constitutes Passing Off BC Court of Appeal Finds Using Trademarks as Keywords in Internet Advertising Constitutes Passing Off

Trademark
February 8, 2017February 8, 20172017-02-08
Vancouver Community College v Vancouver Career College (Burnaby), 2017 BCCA 41, concerns the use of competitors’ marks in the context of keyword internet searches. The appellant claimed that the respondent’s use of its official mark “VCC” in their internet advertising and domain name (VCCollege.ca) constituted passing off.
Deeth Williams Wall http://www.dww.com/articles/bc-court-of-appeal-finds-using-trademarks-as-keywords-internet-advertising-constitutes

Close Ties to China Too Speculative to Establish Interlocutory Mareva Injunction in Patent Infringement Action Close Ties to China Too Speculative to Establish Interlocutory Mareva Injunction in Patent Infringement A...

Patent Litigation
February 8, 2017February 8, 20172017-02-09
A Mareva injunction is a form of interlocutory injunction that freezes a party’s assets so that they cannot be removed from the jurisdiction or dissipated in order to thwart a potential judgment.  In a recent case concerning a patent infringement action, Unilin Beheer BV v Triforest Inc, 2017 FC 76, Gascon J of the Federal Court held that to obtain an interlocutory Mareva injunction, the plaintiff must provide clear and convincing evidence of a “real risk” of the expatriation of asserts by the defendant in order to avoid a judgment.  Gascon J was not satisfied that the plaintiffs (
Deeth Williams Wall http://www.dww.com/articles/close-ties-to-china-too-speculative-to-establish-interlocutory-mareva-injunction-patent

Federal Court of Appeal Upholds Decision Regarding Tariff of Access for Kindergarten to Grade 12 Educational Institutions Federal Court of Appeal Upholds Decision Regarding Tariff of Access for Kindergarten to Grade 12 Educatio...

Trademark and Copyright Litigation
February 8, 2017February 8, 20172017-02-08
On January 27, 2017, the Federal Court of Appeal (Court) released a unanimous decision in Canadian Copyright Licensing Agency (Access Copyright) v British Columbia (Education), 2017 FCA 16, affirming the decision from the Copyright Board (Board) regarding the doctrine of fair dealing and Canadian Copyright Licensing Agency (Access) royalty rates.
Deeth Williams Wall http://www.dww.com/articles/federal-court-of-appeal-upholds-decision-regarding-tariff-of-access-for-kindergarten-to

Reasonable Royalty Awarded for Pre-Grant Patent Infringement in Frac Shack Inc v AFD Petroleum Ltd Reasonable Royalty Awarded for Pre-Grant Patent Infringement in Frac Shack Inc v AFD Petroleum Ltd

Patent Litigation
February 8, 2017February 8, 20172017-02-08
On January 26, 2017, in Frac Shack Inc v AFD Petroleum Ltd, 2017 FC 104, the Federal Court awarded an accounting of profits and a reasonable royalty of 29% of the infringer’s profits for pre-issuance patent infringement.  This case is noteworthy because the plaintiff published their patent application early and obtained an award for pre-issuance compensation.
Deeth Williams Wall http://www.dww.com/articles/reasonable-royalty-awarded-for-pregrant-patent-infringement-frac-shack-inc-v-afd-petroleum

Federal Court Orders Removal of Canadian Court and Tribunal Decisions Containing Personal Information from Third Party Website Federal Court Orders Removal of Canadian Court and Tribunal Decisions Containing Personal Information fro...

Privacy
February 8, 2017February 8, 20172017-02-08
In AT v Globe24h.com (2017 FC 114), the Federal Court (Court) found that a Romanian website owner contravened the Personal Information Protection and Electronics Documents Act (PIPEDA) by publishing personal information contained in Canadian court and tribunal decisions without the consent of the named individuals. The infamous website republishes legal decisions in a manner that allows for indexing by search engines, such as Google®.
Deeth Williams Wall http://www.dww.com/articles/federal-court-orders-removal-of-canadian-court-and-tribunal-decisions-containing-personal

US Executive Order Removes Privacy Protections for Foreigners (Including Canadians) US Executive Order Removes Privacy Protections for Foreigners (Including Canadians)

Privacy
February 8, 2017February 8, 20172017-02-08
On January 25th, President Trump signed an Executive Order effectively terminating privacy protections in the US for those living outside of the United States (Order). The Order requires that all US government offices remove privacy policies protecting non-US citizens. Such policies act a chief source of privacy protection from US Government intelligence gathering entities.
Deeth Williams Wall http://www.dww.com/articles/us-executive-order-removes-privacy-protections-for-foreigners-including-canadians

Saskatchewan Court Finds Accessibility of a Website in Canada Insufficient to Establish Territorial Jurisdiction Saskatchewan Court Finds Accessibility of a Website in Canada Insufficient to Establish Territorial Juris...

Information Technology
February 8, 2017February 8, 20172017-02-08
In Chief Commissioner of State Revenue (for the state of New South Wales, Australia) v Babatunde, 2017 SKQB 3, the Saskatchewan Court of Queen’s Bench (Court) dismissed a claim for lack of territorial competence or jurisdiction where the Defendant’s only connection to Saskatchewan was the accessibility of its government website in the province
Deeth Williams Wall http://www.dww.com/articles/saskatchewan-court-finds-accessibility-of-a-website-canada-insufficient-to-establish

Amazon to Pay $1 Million Penalty Following Investigation into Ordinary Price Claims Amazon to Pay $1 Million Penalty Following Investigation into Ordinary Price Claims

Regulatory Law
January 25, 2017January 25, 20172017-02-08
The popular online retailer Amazon.com.ca Inc (Amazon) has agreed to pay a penalty of $1 million, and $100,000 towards the Competition Bureau’s costs, following an investigation into the price claims displayed on the retailer’s website.
Deeth Williams Wall http://www.dww.com/articles/amazon-to-pay-1-million-penalty-following-investigation-into-ordinary-price-claims

Canadian Court Issues First Information Technology Patent Decision Brought by Non-Practising Entity Canadian Court Issues First Information Technology Patent Decision Brought by Non-Practising Entity

Patent Litigation
January 25, 2017January 25, 20172017-02-07
On January 4, 2017, the Canadian Federal Court (FC) issued the first decision in Canada on the validity and infringement of an information technology patent owned by a non-practising entity (Media Tube Corp v Bell Canada, 2017 FC 6).  Media Tube Corp (Media Tube) owns Canadian Patent No.
Deeth Williams Wall http://www.dww.com/articles/canadian-court-issues-first-information-technology-patent-decision-brought-by

Competition Bureau and Others Focus on the Future of FinTech Competition Bureau and Others Focus on the Future of FinTech

Information Technology
January 25, 2017January 25, 20172017-02-07
On February 21, 2017, Canada’s Competition Bureau will be bringing together start-ups, banks, and regulators in a workshop to examine the connections between competition, innovation and regulation in FinTech.  The workshop will form the basis of the Competition Bureau’s forthcoming market study exploring the impact of FinTech on Businesses and Consumers in Canada, due in the fall of 2017. 
Deeth Williams Wall http://www.dww.com/articles/competition-bureau-and-others-focus-on-future-of-fintech
Pharmaceutical Patent Litigation
January 25, 2017January 25, 20172017-02-07
On January 12, 2017, the Canadian Federal Court of Appeal (FCA) upheld the validity and the infringement of AstraZeneca’s omeprazole formulation patent by Apotex (Canadian Patent No. 1,292,693 or 693 Patent) in Apotex Inc v AstraZeneca Canada Inc, 2017 FCA 9.
Deeth Williams Wall http://www.dww.com/articles/federal-court-of-appeal-affirms-astrazeneca%E2%80%99s-omeprazole-formulation-patent-valid-and

CIPO Revises Ch. 17 of MOPOP, Releases Six Industrial Design Practice Notices CIPO Revises Ch. 17 of MOPOP, Releases Six Industrial Design Practice Notices

Industrial Design
January 25, 2017January 25, 20172017-02-07
In January 2017, MOPOP Sections 17.07 and 17.08 relating to Biotechnology and Medicinal Inventions were revised by the Canadian Intellectual Property Office (CIPO). A comprehensive list of the changes is available here.
Deeth Williams Wall http://www.dww.com/articles/cipo-revises-ch-17-of-mopop-releases-six-industrial-design-practice-notices

Updates to ISO/IEC 27004 (Measuring Information Security Effectiveness) Updates to ISO/IEC 27004 (Measuring Information Security Effectiveness)

Security
January 25, 2017January 25, 20172017-02-07
In December 2016, the International Organization for Standardization (ISO) and the International Electrotechnical Commission (IEC) updated information technology standard 27004, which is intended to assist organizations in the evaluation of information security performance and the effectiveness of information security management systems (ISO/IEC 27004:2016).  ISO/IEC 27004:2016 replaces ISO/IEC 27004:2009, and includes updates to bring the standard into alignment with the current version of ISO/IEC 27001 (
Deeth Williams Wall http://www.dww.com/articles/updates-to-isoiec-27004-measuring-information-security-effectiveness

E-TIPS® Newsletter's "2016: Year in Review" E-TIPS® Newsletter's "2016: Year in Review"

Intellectual Property
January 12, 2017January 12, 20172017-01-12
Thank you for your readership over the last year and welcome to what is sure to be an exciting 2017!  In this year’s first issue of the E-TIPS® Newsletter, we will recap our most noteworthy reports from 2016 covering developments in IP and IT law, under the following categories: (1) “Supreme Court of Canada Matters”, (2) “Patents”, (3) “Trademarks/Copyright”, (4) “Pharmaceutical Matters”, (5) “IT/Privacy”, (6) “Legislative, Treaty and Policy Developments” and (7) “Foreign Developments”.
Deeth Williams Wall http://www.dww.com/articles/etips%C2%AE-newsletters-2016-year-review

Apple v Samsung: The US Supreme Court Overturns the Federal Circuit’s Damages Award of $400 Million Apple v Samsung: The US Supreme Court Overturns the Federal Circuit’s Damages Award of $400 Million

Industrial Design
December 14, 2016December 14, 20162016-12-15
In a recently issued decision, Samsung Electronics Co v Apple, the US Supreme Court (the Court) reversed a judgment by the US Court of Appeals for the Federal Circuit (the Federal Circuit), finding that a damages award for design patent infringement may be limited to revenues attributable to a component of an “article of manufacture” and not the entire article itself.
Deeth Williams Wall http://www.dww.com/articles/apple-v-samsung-us-supreme-court-overturns-federal-circuit%E2%80%99s-damages-award-of-400-million

Supreme Court of Canada Clarifies “Order Made by a Court” Exception and Conditions for Implied Consent under PIPEDA Supreme Court of Canada Clarifies “Order Made by a Court” Exception and Conditions for Implied Consent un...

Privacy
December 14, 2016December 14, 20162016-12-15
The Personal Information Protection and Electronic Documents Act (PIPEDA) governs the collection, use and disclosure of personal information by organizations regarding commercial activities. PIPEDA generally prohibits disclosure of personal information without the knowledge and consent of the affected individual.
Deeth Williams Wall http://www.dww.com/articles/supreme-court-of-canada-clarifies-%E2%80%9Corder-made-by-a-court%E2%80%9D-exception-and-conditions-for

UK Government Announces Intent to Ratify Unified Patent Court Agreement UK Government Announces Intent to Ratify Unified Patent Court Agreement

Patent
December 14, 2016December 14, 20162016-12-15
On November 28, 2016, the UK Government announced that it intends to ratify the Unified Patent Court (UPC) Agreement.  The Agreement will create a pan-European patent enforcement zone for patents issued by the European Patent Office (EPO).  This differs from the current system that requires patentees to go through national validation of their EPO patent grant in each country and then bring individual enforcement actions in each European country.
Deeth Williams Wall http://www.dww.com/articles/uk-government-announces-intent-to-ratify-unified-patent-court-agreement

Would the Real Fashion Santa Please Stand Up Would the Real Fashion Santa Please Stand Up

Trademark
December 14, 2016December 14, 20162016-12-15
Fashion Santa became a worldwide social media phenomenon when the character debuted at Yorkdale Shopping Mall in Toronto during the holiday season of 2014. The stylish Saint Nick, portrayed by Paul Mason, drew folks from far and wide to take a selfie with the holiday icon. However, a clash between Mason and Yorkdale prevented Mason from reprising his role this year. Mason has said he chose not to return to Yorkdale because of a dispute regarding ownership of the FASHION SANTA brand. Mason claims that he created the promotional character, but Yorkdale’s management disagrees.
Deeth Williams Wall http://www.dww.com/articles/would-real-fashion-santa-please-stand-up

Opposition Board Confirms Proper Approach to Showing Use through Licensee Opposition Board Confirms Proper Approach to Showing Use through Licensee

Trademark
December 14, 2016December 14, 20162016-12-15
In Johnston Law v 2341375 Ontario Inc, (2016 TMOB 169) the Trademarks Opposition Board addressed the requirements for demonstrating use of a trademark through a licensee in the context of summary non-use cancellation proceedings. The decision contains an overview of the methods through which a registered owner can show use.
Deeth Williams Wall http://www.dww.com/articles/opposition-board-confirms-proper-approach-to-showing-use-through-licensee