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McCarthy Tétrault LLP / mccarthy.ca 1 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) June 15, 2011 Barry B. Sookman [email protected] 416-601-7949 10398714

Sookman TCLG Year in Review 2011

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    McCarthy Ttrault LLP /mccarthy.ca 11

    McCarthy Ttrault AdvanceBuilding Capabilities for Growth

    Toronto Computer Lawyers GroupThe Year in Review: Developments in

    Computer, Internet and

    E-Commerce Law (2010-2011)

    June 15, 2011

    Barry B. Sookman

    [email protected]

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    McCarthy Ttrault LLP /mccarthy.ca 222

    Privacy

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    McCarthy Ttrault LLP /mccarthy.ca 333

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

    Personal information is defined in s. 2(1) of the Act. Itmeans information about an identifiable individual.

    This is a very elastic definition, and should be interpreted inthat fashion to give effect to the purpose of the Act. Therecan be no doubt that financial information pertaining to adebtor, collected and used by a financial institution in the

    course of a mortgage transaction including the particularsof, and the balance owing on the debtors mortgage isinformation about an identifiable individual. Currentmortgage balances are not information that is publicly

    available.

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    McCarthy Ttrault LLP /mccarthy.ca 444

    Leons Furniture Limited v. Alberta (Information andPrivacy Commissioner), 2011 ABCA 94

    The identifiable individual term has two components. Firstly, the individualmust 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 toan individual. Information that relates to objects or property is, on the face ofthe definition, not included. The key to the definition is the word identifiable.

    Further, to be personal in any reasonable sense the information must bedirectly related to the individual; the definition does not cover indirect orcollateral information. Information that relates to an object or property does notbecome information about an individual, just because some individual mayown or use that property.

    Drivers licence numbers are PI but licence plate numbers are not.

    The respondent [Privacy Commissioner] is not empowered to direct anorganization to change the way it does business, just because the respondentthinks he has identified a better way. So long as the business is beingconducted reasonably, it does not matter that there might also be other

    reasonable ways of conducting the business.

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    McCarthy Ttrault LLP /mccarthy.ca 555

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

    Is the collection of evidence by an insurer acting for one of its insured in thedefence of a third party tort action a commercial activity within the meaningof PIPEDA?

    I conclude that, on a proper construction of PIPEDA, if the primary activity orconduct at hand, in this case the collection of evidence on a plaintiff by anindividual defendant in order to mount a defence to a civil tort action, is not acommercial activity contemplated by PIPEDA, then that activity or conduct

    remains exempt from PIPEDA even if third parties are retained by anindividual to carry out that activity or conduct on his or her behalf. The primarycharacterization of the activity or conduct in issue is thus the dominant factorin assessing the commercial character of that activity or conduct underPIPEDA, 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 primarynon-commercial activity or conduct at issue, namely the collection of evidenceby the defendant Ms. Vetter in order to defend herself in the civil tort action

    brought against her by Mr. Gaudet.

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    McCarthy Ttrault LLP /mccarthy.ca 666

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

    TransUnions suggestion that a breach may be found only if anorganizations accuracy practices fall below industry standards isalso untenable. There is no defence of practical necessity set out

    in PIPEDA.

    PIPEDA does not require that personal information be completelyaccurate, complete, and up-to-date; rather, it requires that personalinformation be as accurate, complete, and up-to-date as is

    necessary for the purposes for which it is to be used. Thus, it isthe use that the information is put to that dictates the degree ofaccuracy, completeness, and currency the information must have...Informed, reliable and objective decisions require that the

    information on which the decisions are based meets a highstandard of accuracy, completeness and currency.

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    McCarthy Ttrault LLP /mccarthy.ca 888

    Damage Awards Under PIPEDA

    Nammo v. TransUnion of Canada Inc., 2010 FC 1284In Vancouver (City) v Ward, 2010 SCC 27, the Supreme Court...addressed the different goals of awarding damages fora Charterbreach; these include compensation, for which loss isrelevant, but also vindication and deterrence, for which loss is not adeterminative factor.

    In my view, the same reasoning applies to a breach of PIPEDA, which

    is quasi-constitutional legislation.... Applying the Supreme Courtsreasoning in Wardto PIPEDA applications before this Court indicatesthat both the question of whether damages should be awarded and thequestion of the quantum of damages should be answered with regardto whether awarding damages would further the general objects of

    PIPEDA and uphold the values it embodies. Furthermore, deterringfuture breaches and the seriousness or egregiousness of the breachwould be factors to consider.

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    McCarthy Ttrault LLP /mccarthy.ca 999

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    McCarthy Ttrault LLP /mccarthy.ca 101010

    Can claims be brought for losses arising fromprivacy breaches?

    In re Hannaford Bros. Co. Customer Data Security Breach Litigation4 A.3d 492(Sup, Ct. Me. 2010) (Data breach where customer data was stolen. No claim fortime spent to avoid foreseeable harm w/o physical harm, economic loss, or identitytheft.) Also, Paul v Providence Health System240 P.3d 1110 (2010)

    Doe 1 v. AOL LLC719 F.Supp.2d 1102 (N.D.Cal. 2010) (Data breach. the Court ispersuaded that Plaintiffs' allegations are sufficient to demonstrate standing forpurposes of seeking injunctive relief. The Complaint alleges that AOL engages in apractice 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 inthe 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 saythat it is categorically impossible for Plaintiffs to allege some property interest thatwas compromised by Defendant's alleged practices.

    Claridge v. RockYou, Inc. 2011 WL 1361588 (N.D.cal. Apr. 11, 2011) (Databreach. although the court has doubts about plaintiff's ultimate ability to prove hisdamages theory in this case, the court finds plaintiff's allegations of harm sufficient

    at this stage to allege a generalized injury in fact.)

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    McCarthy Ttrault LLP /mccarthy.ca 111111

    Jones v. Tsige, 2011 ONSC 1475

    The central issue in this case is whether there is a tort for invasion ofprivacy.

    While it is certainly the case that in Euteneier, the plaintiff was notsuing on the basis of an intentional tort, the extent to which privacyrights are enforceable at law was squarely before the court forpurposes of determining the content of the duty of care owed by thepolice to the plaintiff while in custody. In my view, the inescapable

    conclusion, put quite plainly by the Court of Appeal in paragraph 63of 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 governprivacy issues are, for the most part, carefully nuanced anddesigned to balance practical concerns and needs in an industry-specific fashion.

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    McCarthy Ttrault LLP /mccarthy.ca 121212

    CTB v. News Group Newspapers Ltd & Anor[2011]EWHC 1326 (QB)

    Mr Spearman argues ...that in effect privacy injunctions (and no doubt other formsof injunction also) have ceased to serve any useful purpose in the age of theInternet. Not only can information be put out on various networks from within thisjurisdiction, 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 widespreaddisobedience or defiance?

    the law nowadays is required to protect information in respect of which there is

    a reasonableexpectation of privacy... It is fairly obvious that wall-to-wallexcoriation in national newspapers, whether tabloid or "broadsheet", is likely to besignificantly more intrusive and distressing for those concerned than the availabilityof information on the Internet or in foreign journals to those, however many, whotake 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 intrusionand 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 someofthat intrusion and distress, depending upon the individual circumstances, it may beappropriate to maintain that degree of protection. The analogy with King Canute to

    some extent, therefore, breaks down.

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    McCarthy Ttrault LLP /mccarthy.ca 131313

    City of Ontario, Cal. v. Quon, 130 S. Ct. 2619

    Do employees have reasonable expectations of privacy in work owneddevices?

    Rapid changes in the dynamics of communication and informationtransmission are evident not just in the technology itself but in what

    society accepts as proper behavior. As one amicibrief notes, manyemployers expect or at least tolerate personal use of such equipment byemployees because it often increases worker efficiency.

    Cell phone and text message communications are so pervasive thatsome persons may consider them to be essential means or necessaryinstruments for self-expression, even self-identification. That mightstrengthen the case for an expectation of privacy... And employerpolicies concerning communications will of course shape the reasonable

    expectations of their employees, especially to the extent that suchpolicies are clearly communicated.

    A broad holding concerning employees' privacy expectations vis--visemployer-provided technological equipment might have implications for

    future cases that cannot be predicted.

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    McCarthy Ttrault LLP /mccarthy.ca 141414

    R. v. Cole, 2011 ONCA 218

    I conclude that the appellant had a reasonableexpectation of privacy from state intrusion in thepersonal use of his work computer and in thecontents of his personal files on its hard drive.

    However, his expectation of privacy was modified. Hehad no expectation of privacy with respect to accessto his hard drive by his employers technician for the

    limited purpose of maintaining the technical integrityof the schools information network and the laptop.

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    McCarthy Ttrault LLP /mccarthy.ca 202020

    Sparks v. Dub, 2011 NBQB 40

    Court made a preservation order and injunction compellingErica Sparks: 1) to preserve the entire contents of her personal webpage(s) on Facebook, and 2) to participate in making copies.

    Plaintiffs lawyer was ordered to contact the plaintiff and, withoutdisclosing the nature of the subject matter schedule a meeting withher at a location convenient to access and download data from theInternet and reduce it to usable form.

    Upon meeting with the plaintiff the solicitor had to apprise her of theterms and conditions of the order.

    Immediately upon disclosure of the terms and conditions of theorder the plaintiff, in the presence of the solicitor, was required tocreate permanent tangible records of her web page(s) on Facebook.

    Order made ex parte!

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    McCarthy Ttrault LLP /mccarthy.ca 222222

    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 marketingmodels over the Internet.

    FISA will deter suppliers of service providers, including outsourcing and cloudservice providers, from operating with or maintaining facilities in Canada.

    FISA will deter foreign businesses from offering their products to Canadiansvia the Internet, mobile and other communications networks.

    FISA will impose costs and restrictions on Canadian businesses that theircompetitors outside Canada will not have to bear.

    FISA contains very strong incentives for Canadian businesses to confesswrong-doing, even in cases of questionable or trivial conduct, thereby

    tarnishing the reputation of legitimate businesses in circumstances where theoffending conduct is not significant.

    FISA will chill legitimate commercial speech and thereby underminefundamental values protected by the Charter of Rights and Freedoms. See

    Rethinking FISA, http://www.barrysookman.com/2011/05/25/rethinking-fisa/

    http://www.barrysookman.com/2011/05/25/rethinking-fisa/http://www.barrysookman.com/2011/05/25/rethinking-fisa/http://www.barrysookman.com/2011/05/25/rethinking-fisa/
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    McCarthy Ttrault LLP /mccarthy.ca 252525

    New UK Cookie Regulations Privacy and Electronic Communications Regulationsput 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 informationstored, in the terminal equipment of a subscriber or user unless the requirements ofparagraph (2) are met.

    (2) The requirements are that the subscriber or user of that terminal equipment (a) isprovided with clear and comprehensive information about the purposes of the storage of, oraccess 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 oraccess 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 ofparagraph (2) are met in respect of the initial use.

    (3A) For the purposes of paragraph (2), consent may be signified by a subscriber whoamends 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 anelectronic communications network; or (b) where such storage or access is strictlynecessary for the provision of an information society service requested by the subscriber

    or user.

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    McCarthy Ttrault LLP /mccarthy.ca 262626

    New UK Cookie Regulations

    ICO Guidelines @ http://ow.ly/5gJnT

    Organizations have 12 months to phase in the new system, but areexpected to take steps to comply within this period.

    At present, most browser settings are not sophisticated enough to allowyou to assume that the user has given their consent to allow your websiteto set a cookie. Also, not everyone who visits your site will do so using abrowser. They may, for example, have used an application on their mobile

    device. So, for now we are advising organisations which use cookies orother means of storing information on a users equipment that they have togain 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 bemade aware of what is being collected and by whom.

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    McCarthy Ttrault LLP /mccarthy.ca 272727

    Developments in India

    New privacy regs issued in April 2011 and prescribed how PI may be collectedand 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

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    McCarthy Ttrault LLP /mccarthy.ca 282828

    Contracts and Electronic

    Agreements

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    McCarthy Ttrault LLP /mccarthy.ca 292929

    Seidel v. TELUS Communications Inc., 2011 SCC 15

    Issue: whether British Columbia Business Practices and ConsumerProtection Act (BPCPA) renders arbitration clause void.

    The choice to restrict or not restrict arbitration clauses in consumercontracts is a matter for the legislature.

    Absent legislative intervention, the courts will generally give effect to theterms of a commercial contract freely entered into, even a contract ofadhesion, including an arbitration clause.

    Section 172 is clearly designed to encourage private enforcement inthe public interest. It was open to the legislature to prefer the vindicationand denunciation available through a well-publicized court action to promoteadherence to consumer standards.

    The legislature understood that the policy objectives of s. 172, would not bewell served by a series of isolated low-profile, private and confidentialarbitrations.

    All other causes of action including breach of Trade Practices Actand

    common law claims subject to arbitration clause.

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    McCarthy Ttrault LLP /mccarthy.ca 303030

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

    Issue: whether AT&Ts consumer contracts requiringarbitration and precluding class arbitration were enforceableunder the US the FAA.

    Court reversed 9th Circuit which held such clausesunconscionable, overruling Californias Discover Bankrule.

    The overarching purpose of the FAA...is to ensure theenforcement of arbitration agreements according to their termsso as to facilitate streamlined proceedings. Requiring the

    availability of classwide arbitration interferes with fundamentalattributes of arbitration and thus creates a scheme inconsistentwith the FAA.

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    McCarthy Ttrault LLP /mccarthy.ca 313131

    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 forinjunctive 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 anypoint in or during a dispute or proceeding to resolve the claim through bindingnonappearance-based arbitration.... [T]he arbitration shall be conducted at theoption of the party seeking relief, by telephone, online or based solely onwritten submissions.... [T]he arbitration shall not involve any personal

    appearance by the parties or witnesses unless otherwise mutually agreed bythe parties ... [A]ny judgment on the award rendered by the arbitrator may beentered 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 couldbe adjudicated by phone, on-line, or by written submission.

    The arbitrator was not a preselected mandatory arbitrator.

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    McCarthy Ttrault LLP /mccarthy.ca 323232

    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 SuperiorCourt of Quebec even though Facebook has no link to Quebec, other thanthe 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 exclusivelyin a state or federal court located in Santa Clara County.

    It is obvious that all Users agreed to be continually bound by Facebook'sTerms of Use. St-Arnaud could only gain initial access to the website by

    clicking on an icon labelled "Sign Up" where immediately below it wasclearly written. By clicking Sign Up, Users indicate that they haveread 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 wouldneed to either remain logged in or access the website login page, whichalways includes a link to the Terms. Moreover, every time St-Arnaud wouldaccess the website, he would find a link to the Terms at the bottom of everypage available onFacebook, including his own personal page....TheJurisdiction Clause is binding upon St-Arnaud and the Members of the

    Group.

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    McCarthy Ttrault LLP /mccarthy.ca 353535

    Roling v. E*Trade Securities, LLC, 756 F. Supp. 2d1179 (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 postinga modified structure on its Web site and requires customersto 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 undercutsplaintiffs' allegation that a contractual provision that allowsa party to unilaterally change the terms of the contractwithout notice is unenforceable.

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    McCarthy Ttrault LLP /mccarthy.ca 3636

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

    In addition, by virtue of the posting online of the Modified eBankingAgreement, Patco effectively agreed to monitor its commercial accounts

    daily. While Patco protests that it did not actually ever see the ModifiedeBanking Agreement and thus was never properly notified of its existenceor bound by it... the Bank reserved the right, in the Original eBankingAgreement, to modify the terms and conditions of that agreement at any

    time effective upon publication...There is no dispute that Patco reviewedand agreed to the terms of the Original eBanking Agreement....The onlinepublication of the Modified eBanking Agreement hence was bindingupon Patco. See, e.g., Harold H. Huggins Realty, Inc. v. FNC, Inc., 575F.Supp. 2d 696, 708 (D.Md. 2008) (unilateral modification of Internet-based

    service contract held effective when prior agreements permittedmodification at any time and stated that modifications would be effectiveafter they were posted for 30 days).

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    McCarthy Ttrault LLP /mccarthy.ca 373737

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

    Computer Fraud and Abuse Act(CFAA) and States laws e.g. CaliforniaComputer Crime Law, Cal. Penal Code 502.

    Accessing a protected computer (website) knowingly withoutauthorization, or exceeding authorized access to a protected computer,involves a risk of violating a number of federal and state statutes creatingpenal sanctions and private causes of action.

    U.S. v. Nosal2011 WL 1585600 (9th

    . Cir. Apr 28, 2011) (under the CFAA,an employee accesses a computer in excess of his or her authorizationwhen that access violates the employer's access restrictions, which mayinclude restrictions on the employee's use of the computer or of theinformation 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.)

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    McCarthy Ttrault LLP /mccarthy.ca 414141

    Distinct Fortune Ltd. v. Hyndland Investment Co. Ltd.

    [2010] HKEC 2013

    Does SMS message satisfy HK Conveyancing and PropertiesOrdinance.

    The plaintiff submitted that the CPO should be given an updatedconstruction by making allowances for social and technological changes;that SMS was in a visible form and was a personal way ofcommunication by electronic means; that the principal function of asignature is to demonstrate an authenticating intention of the signor

    and the sending of an SMS should constitute the signing of it by thesender.

    On the question of signature, I think the SMS is not a signeddocument... I agree with leading counsel of the defendant that there isnot even the expression of (sd.). If the clicking of the send buttonwould amount to the signing of the SMS, then all SMS and emails aresigned documents. This cannot be right.

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    McCarthy Ttrault LLP /mccarthy.ca 434343

    Contract and License Issues

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    McCarthy Ttrault LLP /mccarthy.ca 444444

    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 of2 June 2008, did not reflect its contractual entitlement and, in puttingthem 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 atime and materials basis at our own internal standard rates". That is anexpression of an intention to complete the work on different terms, notupon the terms originally agreed. Second, this offer was itself subject,

    amongst other things, to DB's agreement to waive any claim that it mayhave against Atos in relation to Atos's delivery to date. That also wassomething 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 significantdifference between being willing to complete a project, and being willingto fulfil a contract. Atos may have been genuinely prepared to do theformer, on its own terms, but that was itself inconsistent with awillingness to do the latter.

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    McCarthy Ttrault LLP /mccarthy.ca 484848

    Baidu, Inc. v. Register.com, Inc., 2010 WL2900313 (S.D.N.Y.2010)

    Will limitation of liability clauses be effective to exclude damages resultingfrom cyber-attacks?

    New York courts will decline to enforce a contractual limitation or waiver ofliability clause when there is wilful or grossly negligent or recklessly indifferentconduct.

    Baidu alleged sufficient facts to give rise to a plausible claim of grossnegligence or recklessness:

    Register failed to follow its own security protocols and essentially handedover control of Baidu's account to an unauthorized Intruder, who engagedin cyber vandalism.

    Register failed to follow its own security protocol.

    The attack by the Intruder was reasonably foreseeableit was preciselybecause these cyber attacks are foreseeable that the security measures wereadopted... Baidu... did not waive its claims for gross negligence or

    recklessness.

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    McCarthy Ttrault LLP /mccarthy.ca 505050

    Patents and Trade-marks

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    McCarthy Ttrault LLP /mccarthy.ca 515151

    Amazon.com, Inc. v. Attonrey General ofCanada,2010 FC 1011

    Commissioner had ignored fundamental differences between the foreignand 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 Commissioners reasons for excluding business method patents canno longer be a barrier to obtaining a patent for a business method inCanada.

    There is no requirement that eligible subject matter exhibit a technicalcharacter or that it support a technical contribution.

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    McCarthy Ttrault LLP /mccarthy.ca 5252

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

    The Court rejects Microsofts contention that a defendant need only

    persuade the jury of a patent invalidity defense by a preponderance ofthe evidence. There, tracing nearly a century of case law, the Courtstated, inter alia, that there is a presumption of [patent] validity [thatis] not to be overthrown except by clear and cogent evidence.

    New evidence supporting an invalidity defense may carry more weightin an infringement action than evidence previously considered by thePTO.

    The Court is in no position to judge the comparative force of the

    parties policy arguments as to the wisdom of the clear andconvincing-evidence standard that Congress adopted.

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    McCarthy Ttrault LLP /mccarthy.ca 5454

    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 aninvention belong to the inventor. The question here is whether theUniversity and Small Business Patent Procedures Act of 1980

    commonly referred to as the BayhDole Actdisplaces that norm andautomatically vests title to federally funded inventions in federalcontractors. 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 theabstract; it is often the case that whatever an employee produces in thecourse of his employment belongs to his employer. No one would claimthat an autoworker who builds a car while working in a factory owns that

    car. But, as noted, patent law has always been different: We haverejected the idea that mere employment is sufficient to vest title to anemployee's invention in the employer. Against this background, acontractor's inventionan invention of the contractordoes notautomatically include inventions made by the contractor's employees.

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    McCarthy Ttrault LLP /mccarthy.ca 595959

    Copyright

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    McCarthy Ttrault LLP /mccarthy.ca 636363

    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.

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    McCarthy Ttrault LLP /mccarthy.ca 646464

    Harmony Consulting Ltd. v. G.A. Foss Transport Ltd.,2011 FC 340

    Computer programs that are dictated by the operating system or reflect commonprogramming 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 tunccopyright assignment does not satisfy the writing requirements forassignments where there was no original intention to transfer the copyright.

    Section 13(3) of (which vests copyright in works to employers) applies to officers, directorsand employees.

    Use of software, without more, outside the scope of a license e.g., more seats thanlicensed, is not copyright infringement.

    Making modifications to software which include opening a file, making changes andresaving the file is nota reproduction.

    Making a back-up copy does notinvolve making a reproduction.

    How many errors can one court judgment contain?

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    McCarthy Ttrault LLP /mccarthy.ca 727272

    Google v Copiepresse etal, Brussels Court ofAppeal (9th Chamber) May 5, 2011

    The decision canvasses many issues including

    the choice of law to apply to evaluate the claims of infringement,

    whether Googles caching of news articles is infringement,

    whether the transmission of article titles and short extracts violatesthe 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/

    http://www.barrysookman.com/2011/05/17/is-google-news-legal/http://www.barrysookman.com/2011/05/17/is-google-news-legal/
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    McCarthy Ttrault LLP /mccarthy.ca 76

    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 anact tantamount to global and simultaneous publication of thework, bringing AJE within the definition of a United Stateswork under 101(1)(C) and subject to 411(a)'s registrationrequirement. Gallefoss elected to publish AJE on the Internetand the legal consequences of that decision must apply.Plaintiff was therefore required to register AJE prior to seekingjudicial enforcement of its copyright rights.

    76

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    McCarthy Ttrault LLP /mccarthy.ca 787878

    Slides available @ barrysookman.com andmccarthy.ca

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